Ex Parte Chalker et al

Patent Trial and Appeal Board

Mar 23, 2016

13303477 (P.T.A.B. Mar. 23, 2016)

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.
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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.
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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
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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.
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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
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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.
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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
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