Roger L. Schultz et al.

Patent Trials and Appeals Board

May 1, 2020

15391014 - (D) (P.T.A.B. May. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/391,014 12/27/2016 Roger L. SCHULTZ TTS-15-11P4D1US 7583
20558 7590 05/01/2020
SMITH IP SERVICES, P.C.
P.O. Box 997
Rockwall, TX 75087
EXAMINER
LEFF, ANGELA MARIE DITRAN
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
05/01/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail@smithipservices.com
sally@smithipservices.com
scrawford@smithipservices.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROGER L. SCHULTZ, BROCK W. WATSON,
ANDREW M. FERGUSON, and GARY P. FUNKHOUSER
____________

Appeal 2019-004497
Application 15/391,014
Technology Center 3600
____________

Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 in this application.2
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Thru Tubing Solutions, Inc. as the
real party in interest. Appeal Br. 3.
2 Claims 12–30 are canceled. See Appeal Br. 16 (Claims App.).
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CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites, with
our emphases added:
1. A flow conveyed device for use in a subterranean well, the
device comprising:
a body; and
a plurality of lines extending outwardly from the body, each
of the lines having a lateral dimension that is substantially
smaller than a size of the body, wherein each of the lines
comprises multiple fibers, and wherein the fibers are
configured to increase fluid drag during conveyance of the
device in the subterranean well.
Appeal Br. 15 (Claims App.) (emphases added).
REJECTIONS ON APPEAL
Claims 1–11 are rejected under 35 U.S.C. § 103 as unpatentable over
Lafferty (US 2012/0285695 A1, published Nov. 15, 2012), Ghassemzadeh
(US 2010/0152070 A1, published June 17, 2010), and Nguyen ’0733
(US 5,908,073, issued June 1, 1999). Final Act. 2–5.
The Answer enters three new grounds of rejection.4 Claims 1 and 9
are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Nguyen ’073.
Ans. 3–4. Claims 2–7, 10, and 11 are rejected under 35 U.S.C. § 103 as

