WELLTEC A/S

Patent Trials and Appeals Board

May 20, 2021

2020006099 (P.T.A.B. May. 20, 2021)

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.
15/182,950 06/15/2016 Paul HAZEL PTB-5544-148 1509
23117 7590 05/20/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
GRAY, GEORGE STERLING
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
05/20/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL HAZEL
____________

Appeal 2020-006099
Application 15/182,9501
Technology Center 3600
____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–3, 5, 6, 8–19, and 21. We have
jurisdiction under 35 U.S.C. § 6(b).
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 the real party in interest as
Welltec A/S. (Appeal Br. 3.)
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Application 15/182,950

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CLAIMED SUBJECT MATTER
Appellant’s invention “relates to a redressing method for arranging an
inner production casing within an existing production casing in order to re-
establish production of hydrocarbon-containing fluid in a malfunctioning
well.” (Spec. 1, ll. 4–6.)
Claims 1, 15, and 21 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A redressing method for arranging an inner production
casing within an existing production casing in order to re-
establish production of hydrocarbon-containing fluid in a well,
the existing production casing having a first inner diameter and
being arranged in a borehole, the redressing method comprising:
- determining a first inflow section of the existing
production casing opposite a first production zone, the first
production zone being isolated from a second production zone,
- providing the inner production casing, the inner
production casing having an inner diameter which is
substantially the same along an extension of the inner production
casing, the inner production casing comprising a first annular
barrier and a second annular barrier having a distance between
them, each annular barrier comprising:
- a tubular metal part for mounting as part of the
inner production casing,
- an expandable metal sleeve surrounding the
tubular metal part and having an inner face facing the
tubular metal part and an outer face facing an inner wall of
the existing production casing, each end of the expandable
metal sleeve being connected with the tubular metal part,
and
- an annular space between the inner face of the
expandable metal sleeve and the tubular metal part,
the inner production casing having an outer unexpanded
diameter which is smaller than the first inner diameter of the
existing production casing,
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- redressing the existing production casing by introducing
the inner production casing into the existing production casing,
- arranging the first annular barrier on one side of the first
inflow section and the second annular barrier on the other side of
the inflow section,
- encapsulating the first inflow section of the existing
production casing by expanding the expandable metal sleeves of
the first annular barrier and the second annular barrier, thereby
isolating the first inflow section, wherein the expanding of the
metal sleeves is achieved by pressurizing at least part of the
entire inner production casing from a top of the well, thereby
expanding the sleeves substantially simultaneously,
- anchoring the inner production casing in the well,
- after the metal sleeves have been expanded, providing
perforations in a first inner inflow section in the inner production
casing opposite the first inflow section of the existing production
casing, and
- initiating production of hydrocarbon-containing fluid
through the inner production casing from the first production
zone.

REJECTION2
Claims 1–3, 5, 6, 8–19, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Tolman (US 2015/0315890 A1, pub. Nov. 5, 2015),
East (US 2008/0156496 A1, pub. July 3, 2008), and Maly (US 4,192,375,
iss. Mar. 11, 1980).

2 The rejection of claims 1–3, 5, 6, 8–19, and 21 under 35 U.S.C. § 112(b) as
being indefinite was withdrawn. (See Answer 41 (We treat the repetition of
the statement of withdrawal of “Ground II (Brief, Page 13)” (emphasis
omitted) as a typographical error, and that the repeated statement should
have read “Ground III (Brief, Page 14).”).) That this was merely a
typographical error is further supported by the lack of reference to a § 112(b)
rejection in the Answer.).)
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ANALYSIS
Claims 1–3, 5, 6, and 8–19
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at 418
(brackets in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
With regard to the scope and content of the prior art, Tolman discloses
“systems and methods for re-completing a well, and more particularly . . .
systems and methods that include re-lining a casing string that includes a
plurality of existing perforations prior to re-completing the well.” (Tolman
¶ 2.)
The Examiner finds that Tolman “discloses that flow control
devices/annular barriers are used to generate the flow restriction.” (Final
Action 9.) The Examiner finds that “Tolman’s Fig. 4 discloses flow control
devices/annular barriers 420 on both sides of the target zone, which when
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the target is a previously stimulated zone 64 [shown in Figure 1], would
show positioning as required in [claim 1] on either side of original casing
perforations/first inflow section.” (Id.) The Examiner acknowledges that
Tolman does not explicitly disclose arranging first and second annular
barriers of the same type of either side of an inflow section. (Id. at 10.) But
the Examiner finds that East discloses expandable annular barriers of the
same type positioned on either side of a zone. (Id.) The Examiner thus
determines that it would have been obvious to implement the Tolman
apparatus and methods by arranging a first annular barrier on one side of an
inflow section and a second annular barrier on the other side
thereby isolating the first inflow section, as supported broadly by
Tolman, the use of the same type of barriers being disclosed
specifically by East. This would have achieved the predictable
result that the operator would have the re-completion completely
isolated from fluids on the other side of each [of] the annular
barriers.”

(Id. at 10–11.)
Appellant argues that “the flow control device 420 of Tolman does
not encapsulate an inflow section.” (Appeal Br. 16.) Specifically, Appellant
argues that “Tolman makes clear throughout the specification that flow
restriction can be accomplished with only a single flow control device 420.”
(Id.) Moreover, Appellant argues, “the Examiner cannot establish that
encapsulation is either explicitly or inherently disclosed in Tolman.” (Reply
Br. 3.)
Figure 4 of Tolman is reproduced below.
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Figure 4 shows “examples of a portion of a well that includes an annular
space between a re-completion liner and a casing string that includes a
discrete flow control device according to [Tolman’s] disclosure.” (Tolman
¶ 13.) Figure 4 shows multiple locations of flow control material 400 and
flow control devices 420.
Figure 1 shows the environment into which Tolman’s device may be
placed and identifies the production or stimulated zones 64 in the well.
Figure 1 is reproduced below.

Figure 1 shows “examples of a well that may be re-completed using the
systems and methods according to [Tolman’s] disclosure.” (Id. ¶ 10.)
Figure 1 shows two stimulated zones 64. With regard to zone 64 on the left,
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Figure 1 shows flow control device 420 positioned on one side of the zone,
and flow control material 400 positioned on the other side of the zone.
Tolman discloses multiple examples of use of the invention. For example,
Tolman describes “[a]s an illustrative, non-exclusive example, the annular
space [between the existing casing string and the re-completion liner] may
include one or more flow control materials 400 and/or one or more flow
control devices 420.” (Id. ¶ 32.)
With regard to fluid flow, Figure 2 shows total flow FT, leakage flow
FL, and stimulation flow FS. Figure 2 is reproduced below.

Figure 2 shows “examples of a portion of a well that includes an annular
space between a re-completion liner and a casing string according to
[Tolman’s] disclosure.” (Id. ¶ 11.) Tolman discloses that in some
circumstances, fluid 84 may experience leakage flow (FL) into the annular
space. (Id. ¶ 55.) However,
the presence of flow control material 400 and/or flow control
device 420 within annular space 150 may restrict fluid
communication between liner perforations 210 and existing
perforations 100, thereby decreasing leakage flow FL and
providing for supply of a greater proportion of total flow FT to
subterranean formation 60 as stimulation flow FS during
stimulation of the subterranean formation. As an illustrative,
non-exclusive example and when flow control material 400
and/or flow control device 420 extends across less than the entire
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annular space (as indicated at 440 and 444) and/or includes a
porous structure, the annular space may provide for a finite, or
controlled, leakage flow FL of fluid 84 therein during stimulation
of subterranean formation 60. Alternatively, and when flow
control material 400 and/or flow control device 420 extends
across the entire annular space (as indicated at 448), the leakage
flow may be (at least substantially) blocked thereby.

