Halliburton Energy Services, Inc.

Patent Trials and Appeals Board

Mar 18, 2022

2021005454 (P.T.A.B. Mar. 18, 2022)

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. 15/556,708 09/08/2017 William Mark Richards 2014-098000 U1 US 6317 142050 7590 03/18/2022 HALLIBURTON ENERGY SERVICES, INC. C/O PARKER JUSTISS, P.C. 14241 DALLAS PARKWAY SUITE 620 DALLAS, TX 75254 EXAMINER YAO, THEODORE N ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 03/18/2022 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 WILLIAM MARK RICHARDS and WILLIAM DAVID HENDERSON Appeal 2021-005454 Application 15/556,708 Technology Center 3600 ____________ Before HUBERT C. LORIN, KENNETH G. SCHOPFER, and TARA L. HUTCHINGS, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3, 8-15, 19, 21, and 23-28. 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. Appellant identifies the real party in interest as Halliburton Energy Services, Inc. Appeal Br. 3. Appeal 2021-005454 Application 15/556,708 2 BACKGROUND The Specification describes as background that “[i]n the drilling, completion, or reworking of oil wells, a great variety of downhole tools are used including packer assemblies and bridge plugs.” Spec. 1, ll. 5-6. Packer assemblies are used “to separate the wellbore into one or more zones,” and can “include a packer element capable of providing an annular seal between a tubing string and a casing string, a slip that can retain the packer assembly in a position by gripping the casing string, a wedge that supports the slip, and a mandrel that provides support to the assembly.” Id. ll. 7-12. “The disclosure is directed to a back-up ring that expands up a ramp/conical surface on a retainer to retain a packer element. The back-up ring may also retain sealing pressure inside the packer element, and may prevent extrusion of the packer element.” Id. at 2, ll. 4-7. CLAIMS Claims 1, 14, and 27 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A method of retaining a packing element comprising: positioning a back-up ring assembly in contact with a packing element, the backup ring assembly comprising: a wedge shaped ring, including: an outer circumferential face, wherein the outer circumferential face defines an outer diameter of the wedge shaped ring and is configured to expand outwardly toward a wellbore casing or liner; a conical, inner circumferential face configured to contact at least one of: a portion of a retainer, a portion of a mandrel, and combinations thereof, wherein the conical, inner circumferential face defines an inner diameter of the wedge shaped Appeal 2021-005454 Application 15/556,708 3 ring and is angled relative to the outer circumferential face; and an axial end face configured to contact the packing element, wherein the axial end face is perpendicular to the outer circumferential face; and a spiral cut extending entirely through the wedge shaped ring between the outer circumferential face and the conical, inner circumferential face, the spiral cut making at least two full revolutions around the wedge shaped ring. Appeal Br. 17. REJECTIONS 1. The Examiner rejects claims 1-3, 8-10, 12-15, 19, 21, and 25-28 under 35 U.S.C. § 103 as unpatentable over Branton2 in view of Guest.3 2. The Examiner rejects claims 11 and 24 under 35 U.S.C. § 103 as unpatentable over Branton in view of Guest and Dockweiler.4 3. The Examiner rejects claim 23 under 35 U.S.C. § 103 as unpatentable over Branton in view of Guest and Themig.5 4. The Examiner rejects claims 1-3, 8-10, 12-15, 19, 21, 23, and 25-27 under 35 U.S.C. § 103 as unpatentable over Heiman6 in view of Guest. 5. The Examiner rejects claims 11, 24, and 28 under 35 U.S.C. § 103 as unpatentable over Heiman in view of Guest and Dockweiler. 2 Branton, US 9,260,936 B1, iss. Feb. 16, 2016. 3 Guest et al., US 2009/0126925 A1, pub. May 21, 2009. 4 Dockweiler, WO 2015/119602 A1, pub. Aug. 13, 2015. 5 Themig, US 2013/0192853 A1, pub. Aug. 1, 2013. 