HALLIBURTON ENERGY SERVICES, INC.

Patent Trials and Appeals BoardAug 26, 2021

2020005680 (P.T.A.B. Aug. 26, 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. 14/786,869 10/23/2015 Thomas Roane 2014-IP-087102U1 US 1081 15604 7590 08/26/2021 Baker Botts L.L.P. 910 Louisiana Street, One Shell Plaza Houston, TX 77002 EXAMINER SEBESTA, CHRISTOPHER J ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 08/26/2021 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): debie.hernandez@bakerbotts.com susan.stewart@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS ROANE, DANIEL PATTERSON, and GARY FREEMAN Appeal 2020-005680 Application 14/786,869 Technology Center 3600 Before JILL D. HILL, CARL M. DEFRANCO, and LEE L. STEPINA, Administrative Patent Judges. HILL, 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, 7–11, and 13–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Halliburton Energy Services, Inc. as the real party in interest. Appeal Br. 3. Appeal 2020-005680 Application 14/786,869 2 BACKGROUND Appellant’s invention relates to preparing a well bore for gravel pack or frac packing operations using a one-trip completion tool. Claims 1, 8, and 14 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A one trip completion tool for production of a formation fluid from a production interval comprising: a proximal end for connecting to a work string, wherein the completion tool is insertable, by the work string, into a casing cemented in a wellbore; a distal end opposite the proximal end; a perforating gun disposed between the distal end and the proximal end, wherein the perforating gun is pressure activated; a navigation sub comprising at least one of a logging- while-drilling tool and a measurement-while-drilling tool disposed between the proximal end and the perforating gun, wherein the navigation sub positions the completion tool based on one or more measurements of the at least one of the logging- while-drilling tool and the measurement-while-drilling tool and position and orientation of the navigation sub, wherein the at least one of the logging-while-drilling tool and the measurement-while drilling tool measure one or more properties of a formation; and a packer detachably attached to the distal end by a coupling disposed between the perforating gun and the packer when the packer is set in a casing, wherein the packer comprises one or more flexible packer elements that engage an inner surface of the casing; and wherein the packer is a sump packer; the packer is detachable from the distal end by setting the packer and disengaging the coupling prior to aligning the perforating gun with a target production zone, and wherein the completion tool is repositionable after disengaging the coupling; and the packer delineates the production interval. Appeal 2020-005680 Application 14/786,869 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Saurer US 5,579,840 Dec. 3, 1996 Barton US 5,947,204 Sept. 7, 1999 Tolman US 6,394,184 B2 May 28, 2002 Erkol US 2005/0133217 A1 June 23, 2005 Billingham US 2007/0181303 A1 Aug. 9, 2007 Vaynshteyn US 2010/0230105 A1 Sept. 16, 2010 Appellant relies on a first declaration of Mr. Thomas Roane dated July 17, 2018 and a second declaration of Mr. Roane dated June 11, 2019, hereinafter the “Roane Declarations.” REJECTIONS I. Claims 1, 2, 7, 8, 13–15, and 17 stand rejected under 35 U.S.C. § 103 as unpatentable over Tolman, Vaynshteyn, and Billingham. II. Claims 3, 9, and 16 stand rejected under 35 U.S.C. § 103 as unpatentable over Tolman, Vaynshteyn, Billingham, and Barton. III. Claims 4, 10, and 18 stand rejected under 35 U.S.C. § 103 as unpatentable over Tolman, Vaynshteyn, Billingham, and Erkol. IV. Claims 5, 11, and 19 stand rejected under 35 U.S.C. § 103 as unpatentable over Tolman, Vaynshteyn, Billingham, and Saurer. Appeal 2020-005680 Application 14/786,869 4 ANALYSIS Rejection I; Obviousness — Claims 1, 2, 7, 8, 13–15, 17 Claims 1, 2, and 7 The Examiner finds that Tolman discloses each of the limitations of claim 1, except that (1) the navigation sub of Tolman does not include a logging-while-drilling (LWD) tool or a measurement-while-drilling (MWD) tool, and (2) the packer of Tolman is not a sump packer. Final Act. 4–5. The Examiner finds that Vaynshteyn discloses a LWD/MWD tool that is used in conjunction with a casing collar locator (CCL) tool as disclosed by Tolman, and considers that it would have been obvious to use both tools together as taught by Vaynshteyn to provide redundancy in case of tool failure or difficulty in reading Tolman’s CCL tool. Id. at 5. The Examiner also finds that Billingham discloses that a seal element could be a sump packer or a bridge plug. Id. (citing Billingham ¶ 19). The Examiner concludes that it would have been obvious to substitute a sump packer for Tolman’s bridge plug, as “the substitution of a known perforating gun sealing element for an art recognized alternative.” Id. Appellant argues that using “the MWD/LWD tools facilitates the one- trip completion by assisting with the positioning of