Ex Parte Themig

Patent Trial and Appeal Board

Dec 4, 2014

12249602 (P.T.A.B. Dec. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANIEL JON THEMIG
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Appeal 2012-007994
Application 12/249,602
Technology Center 3600
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Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and
JAMES J. MAYBERRY, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 9, 11‒14, and 16‒19. App. Br. 2. Claims 1‒8, 10, and
15 have been cancelled. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b). Appellant’s counsel presented oral argument on October 30, 2014.
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to an apparatus and a method for
isolating, with controlled access, a lateral wellbore from the remainder of the
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wellbore.” Spec. 1.1 Method claim 9, the only independent claim, is
illustrative of the claims on appeal and is reproduced below:
9. A method for isolating a selected wellbore leg from the
remainder of the wellbore, the method comprising:
providing an apparatus including a packer, and a tube
extending through the packer from an uphole side of the packer to a
downhole side of the packer;
positioning the apparatus in the selected wellbore leg
downhole of a wellbore junction where the selected wellbore leg
extends from the remainder of the wellbore, the packer and the tube
of the apparatus being positioned within the selected wellbore leg;
expanding the packer to engage the wall of the selected
wellbore leg and to create a seal between the tube and the wall of the
selected well bore leg;
wherein the apparatus is operable to isolate fluid flow
communication with the selected wellbore leg of the wellbore past
the packer except through the tube and access remains unimpeded to
the remainder of the wellbore; and
while the apparatus remains in the selected wellbore leg,
running a tubing string down past the selected wellbore leg to access
a second selected wellbore leg downhole of the wellbore junction.

REFERENCES RELIED ON BY THE EXAMINER
Mack US 1,785,277 Dec. 16, 1930
Ferris US 2,352,700 July 4, 1944
Coulter US 5,197,543 Mar. 30, 1993
Tubel US 5,941,307 Aug. 24, 1999
Mullen US 6,349,772 B2 Feb. 26, 2002
Carstensen US 6,388,577 B1 May 14, 2002

1 Appellant’s Specification does not provide line or paragraph numbering
and, accordingly, reference will only be made to the page number.
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THE REJECTIONS ON APPEAL2
Claims 9, 11, 12, 14, and 17 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Carstensen. Ans. 6.
Claims 9, 11‒14, 16, and 17 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Tubel. Ans. 9.
Claims 18 and 19 are rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Carstensen as applied to claim 9 above, and further in view of Mullen, or
Mack, or Ferris. Ans. 11.
Claims 18 and 19 are rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. 103(a) as obvious over Tubel3 as
applied to claim 9 above, and further in view of Mullen, or Mack, or Ferris.
Ans. 12.
Claims 13 and 16 are rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Carstensen as applied to claim 9 above, and further in view of Coulter. Ans.
12.

