THRU TUBING SOLUTIONS, INC.Download PDFPatent Trials and Appeals BoardMay 26, 202015615136 - (D) (P.T.A.B. May. 26, 2020) Copy Citation 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. 15/615,136 06/06/2017 Brock W. WATSON TTS-15-11P10US 1967 20558 7590 05/26/2020 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 05/26/2020 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 BROCK W. WATSON, GARY P. FUNKHOUSER, ROGER L. SCHULTZ, and ANDREW M. FERGUSON Appeal 2019-005788 Application 15/615,136 Technology Center 3600 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 4, 6, 9, 12–16, 20–23, 25, 28, 30, 32, 34, 35, 38, and 43–49. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the assignee of the present application, Thru Tubing Solutions, Inc. Appeal Br. 1. Appeal 2019-005788 Application 15/615,136 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a plugging device in a subterranean well. Claims 1, 16, and 34 are independent. Claim 34, reproduced below, is illustrative of the claimed subject matter: 34. A well system, comprising: a plugging device conveyed through a tubular string by fluid flow in the well, the plugging device comprising a body contained within an enclosure, wherein sliding contact is permitted between the body and the enclosure, wherein the body comprises a member having a dimension which is larger than a diameter of a passageway in the well, and wherein the enclosure is configured to prevent flow through gaps between the member and the passageway while the member is engaged with the passageway. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kendrick US 5,253,709 Oct. 19, 1993 Sullivan US 7,748,452 B2 July 6, 2010 Wald US 8,307,916 B1 Nov. 13, 2012 Naedler US 2012/0181032 A1 July 19, 2012 REJECTIONS I. Claims 34, 35, and 38 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Kendrick. II. Claims 34, 35, and 38 are rejected under 35 U.S.C. § 103 as unpatentable over Kendrick.2 2 The Examiner entered this rejection as a New Ground of Rejection on pages 4–5 of the Answer (mailed June 3, 2019). In response to the New Appeal 2019-005788 Application 15/615,136 3 III. Claims 34, 35, 38, and 45–48 are rejected under 35 U.S.C. § 102(a)(l) as being anticipated by Wald. IV. Claims 43 and 44 are rejected under 35 U.S.C. § 103 as unpatentable over Kendrick and Naedler. V. Claim 49 is rejected under 35 U.S.C. § 103 as unpatentable over Kendrick. VI. Claims 43 and 44 are rejected under 35 U.S.C. § 103 as unpatentable over Wald and Sullivan. VII. Claim 49 is rejected under 35 U.S.C. § 103 as unpatentable over Wald. VIII. Claims 1, 3, 4, 6, 9, 15, 16, 20–23, 25, and 28 are rejected under 35 U.S.C. § 103 as unpatentable over Kendrick and Naedler. IX. Claims 1, 3, 4, 6, 9, 12–16, 20–23, 25, 28, 30, and 32 are rejected under 35 U.S.C. § 103 as unpatentable over Wald and Sullivan. OPINION Rejections I and II – Anticipation/Obviousness – Kendrick In rejecting independent claim 34 as anticipated by Kendrick, the Examiner finds, inter alia, that Kendrick’s device has a body 44 that “comprises a member (i.e., core 44 as a whole) having a dimension which is larger than a diameter of a passageway in the well.” Final Act. 2 (citing Kendrick, Fig. 3). Appellant argues that Kendrick’s core portion 44 is the internal volume of outer shell 42 and is filled with particulate matter 46, none of Grounds, Appellant elected to maintain the appeal by filing a Reply Brief. Reply Br. 39–40; 37 C.F.R. § 41.39(b). Appeal 2019-005788 Application 15/615,136 4 which has a diameter larger than Kendrick’s perforation 18. Appeal Br. 9. Appellant asserts that core portion 44 is not a body and does not meet the claimed dimension. Id. at 13. The Examiner responds that “[t]he body of particulate matter in Kendrick, as a collective group, i.e., member, is considered to have a dimension which is larger than a diameter of a passageway in the well.” Ans. 9. The Examiner notes, moreover, that Kendrick discloses that a temporary binder may bind the particles together, which results in a singular member. Ans. 9 (citing Kendrick 5:50–55). The Examiner also provides a new ground of rejection in the Answer and states that if Kendrick’s particulates are not a member, it would it would have been obvious “to try to size” individual particulates “to have a dimension which is larger than a diameter of a passageway in the well in order to create a bridge across perforation 18.” Ans. 5. Appellant replies that the Specification describing the body as a member is insufficient to support the Examiner’s “collective