6 Heiman et al., US 2019/0360297 A1, pub. Nov. 28, 2019. Appeal 2021-005454 Application 15/556,708 4 DISCUSSION Rejections 1-3 Regarding claim 1, the Examiner finds that Branton teaches a method of retaining a packing element comprising positioning a back-up ring assembly including a wedge shaped ring as claimed, except that Branton does not teach that the spiral cut on the ring extends around two full revolutions of the ring, for which the Examiner relies on Guest. Final Act. 4-7. Regarding the ring specifically, the Examiner finds that Branton teaches a ring with an outer circumferential face 338, a conical, inner circumferential face 340, and an axial end face 339. Id. at 5-6 (citing Branton Fig. 36). We agree with and adopt the Examiner’s findings regarding Branton and Guest7 and the conclusion regarding obviousness with respect to this rejection of claim 1. See Final Act. 4-7; see also Ans. 4-10. Appellant argues that Branton does not teach a wedge shaped ring with “the claimed relative angular orientations of the surface.” Appeal Br. 10. In support, Appellant contends that the Examiner cannot rely on Branton’s Figure 35 because it “is of such poor quality and/or lacks sufficient detail such that it is in fact difficult to clearly see the angular orientations of its backup ring 360.” Appeal Br. 8. In contrast, Appellant asserts that Branton’s Figures 36-40 provide “great quality and/or detail . . . such that it is in fact easy to see the angular orientations of its backup ring 360.” Id. at 9. Appellant asserts that these figures show a ring in which the 7 We do not address the Examiner’s findings regarding Appellant’s Figures 3A-3C. Ans. 8-10. Appeal 2021-005454 Application 15/556,708 5 outer ring surface 339 is not perpendicular to the ring surface 338 and that no two surfaces in Branton’s ring are perpendicular to one another. Id. at 10. We are not persuaded of error because we agree with the Examiner that Branton at least suggests a perpendicular relationship between the surfaces in question, i.e., surface 338 and 339, when in use on a packing element, as shown in the Figures. See Ans. 6-7. Branton discloses “a longitudinal sectional view of the illustrative embodiment of the drillable downhole bridge plug or packer assembly” in Figure 35. Branton col. 4, ll. 47-49. Figures 36-40 provide various views of the backup ring element outside of the overall assembly structure. Id. col. 4, ll. 50-62. Figure 41 shows “a longitudinal sectional view of an illustrative embodiment of the drillable downhole bridge plug or packer assembly . . . with a pair of slip assemblies, a pair of cones and a pair of backup rings expanded against the interior surface of a well casing.” Id. col. 4, ll. 63-67. In use as shown in Figure 41, Branton explains that backup rings are compressed between the lower 13 and upper 19 cones and that “[t]he lower backup ring 360a and the upper backup ring 360b expand outwardly and engage the interior surface of the well casing 52. Id. col. 16, ll. 38-51. Neither Appellant nor the Examiner point us to any disclosure indicating that the relative angular orientations of the backup ring are more clearly displayed in any particular figure. Even though Figures 36-40 may show an enlarged view of the ring, the angles between the ring faces are not described or labeled. We see no real distinction in clarity between the angles of the backup ring as displayed in Figures 35 and 41 versus the angles of the ring displayed in Figures 36-40. Thus, we are not persuaded by Appeal 2021-005454 Application 15/556,708 6 Appellant’s indication that only Figures 36-40 can be relied upon to show the relative angular orientations in Branton’s ring. Further, we agree with the Examiner that the figures suggest that the faces at issue are perpendicular when the ring is in use, as depicted in Figures 35 and 41. Notably, Branton describes the ring being compressed and expanded such that its surfaces engage the edges of the cones and the interior surface of the well casing. Such engagement with these other surfaces would appear to require that the surfaces in question are perpendicular to each other when the backup ring is in use, which appears to be the case when depicted in use in Branton’s figures. We note that the claim does not require the specific angular orientation of the surfaces at any particular time, and thus, Branton’s suggestion that the surfaces are perpendicular is sufficient with respect to the obviousness rejection presented by the Examiner. Based on the foregoing, we are not persuaded of error in the Examiner’s finding that Branton teaches or suggests a wedge shaped back- up ring including an outer circumferential face and an axial end face that are perpendicular to each other. Accordingly, we sustain the rejection of claim 1 over Branton and Guest. Regarding the rejections of the remaining claims over Branton and the art of record, Appellant relies on the same arguments, and thus, we are also not persuaded of error in the rejections of those claims for the same reasons. Accordingly, we sustain these rejections as well. Rejections 4 and 5 With respect to claim 1, the Examiner finds that Heiman teaches a method of retaining a packing element including positioning a back-up ring assembly comprising a wedge shaped ring as claimed, except that Heiman Appeal 2021-005454 Application 15/556,708 7 does not disclose a spiral cut as recited in the claim. Final Act. 21-22. The Examiner relies on Guest as teaching a wedge shaped ring with a spiral cut as claimed and determines that it would have been obvious to modify Heiman to include a spiral cut as taught by Guest. Id. at 22-23. Regarding the ring as claimed, the Examiner finds that Heiman teaches a backup ring 50 with an outer circumferential face (“outer face 66”), a conical, inner circumferential face (“radially inner face 80”), and an axial end face (“downhole facing face at 54”) that is perpendicular to the outer circumferential face. Id. at 21-22 (citing Heiman Fig. 5). We agree with and adopt the Examiner’s findings and determination regarding the rejection of claim 1 over Heiman and Guest. See id. at 21-23; see also Ans. 11-13. As discussed below, we are not persuaded of error in this rejection by Appellant’s arguments. Appellant argues that the Examiner cannot rely on surface 80 as “a radially inner face” because it “is not radially inner at all.” Appeal Br. 14. Appellant asserts that “the surface 80 is in line with a radius of the backup ring 50, and thus is neither radially inner nor radially outer.” Id. However, absent further explanation, we agree with the Examiner that this argument is not persuasive. As the Examiner notes, the claim requires that the surface in question is “a conical, inner circumferential face,” and thus, it is not clear that it matters to the analysis whether this surface is labeled as an inner or outer radially surface or whether it “is neither radially inner nor radially outer.” Ans. 11-12. Further, we agree with the Examiner that this surface 80 is conical and defines an inner diameter of the ring that is angled relative to outer surface 66, as shown in Figure 5. See Ans. 12. We also agree that this surface 80 can be considered an inner surface when compared to surface Appeal 2021-005454 Application 15/556,708 8 66. Id. at 12-13. Specifically, it can be considered an inner surface relative to outer surface 66 because it is positioned inward of the outer surface 66 relative to the center of the well bore, as shown in Figure 5. Thus, absent any further explanation from Appellant,8 we are not persuaded of error in the rejection of claim 1 over Heiman and Guest. Accordingly, we sustain the rejection of claim 1. Regarding the rejections of the remaining claims over Branton and the art of record, Appellant relies on the same arguments, and thus, we are also not persuaded of error in the rejections of those claims for the same reasons. Accordingly, we sustain these rejections as well. CONCLUSION We AFFIRM the rejections of claims 1-3, 8-15, 19, 21, and 23-28. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 8-10, 12-15, 19, 21, 25-28 103 Branton, Guest 1-3, 8-10, 12-15, 19, 21, 25-28 11, 24 103 Branton, Guest, Dockweiler 11, 24 23 103 Branton, Guest, Themig 23 1-3, 8-10, 12-15, 19, 21, 23, 25- 27 103 Heiman, Guest 1-3, 8-10, 12-15, 19, 21, 23, 25- 27 11, 24, 28 103 Heiman, Guest, Dockweiler 11, 24, 28 8 We note that Appellant does not address the Examiner’s response regarding this rejection in the Reply Brief. Appeal 2021-005454 Application 15/556,708 9 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome 1-3, 8-15, 19, 21, 23- 28 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