Ex Parte Chalker et alDownload PDFPatent Trial and Appeal BoardMar 23, 201613303477 (P.T.A.B. Mar. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/303,477 49431 7590 Locke Lord LLP P.O. Box 55874 Boston, MA 02205 FILING DATE FIRST NAMED INVENTOR 11/23/2011 Christopher J. CHALKER 03/25/2016 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2006-IP-021812 Ul Dl US 2990 EXAMINER HARCOURT, BRAD ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 03/25/2016 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): patent@lockelord.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER J. CHALKER and KRISTIAN SOLHAUG Appeal2013-008415 Application 13/303,477 1 Technology Center 3600 Before HUBERT C. LORIN, BART A. GERSTENBLITH, and KEVIN W. CHERRY, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christopher J. Chalker and Kristian Solhaug ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 16- 30. We have jurisdiction under 35 U.S.C. § 6(b). Claimed Subject Matter Claim 16, the sole independent claim on appeal, is representative of the claimed subject matter and is reproduced below. 1 Appellants identify Halliburton Energy Services, Inc. as the real party in interest. Appeal Br. 3. 1 Appeal2013-008415 Application 13/303,477 16. A method of constructing a packer assembly having a desired differential pressure sealing capability, the method comprising the steps of: providing a base pipe; providing multiple annular seal elements which swell in response to contact with a fluid and thereby radially expand into contact with a well surface, each seal element having a predetermined differential pressure sealing capability after swelling which is less than the desired differential pressure sealing capability of the packer assembly; and after the desired differential pressure sealing capability of the packer assembly is determined, installing a selected number of the seal elements on the base pipe, so that the combined predetermined differential pressure sealing capabilities of the installed seal elements after swelling is at least as great as the desired differential pressure sealing capability of the packer assembly. Appeal Br. 18-20, Claims App. Rejections Appellants seek review of the following rejections: I. Claims 16-25 and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Amancharla (US 4,234,197, iss. Nov. 18, 1980) and Kollsman (US 3,385,367, iss. May 28, 1968); II. Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Amancharla, Kollsman, and Hendrickson (US 5,433,269, iss. July 18, 1995); and III. Claims 29 and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Amancharla, Kollsman, and Pitts (US 6,318, 729 B 1, iss. Nov. 20, 2001). SUMMARY OF DECISION We REVERSE. 2 Appeal2013-008415 Application 13/303,477 ANALYSIS Rejection I - Obviousness of Claims 16-25 and 28 over Amancharla and Kollsman The Examiner concludes that the combination of the teachings of Amancharla and Kollsman would have rendered the subject matter of claims 16-25 and 28 obvious to one of ordinary skill in the art as of the time of the invention. Final Act. (mailed Sept. 10, 2012) at 3-5. With respect to claim 16, and as most relevant to our discussion here, the Examiner finds that Amancharla discloses many of the elements of the claim, but "fails to disclose sealing elements that swell in response to contact with a fluid and thereby radially expand into contact with a well surface." Id. at 4. The Examiner finds that Kollsman discloses "sealing elements 17 that expand into contact with a well surface 20 ... upon exposure to oil or water." Id. The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of invention "to use a seal element that expands into contact with a well surface after exposure to oil or water so that the seal elements expand and increase the sealing capability of the packer." Id. Appellants challenge the Examiner's finding that one of ordinary skill in the art would have been prompted to substitute the sealing elements of Kollsman in place of those of Amancharla. Appeal Br. 10-13. Appellants raise two primary arguments. First, Appellants assert that the Examiner's proposed substitution would defeat the purpose of Amancharla, which seeks to reduce seal seizure and sticking. Id. at 10. Appellants contend that by using Kollsman's seal element, the incidents of seizure and sticking would increase because of a greater compression force between the packer and well conduit. Id. Second, Appellants argue that Amancharla's stated preference 3 Appeal2013-008415 Application 13/303,477 to use certain polymers to reduce seizure and sticking teach away from using a composition for a sealing element such as that disclosed by Kollsman. In response to Appellants' argument, the Examiner makes additional factual findings as follows: Amancharla already discloses swelling seal elements (col. 3, lines 5 8---60 of Amancharla) that swell in response to thermal changes in the wellbore. The substitution of seal elements from Kollsman that swell in response to contact with wellbore chemicals (col. 4, lines 70-75 of Kollsman) would not fundamentally alter the apparatus of Amancharla as it merely changes the mechanism of swelling. Ultimately, it is still a packer with a seal element that swells after being introduced to the wellbore. The substitution of known equivalents (seal elements swellable from thermal or chemical exposure) to accomplish the same task (swelling into sealing contact with a well surface) would have been obvious to a person having ordinary skill in the art [see MPEP 2144.06(II)]. Ans. 2 (brackets in original). The Examiner continues: Additionally, if Amancharla explicitly includes swellable seal elements that swell from a certain swelling mechanism (thermal), there is no reason to believe that seal elements that swell from another kind of swelling mechanism (chemical) would render the apparatus nonfunctional. That is, Amancharla discloses swellable sealing elements while retaining the ability of the assembly to be easily removed from the wellbore. Id. at 3. In their Reply Brief, Appellants challenge the Examiner's finding that Amancharla discloses a swellable sealing element, asserting that "[ t ]he recitation of a coefficient of expansion by Amancharla is not a disclosure that the seal elements are swellable in response to contact with a fluid." Reply Br. 14. 4 Appeal2013-008415 Application 13/303,477 The Examiner's stated rationale as to why one of ordinary skill in the art would have sought to modify Amancharla by using Kollsman's sealing elements is not supported by a preponderance of the evidence. First, as quoted above, claim 16 recites "providing multiple annular seal elements which swell in response to contact with a fluid." Appellants' Specification defines the term "swell" as "indicat[ing] an increase in volume of a seal material." Spec. 6, 11. 1---6 ("Typically, this increase in volume is due to incorporation of molecular components of the fluid into the seal material itself .... "). The Examiner relies upon a portion of Amancharla in support of the finding that Amancharla's sealing elements swell. The full sentence of Amancharla states: The seal assemblies preferably are composed of four sequential annular seal members with the outermost seal member comprising a polymer having a coefficient of expansion greater than that of the rigid spacing member and a well conduit and a hardness sufficient to withstand extrusion into the gap between the spacing member and a well conduit. Amancharla, 3:56-63. Although the Examiner finds that this sentence discloses swelling, the Examiner has not explained why that is necessarily the case. As shown above, Appellants' Specification provides a definition of swelling that means an increase in volume of the seal material. The Examiner has not explained why Amancharla's statement of the relative coefficient of expansion of the seal members as compared to the spacing member teaches an increase in volume of the seal material. And, Appellants' Specification specifically contrasts swelling and expanding. Spec. 6, 11. 12-14 ("Note that swelling is not the same as expanding, although a seal material may expand as a result of swelling."). Thus, the 5 Appeal2013-008415 Application 13/303,477 Examiner's finding that Amancharla discloses a swelling seal member is not supported by a preponderance of the evidence before us. Additionally, even assuming that Amancharla's minimal disclosure of a relative coefficient of expansion of the seal member indicates that it does swell or is capable of swelling, the Examiner's stated reason for substituting Kollsman's sealing element lacks a rational underpinning. In particular, if we accept the Examiner's finding that Amancharla's seal member swells, and, henceforth, substituting one swelling seal member (from Kollsman) for another swelling seal member (of Amancharla) is nothing but a substitution of known equivalents, the Examiner has not explained why such substitution would "increase the sealing capability of the packer." Ans. 4. In other words, the Examiner hasn't provided a reason or explanation as to why Kollsman's seal elements provide an increase in the sealing capability of the packer as compared to Amancharla's seal elements, assuming, as the Examiner states, that Amancharla' s seal elements swell. 2 Accordingly, we do not sustain the rejection of claim 16 and claims 17-25 and 28, which depend therefrom. 2 The difficulty for Appellants in this appeal is that the Examiner has presented two somewhat opposite rationales for modifying Amancharla. The first, that there is a benefit in making a modification to Amancharla based on Kollsman, and that is why one of ordinary skill in the art would have been motivated. The second, that there is no increased benefit, and that, instead, it is a simple substitution of known equivalents. In light of the discussion above, the Examiner's findings are contradictory as applied to the facts of this case, and leave Appellants in a precarious position in which they are potentially forced to argue two contradictory positions to respond to the Examiner's findings. 6 Appeal2013-008415 Application 13/303,477 Rejections II and III The Examiner rejected claims 26, 27, 29, and 30, each of which depends from claim 16, based on a combination of at least Amancharla and Kollsman, and relying upon the same teachings and reasoning discussed above. Accordingly, for the reasons discussed in the context of Rejection I, we do not sustain the rejections of claims 26, 27, 29, and 30. DECISION We reverse the Examiner's decision rejecting claims 16-30. REVERSED 7 Copy with citationCopy as parenthetical citation