group” interpretation. Reply Br. 14. (citing Figs. 17 and 31–37 as examples). In support of its argument, Appellant notes that in contrast to Kendrick’s multiple particulates, each of the disclosed examples depicts “a single enlarged member.” Id. Appellant argues as to Kendrick’s “temporary binder” example, that the binder is used before the device is placed in the well hole, and is in a liquid stage downhole and just prior to engaging the passageway. Reply Br. 14–15 (citing Kendrick 5:54–59). For the Examiner’s new ground of rejection in the Answer, Appellant argues that the Examiner’s “obvious to try” rationale is not supported by facts. Reply Br. 39. Appellant contends, moreover, that because Kendrick Appeal 2019-005788 Application 15/615,136 5 intentionally uses small particles at least to assume the shape of the deformable outer shell, to enhance the mobility of the particles, and to flow into the perforation, a person skilled in the art would be motivated to not enlarge the size of the particles so that they are larger than the perforation 18. Reply Br. 40 (citing Kendrick 2:52–57, 5:15–19, 5:32–34, 6:42–46). Appellant has the better position. The Specification discloses that plugging device 60 comprises “a central body 64 or member (such as a ball).” Spec. 31:15–16. As Appellant correctly notes, each of the disclosed enclosed embodiments has a single body 64. Spec., Figs. 17, 31–37; see also Reply Br. 14. The Examiner does not point to any portion of the Specification that uses the term “body,” or “member” to mean more than one. Nor does the Examiner provide other evidence that the term “body,” or “member” connotes a “collective group.” Consistent with the Specification, we construe the phrase “the body comprises a member” to mean a single member. “The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the Specification . . . is an interpretation that corresponds with what and how the inventor describes his invention in the Specification, i.e., an interpretation that is ‘consistent with the specification.”’ In re Smith International, Inc., 871 F.3d 1375, 1382–1383 (Fed. Cir. 2017). Based on this construction, the Examiner’s interpretation that a “collective group” is a body that comprises a member, does not comport with the broadest reasonable interpretation consistent with the Specification. As to Kendrick’s temporary binder, we agree with Appellant that the “singular member” formed by the temporary binder is not “engaged with the passageway,” as required by claim 34 because Kendrick discloses “a Appeal 2019-005788 Application 15/615,136 6 temporary binder material such as a wax or similar material to bind the beads or particles together while the cover is formed about the core. The temporary binder material preferably has a temperature lower than the operating temperatures downhole.” Kendrick 5:51–56. The downhole temperatures cause the binder material to form a liquid so that “particles 46 making up the core of the ball sealer 22 will migrate or flow with the changing shape of the outer rubber casing 42 as it spreads over and into the perforation under the influence of hydraulic forces acting on the ball 22.” Kendrick 5:57–58, 6:42–46; see also Reply Br. 40. The Examiner does not point to any portion of Kendrick that discloses that the particulates, including the temporary binder as a singular member, engage the passageway. Thus, we do not sustain the Examiner’s rejection on this basis. For the Examiner’s new ground of rejection, the Examiner finds that it would have been obvious “to try to size individual particulates of the body . . . to have a dimension which is larger than a diameter of a passageway in the well in order to create a bridge across perforation 18.” Ans. 5 (citing Kendrick 8:35–45). We agree with Appellant that creating a bridge with particulates having a larger diameter than the diameter of the passageway is not supported by facts, for several reasons. See Reply Br. 39–40. First, Kendrick discloses that “a spherical ball may not be effective to bridge across the perforation opening which may have been formed as an irregular opening.” Kendrick 2:15–18. Thus, Kendrick states why a large spherical ball, as the Examiner suggests, should not be used. Second, Kendrick discloses that the particulate matter causes “the impermeable outer shell to bridge over the perforation opening when the fluid flowing into the casing perforation forces the ball sealer against and somewhat into the Appeal 2019-005788 Application 15/615,136 7 opening.” Kendrick 2:59–62. Thus, the outer shell creates