Roger L. Schultz et al.

Patent Trials and Appeals Board

May 1, 2020

2019004489 (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.
15/390,976 12/27/2016 Roger L. SCHULTZ TTS-15-11P3D1US 7851
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 2019-004489
Application 15/390,976
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 21–29 in this application.2
We AFFIRM IN PART.

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 1–20 are canceled. See Appeal Br. 13 (Claims App.).
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CLAIMED SUBJECT MATTER
Claim 21 is the sole independent claim on appeal, and it recites, with
our emphases added:
21. A flow conveyed device for use in a subterranean well, the
device comprising:
a body, wherein the body is configured to engage and seal
off an opening in the subterranean well; and
a degradable material extending outwardly from the body,
the degradable material being formed as at least one of
a film, tube, fabric and filament.
Appeal Br. 13 (Claims App.) (emphases added).
REJECTIONS ON APPEAL
Claims 21, 22, and 25–29 are rejected under 35 U.S.C. § 103 as
unpatentable over Davies (US 3,437,147, issued Apr. 8, 1969) and Naedler
(US 2012/0181032 A1, published July 19, 2012). Final Act. 2–4.
The Answer enters two new grounds of rejection.3 Claims 21, 23,
and 24 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by
Nguyen ’0734 (US 5,908,073, issued June 1, 1999). Ans. 3–4.
Claims 25–29 are rejected under 35 U.S.C. § 103 as unpatentable over
Nguyen ’073 and Lafferty (US 2012/0285695 A1, published Nov. 15, 2012).
Ans. 4–6.

3 In response to the new grounds, Appellant elected to maintain the appeal
by filing a Reply Brief. See Ans. 9; Reply Br. 16–18; 37 C.F.R. § 41.39(b).
4 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.
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OPINION
A. Obviousness over Davies and Naedler (Claims 21, 22, and 25–29)
Appellant argues claims 21, 22, and 25–29 as a group in relation to
obviousness over Davies and Naedler, without separately arguing any one
claim in the group. See Appeal Br. 6–10. Accordingly, we select claim 21
to decide the appeal as to this rejection of these claims, with the other
grouped claims standing or falling with claim 21. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds the plugging element illustrated in Davies’
Figure 3 is a flow conveyed device comprising, as recited in claim 21, a
body (i.e., central body member 28) configured to engage and seal off an
opening in a subterranean well (i.e., perforations 17). Final Act. 2; see
Davies, 3:19–26, 3:46–53, 4:53–59. The Examiner finds Davies also
discloses a material (i.e., tentacles 29–35) extending outwardly from the
body, and formed as filaments. Final Act. 2 (citing Davies, 4:18–20,
4:60–62). The Examiner finds Davies further discloses removing several
flow conveyed devices from the well “to allow for recovery of the
previously injected treating fluids and fluid indigenous to the formation.”
Id. (citing Davies, 3:63–4:2). The Examiner finds Davies does not,
however, disclose tentacles 29–35 are “degradable,” as required by claim 21.
Id.
The Examiner finds Naedler “teaches balls used to seal a frac plug
seat that are capable of disintegrating, degrading or dissolving for the
purpose of eliminating the need for unnecessary extraction operations upon
completion of the fracturing process.” Final Act. 2–3 (citing Naedler ¶¶ 2,
4–5). Naedler’s “degradation mechanisms,” according to the Examiner,
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“include at least response to certain downhole fluids and temperatures.” Id.
at 3; see Naedler ¶¶ 17–19. The Examiner determines it would have been
obvious to create Davies’ tentacles 29–35 from a degradable material, as
taught by Naedler, “to eliminate the need for extracting [Davies’] balls from
the well subsequent to the treatment operation being conducted therein . . .
when the balls do not return to the surface and are blocking production of
fluids from the formation.” Id. at 3 (emphasis added).
Appellant argues Davies teaches away from forming tentacles 29–35
from a degradable material. Appeal Br. 7–8, 10. Appellant asserts Davies’
“plugging device . . . is specifically designed to be retrieved from a well
after a plugging operation,” “in order to examine the device and thereby
ascertain whether it did in fact seal off a perforation.” Id. at 7 (citing
Davies, 3:65–68); Reply Br. 7–8. Appellant further asserts: “Davies also
teaches that tentacles extending outwardly from an enlarged body of the
plugging device should be present while the device is being retrieved from
the well.” Appeal Br. 7 (emphasis by Appellant). In support, Appellant
cites Davies’ disclosures that “the presence of the tentacles during this
[retrieval] phase of operation is particularly important where, as is
preferred, the plugging elements are of a density greater than that of the
treating fluid,” and “[t]he plugging elements themselves are, of course, inert
with respect to the treating fluid.” Id. (emphases by Appellant) (quoting
Davies, 3:63–4:3, 5:75–6:2); Reply Br. 8–9. Appellant concludes modifying
Davies’s tentacles 29–35 to be made from a degradable material would
impermissibly preclude recovering the plugging elements from the well.