3 We refer to this reference as Nguyen ’073 to differentiate it from another
Nguyen reference involved in a related appeal, regarding which we are
entering a decision contemporaneously with the present decision. See App.
No. 15/390,941.
4 In response to the new grounds, Appellant elected to maintain the appeal
by filing a Reply Brief. See Ans. 13; Reply Br. 16–18; 37 C.F.R. § 41.39(b).
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unpatentable over Nguyen ’073 and Lafferty. Ans. 4–7. Claim 8 is rejected
under 35 U.S.C. § 103 as unpatentable over Nguyen ’073. Ans. 7–8.
OPINION
A. Obviousness over Lafferty, Ghassemzadeh, and Nguyen ’073
(Claims 1–11)
The Examiner determines it would have been obvious, based on the
combination of Lafferty, Ghassemzadeh, and Nguyen ’073, to make a flow
conveyed device comprising a plurality of lines extending outwardly from a
body, with each line having a lateral dimension that is substantially smaller
than a size of the body, and each line comprising multiple fibers, as recited
in claim 1. Final Act. 2–4, 6–7; Ans. 9–11. Appellant contends the
Examiner errs in this regard. Appeal Br. 6–10; Reply Br. 13–14. For the
following reasons, we agree with Appellant.
We find Lafferty discloses flow conveyed devices which comprise
“fibers and/or particles” that are “packed into small bundles.” Lafferty ¶ 26;
id. ¶ 35 (explaining that Figure 3 illustrates release of contents 3 in a
wellbore). Lafferty also discloses the bundles may include “fibers and
mixtures of different sizes of, or different shapes of, materials,” which may
be “in slurried form.” Id. ¶¶ 31, 68.
The Examiner finds these disclosures in Lafferty reflect a flow
conveyed device comprising “a plurality of lines, each of the lines
comprising fibers . . . wherein the material comprises fibers, i.e., ‘lines,’
packed into small bundles.” Final Act. 2 (citing Lafferty ¶¶ 26, 31, 68). We
disagree. This finding equates a “line” with a “fiber,” thereby misconstruing
the scope of claim 1, which requires “a plurality of lines extending
outwardly from the body,” wherein “each of the lines comprises multiple
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fibers.” Appeal Br. 15 (Claims App.) Lafferty does disclose packing
multiple fibers together to form a bundle of fibers, but Lafferty does not
disclose the indicated fiber structure particularly recited in claim 1.
We find Lafferty expressly suggests that its fiber bundles may include
a mixture of particles and fibers, as is disclosed by Ghassemzadeh. Lafferty
¶ 67 (referring to U.S. Patent Application Publication No. 2010/0152070).
The Examiner correspondingly cites paragraph 48 of Ghassemzadeh. Final
Act. 2–3. We find Ghassemzadeh therein discloses a “preferred short
flexible organic fiber for use with oil-based muds is short cut polyaramid
fibers having a length in the range of from about 0.5 to about 8 mm and a
filament diameter of about 12 microns.” Ghassemzadeh ¶ 48. In one
example, the fibers are “in the form of chopped yarn bundles of
approximately 1 mm diameter.” Id. (emphasis added).
The Examiner finds this disclosure in Ghassemzadeh “provides for
lines each having a lateral dimension of 12 microns that is, therefore, less
than the size of the body, i.e., the bundle diameter of 1 mm.” Final Act. 3.
As with Lafferty, discussed above, this finding misconstrues the scope of
claim 1, which defines a “line” to comprise multiple fibers.
The Examiner next finds “Ghassemzadeh teaches yarn bundles made
of a plurality of fibers; since the yarn, i.e., lines, is bundled, i.e., providing
for a body, and the yarn itself is made of a plurality of fibers,” so
“Ghassemzadeh provides for a plurality of lines extending outwardly from
the body with each line comprising multiple fibers as claimed since the
bundles of yarn provide for a plurality of lines of yarn and the yarn provides
for multiple fibers.” Id. at 6–7 (emphasis by Examiner). In this regard, the
Examiner notes the term “yarn” is defined as “a continuous often plied
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strand composed of either natural or man-made fibers or filaments and used
in weaving and knitting to form cloth,” and thereby “provides for each line
comprising multiple fibers” as claimed. Final Act. 3, 7 (emphasis by
Examiner) (no citation provided for proffered definition). The Examiner
further notes the term “bundle” is defined as “a group of things that are
fastened, tied, or wrapped together,” “thus providing for multiple fibers
extending outwardly from a ‘body,’ i.e., the fastener, tied location, i.e., knot,
or wrap.” Final Act. 3 (citing Merriam-Webster dictionary definition
submitted by Appellant on Feb. 1, 2017). The Examiner further explains
that “the body is the fastener means for the yarn, the lines are the yarn and
the individual filaments of the yarn are the multiple fibers.” Ans. 11.
We conclude that the Examiner reads too much detail into
Ghassemzadeh’s simple disclosure of “chopped yarn bundles.”
Ghassemzadeh ¶ 48. We agree with the Examiner’s finding that the term
“yarn” ordinarily connotes multiple fibers woven together into a strand,
which may correspond to the “line” of multiple fibers recited in claim 1.
However, claim 1 requires more than that, in specifying “a body” with “a
plurality of lines extending outwardly from the body.” The ordinary
meaning of “yarn” does not connote such a structure.
Next, the term “bundle” may simply connote “a group of things that
are together or are associated with each other in some way,” more broadly
than requiring the things to be fastened, tied, or wrapped together. See IDS
filed Feb. 1, 2017 (Merriam-Webster dictionary definition of “bundle”).
Thus, we disagree with the Examiner’s determination that the term “bundle”
ordinary connotes, specifically, “a body” with “a plurality of lines extending
outwardly from the body,” as recited in claim 1. Such a structure is merely
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one example of a bundle; many other collections of fibers, structured
differently than claim 1 requires, would also be bundles of fibers.
Finally, considering the ordinary meanings of “yarn” and “bundle”
together, we determine the “chopped yarn bundles” phrase in Ghassemzadeh
simply connotes a collection of yarns, wherein each yarn comprises a line of
multiple fibers. A yarn bundle does not ordinary connote, specifically, “a
body” with “a plurality of lines extending outwardly from the body,” as
recited in claim 1. Such a structure is merely one example of a yarn bundle;
many other collections of yarns, structured differently than claim 1 requires,
would also be yarn bundles.
The Examiner next turns to Nguyen ’073, finding it establishes that “it
is known in the art to bundle fibers by fusing, tying or other suitable fiber
anchoring means.” Final Act. 3 (emphasis by Examiner) (citing
Nguyen ’073, 3:49–56). We reproduce Figures 1 and 2 of Nguyen ’073
here:

As described in Nguyen ’073, these figures illustrate fibrous bundle 10
comprised of a plurality of individual fibers 12 connected together at one
end 14 by fusing, tying, or some other anchoring means. Nguyen ’073,
3:49–57. Figure 1 illustrates how bundles 10 are suspended in a fracturing
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fluid and generally align themselves in a flow direction 16 of fracturing
fluid, and Figure 2 illustrates how bundles 10 may be moved within a
production fluid flow in direction 18 to flare outward. Id. at 4:3–21.
The Examiner explains that “Nguyen [’073]’s bundle 10 includes an
end 14, i.e., body, that is formed by tying, thus providing an ‘enlarged’ body
with respect to the lines since tied end 14 is formed from individual fiber
strands 12, and, therefore, would be larger than such individual fiber
strands.” Ans. 11. The Examiner concludes “it would have been
obvious . . . to fuse, tie or provide another suitable anchoring means in order
to create a small yarn bundle in the method of Lafferty[], and thereby
provide ‘a body,’ i.e., the fused location, the tied location, or other suitable
anchoring means, from which the fibers extend.” Final Act. 3 (emphasis by
Examiner).
However, the Examiner does not provide a reason why a person of
ordinary skill in the art would have structured Lafferty’s fibers or
Ghassemzadeh’s yarns to be tied together at one end, in light of
Nguyen ’073. See Final Act. 3–4; Ans. 11. The present rejection, at best,
establishes that the cited prior art could have been combined predictably to
reach the claimed invention, and does not provide a rational underpinning
for why this would have been done. This is not a sufficient reasoning to
support obviousness. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d
987, 991–92 & 993–94 (Fed. Cir. 2017) (obviousness requires “a motivation
to pick out those two references and combine them to arrive at the claimed
invention,” and “the amount of explanation needed will vary from case to
case, depending on the complexity of the matter and the issues raised in the
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record”); InTouch Techs., Inc. v. VGo Comms., Inc., 751 F.3d 1327, 1351–
52 (Fed. Cir. 2014).
Further, we do not discern the requisite rational underpinning from the
present record. The Examiner relies on Lafferty’s disclosure of “delivering
diverting materials downhole,” into a well, carried within a flowing
“injection fluid.” Lafferty ¶ 31; id. ¶¶ 26, 68; Final Act. 2. Nguyen ’073,
meanwhile, indicates that its bundles 10 are delivered down into a well
within a flowing fracturing fluid, and “generally align themselves in the
direction of flow whereby the connected ends 14 of the bundles are in front
and the unconnected portions of the fibers 12 trail behind as illustrated in
FIG. 1.” Nguyen ’073, 4:3–9; id. at 4:10–21, 4:45–53 (bundles 10 flare
outwardly, as shown in Figure 2, only when carried in a production fluid
flow up and out of the well). Based on the present record, it is not clear to
us how modifying the bundles of Lafferty or Ghassemzadeh so that yarns are
fused together at one end, similarly to the fiber bundles of Nguyen ’073,
would improve upon the downhole fluid delivery of the yarn bundles, nor is
any other reason for making the modification immediately apparent.
For the foregoing reasons, we do not sustain the rejection of claim 1
as having been obvious over Lafferty, Ghassemzadeh, and Nguyen ’073.
The Examiner’s additional consideration of claims 2–11 does not cure the
foregoing deficiencies as to claim 1 (Final Act. 4–5), so we likewise do not
sustain the rejection as to those claims.
B. Anticipation by Nguyen ’073 (Claims 1 and 9)
Figures 1 and 2 of Nguyen ’073 are reproduced and discussed above.
The Examiner finds bundles 10 are flow conveyed devices comprising a
plurality of lines (fibers 12) extending outwardly from a body (at end 14).
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Ans. 3 (citing Nguyen ’073, 3:52–57, 3:62–66, 4:3–9). The Examiner,
further, finds “fibers 12 may be formed from a mixture of fibrous materials,
thereby providing for a line of multiple fibers.” Id. (emphasis by Examiner)
(citing Nguyen ’073, 3:66–4:2).
We agree with Appellant’s argument that Nguyen ’073 fails to
disclose a plurality of lines extending outwardly from a body, with each line
comprising multiple fibers. Reply Br. 16. The disclosure of Nguyen ’073 at
issue in this regard is that “[t]he fibers 12 forming the bundle 10 can be
natural organic fibers, synthetic organic fibers, inorganic fibers, glass fibers,
carbon fibers, ceramic fibers, metal fibers or mixtures of such fibers.”
Nguyen ’073, 3:66–4:2 (emphasis added). We agree with Appellant’s
reading of this disclosure to reflect that one particular fibrous bundle 10 of
Nguyen ’073 may include a first individual fiber 12 of a first material, and a
second individual fiber 12 of a second material that is different than the first
material. See Nguyen ’073, 3:49–4:2, Figs. 1 & 2. We disagree with the
Examiner’s reading of this disclosure to reflect that one individual fiber 12
may be composed of multiple fibers, as claim 1 required for the “lines”
extending outwardly from a body. See id. (“The fibrous bundle 10 is
comprised of a plurality of individual fibers 12,” and “[t]he fibers 12
forming the bundle 10 can be . . . mixtures of [different] fibers.”) (emphases
added).
For the foregoing reasons, we do not sustain the rejection of claim 1
as anticipated by Nguyen ’073. The Examiner’s additional consideration of
claim 9 does not cure the foregoing deficiency as to claim 1 (Ans. 4), so we
likewise do not sustain the rejection as to claim 9.
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C. Obviousness over Nguyen ’073 and Lafferty (Claims 2–7, 10, and 11),
and Obviousness over Nguyen ’073 (Claim 8)
The Examiner’s additional consideration of claims 2–8, 10, and 11,
and of Lafferty, does not cure the foregoing deficiencies of Nguyen ’073 as
to claim 1. See Ans. 4–8. Therefore, for the reasons provided above, we do
not sustain the rejection of claims 2–7, 10, and 11 as having been obvious
over Nguyen ’073 and Lafferty, or the rejection of claim 8 as having been
obvious over Nguyen ’073.
CONCLUSION
In summary, we do not sustain the Examiner’s rejections, as
summarized in this table:
Claims
Rejected
35 U.S.C.
§
References Affirmed Reversed
1–11 103 Lafferty,
Ghassemzadeh,
Nguyen ’073
1–11
1, 9 102(a)(1) Nguyen ’073 1, 9
2–7, 10, 11 103 Nguyen ’073,
Lafferty
2–7, 10, 11
8 103 Nguyen ’073 8
Overall
Outcome
1–11
REVERSED