THRU TUBING SOLUTIONS, INC.

Patent Trials and Appeals Board

May 26, 2020

2019005788 (P.T.A.B. May. 26, 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.
15/615,136 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.
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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
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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).
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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
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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
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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
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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.

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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.
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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.
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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
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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
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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