HALLIBURTON ENERGY SERVICES

Patent Trials and Appeals BoardJun 21, 2021

2020005828 (P.T.A.B. Jun. 21, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/430,668 03/24/2015 James Dan Vick JR. 2012-055536 U1 US 7967 142050 7590 06/21/2021 HALLIBURTON ENERGY SERVICES, INC. C/O PARKER JUSTISS, P.C. 14241 DALLAS PARKWAY SUITE 620 DALLAS, TX 75254 EXAMINER PATEL, NEEL G ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 06/21/2021 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): docket@pj-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES DAN VICK JR. and JIMMIE ROBERT WILLIAMSON, JR. Appeal 2020-005828 Application 14/430,668 Technology Center 3600 Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5, 7–18, and 20–22. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Halliburton Energy Services, Inc. Appeal Br. 3. Appeal 2020-005828 Application 14/430,668 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to a downhole well tool including an annular metal-to-metal seal and a polymer seal. See Spec. ¶¶ 1, 11. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A well tool, comprising: an outer tubing having a seal groove formed in an interior wall thereof; an inner tubing received in the outer tubing to move axially with respect to the outer tubing; a first annular seal having only first and second metal components, wherein at least one of the first and second metal components is wedge-shaped having a locking taper angle less than 3.5°, the first and second metal components being engageable against each other and located in the seal groove and between the outer and inner tubings and actuable from an unsealed state to a, sealed state, wherein the first annular seal contacts and seals against the outer and inner tubings to form a metal-to-metal seal that seals a fluid path between the outer and inner tubings, and locks the inner and outer tubings together; and a second annular seal, wherein the second annular seal: is located within the seal groove; is located between and in sealing contact with the outer and inner tubings and sealing the fluid path; is located on opposite axial sides of the first annular seal; comprises a polymer seal having a sealing surface; is movable with respect to the first annular seal within the seal groove; and drives one of the first or second metal components into the other and into a sealed, locked position. Appeal Br. 24 (Claims App.). Appeal 2020-005828 Application 14/430,668 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Mashaw US 4,448,427 May 15, 1984 Williamson US 7,866,402 B2 Jan. 11, 2011 Lopez US 2006/0186601 A1 Aug. 24, 2006 Li US 2008/0061510 A1 Mar. 13, 2008 Bryant US 2008/0093079 A1 Apr. 24, 2008 Stout US 2010/0089587 A1 Apr. 15, 2010 Duong US 2012/0098203 A1 Apr. 26, 2012 REJECTIONS I. Claims 1, 3, 4, 7, 9–12, 15–18, and 20–22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lopez, Li, and Duong. Final Act. 4. II. Claims 2 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lopez, Li, Duong, and Mashaw. Final Act. 19. III. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lopez, Li, Duong, and Bryant. Final Act. 21. IV. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lopez, Li, Duong, and Williamson. Final Act. 22. V. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lopez, Li, Duong, and Stout. Final Act. 23. Appeal 2020-005828 Application 14/430,668 4 OPINION Rejection I (Lopez, Li, and Duong) The Examiner finds that Lopez teaches many of the elements recited by claim 1, but relies on Li to teach a seal having only first and second metal components.2 See Final Act. 4–6. Specifically, the Examiner finds that Li discloses an embodiment of a seal using one or more metal rings 230, 232, and 234 (depicted in Figures 17 and 18) and another embodiment of a seal using two metal components 411 and 412 (depicted in Figures 27–29). Id. at 6 (citing Li, Abstract, ¶¶ 38–43). With respect to the embodiment depicted in Figures 17 and 18 of Li, Appellant contends the disclosed seal arrangement includes three metal components, namely, rings 230, 232, and 234. See Appeal Br. 8–13. With respect to the embodiment depicted in Figures 27–29 of Li, Appellant contends “Li’s metal seal assembly [400] includes V-shaped radial cross- section metal seal element 410, outer cone 404, inner cone 402, and shear- screw 408 (which attaches outer cone 404 to inner cone 402). Id. at 10 (citing Li ¶¶48–49). Thus, Appellant argues, Li discloses a seals with no fewer than three metal components, and, therefore, the Examiner erred in finding Li discloses a seal having only first and second metal components. In response, the Examiner appears to concede Appellant’s point on the embodiment of Figures 27–29 of Li, stating, “it should be noted that the focus in light of the arguments is primarily towards cited [F]igures 17–18 [of Li].” Ans. 5. The Examiner contends “at least paragraph [0038] of Li introduces ‘one or more of the rings 230, 232 and 234 may be formed from a 2 The Examiner relies on Duong to teach a locking taper angle of less than 3.5°. Final Act. 7–8. Appeal 2020-005828 Application 14/430,668 5 metal that is suitable for anchoring the seal assembly 228’, which would read on using only two components for functional operation.” Id. Paragraph 38 of Li states, As another example, FIG. 17 depicts a seal assembly 228, which has top 230, middle 232 and bottom 234 seal rings, which may be formed from different metals to serve different functions. For example, one or more of the rings 230, 232 and 234 may be formed from a metal that is suitable for anchoring the seal assembly 228 (for packer and bridge plug applications); and/or one of more of the rings 230, 232 and 234 may be formed from a metal that is suitable for forming a seal between the inner 30 and outer 20 tubular members when the seal assembly 228 is compressed (FIG. 18). Bolding omitted, italicization added. Contrary to the Examiner’s finding, paragraph 38 indicates that, although all three of seal rings 230, 232, and 234 are made of metal and are used in seal assembly 228, the rings may differ in the type of metal from which they are made. Accordingly, the Examiner erred in interpreting paragraph 38 of Li. As a result, a preponderance of evidence does not support the Examiner’s finding that Li discloses a first annular seal having only first and second metal components, and we do not sustain the Examiner’s rejection of claim 1, and claims 3, 4, 7, and 9–12 depending therefrom, as unpatentable over Lopez, Li, and Duong. Each of independent claims 15 and 20 recites a substantially similar limitation to the one discussed above regarding claim 1, and the Examiner relies on the same findings of fact regarding Li in rejecting these claims. See Appeal Br. 27, 28, 29 (Claims App.); Final Act. 12–13, 16–17. For the same reason discussed above regarding the rejection of claim 1, we do not sustain the rejection of claims 15 and 20, and associated dependent claims 16–18, 21, and 22, as unpatentable over Lopez, Li, and Duong. Appeal 2020-005828 Application 14/430,668 6 Rejections II–V (Lopez, Li, and Duong, plus Mashaw, Bryant, Williamson, or Stout) In rejecting the remaining pending dependent claims, the Examiner does not use the teachings of Mashaw, Bryant, Williamson, or Stout in any manner that would remedy the deficiency discussed above regarding Rejection I. See Final Act. 19–24. Accordingly, we do not sustain Rejections II–V. CONCLUSION The Examiner’s decision to reject claims 1–5, 7–18, and 20–22 is reversed. More specifically, DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 7, 9– 12, 15–18, 20–22 103(a) Lopez, Li, Duong 1, 3, 4, 7, 9– 12, 15–18, 20–22 2, 5 103(a) Lopez, Li, Duong, Mashaw 2, 5 8 103(a) Lopez, Li, Duong, Bryant 8 13 103(a) Lopez, Li, Duong, Williamson 13 14 103(a) Lopez, Li, Duong, Stout 14 Overall Outcome 1–5, 7–18, 20–22 REVERSED