Ex Parte Wang et al

Patent Trial and Appeal Board

Nov 28, 2018

14488922 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/488,922 09/17/2014 Sharon Yunhong Wang
44639 7590 11/30/2018
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
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.
ICD4-58306-US
(BA01313US)
CONFIRMATION NO.
4522
EXAMINER
RUNYAN, SILVANAC
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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 SHARON YUNHONG WANG, ROBERT D. MORTON,
RONNIE DAVID RUSSELL, and ANDREA NINO-PENALOZA
Appeal2018-005068
Application 14/488,922 1
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CALVE, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sharon Yunhong Wang et al. ("Appellants") seek review under
35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1, 3, 4, 6, 8,
and 9. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
1 The Appeal Brief identifies Baker Hughes Incorporated as the real party in
interest. Appeal Br. 1.
2 Claims 2, 5, 7, and 10-24 are cancelled. Appeal Br. 8-9 (Claims App.).
Appeal2018-005068
Application 14/488,922
CLAIMED SUBJECT MATTER
Claim 1 is representative of the claimed subject matter, and reads:
1. A method of treating a formation with a treatment string
having a plurality of ports run into a borehole, comprising:
aligning one or more of the plurality of ports with
corresponding ones of a plurality of fluidically isolated zones
defined along the borehole;
flowing a treating fluid through the string;
passing the treating fluid through a flow control device
having an annular tortuous flow path at each of the plurality of
ports;
injecting the treating fluid into one or more of the
fluidically isolated zones defined along the borehole;
independently adjusting the flow control device of each
of the plurality of the plurality of ports according to a desired
treating fluid flow rate at each of the plurality of fluidically
isolated zones defined along the borehole by inputting an
activation force through a control line operatively connected to
an actuator associated with each flow control device; and
increasing, in real time, a flow restriction of the flow
control device associated with one or more of the plurality of
the ports located near a portion of an associated one of the
plurality of fluidically isolated zones having a first permeability
establishing a treating fluid flow rate that is distinct in
comparison to a treating fluid flow rate at others of the plurality
of ports located at an associated one of the plurality of
fluidically isolated zones having a second permeability that is
lower than the first permeability.
Appeal Br. 8 (Claims App.).
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Application 14/488,922
REJECTIONS
1. Claims 1, 3, 6, and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Greene (US 2015/0034323 Al, published Feb. 5, 2015)
and Boles (US 2008/0041594 Al, published Feb. 21, 2008).
2. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable
over Greene, Boles, and Zazovsky (US 2007 /0272408 Al, published Nov.
29, 2007).
3. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable
over Greene, Boles, and McMurry (US 3,601,191, issued Aug. 24, 1971).
ANALYSIS
New Ground of Rejection
Pursuant to 37 C.F.R. § 4I.50(b), we enter a new ground of rejection
against claims 3 and 6 under 35 U.S.C. § 112(b) for the following reasons.
Claim 3 depends from claim 1 and recites, "flowing treating fluid
through the plurality of the at least one first ports and through the plurality
of second ports aligned with the plurality of the at least one first ports
simultaneously." Appeal Br. 8 (Claims App. (emphasis added)). Claim 6
depends from claim 1 and recites, "increasing flow restriction of the flow
control device associated with ... the at least one first ports to be located
nearer a heel of the borehole in comparison to ... the at least one first ports
to be located nearer to a toe of the borehole." Appeal Br. 9 (Claims App.
( emphasis added)).
However, claim 1 recites "a plurality of ports," but not "first ports,"
"second ports," or "second ports ... aligned with ... first ports." That is,
there is no antecedent basis for these terms in claims 3 and 6. "[C]laims are
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Application 14/488,922
not necessarily invalid for a lack of antecedent basis." Microprocessor
Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1376 (Fed.
Cir. 2008). If the scope of a claim would be reasonably ascertainable by
those skilled in the art, then the claim is not indefinite. Energizer Holdings,
Inc. v. Int'! Trade Comm 'n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006)
( citation omitted). Here, we determine that it is unclear whether the "first
ports" or "second ports" recited in claim 3 refer to any of the "ports" recited
in claim 1, and, if so, which particular ones. Also, as claim 1 does not recite
that any "ports" are "aligned with" each other, it is unclear whether the
limitation "second ports ... aligned with ... first ports" in claim 3 refers to
any of the "ports" recited in claim 1. Likewise, it is unclear whether the
term "first ports" in claim 6 refers to any "ports" recited in claim 1, and, if
so, which ones.
Accordingly, we determine that claims 3 and 6 fail to comply with the
requirements of 35 U.S.C. § 112(b). Therefore, we enter a new ground of
rejection of claims 3 and 6 under 35 U.S.C. § 112(b) as being indefinite.
Rejection 1
Claims 1 and 9
The Examiner finds that Greene discloses all limitations recited in
claim 1, including aligning ports with zones in a borehole, except that
Greene "is silent regarding real time," as recited in the final "increasing"
step. Final Act. 3---6 (citing Greene ,r,r 3, 26, 29, 32, 39, 43, 52, 62). We
understand that, by use of the term "silent," the Examiner means that Greene
does not explicitly describe the term "real time." This is consistent with the
Examiner also finding that Greene teaches adjusting a flow choke while
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Application 14/488,922
injecting fluid, that is, "in real time." Ans. 3. The Examiner explains that
Greene expressly discloses that, by adjusting the choke position/flow area of
individual flow control devices 24 as a function of the injection flow rate
through these devices, a balanced well inflow profile can be created, as
illustrated in Figure 4. Id. ( citing Greene ,r 39).
Additionally, the Examiner finds that Boles teaches diversion, in real-
time, of treatment fluid, and controlling the injection of treatment fluid via
flow control devices. Final Act. 6-7 (citing Boles ,r 44); Ans. 4. The
Examiner determines that the combination of Greene and Boles teaches
adjusting a flow control device in real time, as recited in claim 1. Ans. 4.
The Examiner reasons that it would have been obvious to a person of
ordinary skill in the art to modify Greene's method to include the "in real
time" limitation, as taught by Boles, "to divert and /or place the fluid into a
desired location that is determined by the objectives of the operation." Final
Act. 7 ( citing Boles ,r 44).
Appellants contend that Greene teaches away from adjusting a choke
flow "in real time." Appeal Br. 5. Appellants contend that adjusting a
choke flow during an injection stage in Greene would defeat the desired
constant choke setting requirement disclosed in paragraph 34 and Figure 5 of
Greene. Id. According to Appellants, Greene describes employing the
constant choke setting during injection to determine formation permeability,
and then using this factor during production settings. Id. Therefore,
Appellants submit, one of ordinary skill in the art would not modify Greene
to include real time adjustment of a flow choke, because this would change
the constant choke setting, invalidate any data collected, and negatively
impact formation permeability calculations. Id.
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Application 14/488,922
Appellants' contentions are not persuasive. Appellants' Specification
describes the term "real time" as follows:
In one embodiment of the treating system 10 the flow
restriction levels of the treating ports 22 are adjustable after
being run into the completion string 18. Control lines 54 in
operable communication with actuators 58 at each of the
treating ports 22 can adjust the flow restriction of each of the
treating ports 22 as desired in real time. This real time
adjustment can include completely closing of the treating ports
22 to thereby allow operators to alter flow rates as well as the
total amount of treating fluid supplied to the particular zones
34.
Spec. ,r 13 ( emphasis added). This description indicates that the flow
restriction levels of the treating ports 22 can be adjusted after the treating
ports 22 have been run into the completion string 18. This description does
not provide a definition of "real time." Nor does this description indicate
that "real time adjustment" is performed at any particular time after the
treating ports 22 have been run into the completion string 18. Paragraph 13
indicates that the "real time adjustment" can control flow of the treating
fluid to particular zones 34 after treating ports 22 are run into completion
string 18.
Appellants' contention that modifying Greene by adjusting a choke
flow during an injection stage would defeat the desired constant choke
setting requirement is not persuasive. See Appeal Br. 5. First, Greene
describes, "[ d]uring the injection stage, for example, the injection flow
choke of each flow control device 24 may be set at a constant choke setting
where the pressure across the choke is dependent on the flow across the
choke .... " See Greene ,r 34 ( emphasis added). This description does not
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Application 14/488,922
indicate that the injection flow choke must be set at a constant choke setting
during the injection stage in all embodiments.
