Ex Parte Garcia et al

Patent Trial and Appeal Board

Mar 27, 2018

13096541 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/096,541 04/28/2011 Gonzalo A. Garcia
44639 7590 03/29/2018
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
20 Church Street
22nd Floor
Hartford, CT 06103
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.
ICD4-49471-US
(BA00618US)
4766
EXAMINER
CHAD,ANISS
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GONZALO A. GARCIA, LUIS A. GARCIA, and
RONNIE D. RUSSELL
Appeal2017-007165
Application 13/096,541 1
Technology Center 2100
Before THU A. DANG, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-24, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as Baker Hughes Incorporated.
Br. 2.
Appeal2017-007165
Application 13/096,541
STATEMENT OF THE CASE
The Claimed Invention
Appellants' claimed invention relates to simulating fluid flow in a
wellbore, in order to determine optimal geometry of flow control devices for
the wellbore. Spec. 1-2. Claims 1 and 13 are independent. Claim 1 is
illustrative of the invention and the subject matter of the appeal, and reads as
follows (with disputed limitations emphasized):
1. A method of providing a production string for a wellbore
formed in a formation, comprising:
defining a performance criterion for flow of a fluid from a
formation into a wellbore;
performing a simulation using a processor, a simulation
program, a parameter of the fluid, a parameter of the formation
and a parameter of the wellbore to determine a first flow
characteristic of the flow of the fluid from the formation into the
wellbore corresponding to an initial set of flow control devices
arranged in the wellbore;
comparing the first flow characteristic to the performance
criterion;
iteratively creating a new set of flow control devices;
performing one or more additional simulations using the
processor, the simulation program and the parameters of
formation, fluid and wellbore to determine a new flow
characteristic of the flow of the fluid from the formation into the
wellbore for the new set of flow control devices;
iteratively creating a new flow control device geometry
corresponding to at least one new flow control device of the new
set of flow control devices during the one or more additional
simulations in response to the parameter of the fluid, the
parameter of the formation and the parameter of the well bore;
comparing each of the new flow characteristics of the one
or more additional simulations to the performance criterion;
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Application 13/096,541
identifying a desired a flow characteristic from a group
consisting of the first flow characteristic and the new flow
characteristics of the one or more additional simulations that
meets the performance criterion; and
storing results of simulation results relating to the flow
control devices in a suitable storage medium.
Br. 15-16 (Claims App'x).
The Rejections on Appeal
Claims 1-24 stand rejected under pre-AIA 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 5-6.
Claims 1-24 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Atkinson et al. (US 8,025,072 B2; Sept. 27, 2011)
("Atkinson") and Coronado et al., New Inflow Control Device Reduces Fluid
Viscosity Sensitivity and Maintains Erosion Resistance, OTC, (2009)
("Coronado"). Final Act. 6-16.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following discussion for highlighting and emphasis.
Rejection Under Pre-AJA 35 US.C. § 112, First Paragraph
The Examiner rejects all pending claims as failing to comply with the
written description requirement because the limitation "creating a new set of
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Application 13/096,541
flow [control] devices" (in independent claims 1 and 13) lacks support in the
Specification. Final Act. 6. Appellants argue the rejection is overcome by
"amendments submitted July 26, 2016." Br. 5.
The record before us indicates, however, that the amendments to
which Appellants refer were not entered, and the Examiner has not
withdrawn the rejection. See Advisory Action dated August 12, 2016.
Appellants do not otherwise dispute the rejection or demonstrate that it is
erroneous. Br. 5. Accordingly, we sustain the rejection of claims 1-24 for
failure to comply with the written description requirement.
Rejection Under Pre-AJA 35 US.C. § 103(a)
Appellants argue the Examiner erred in finding Coronado teaches or
suggests "iteratively creating a new flow control device geometry
corresponding to at least one new flow control device of the new set of flow
control devices during the one or more additional simulations in response to
the parameter of the fluid, the parameter of the formation and the parameter
of the wellbore," as recited in claim 1. Br. 12-13 (emphasis added).
Specifically, Appellants argue Coronado "merely contemplates
... model[ling] geometric features of several existing I CDs [inflow control
devices] and is silent regarding creating an ICD geometry in response to
fluid, formation, and well bore parameters." Br. 13 (emphasis added).
Appellants' argument, however, does not persuade us of error.
The Examiner relies not on Coronado alone, but on the combination
of Coronado with Atkinson as teaching the disputed limitation. Ans. 4--8;
Final Act. 7-9. As the Examiner finds, Atkinson teaches an iterative
modeling, simulation, and testing process for a flow control device. Ans. 4--
6; Atkinson Fig. 4, col. 5, 11. 31--44. This iterative modeling relies on "well
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parameters" and "profiles" of the flow control device including fluid and
formation. Id. (citing Atkinson Fig. 4). As the Examiner explains in the
Answer, Atkinson's model does not expressly teach creating a "new flow
control device geometry," but Coronado teaches this limitation. Ans. 7-8
(citing Coronado at 3, 7). Coronado, for example, states "[t]he ICD [flow
control device] geometry design and flow-resistance rating [are] based on
the ... models that describe the flow performance." Coronado 5.
Appellants' argument regarding Coronado alone does not address the
Examiner's foregoing findings related to the combination of references.
Appellants' argument, therefore, does not demonstrate error in the
Examiner's rejection of claim 1. In re Merck & Co., Inc., 800 F .2d 1091,
1097 (Fed. Cir. 1986). ("Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references."). Moreover, Appellants have
filed no reply brief to rebut the Examiner's findings in the Answer.
Accordingly, we sustain the obviousness rejection of claim 1.
Appellants do not argue the remaining claims separately. Br. 14. We,
therefore, also sustain the obviousness rejection of claims 2-24
DECISION
We affirm the Examiner's rejections of claims 1-24.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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