(Id. (emphasis added).)
Thus, Tolman discloses the use of a flow control material and/or flow
control device to “(at least substantially) block[]” flow in the annular space,
and that a stated purpose for this blocking is to prevent fluid communication
between liner perforations 210 and existing perforations 100. (See id.)
Figure 2 shows leakage flow FL (in the annular space) in two directions. To
achieve the stated purpose of blocking this fluid communication/leakage
flow, Figure 4 shows control material 400 and/or flow control device 420
located between liner perforations 210 and existing perforations 100 to the
left of the liner perforations, and control material 400 and/or flow control
device 420 located between liner perforations 210 and existing perforations
100 to the right of the liner perforations. Therefore, we agree with the
Examiner that Figure 4 shows liner perforations 210 encapsulated/isolated
by the annular blocking devices. (See Answer 25.)
In view of the above, we do not find persuasive Appellant’s
arguments that Tolman does not teach encapsulation and that Tolman
teaches away from encapsulation.
However, Appellant’s argument is not to encapsulation in the abstract,
but specifically that “the flow control device 420 of Tolman does not
encapsulate an inflow section.” (Appeal Br. 16 (emphasis added).)
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Claim 1 recites “determining a first inflow section of the existing
production casing opposite a first production zone,” and “after the metal
sleeves [of the annular barriers] have been expanded, providing perforations
in a first inner inflow section in the inner production casing opposite the first
inflow section of the existing production casing.”
In other words, claim 1 recites encapsulating an inflow section in the
existing production casing and providing perforations to the newly provided
inner production casing opposite the inflow section already present in the
existing production casing. Claim 1 is silent on any new perforations to the
existing production casing. Figure 4 of Tolman shows encapsulation of the
re-completion perforations, leaving the perforations in the existing casing
outside of the encapsulated zone. Figure 1 of Tolman, however, shows flow
control device 420 and flow control material 400 on either side of existing
perforation portions 100, i.e., encapsulating a first inflow section. But
Figure 1 shows the liner perforations 210 outside of the encapsulated
section. In short, neither Figure 1 nor Figure 4 shows both an encapsulated
inflow section in an existing production casing and an inflow section in an
inner production casing opposite the inflow section of the existing casing.
The Examiner found that Tolman
did not explicitly show two flow control devices/annular barriers,
of the same type, wherein each had a tubular part for mounting
as part of the inner production casing/liner 200. . . . In the
interest of compact prosecution, the examiner chose to use East
to demonstrate that a production zone can be isolated by two
expandable packers/annular barriers 220,320,420 of the same
type, in circumstances where perforations are made
simultaneously through an inner production casing/liner and the
existing production casing. This perforation technique is the gist
of both the current application and Tolman.

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(Answer 27 (second emphasis added).) The Examiner emphasized “that the
secondary reference, East, was included only because Fig. 4 of the primary
reference, Tolman, did not explicitly show two flow control devices/annular
barriers, of the same type, wherein each had a tubular part for mounting as
part of the inner production casing/liner 200.” (Final Action 2.)
In view of the above, it is clear that the Examiner relied on Tolman,
not East, to teach encapsulating an inflow section of an existing production
casing. It is also clear that it is the Examiner’s understanding that both the
invention of claim 1 and the disclosure of Tolman relate to “circumstances
where perforations are made simultaneously through an inner production
casing/liner and the existing production casing.” (Answer 27.) But, as noted
above, claim 1 is silent on new perforations to the existing production
casing.
In sum, the relied on portions of Tolman do not disclose encapsulating
an inflow section and “providing perforations in a first inner inflow section
in the inner production casing opposite the first inflow section of the existing
production casing,” as recited in claim 1. The Examiner does not rely on
East or Maly to cure this deficiency. Nor does the Examiner provide
articulated reasoning as to why it would have been obvious, in view of the
cited art, to modify Tolman to encapsulate a first inflow section of the
existing production casing, and perforate a newly provided inner production
casing opposite the first inflow section of the existing production casing.
Therefore, we will reverse the rejection of claim 1. Independent claim 15
contains similar language. Therefore, we will also reverse the rejection of
independent claim 15 and dependent claims 2, 3, 5, 6, 8–14, and 16–19.