Second, as noted by the Examiner, Greene describes "adjusting the
choke positions/flow areas of individual flow control devices as a function
of the injection flow rate through the individual flow control devices 24."
Id. ,r 39 (emphasis added); Ans. 3. Greene discloses that this adjustment
depends on the permeability of zones 32; namely, high injectivity zones 32
often have high permeability as compared to low injectivity zones 32, and
the choke settings of individual flow control devices 24 are adjusted
accordingly. Id. Greene discloses that the injection process can be repeated
with the tubing string 22 deployed in a wellbore 26. Id. ,r 40. For example,
the injection process can be repeated at regular intervals to adjust settings of
flow control devices 24 to react to well events or changes in the relative
permeability of the local reservoir/formation 30. Id. Appellants do not
explain persuasively why Greene fails to disclose adjusting a choke flow
(i.e., adjusting a flow restriction of a flow control device) "in real time,"
when tubing string 22 is deployed in wellbore 26 as found by the Examiner.
Appellants also contend the Examiner has not articulated a rationale
with a rational underpinning to support the proposed combination. Appeal
Br. 5. Appellants contend that the Examiner does not explain how adjusting
fluid flow would divert or place fluid into a desired location. Id. at 5---6.
We are unpersuaded. As also found by the Examiner, Boles teaches
controlling the injection of treatment fluid(s) via flow control devices "in
real time," including by modifying the operation of the flow control devices.
Final Act. 6-7 (citing Boles ,r 44); Ans. 4. This controlling allows the
treatment fluid(s) to be diverted to and/or placed at the desired location(s) in
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Application 14/488,922
the wellbore. The Examiner's proposed combination of teachings of Greene
and Boles would allow flow control devices to be adjusted, "in real time," to
place treating fluid of a desired fluid flow rate at desired locations in a
borehole, based on the permeability of the different zones. Accordingly, the
Examiner has provided an adequate reason with a rational underpinning to
combine the teachings of Greene and Boles.
For these reasons, we sustain the rejection of claim 1 as unpatentable
over Greene and Boles. Appellants state that claim 9 falls with claim 1.
Appeal Br. 6.
Claims 3 and 6
Having determined that claims 3 and 6 are indefinite, we cannot
sustain the rejection of these claims under 35 U.S.C. § 103 as unpatentable
over Greene and Boles, because in order to do so would require speculation
on our part as to the scope of the claims. See In re Aoyama, 656 F.3d 1293,
1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an
anticipation rejection of indefinite claims); In re Steele, 305 F .2d 859, 862-
63 ( CCP A 1962) (holding that the Board erred in affirming an obviousness
rejection of indefinite claims because the rejection was based on speculative
assumptions as to the meaning of the claims). 3
Rejections 2 and 3
Appellants state that claims 4 and 8 fall with claim 1 (Appeal Br. 6)
and do not present separate argument for these dependent claims.
Accordingly, we sustain the rejection of claim 4 under 35 U.S.C. § 103 as
3 It should be understood, however, that our decision is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the references applied in the rejection.
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Application 14/488,922
unpatentable over Greene, Boles, and Zazovsky, and the rejection of claim 8
under 35 U.S.C. § 103 as unpatentable over Greene, Boles, and McMurry.
DECISION
We affirm the rejection of claims 1 and 9, and reverse the rejection of
claims 3 and 6, under 35 U.S.C. § 103 as unpatentable over Greene and
Boles.
We affirm the rejection of claim 4 under 35 U.S.C. § 103 as
unpatentable over Greene, Boles, and Zazovsky.
We affirm the rejection of claim 8 under 35 U.S.C. § 103 as
unpatentable over Greene, Boles, and McMurry.
We enter a new ground of rejection of claims 3 and 6 under 35 U.S.C.
§ 112(b) as being indefinite.
FINALITY OF DECISION
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision,
[Appellants], within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded
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Application 14/488,922
to the examiner. The new ground of rejection is binding
upon the Examiner unless an amendment or new Evidence
not previously of Record is made which, in the opinion of
the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, [Appellants] may again appeal to the Board pursuant
to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
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