Appeal Br. 7–8, 10.
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Appellant also dismisses Naedler as “describ[ing] a very different
plugging device,” because “Naedler describes a spherical ball” having “a
body portion of the ball [that] is degradable.” Id. at 8 (emphasis by
Appellant) (citing Naedler, Figs. 5–7, ¶ 13). Appellant asserts “Naedler
does not describe any degradable material that extends outwardly from a
body of a flow conveyed plugging device,” such as tentacles 29–35 of
Davies’ plugging device. Id. (emphasis by Appellant). Thus, Appellant
concludes Davies and Naedler, whether taken individually or in
combination, do not lead to “a flow conveyed device for use in a well
[including] a body with degradable . . . filament material extending
outwardly from the body.” Id. at 10.
The Examiner answers that the combination of Davies and Naedler
leads to degradable filaments extending from a body, because Davies
discloses a flow conveyed device with tentacles 29–35 extending from
body 28, and Naedler teaches degradable frac balls. Ans. 7 (citing Naedler
¶¶ 17, 25). The Examiner determines Davies does not teach away from
making tentacles 29–35 degradable, because Davies merely indicates that
“[s]ubsequent to the treating procedure, it may be desirable to ascertain the
number of perforations actually sealed by the plugging elements” by
recovering plugging elements. Ans. 7–8 (emphasis by Examiner) (quoting
Davies, 3:63–4:3). In the Examiner’s view, this “suggest[s] the possibility
that it may not be desirable to ascertain the number of perforations” that
were sealed, so Davies in fact “teaches an alternative mechanism for the
removal of the plugging elements from the openings . . . may be desirable.”
Final Act. 5 (emphasis by Examiner); Ans. 8. Further according to the
Examiner, Naedler teaches that degradable plugging devices are
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“an improvement upon previously used plugging elements, such as those
disclosed by Davies, that may be extracted from a well.” Ans. 8 (emphasis
by Examiner). Nadler’s degradation of plugging elements is an
improvement over Davies’ extraction of plugging elements, in the
Examiner’s view, because it “would eliminate any unnecessary extractions
should the plugging devices of Davies not be retrieved by flowback and
thereby prevent any subsequent blocks to production from the reservoir.” Id.
In reply, Appellant asserts the Examiner errs in finding that Naedler
discloses a degradable frac ball. Reply Br. 13–14. According to Appellant,
Naedler instead discloses fillers that “elevate the pressure threshold the ball
can sustain,” and the “fillers do not dissolve in hydrocarbons” but rather
“become inconsequential silt in the wellbore fluid.” Id. (emphases by
Appellant) (citing Naedler ¶¶ 17, 24, 25). Appellant also contends the
Examiner errs in finding Davies’ retrieval of plugging elements is merely an
alternative method of unplugging well perforations, because retrieval is the
only unplugging method taught by Davies, and tentacles 29–35 are “always
beneficial” during retrieval because they “provide enhanced fluid drag
during the retrieval operation.” Id. at 14–15 (emphasis by Appellant) (citing
Davies, 3:72–75).
Appellant’s reply adds that “the rate of innovation in the art is fairly
limited, as evidenced by the fact that [Davies was] filed almost half a
century prior to the present application.” Id. at 12. This passage of time, in
Appellant’s view, is evidence that the claimed invention was not obvious.
Id. (citing Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013)).
We determine a preponderance of the evidence supports the
Examiner’s determination of obviousness. We are, first, not persuaded by
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Appellant’s argument that the age of the Davies reference is indicative of
non-obviousness. “[M]ere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir.
2016) (quoting In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)), overruled
on other grounds, Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1296 n.1
(Fed. Cir. 2017). “The relevant portion of Leo Pharmaceutical stands for
the proposition that the age of a reference can highlight the fact that no one
in the art understood the problem to be solved.” Nike, 812 F.3d at 1337–38
(emphasis added) (citing Leo Pharm., 726 F.3d at 1353–57). In this case,
there is no evidence that persons of ordinary skill in the art tried and failed to
solve any problem, or did not understand the problem to be solved.