2 The Examiner’s rejection based on “non-statutory obviousness-type double
patenting” over the claims of U.S. 7,353,878 or U.S. 7,021,384 “has been
overcome by the terminal disclaimer filed 4/7/2011.” Ans. 5.
3 The Examiner’s heading identifies “Carstensen” but the body of the
rejection clearly indicates reliance by the Examiner on Tubel, not
Carstensen. Ans. 12. Appellant recognizes this rejection as involving Tubel
and not Carstensen. App. Br. 8. We treat this discrepancy as an inadvertent
error.
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CLAIM CONSTRUCTION AND CASE LAW
Appellant’s Appeal Brief contains a section entitled “Claim
interpretation” wherein such terms/phrases as “within” and “access remains
unimpeded to the remainder of the wellbore” are discussed. App. Br. 10‒11;
see also Reply Br. 6. Appellant also addresses the scope of the term
“wellbore” (Reply Br. 6; see also Oral Transcript generally) and regarding
all these terms/phrases, Appellant contends that the Examiner’s construction
thereof is “unreasonably broad.” Reply Br. 6‒9. Appellant’s Specification
does not provide any explicit or express definition of any of these
terms/phrases (see infra) and consequently, we will employ their ordinary
and customary dictionary definition when assessing whether the Examiner’s
interpretation is “unreasonably broad” or not. See, e.g., In re Morris, 127
F.3d 1048 (Fed. Cir. 1997); Comaper Corp. v. Antec, Inc., 596 F.3d 1343
(Fed. Cir. 2010); and In re ICON Health and Fitness, Inc., 496 F.3d 1374
(Fed. Cir. 2007). Furthermore, “even where a patent describes only a single
embodiment, claims will not be ‘read restrictively unless the patentee has
demonstrated a clear intention to limit the claim scope using ‘words or
expressions of manifest exclusion or restriction.’” Innova/Pure Water, Inc.
v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004)
(citation omitted). This is because “[i]t is applicants’ burden to precisely
define the invention, not the PTO’s.” Morris, 127 F.3d at 1056 . Appellant
always has the opportunity to amend the claims during prosecution, and
broad interpretation by the Examiner reduces the possibility that the claim,
once issued, will be interpreted more broadly than is justified. In re Prater,
415 F.2d 1393, 1404‒05 (CCPA 1969). See also In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning,
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the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.”) (citation omitted).
In addition to the above, we have also been “cautioned against reading
limitations into a claim from the preferred embodiment described in the
specification, even if it is the only embodiment described, absent clear
disclaimer in the specification.” In re Am. Acad. of Science Tech Ctr., 367
F.3d 1359, 1369 (Fed. Cir. 2004) (emphasis added) (citations omitted). Cf.
Reply Br. 7‒9.
For example, at oral hearing, Appellant’s counsel asserted that pages 8
and 11 of Appellant’s Specification provide an explicit definition that the
claim term “wellbore” means an “open wellbore” without any obstruction
therein. Oral Transcript pp. 89, 11, 16. Additionally, Appellant contends
that as per Figure 3B, “Applicant’s main wellbore does not have any tubing
inserted therein.” App. Br. 19; see also Reply Br. 5‒6. A review of
Appellant’s Specification indicates that the wellbore “can be open hole or
lined” (Spec. 8) and, alternatively, the wellbore “can vary between a vertical
and a horizontal orientation, straight or deviated, be open hole or lined, etc.”
(Spec. 11). Both recitations indicate that the wellbore “can” be an “open
hole” or that it can be “lined.” Neither recitation is a clear expression that
the wellbore must only be interpreted as absolutely “open” or otherwise
devoid of any structure or item (e.g., lining) extending therein or projecting
thereinto whatsoever. Hence, Appellant’s assertion that the Examiner’s
interpretation of “wellbore” as meaning “a wellbore with or without tubing
and/or apparatus therein” as being “unreasonably broad” (Reply Br. 6) is not
persuasive of Examiner error.
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Likewise, Appellant’s assertion that the claim term “within” means
“completely within” is not persuasive. App. Br. 14. More specifically,
Appellant’s assertion that an item that is both within and without a wellbore
leg cannot be deemed by the Examiner to be “within the selected wellbore
leg” as claimed is not persuasive of Examiner error. Reply Br. 6.
Regarding the claim term “unimpeded,” the dictionary definition of
“impede” is “to interfere with or slow the progress of” and also “hinder.”4
Hence, “unimpeded” is understood to mean not to interfere with, slow the
progress of or hinder.

ANALYSIS
The rejection of claims 9, 11, 12, 14, and 17 as anticipated by or,
in the alternative, as obvious over Carstensen
Appellant argues claims 9, 11, 12, 14, and 17 together. App. Br. 11‒
20. We select independent claim 9 for review with dependent claims 11, 12,
14, and 17 standing or falling with claim 9. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
The Examiner identifies item 54 of Carstensen as corresponding to the
claimed “packer” and the Examiner further identifies items 46, 47, and 48 of
Carstensen as different portions of the wellbore, each being below that of its
predecessor. Ans. 6‒7. The Examiner provides an explanation as to why
Carstensen discloses the various structure recited in method claim 9 and
finds that “it is apparent that during a lifetime of a well as shown in figure 1