the bridge because the particulates are small enough to change the shape of the outer shell. Third, Kendrick balances the degree of mobility, where mobility increases the finer the bead size, with the ability to bridge, where very fine particles tend not to bridge. Kendrick 5:18–25. Specifically, Kendrick discloses that for particulate matter within a shell enclosure, “the particulate material will tend to consolidate into a bridge more easily than in loose condition and thus could be somewhat smaller in size than the rule of thumb, one-sixth perforation diameter,” and that for a 12 mm perforation, a “size range of 1.5 to 3 mm . . . would be an appropriate size for the particulate matter 46.” Kendrick 5:40–49. Thus, Kendrick suggests that because a cover is used, a smaller than rule of thumb one-sixth perforation diameter can be used, and teaches creating a bridge using particulates that are between one-fourth and less than one-sixth of the perforation diameter. By contrast, the Examiner does not point to any disclosure in Kendrick that would lead one of ordinary skill in the art to try creating a bridge with particulates having a diameter larger than the perforation diameter. Therefore, we agree with Appellant that “the obvious to try rationale asserted in the Examiner's Action is not supported by facts sufficient to make out a prima facie case of obviousness.” Reply Br. 39. For these reasons, we do not sustain the Examiner’s rejection of claims 34, 35, and 38 as anticipated by Kendrick. We also do not sustain the Examiner’s new ground of rejection of claims 34, 35, and 38, as obvious over Kendrick. Appeal 2019-005788 Application 15/615,136 8 Rejection III – Anticipation – Wald In rejecting independent claim 34 as anticipated by Wald, the Examiner finds, inter alia, that Wald’s enclosure 46A “is configured to prevent flow through gaps between the member and the passageway while the member is engaged with the passageway.” Final Act. 3 (citing Wald, 4:16–27). Appellant argues that Wald is not anticipatory because sack 46a is porous and thus, “the sack 46A does not itself block fluid flow.” Appeal Br. 11 (citing Wald 4:7–10). The Examiner responds that Wald’s pods 34 swell and become lodged in voids 40 thus obstructing flow. Ans. 10. According to the Examiner, because “Wald uses swelling materials such as superabsorbents which absorb water into spaces to form a gel and lock up any liquid. . . . [T]he superabsorbent material therein will absorb any liquid and become lodged in the passageway to prevent flow therethrough, and, as such, provides for the invention as claimed.” Id. Appellant replies that Wald’s enclosure “is not configured to prevent flow,” because Wald’s “sack 46A is intentionally designed to be porous, in order to promote fluid contact with the granules 44A therein.” Reply Br. 17. Appellant asserts, Wald’s disclosure of superabsorbent crystals within sack 46A “is not a disclosure by Wald of an enclosure configured to prevent flow through gaps between the member and the passageway while the member is engaged with the passageway.” Id. According to Appellant, “the qualities of the superabsorbent material in the granules 44A has nothing whatsoever to do with the qualities of the sack 46A containing the granules.” Reply Br. 18. Appeal 2019-005788 Application 15/615,136 9 We agree with Appellant. The Specification discloses that “enclosure 304 may be configured (sized, shaped, etc.) so that it effectively fills and prevents fluid flow through any gaps between the plugging device 60 and the passageway.” Spec. 38:24–26. Thus, the enclosure fills gaps between the plugging device and the passageway in which the plugging device is lodged to prevent fluid flow through the gaps. Wald discloses that “[t]he material selected for the sack 46A should be porous, that is, it should permit the water or well fluids in the formation to pass through and surround the granules 44A contained therein.” Wald 4:7–10. Wald further discloses that “[a]s the pods 34 move out into the voids 40, they gradually swell as fluid is absorbed. . . . The swelling and swollen pods 34 eventually become lodged in the voids 40 and obstruct the flow of water or well liquids from the wellbore 16 out into the formation 18.” Wald 5:3–10 (emphasis added). Wald discloses that “a standing time of about 5 to 6 hours will be sufficient” for swelling to be completed. Wald 5:10–12. Thus, Wald discloses that water flows through the porous sack 46A until the granules 44A within the sack sufficiently swell to block further flow. Although we appreciate that the combination of Wald’s sack and granules will eventually block the flow through the passageway, the claims require that the enclosure prevents flow through gaps between the member and the passageway while the member is engaged with the passageway. Given that the sack of Wald is porous, the Examiner does not explain sufficiently how the sack of Wald will prevent flow at any time. For these reasons, we do not sustain the Examiner’s rejection of claim 34, and claims 35, 38, and 45–48 depending therefrom, as anticipated by Wald. Appeal 2019-005788 Application 15/615,136 10 Rejections IV and V – Kendrick and Naedler Claims 43, 44, and 49, rejected in Rejections IV and V, depend from independent claim 34, which is addressed in our discussion of Rejection I. The Examiner does not use the teachings of Naedler, or the additional teachings of Kendrick in any manner that would remedy the deficiency discussed above regarding Rejection I. Accordingly, for the same reasons, we do not sustain the rejection of claims 43, 44, and 49 pursuant to Rejections IV and V. Rejections VI and VII – Wald and Sullivan Claims 43, 44, and 49, rejected in Rejections VI and VII, depend from independent claim 34, which is addressed in our discussion of Rejection III. The Examiner does not use the teachings of Sullivan, or the additional teachings of Wald in any manner that would remedy the deficiency discussed above regarding Rejection III. Accordingly, for the same reasons, we do not sustain the rejection of claims 43, 44, and 49 pursuant to Rejections VI and VII. Rejection VIII – Kendrick and Naedler Claim 1 recites, in part, “a body, in which the body comprises a member having a geometry which is configured to engage and substantially block flow through a passageway in the well.” Appeal Br. 34 (Claims App.). Independent claim 16 recites, in part, “the body comprises a member having a geometry which is configured to engage and substantially block flow through the passageway.” Appeal Br. 35 (Claims App.). Consistent with the above construction of the phrase “the body comprises a member” to Appeal 2019-005788 Application 15/615,136 11 mean a single member, claims 1 and 16 require a body having a member with a geometry configured to engage and substantially block flow through a passageway. The Examiner applies the same unreasonably broad claim interpretation of the phrase “body having a member” as discussed above in Rejection I for claim 34, in the rejection of independent claims 1 and 16 as unpatentable over Kendrick and Naedler. See Final Act. 7, 9. The Examiner does not use the teachings of Naedler in any manner that would remedy the deficiency discussed above regarding Rejection I. Therefore, for the same reasons, we do not sustain the rejection of claims 1 and 16, and associated dependent claims 3, 4, 6, 9, 15, 20–23, 25, and 28, as unpatentable over Kendrick and Naedler. Rejection IX – Wald and Sullivan Claim 1 recites, in part, “the enclosure is configured to prevent flow through gaps between the member and the passageway while the member is engaged with the passageway.” Appeal Br. 34 (Claims App.). Independent claim 16 recites, in part, “the enclosure preventing flow through gaps between the member and the passageway.” Appeal Br. 36 (Claims App.). The Examiner applies the same unreasonably broad claim interpretation of the phrase “enclosure preventing flow” as discussed above in Rejection II for claim 34, in the rejection of independent claims 1 and 16 as unpatentable over Wald and Sullivan. See Final Act. 11, 14. The Examiner does not use the teachings of Sullivan in any manner that would remedy the deficiency discussed above regarding Rejection II. Therefore, for the same reasons, we do not sustain the rejection of claims 1 and 16, and Appeal 2019-005788 Application 15/615,136 12 associated dependent claims 3, 4, 6, 9, 12–15, 20–23, 25, 28, 30, and 32, as unpatentable over Wald and Sullivan. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 34, 35, 38 102(a)(1) Kendrick 34, 35, 38 34, 35, 38 103 Kendrick 34, 35, 38 34, 35, 38, 45–48 102(a)(1) Wald 34, 35, 38, 45–48 43, 44 103 Kendrick, Naedler 43, 44 49 103 Kendrick 49 43, 44 103 Wald, Sullivan 43, 44 49 103 Wald 49 1, 3, 4, 6, 9, 15, 16, 20–23, 25, 28 103 Kendrick, Naedler 1, 3, 4, 6, 9, 15, 16, 20– 23, 25, 28 1, 3, 4, 6 9, 12–16, 20–23, 25, 28, 30, 32 103 Wald, Sullivan 1, 3, 4, 6 9, 12–16, 20– 23, 25, 28, 30, 32 Overall Outcome: 1, 3, 4, 6, 9, 12–16, 20– 23, 25, 28, 30, 32, 34, 35, 38, 43–49 REVERSED Copy with citationCopy as parenthetical citation