Further, the Examiner has satisfied the burden to provide a rational
underpinning sufficient to support the legal conclusion of obviousness. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The evidence
establishes that, before Appellant’s claimed invention, there were at least
two different methods of providing plugging devices that would temporarily
seal one or more openings in a subterranean well, and then be unsealed from
the openings in a controlled manner.
In the first method, described in Davies, plugging elements 22
selectively plug some perforations 17 in well casing 14 when fluid 23 is
pressurized to perform a fracturing operation, to divert fluid 23 to the
unplugged perforations. Davies, Fig. 1, 1:49–50, 1:64–2:7, 2:63–70,
3:15–26. Then, when it is desired to re-open the sealed perforations 17, the
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fluid 23 pressure is decreased, which “results in disengagement” of the
plugging elements 22 from perforations 17. Id. at 2:4–7, 3:59–62.
In the second method, described in Naedler, ball 10 selectively seals
plug seat 12 when fluid 20 is pressurized to perform a fracturing operation,
so fluid 20 is supplied only to the zone above plug seat 12 via holes 28 in
well tube 16. Naedler ¶¶ 2, 3, 28. Following the well stimulation, plug
seat 12 is re-opened when hydrocarbons and heat disintegrate, dissolve, or
otherwise degrade ball 10, so that “[e]xtraction from the hole . . . is not
necessary upon completion of the well fracturing process.” Id. ¶¶ 2, 13, 17.
According to Naedler, it was also known to use “[d]issolvable” balls 40 to
plug individual perforations 42 in well casing 44 directly, during a well
fracturing operation, in a process similar to Davies’ process. Id. at Fig. 4,
¶¶ 5, 31.
In light of the foregoing disclosures in Davies and Naedler, we agree
with the Examiner’s conclusion that it would have been obvious to form
Davies’ tentacles 29–35 from a degradable material, “to eliminate the need
for extracting the balls from the well subsequent to the treatment operation,”
as is suggested by Naedler. Final Act. 3 (emphasis added); Ans. 7–9;5
Naedler ¶¶ 2, 4. We disagree with Appellant’s contention that Naedler does
not disclose balls 10 are degradable. We find that Naedler indicates balls 10
initially “create a seal” by being received in seat 12, but each ball 10 is
“capable of disintegrating, dissolving, delaminating or otherwise

5 In the Answer, the Examiner finds Naedler teaches that “degradable
plugging devices [are] an improvement upon previously used plugging
elements, such as those disclosed by Davies.” Ans. 8. We do not rely on
that specific finding in affirming the rejection.
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experiencing a significant degradation of its physical properties in the
presence of hydrocarbons and latent heat following well stimulation.”
Naedler, Fig. 1, ¶¶ 2, 13, 17–18, 28. In this way: “Extraction from the hole
or milling the ball is not necessary upon completion of the well fracturing
process.” Id. ¶ 2. Thus, Naedler discloses advantages obtained by
degrading plugging elements within a wellbore, even if in some
embodiments the degradation of balls 10 does not result in a complete
disintegration of its constituent components, because certain “fillers” remain
in the well as “inconsequential silt.” Id. ¶ 24.
We appreciate that Davies indicates the plugging elements may be
recovered after a fracturing operation, “to ascertain the number of
perforations actually sealed by the plugging elements” during the fracturing
operation. Davies, 3:63–75. We also appreciate that Davies indicates its
plugging elements may each include a temporary jacket to restrain the
element’s tentacles when the element is introduced initially in the well, and
then the jacket is dissolved in the fracturing fluid, wherein “[t]he plugging
elements themselves are, of course, inert with respect to” the fracturing
fluid. Id. at Fig. 4, 5:34–6:2 (emphasis added). However, we are not
persuaded by Appellant’s argument that these disclosures teach away from
modifying Davies’ tentacles 29–35 to be degradable.
In order to teach away, a reference must criticize, discredit, or
otherwise discourage the claimed solution. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Here, by contrast, Davies merely indicates “it may be
desirable” to recover the plugging elements. Davies, 3:63–75 (emphasis
added). That is, according to Davies, in some instances it may be beneficial
to recover the plugging elements, but in other instances such recovery may
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not be beneficial. Davies does not criticize, discredit, or otherwise
discourage degrading the plugging elements in the well bore, rather than
recovering them.
Even in the absence of a teaching away, general preferences as stated
in the prior art are still relevant to determining whether a skilled artisan
would be motivated to combine the prior art in the manner claimed. Polaris
Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1067–70 (Fed. Cir. 2018).