4 WEBSTER’S NEW COLLEGIATE DICTIONARY 570 (1979). See also
http://www.merriam-webster.com/dictionary/impede accessed during oral
hearing (Oral Transcript pg. 12) and also November 26, 2014.
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of Carstensen, accesses to lower lateral wellbore legs (i.e., 47 or 48) past the
uppermost wellbore leg 46 as claimed are necessary for completion or
intervention purposes.” Ans. 6‒8. The Examiner concludes that
it would have been obvious to . . . one of ordinary skill in the
art at the time the invention was made to run a tubing string
down past the uppermost lateral wellbore 46 to access a second
wellbore leg (either wellbore leg 47 or wellbore leg 48)
downhole of the wellbore junction because it is extremely well
known in the art to run a tubing string into a hydrocarbon
producing zone of a wellbore.
Ans. 8.
Appellant initially contends that “[t]he Examiner erred by considering
only the negative evidence. The PTO must weigh all the evidence favoring
the rejection against all the countervailing evidence.” App. Br. 12 (citations
omitted). We are instructed that what matters is whether all of the
limitations of the claim are found in the reference, “[t]he law of anticipation
does not require that the reference ‘teach’ what the subject patent teaches.”
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
Hence, whether favorable or otherwise, for anticipation, it is only necessary
that the claims, as construed, “‘read on’ something disclosed in the
reference, i.e., all limitations of the claim are found in the reference, or ‘fully
met’ by it.” Kalman, 713 F.2d at 772.
Appellant also addresses packer 56 of Carstensen, which is located in
the main wellbore. App. Br. 13; see also Carstensen Fig. 1. In contrast, the
Examiner references packer 54 located in wellbore legs 46 and 47. Ans. 6;
see also Carstensen Fig. 1. Appellant’s arguments premised on packer 56
instead of packer 54 are not persuasive of Examiner error.
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Appellant further contends that the wellbore equipment illustrated “in
Carstensen’s Figure 1 are merely representative of the various kinds of tools
which may be positioned in lateral and main wellbores” and that “[t]he
specific wellbore composite system shown in Carstensen’s Figure 1 is not
necessarily feasible, practical, or operational in accordance with
Carstensen’s invention.” App. Br. 13‒14. Appellant provides no evidence
in support of the contention that Carstensen discloses an inoperable system.
Appellant also contends “that the packer and attached tubing depicted
in lateral wellbore 46 are not completely within lateral wellbore 46 and
would therefore impede access to the remainder of the wellbore.” App. Br.
14. Appellant’s reliance on the claim term “within” as meaning “completely
within” is not indicative of Examiner error as discussed supra in that
Carstensen illustrates some tubing as wholly with a lateral wellbore and also
illustrates other tubing as mostly within a lateral wellbore. See Carstensen
Fig. 1 and lateral wellbores 46 and 47. Further, Appellant does not explain
how Carstensen is able to discuss activating equipment below or downhole
first lateral wellbore 46 if, in fact, access to this downhole equipment were
actually blocked. See Carstensen 4:26‒29; 7:10‒16. Additionally,
Appellant does not explain how one skilled in the art when seeking to
perform an operation at a lower depth would fail to recognize that
impediments to this operation at a higher elevation need to be removed or
bypassed so that access can be gained. Ans. 8. Furthermore, as illustrated in
Carstensen Figure 1, the equipment depicted in wellbore 47 is clearly
“within” such wellbore and further, that access to lower wellbore 48 past
upper wellbore 47 is unimpeded by the equipment in wellbore 47.
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Appellant also surmises how the various equipment disclosed in
Figure 1 of Carstensen might have been installed and the order thereof.
App. Br. 14‒15. In other words, Appellant addresses Carstensen’s
installation of equipment in lower wellbores 47 and 48 first and,
alternatively, Carstensen’s installation of equipment in upper wellbore 46
first (i.e., the operation similar to Appellant’s claimed method). App. Br. 14.
In addressing this latter operation, Appellant addresses the equipment shown
in lateral wellbore 47 and appears to acknowledge that it is arranged “to
allow unimpeded access to the downhole lateral wellbore and downhole
main wellbore.” App. Br. 14.
Regarding unimpeded access, claim 9 is very specific as to that area
of the wellbore to which access is to be unimpeded. To better understand
this, an investigation of the language of claim 9 is warranted. Claim 9
identifies a packer and a tube extending therethrough “from an uphole side
of the packer to a downhole side of the packer” as an “apparatus.” Claim 9
further recites that “access remains unimpeded to the remainder of the
wellbore” which is understood to mean access from the apparatus to the
remainder of the wellbore is to be unimpeded. This limitation is not
understood to mean that the entirety of the wellbore and all its lateral legs
are unimpeded but instead only that access from the apparatus to the
remainder of the wellbore (i.e., that portion of the wellbore uphole the
apparatus) is unimpeded. Appellant does not persuasively explain how this
limitation, as interpreted supra, is not disclosed in Carstensen and
particularly from the uphole perspective of Carstensen’s packers 54.
Appellant also addresses the operation of the “fluid impulse actuated
valves” (App. Br. 15) but claim 9 does not address the operation of any
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valve, only that “when the apparatus is operable” that fluid isolation occurs.
As indicated supra, the claimed “apparatus” is recited as “including a
packer” and the tube extending therethrough. Further, the Examiner’s
referenced packer 54 (Ans. 6) is employed by Carstensen “to provide zonal
isolation” (Carstensen 7:3‒4). Accordingly, Appellant’s focus on
Carstensen’s valves (and also Carstensen’s packer 56) instead of
Carstensen’s packer 54 is not persuasive of Examiner error. App. Br. 15‒19.
In short, Appellant does not explain how Carstensen’s packer 54 and the
tubing therethrough causes an impediment to the remainder of the wellbore.
As if to emphasize the point made, Appellant contends that
“[u]nimpeded access to the remainder of the wellbore enables the skilled
artisan to run a tubing string down past the selected wellbore leg to access a
second selected wellbore leg downhole of the wellbore junction as
Applicant’s claimed method requires.” App. Br. 19. As discussed supra,
Carstensen discloses the ability to access various equipment “at different
depths” down hole. Carstensen 7:10‒16.
Appellant also contends that “the PTO has the initial burden of proof
to establish the factual basis for its rejections.” App. Br. 20 (citations
omitted). While it is agreed that the Examiner has the initial burden of
presenting a prima facie case, once made, the burden of showing error shifts
to Appellant. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see
also In re Best, 562 F.2d 1252, 1255 (CCPA 1977). We are not apprised of
any error in the Examiner’s prima facie showing and as such, the burden
going forward is on Appellant, not the PTO.
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For the above reasons, we sustain the Examiner’s rejection of claims
9, 11, 12, 14, and 17 as being either anticipated by or, in the alternative, as
obvious over Carstensen.
The rejection of claims 9, 11‒14, 16, and 17 as anticipated by or,
in the alternative, as obvious over Tubel
Appellant argues claims 9, 12‒14, 16, and 17 together and also
presents separate arguments for claim 11. We select both claims 9 and 11
for review with claims 12‒14, 16, and 17 standing or falling with claim 9.
Claim 9
Appellant initially contends that “[a]ll the elements and specific
details of the wellbore system depicted in Tubel’s Figure 2 are not entirely
clear from the drawing itself or the written description.” App. Br. 21. This
is because of the “uncertainty” by which “the exact point” a branch tubing
“turns into each wellbore leg” for attachment to “control system 22.” App.
Br. 22. Here, Appellant does not explain how the same “uncertainty”
regarding “the exact point” does not apply to Appellant’s claimed system yet
does apply to that disclosed in Tubel. Furthermore, the Examiner references
Tubel’s packer 71, not Tubel’s control system 22 (Ans. 9) and hence
Appellant is not properly addressing the Examiner’s corresponding structure
and as such, the Examiner’s stated rejection. Additionally, Appellant
appears to be employing an expansive interpretation of the claim term “tube”
when the only “tube” structure recited in claim 9 is that “extending through
the packer from an uphole side of the packer to a downhole side of the
packer.” Appellant’s reliance on unclaimed structure (App. Br. 23‒24) is
not persuasive of Examiner error. As with Carstensen supra, Appellant also
addresses the limitation of access from the apparatus remaining “unimpeded
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to the remainder of the wellbore” as well as the scope of the claim term
“within.” App. Br. 23‒24. For similar reasons previously stated,
Appellant’s contentions are not persuasive of Examiner error.
Appellant also addresses Tubel’s disclosed method of operation
contending that these steps “position the downhole apparatus in the wellbore
before any uphole apparatus is positioned.” App. Br. 25 (referencing Tubel
20:3‒12). The steps identified by Appellant address modules 22 and, as per
Appellant, “appears” to disclose the placement of downhole equipment prior
to the placement of any uphole equipment. Appellant’s reliance on
speculation as to what a step “appears” to teach with respect to the order of
placement of equipment not referenced by the Examiner is not persuasive of
Examiner error.
Accordingly, based on the record presented, we sustain the
Examiner’s rejection of claims 9, 12‒14, 16, and 17 as being as anticipated
by or, in the alternative, as obvious over Tubel.
Claim 11
Claim 11 depends from claim 9 and additionally recites that “an
uphole end of the tube is within the selected wellbore leg.” Appellant
initially addresses the scope of the claim term “within,” as used therein.
App. Br. 23‒24, 29. For the reasons discussed above, the Examiner’s
understanding of the claim term “within” is not considered to be unduly
broad. Appellant also addresses the “uphole ‘end’ of the tube extending
through the packer.” App. Br. 29. This claimed “uphole end of the tube” is
understood to be located at the “uphole side of the packer” as recited in
parent claim 9. Appellant contends that this claim 11 is separately
patentable based on this “uphole end” being “within the selected wellbore
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leg” such that access remains “unimpeded to the remainder of the wellbore”
as recited in the parent claim. App. Br. 29. For similar reasons previously
discussed, Appellant’s contention regarding the “uphole end of the tube” is
not persuasive of Examiner error. Accordingly, based on the record
presented, we sustain the Examiner’s rejection of claim 11 as being as
anticipated by or, in the alternative, as obvious over Tubel.

The rejections of claims 13, 16, 18, and 19
Appellant does not proffer any argument to the rejections of claims
13, 16, 18, and 19 (based on additional art to Mullen, Mack, Ferris, and
Coulter) other than they “stand or fall with independent Claim 9.” App. Br.
28. Because we sustain the Examiner’s rejection of claim 9, we likewise
sustain the Examiner’s rejection of claims 13, 16, 18, and 19.

DECISION
The Examiner’s rejections of claims 9, 11‒14, and 16‒19 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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