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Claim 21
Claim 21 recites (emphasis added):
21. A redressing method for arranging an inner production
casing within an existing production casing in order to re-
establish production of hydrocarbon-containing fluid in a well,
the existing production casing having a first inner diameter and
being arranged in a borehole, the redressing method comprising:
- determining a first inflow section of the existing
production casing opposite a first production zone, the first
production zone being isolated from a second production zone,
- providing the inner production casing, the inner
production casing having an inner diameter which is
substantially the same along an extension of the inner production
casing, the inner production casing comprising a first annular
barrier and a second annular barrier having a distance between
them, each annular barrier comprising:
- a tubular metal part for mounting as part of the
inner production casing,
- an expandable metal sleeve surrounding the
tubular metal part and having an inner face facing the
tubular metal part and an outer face facing an inner wall of
the existing production casing, each end of the expandable
metal sleeve being connected with the tubular metal part,
and
- an annular space between the inner face of the
expandable metal sleeve and the tubular metal part,
the inner production casing having an outer unexpanded
diameter which is smaller than the first inner diameter of the
existing production casing,
- redressing the existing production casing by introducing
the inner production casing into the existing production casing,
- arranging the first annular barrier on one side of the first
inflow section and the second annular barrier on the other side of
the inflow section,
- encapsulating the first inflow section of the existing
production casing by expanding the expandable metal sleeves of
the first annular barrier and the second annular barrier, thereby
isolating the first inflow section, wherein the expanding of the
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metal sleeves is achieved by pressurizing at least part of the
entire inner production casing from a top of the well, thereby
expanding the sleeves substantially simultaneously,
- anchoring the inner production casing in the well,
- after expanding the sleeves, providing perforations to
form a first inner inflow section in the inner production casing
opposite the second zone, and
- initiating production of hydrocarbon-containing fluid
through the second production zone.

As with claim 1, Appellant argues that Tolman does not encapsulate a
first inflow section. (Appeal Br. 31–33.) However, for the reasons
discussed above, we do not find this argument persuasive.
Unlike claim 1, claim 21 does not recite encapsulating an inflow
section in an existing production casing and an inflow section in an inner
production casing opposite the inflow section of the existing casing. Rather,
claim 21 recites encapsulating a first inflow section in an existing production
casing (where the first inflow section is “opposite a first production zone, the
first production zone being isolated from a second production zone”) and
forming an inflow section in the inner production casing opposite the second
production zone.
As discussed above, Figure 1 of Tolman shows flow control
device 420 and flow control material 400 on either side of existing
perforation portions 100, i.e., encapsulating a first inflow section, and
Figure 1 shows the liner perforations 210 outside of the encapsulated
section. Moreover, Appellant does not persuasively argue that the Examiner
erred in finding “Tolman discloses that the liner perforations/inner inflow
section will be . . . opposite the second zone.” (Final Action 24 (emphasis
omitted).)
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In arguing that it would not have been obvious to modify Tolman in
view of East, Appellant argues that “[t]he Examiner admits that Tolman
does not explicitly disclose encapsulating the first inflow section of the
existing production casing, and relies on East with respect to this limitation.”
(Appeal Br. 36.) We do not find this argument persuasive. As discussed
above, the Examiner does not admit that Tolman fails to disclose
encapsulating a first inflow section. Nor does the Examiner rely on East as
disclosing encapsulating a first inflow section. Rather, the Examiner relies
on East “only because Fig. 4 of the primary reference, Tolman, did not
explicitly show two flow control devices/annular barriers, of the same type,
wherein each had a tubular part for mounting as part of the inner production
casing/liner 200.” (Final Action 2.)
Nor do we find persuasive Appellant’s argument that “a person of
ordinary skill in the art would not be motivated to use swellable packers 220
[of East] when redressing.” (Appeal Br. 37.) The Examiner does not
propose modifying Tolman to use swellable packers. Rather, and as
discussed above, the Examiner relies on East only to show use of two flow
control devices/annular barriers of the same type. (See Final Action 2.)
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21.

CONCLUSION
The Examiner’s rejection of claims 1–3, 5, 6, and 8–19 under
35 U.S.C. § 103 is reversed.
The Examiner’s rejection of claim 21 under 35 U.S.C. § 103 is
affirmed.
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Specifically:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6,
8–19, 21
103 Tolman, East, Maly 21 1–3, 5, 6,
8–19

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