Thus, “a reference ‘must [be] considered for all it taught, disclosures that
diverged and taught away from the invention at hand as well as disclosures
that pointed towards and taught the invention at hand.’” Id. (quoting
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 296
(Fed. Cir. 1985)). In this case, weighing the evidence as a whole, we
determine a person of ordinary skill in the art would have been motivated to
make Davies’ tentacles 29–35 degradable, to achieve the labor-saving
benefit of eliminating the need to recover the plugging elements from the
well. See, e.g., Final Act. 2–3; Ans. 7–9; Naedler ¶¶ 2, 4; In re Urbanski,
809 F.3d 1237, 1243–44 (Fed. Cir. 2016) (persons of ordinary skill in the art
may be motivated to pursue desirable properties of one prior art reference,
even at the expense of foregoing a benefit taught by another prior art
reference).
For the foregoing reasons, we sustain the rejection of claims 21, 22,
and 25–29 as having been obvious over Davies and Naedler.
B. Anticipation by Nguyen ’073 (Claims 21, 23, and 24)
The Examiner finds Figures 1–2 of Nguyen ’073 illustrate a device
comprising a body (at end 14) with a material extending outwardly from the
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body and formed as a filament (i.e., fibers 12). Ans. 3. The Examiner finds
fibers 12 are degradable, as recited in claim 21, because fibers 12 may be
“natural organic fibers and synthetic organic fibers, and such fibers will
inherently degrade over time under at least the temperature and pressure
conditions of the well.” Id. at 3–4 (emphasis added) (citing Nguyen ’073,
3:66–4:2).
Appellant argues Nguyen ’073’s fibers 12 are not inherently
degradable within a subterranean well, for two reasons. First, Nguyen ’073
indicates fibers 12 are designed to remain in the well so they may flare
outwardly within the flow of production fluid up and out of the well, to catch
on fracture faces and proppant 20 and thereby retain proppant 20 within the
well. Reply Br. 18 (citing Nguyen ’073, 3:9–14, 4:45–53, Figs. 4–5).
Second, Naedler “specifically states that polyester and cotton fibers do not
dissolve in hydrocarbons,” so “it clearly is not inherent that natural organic
fibers and synthetic organic fibers degrade over time in temperature and
pressure conditions of a well.” Id. (emphasis by Appellant) (citing Naedler
¶ 24).
We determine the Examiner errs in finding Nguyen ’073’s fibers 12
are inherently degradable within a subterranean well. An inherent disclosure
may be found if it “is necessarily present” in the reference. In re
Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (quoting Verizon
Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010)
and Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir.
2003)). “[I]nherency . . . may not be established by probabilities or
possibilities.” Id. at 1380 (quoting Bettcher Indus., Inc. v. Bunzl USA, Inc.,
661 F.3d 629, 639 (Fed. Cir. 2011) and In re Oelrich, 666 F.2d 578, 581
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(CCPA 1981)). The fact that a certain characteristic may, but not
necessarily, be present in the prior art is not sufficient to establish the
inherency of that characteristic. Cont’l Can Co. USA, Inc. v. Monsanto Co.,
948 F.2d 1264, 1268–69 (Fed. Cir. 1991).
Here, we conclude Nguyen ’073’s disclosed materials — “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) — are not necessarily degradable within a subterranean well. For
example, Naedler discloses that materials such as “aramid, glass, carbon,
boron, polyester, cotton and ceramic fibers . . . do not dissolve in
hydrocarbons,” and instead persist as “silt in the wellbore fluid.” Naedler
¶ 24.
For the foregoing reasons, we do not sustain the rejection of claim 21
as anticipated by Nguyen ’073. The Examiner’s additional consideration of
claims 23 and 24 does not cure the foregoing deficiencies as to claim 21
(Ans. 4), so we likewise do not sustain the rejection as to those claims.
C. Obviousness over Nguyen ’073 and Lafferty (Claims 25–29)
The Examiner’s additional consideration of claims 25–29, and of
Lafferty, does not cure the foregoing deficiencies of Nguyen ’073 as to
claim 21. See Ans. 4–6. Therefore, for the reasons provided above, we do
not sustain the rejection of claims 25–29 as having been obvious over
Nguyen ’073 and Lafferty.
CONCLUSION
In summary, we sustain the rejection based on obviousness over
Davies and Naedler, but we do not sustain the rejections based on
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anticipation by or obviousness over Nguyen ’073, as summarized in this
table:
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed
21, 22, 25–29 103 Davies, Naedler 21, 22, 25–29
21, 23, 24 102(a)(1) Nguyen ’073 21, 23, 24
25–29 103 Nguyen ’073,
Lafferty
25–29
Overall
Outcome
21, 22, 25–29 23, 24
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART