Ex Parte Lopez de Cardenas et al

Patent Trial and Appeal BoardNov 13, 2012

10905372 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JORGE LOPEZ DE CARDENAS, GARY L. RYTLEWSKI, MATTHEW R. HACKWORTH, JOHN R. WHITSITT and JOSE F. GARCIA ____________ Appeal 2010-009256 Application 10/905,372 Technology Center 3600 ____________ Before PHILLIP J. KAUFFMAN, LYNNE H. BROWNE, and HYUN J. JUNG, Administrative Patent Judges. BROWNE, Administrative Patent Judge DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a system for use in a wellbore intersecting a well zone. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-009256 Application 10/905,372 2 STATEMENT OF THE CASE Jorge Lopez de Cardenas et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1, 3-5 and 15- 17. Claims 6-14, 18-20 and 25-29 are withdrawn from consideration. Claims 2 and 21-24 are cancelled. The Invention Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A system for use in a wellbore intersecting a well zone, the system comprising: a tubular member fixed in the wellbore; a polished bore receptacle arranged within the tubular member below the well zone; a second polished bore receptacle arranged within the tubular member separate from the polished bore receptacle; a tubing string for deployment in the wellbore; a fluid delivery assembly connected to the tubing string, the fluid delivery assembly having at least one port for establishing hydraulic communication between the tubing string and the wellbore; and a sealing mechanism connected below the fluid delivery assembly adapted to seal with the polished bore receptacle below the well zone, wherein following fluid delivery the tubing string moves the fluid delivery assembly and the sealing mechanism until the sealing mechanism seals with the second polished bore receptacle such that a seal is formed at a single location during fluid delivery. Appeal 2010-009256 Application 10/905,372 3 The Rejections Claims 1 and 4 stand rejected under 35 U.S.C. § 102(b) as anticipated by Echols (US 2003/0178204 A1, pub. Sep. 25, 2003). Claims 1, 3-5 and 15-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tolman (US 2002/0092650 A1, pub. Jul. 18, 2002) and French (US 5,372,193, iss. Dec. 13, 1994). OPINION Anticipation Appellants argue claims 1 and 4 as a group. App. Br. 4-6 and Reply Br. 4-5. We select independent claim 1 as the representative claim and claim 4 stands or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)(2011). The Examiner finds that Echols describes “a sealing mechanism 262 connected below the fluid delivery assembly adapted to seal with the polished bore receptacle 266 below the well zone.” Ans. 4. Appellants argue “[t]he features of the Echols et al. design that are described and relied on by the Examiner (See pages 2-3 of the July 14, 2009 Office Action) require a double seal rather than the presently claimed seal formed at a single location.” App. Br. 4; see also Reply Br. 5 (arguing that Echols clearly describes and requires the formation of seals at more than a single location and that Echols would not function with a single seal). “[I]ndependent claim 1 clearly recites a sealing mechanism by which ‘a seal is formed at a single location during fluid delivery’ (see last element of claim 1) which specifically avoids the need for a dual seal as in the Echols et Appeal 2010-009256 Application 10/905,372 4 al. design.” Reply Br. 4. “The requirement of independent claim 1 that ‘a seal is formed at a single location during fluid delivery’ cannot be ignored but must be given meaning.” Reply Br. 5. Appellants’ argument is unconvincing because a claim is anticipated if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. See Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Conversely, anticipation is not precluded by the disclosure of more than what is claimed. The law of anticipation does not require that the reference teach what the appellants are claiming, but only that all the limitations of the claim are found in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984)). The Examiner has not ignored the limitation at issue. Rather, the Examiner has explained that Echols describes a seal 262 formed at a single location. See Ans. 6. Appellants further argue: [L]anguage in independent claim 1 actually reads "wherein following fluid delivery the tubing string moves the fluid delivery assembly and the sealing mechanism until the sealing mechanism seals with the second polished bore receptacle such that a seal is formed at a single location during fluid delivery". The language of the claim is not directed generically to a location or locations, but rather the language specifically recites that the seal is formed at a "single" location during fluid delivery. App. Br. 5. Appeal 2010-009256 Application 10/905,372 5 The Examiner responds: Echols shows one sealing mechanism 262 that seals at a single location 266 during fluid delivery. While Echols does disclose a second sealing mechanism 260 that seals at a different location during fluid delivery, claim 1 does not require that there are no other seals, only that a specific sealing element seals at one location during fluid delivery. Regardless of how many other sealing mechanisms are present on Echols, Echols satisfies the limitation of one sealing mechanism 262 forming a seal at a single location 266 during fluid delivery. Ans. 6. The Examiner is correct. Appellants’ contention is based on a claim construction that requires a single seal. Claim 1 is not so limited. Rather, claim 1 requires that a seal be formed at a single location. In Echols the seal 262 forms a seal “at a single location,” and the presence of an additional seal (seal 260) is not precluded by claim 1. See Echols, para. [0080] (each seal 260, 262 creates a fluid seal at seal bores 264, 266); fig. 17. Appellants further argue that Echols “fails to disclose or suggest a polished bore receptacle, a second polished bore receptacle, a fluid delivery assembly, and a sealing mechanism that cooperate to enable treatment of sequential well zones when ‘a seal is formed at a single location during fluid delivery’ as recited in independent claim 1.” App. Br. 5. Similarly, Appellants additionally argue “the Echols et al. reference does not disclose or suggest the use of a sealing mechanism that moves from one polished bore receptacle to another to form seals at a single location.” Reply Br. 5. We Appeal 2010-009256 Application 10/905,372 6 examine the reference in light of Appellants’ arguments. Echols discloses that seal element 260 creates a fluid seal at seal bore 264 and seal element 262 creates a fluid seal at seal bore 266 so that the fluid in the volume between these seals may be depressurized (by removing fluid via ports 270). Echols, paras. [0080]-[0081]; fig. 17. Such operation necessitates that each sealing element 260, 262 provides a fluid seal. Further, seal elements 260, 262 are mounted around the circumference of release member 258 at opposing ends, and release member 258 is depicted as having a consistent circumference, so that the circumference of seal elements 260 and 262 are the same. Echols, fig. 17. Therefore, seal elements 260 and 262 each having the same circumference will each seal at either seal bore 264 or seal element 262. For that reason, the Examiner’s finding that Echols is inherently capable of moving and sealing the second polished bore receptacle 264 with sealing mechanism 262 is well supported by the reference. See Ans. 4; see also In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). In response, Appellants provides no evidence to the contrary. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Appellants’ arguments do not take the place of evidence). Rather, Appellants argue that Echols does not expressly teach such limitation. This conclusory argument that such limitation is not expressly disclosed is unpersuasive because it does not directly address the Examiner’s finding that such limitation is inherent. Appeal 2010-009256 Application 10/905,372 7 For these reasons, we sustain the Examiner’s rejection of claims 1 and 4. Obviousness Appellants raise essentially the same arguments with respect to claim 15, as they raise with respect to claim 1. App. Br. 7-8. In addition, Appellants do not provide separate arguments for the patentability of claims 3-5, 16 and 17. App. Br. 9. Accordingly, we select claim 1 as the representative claim and claims 3-5 and 15-17 stand or fall therewith. 37 C.F.R. § 41.37(c)(1)(vii). The Examiner states: It would have been obvious to a person having ordinary skill in the art at the time of the invention to include a polished bore receptacle at any point where a seal is required on the system and method of Tolman in view of French so that an effective seal can be formed. While neither reference shows a polished bore receptacle below a well zone, Tolman discloses only sealing below a well zone, and it would have been obvious to place the PBR wherever the system of Tolman required a seal. Ans. 5. Appellants argue “the French reference teaches a system that would make it impossible to move a sealing mechanism from one polished bore receptacle to another polished bore receptacle such that a seal is formed at a single location during fluid delivery.” App. Br. 7. Appeal 2010-009256 Application 10/905,372 8 Appeal 2010-009256 Application 10/905,372 9 The Examiner responds: While the invention of French is not readily incorporable in Tolman, French does teach that it is known in the art for casings to be provided with polished bore receptacles [(PBR)] for a sealing mechanism to seal against (col. 2, lines 61-68). As they are known in the art, PBRs are any kind of structure in a wellbore designed specifically to receive a sealing structure against it (for other kinds of PBRs, see the prior art of record to Echols who discloses PBRs 264 and 266). In Fig. 10, Tolman discloses an expandable sealing mechanism 316 that seals against a casing 82 during a fluid delivery operation. As French discloses that polished bore receptacles being formed on a casing are known in the art, and Tolman discloses a sealing mechanism, it would have been obvious to a person having ordinary skill in the art at the time of the invention to include a polished bore receptacle on the casing of Tolman so that the sealing mechanism forms a better seal with the casing. Ans. 7. The Examiner is correct. “It is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their Appeal 2010-009256 Application 10/905,372 10 specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Moreover, Appellants argue that “the French teachings would lead one of ordinary skill in the art away from any type of combination with the Tolman et al. reference” because French would “destroy the function” of Tolman, rendering it inoperable. App. Br. 7; see also App. Br. 6 and Reply Br. 6. In particular, Appellants contend that French relies on a seal bore 18 above an oil-bearing strata and a seal bore on a landing surface in the form of a muleshoe 22. App. Br. 6-7; see also App. Br. 8. However, as discussed supra, the Examiner is not proposing to bodily incorporate French into Tolman, but instead, is citing French for the limited teaching that casings provided with polished bore receptacles, against which a sealing mechanism seals, is known in the prior art. See Ans. 7. Appellants also argue that Tolman teaches against the combination “by describing an entirely different type of solution to sealing off areas of a wellbore.” Reply Br. 6. It is not enough for Appellants to show that there are differences between two references. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) We will not read into a reference a teaching away from a proposed combination when no such language exists. See Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellants further argue “the teachings of the present application cannot be used in hindsight to re-create the teachings of the cited references in a manner contrary to what they would have taught one of ordinary skill in Appeal 2010-009256 Application 10/905,372 11 the art when the present invention was unknown and just before it was made.” App. Br. 7. The Examiner responds: Tolman discloses a system where a tight seal between a sealing mechanism 316 and a casing 82 is required. As French teaches that polished bore receptacles are useful for creating an effective seal between a sealing member and a casing, there is no hindsight rationale required as the teaching of French provides a readily apparent benefit to Tolman. Ans. 7-8. The Examiner is correct. “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Finally, Appellants argue that neither French nor Tolman discloses or suggests a polished bore receptacle located below a well zone because Tolman does not utilize polished bore receptacles and French describes a system that relies on a seal bore 18 located above oil-bearing strata 12. App. Br. 9. We are not persuaded as Appellants’ argument does not address the Examiner’s proposed combination. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds that French discloses the use of Appeal 2010-009256 Application 10/905,372 12 polished bore receptacles and that Tolman discloses a sealing mechanism 120 adapted to seal below a well zone 242. See Ans. 4-5. For these reasons, we sustain the Examiner’s rejection of claims 1, 3-5 and 15-17 as unpatentable over the combined teachings of Tolman and French. DECISION We affirm the Examiners rejection of claims 1 and 4 under 35 U.S.C. § 102(b) as anticipated by Echols. We affirm the Examiner’s rejection of claims 1, 3-5 and 15-17 under 35 U.S.C. § 103(a) as unpatentable over Tolman and French. AFFIRMED mls