the completion tool in the wellbore.” Appeal Br. 10 (citing Spec. 5:25–31). According to Appellant, Tolman requires a wireline and does not suggest a one-trip completion tool having a LWD tool or MWD tool. Id. at 11. Appellant asserts, moreover, that Tolman’s CCL tool is not interchangeable with the LWD tool or MDW tool and that Vaynshteyn’s CCL tool also requires a wireline. Id. at 12. Appellant thus concludes that an ordinary artisan would understand Tolman and Vaynshteyn to “teach away from the claimed Appeal 2020-005680 Application 14/786,869 5 invention as both teach the use of a wireline.” Id. at 13 (citing Roane Declarations). The Examiner responds that claim 1 does not exclude a wireline, and Tolman explicitly discloses a “single trip” tool. Ans. 3 (citing Tolman, 28:57–61). In reply, Appellant argues that the Roane Declarations, submitted during prosecution, evidence that “LWD and MWD tools do not require a wireline.” Reply Br. 3. Appellant’s arguments do not persuade us of Examiner error. Although we appreciate that LWD and MWD tools do not require a wireline, as the Examiner also notes, unlike claims 8 and 14, claim 1 does not recite that the LWD or MWD tool does not require a wireline. See Ans. 3. Here, the Examiner proposes to use the CCL tool of Tolman in conjunction with the gamma ray tool (LWD or MWD tool) of Vaynshteyn. Final Act. 5. As the Examiner correctly finds, Tolman discloses that “[t]he entire treatment can be pumped in a single trip, resulting in significant cost savings over other techniques that require multiple wireline or rig work to trip in and out of the hole in between treatment stages.” Tolman, 28:57–61; see also Ans. 3. Vaynshteyn discloses using “any type of telemetry system, such as, mud pulse, acoustic telemetry, electromagnetic, hard wired pipe connections, but is preferably used with wired drill pipe telemetry.” Vaynshteyn ¶ 16. That Vaynshteyn prefers wired pipe does not negate a disclosure of LWD/MWD tools such as mud pulse or acoustic telemetry. Indeed, Vaynshteyn discloses that “the telemetry system may include any combination of telemetry in series or in parallel, such as wired drill pipe and mud pulse.” Id. Given that Vaynshteyn discloses that LWD or MWD tools Appeal 2020-005680 Application 14/786,869 6 can be used in conjunction with wired tools, and given that Tolman discloses a single trip, we are not apprised that the combined teachings of Tolman and Vaynshteyn do not suggest the one trip completion tool as recited in claim 1. Further, because claim 1 does not exclude a wireline, Tolman and Vaynshteyn do not teach away from the claimed invention by using a wireline. Claims 8, 13–15, 17 In the Reply Brief, Appellant argues that claims 8 and 14 recite that the LWD tool or MWD tool does not require a wireline. Reply Br. 3. According to Appellant, each of the references requires a wireline, and the Examiner does not appear to address this limitation. Id. We disagree. In rejecting claims 8 and 14, the Examiner finds that Tolman discloses data transmission using “either a wireline or fiber optic transmission.” Final Act. 6 (citing Tolman, 22:43–52). Based on this disclosure, we understand that a fiber optic cable is different from and an alternative to a wireline. Appellant does not argue otherwise. Although we appreciate that a wireline is not required, claims 8 and 14 do not appear to exclude transmission via fiber optics. As noted above, Vaynshteyn discloses that LWD or MWD tools can be used in conjunction with wired tools. Appellant does not explain adequately why using Vaynshteyn’s LWD tool or MWD tool in conjunction with Tolman’s fiber optic cable is not using LWD or MWD tools without a wireline as required by claims 8 and 14. For the above reasons, we sustain the rejection of claims 1, 8, and 14, and claims 2, 7, 13, 15, and 17 depending therefrom as unpatentable over Tolman, Vaynshteyn, and Billingham. Appeal 2020-005680 Application 14/786,869 7 Rejections II–IV; Obviousness of Claims 3–5, 9–11, 16, 18, and 19 Appellant relies on the arguments for claims 1, 8, and 14, and does not argue separately for the patentability of claims 3–5, 9–11, 16, 18, and 19. See Appeal Br. 13; see also Reply Br. 4. For the same reasons discussed above, we sustain the rejection of claims 3, 9, and 16 as unpatentable over Tolman, Vaynshteyn, Billingham, and Barton (Rejection II), the rejection of claims 4, 10, and 18 as unpatentable over Tolman, Vaynshteyn, Billingham, and Erkol (Rejection III), and the rejection of claims 5, 11, and 19 as unpatentable over Tolman, Vaynshteyn, Billingham, and Saurer (Rejection IV). CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 7, 8, 13–15, 17 103 Tolman, Vaynshteyn, Billingham 1, 2, 7, 8, 13–15, 17 3, 9, 16 103 Tolman, Vaynshteyn, Billingham, Barton 3, 9, 16 4, 10, 18 103 Tolman, Vaynshteyn, Billingham, Erkol 4, 10, 18 5, 11, 19 103 Tolman, Vaynshteyn, Billingham, Saurer 5, 11, 19 Overall Outcome 1–5, 7–11, 13–19 Appeal 2020-005680 Application 14/786,869 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED