Jai Koli et al.

Patent Trials and Appeals BoardJun 2, 2021

2020003899 (P.T.A.B. Jun. 2, 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. 15/680,456 08/18/2017 Jai Kishan Koli ICD4-63591-US-NP 1027 44639 7590 06/02/2021 CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER ANDREWS, DAVID L ART UNIT PAPER NUMBER 3672 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JAI KISHAN KOLI, BRITAIN A. FISHER, and AARON C. HAMMER __________ Appeal 2020-003899 Application 15/680,456 Technology Center 3600 __________ Before PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and TARA L. HUTCHINGS, Administrative Patent Judges. REIMERS, 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 1–4, 8–14, and 18–20. Appeal Br. 14– 16 (Claims App.). Claims 5–7 and 15–17 have been canceled. Id. at 14, 16. We have jurisdiction under 35 U.S.C. § 6(b). 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 Baker Hughes, a GE Company LLC. Appeal Brief (“Appeal Br.”) 1, filed Feb. 7, 2020. Appeal 2020-003899 Application 15/680,456 2 We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to a tube inflow control device (ICD) for regulating the pressure of production fluid, such as oil or gas entering a base pipe of a production string. Spec. ¶¶ 1, 3. Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A system, comprising: a tube inflow control device (ICD) including a tube input port and configured to convey fluid along an axial length of a tube of the tube ICD, wherein the axial length of the tube controls a drop in pressure of the fluid between the tube input port and a corresponding tube output port; and a base pipe with an input port coupled to the tube output port of the tube of the tube ICD, wherein the base pipe is configured to convey the fluid to a surface, wherein a cross- section of the tube of the tube ICD is not uniform over the axial length of the tube, the cross-section of the tube at the tube input port is an input cross-section, the cross-section of the tube at the tube output port is an output cross-section, the cross-section of the tube transitions along the axial length from a first cross- section that is different from the input cross-section and the output cross-section to a second cross-section to a third cross- section that is different from the input cross-section and the output cross-section, a length of the tube of the tube ICD having the second cross-section is longer than a length of the tube of the tube ICD having the first cross-section and the third cross- section, and a volume available to convey the fluid is different based on the first cross-section and the second cross-section. Appeal 2020-003899 Application 15/680,456 3 THE REJECTIONS Claims 1–4, 10–12, 14, and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over Franklin (US 2015/0292300 A1, published Oct. 15, 2015) and Richards ̓ 743 (US 7,469,743 B2, issued Dec. 30, 2008). Claims 8, 13, and 18 stand rejected under 35 U.S.C. § 103 as unpatentable over Franklin, Richards ʼ743, and Voll (US 6,112,817, issued Sept. 5, 2000). Claims 9 and 19 stand rejected under 35 U.S.C. § 103 as unpatentable over Franklin, Richards ̓ 743, and Richards ̓ 588 (US 2008/0041588 A1, published Feb. 21, 2008). ANALYSIS Franklin and Richards ̓ 743 Claims 1–4, 10–12, 14, and 20 Claim 1 recites a system having a tube ICD in which “a length of the tube of the tube ICD having [a] second cross-section is longer than a length of the tube of the tube ICD having [a] first cross-section and [a] third-cross- section.” Appeal Br. 14 (Claims App.). Claim 11 recites a method of assembling tubing including similar language. Id. at 15. The Examiner finds that Richards ʼ743 would have suggested modifying the ICD described by Franklin so as to provide the ICD with first, second, and third cross- sections having lengths meeting the quoted limitation. Non-Final Act. 3–5; see also Ans. 3–7.2 2 Non-Final Office Action (“Non-Final Act.”), dated Sept. 30, 2019; Examiner’s Answer (“Ans.”), dated Mar. 6, 2020. Appeal 2020-003899 Application 15/680,456 4 Figure 2 of Franklin, reproduced below, is a cross-sectional view of a portion of a well system. Franklin ¶ 12, Fig. 2. The structure depicted in Figure 2 of Franklin shows an enlarged cross- sectional view of a portion of a well system that includes flow control device 116 formed within housing 202 and operably coupled to base pipe 112, and a portion of well screen 114. Id. ¶ 26. Housing 202 has cavity 204, which receives flow control device 116. Id. ¶ 27. Flow control device 116 has inlet 208 at one end, outlet 212 at the other end, and reduced-diameter flow chamber 210 connecting the inlet and outlet. Id. ¶¶ 28–29. Fluid 206 enters and exits through the inlet and outlet, respectively. Id. Franklin teaches that “multiple flow control devices 116 may be arranged in series (e.g., outlet to inlet arrangement of flow control devices 116) within the housing 202 and configured to receive the fluid 206 in series sequence from one or more well screens 114.” Id. ¶ 30. Based on this teaching, the Examiner finds that an ordinarily skilled artisan would have had reason to arrange two flow control devices 116 (characterized by the Examiner as the claimed ICD) outlet-to-inlet. Non-Final Act. 3. Appeal 2020-003899 Application 15/680,456 5 To illustrate this point, the Examiner modifies Franklin’s Figure 2 to show flow control device 116 connected in series, outlet-to-inlet, with another flow control device 116, as reproduced below. Non-Final Act. 4. The modified figure depicts a cross-sectional view of an upstream flow control device having an outlet connected with an inlet of a downstream flow control device. Id. The Examiner annotates this modified figure to identify an inlet cross-section at the inlet of an upstream flow control device, an outlet cross-section at the outlet of the downstream flow control device, a second cross-section where the outlet of the upstream flow control device abuts the inlet of the downstream flow control device, a first cross-section corresponding to reduced diameter flow chamber of the downstream flow control device, and a third cross-section corresponding to reduced diameter flow chamber of the upstream flow control device. Id. at 3. The Examiner acknowledges that the two ICDs, arranged outlet-to- inlet, do not satisfy the limitation, “a length of the tube of the tube ICD having the second cross-section is longer than a length of the tube of the tube ICD having the first cross-section and the third-cross-section,” as recited in claim 1. Non-Final Act. 5. The Examiner turns to the teachings of Richards ʼ743 to explain why it would have been obvious to modify Franklin to teach this limitation. Id. Appeal 2020-003899 Application 15/680,456 6 Richards ’743 relates to inflow control devices for sand control screens used with subterranean wells. Richards ’743 1:14–18. Figures 3 and 4 of Richards ̓ 743 depict ICD 34 for use in a well screen. Id. at 2:14– 17, 4:25–43, Figs. 3, 4. ICD 34 has flow restrictors 30 installed in bulkhead 46 and flow restrictors 24 installed in bulkhead 54, where the flow restrictors 24, 30 extend into central chamber 36. Id. at 4:52–53, 5:24–27, Fig. 3. In particular, a row of tubular flow restrictors 30 partially embedded in bulkhead 46 extend into chamber 36 to restrict flow from annular space 28 outside ICD 34 into chamber 36. Id.; see also id. at 4:52–57, 5:10–11. Another row of tubular flow restrictors 24 embedded in bulkhead 54 conduct fluid out of chamber 36 toward port 56, through which the fluid may enter base pipe 90. Id. at 3:36–37, 5:24–33, Fig. 3. Because open ends of flow restrictors 24, 30 are offset from one another, fluid moving through chamber 36 follows a tortuous path that promotes pressure drop. Id. at 5:11–16. Richards ʼ743 teaches that the “pressure drop between the annular space 28 and the chamber 36 may be adjusted by . . . varying the inner diameter, length and other characteristics of the flow restrictors.” Id. at 4:58–65. Relying on these teachings of Richards ʼ743, the Examiner finds that the proposed modification of Franklin’s ICDs such that the combined length of the outlet of the upstream ICD and the inlet of the downstream ICD is greater than the lengths of the flow chambers of the ICDs would provide a desired flow and pressure drop, “since modifying a result effective variable (i.e. length of a reduced diameter section of an inflow control device) to provide optimization (as may be dictated in any particular wellbore environment where a particular pressure drop/inflow may be desired) is Appeal 2020-003899 Application 15/680,456 7 considered obvious to one of ordinary skill.” Non-Final Act. 5; see also Ans. 5–7. The Examiner’s reasoning is not persuasive for the following reasons. In particular, Richards ̓ 743 describes its ICDs as operating in a different manner than that of Franklin’s ICDs. Franklin teaches that it is the configuration of reduced diameter flow chambers 210 that controls the pressure drop across ICD 116. Franklin ¶ 28; see also Appeal Br. 9 (“In Franklin, as stated in paragraph [0029], for example, the reduced cross- section of the flow chamber 210 is relied on to decrease the pressure and, thus, increase the velocity of fluid 206 that exits at the outlet 212.”); see also Reply Br. 3.3 Franklin does not teach or suggest configuring either inlet 208 or outlet 212 to help control the pressure drop across the ICD. See Franklin ¶¶ 28–29. Furthermore, the flow restrictors described by Richards ʼ743 have neither inlets nor outlets comparable to those described by Franklin. Reply Br. 2. The absence of such inlets or outlets from the flow restrictors described by Richards ʼ743 diminishes the relevance of the teachings of Richards ʼ743 to any proportionate lengthening or shortening of Franklin’s inlets and outlets. Id. (“None of the embodiments of Richards [ʼ743] includes a flow restrictor with an inlet and outlet of different cross-sections.” As such, “Richards [ʼ743] does not inform [the ordinarily skilled artisan] whether the inlet 208 and outlet 212 portions [of Franklin] would be extended or the flow chamber 210 [of Franklin] would be reduced” in order to meet the claim limitation of “a length of the tube of the tube ICD having 3 Reply Brief (“Reply Br.”), filed Apr. 29, 2020. Appeal 2020-003899 Application 15/680,456 8 the second cross-section is longer than a length of the tube of the tube ICD having the first cross-section and the third cross-section.”). In addition, Richards ʼ743 describes the tortuous path that fluid moving between flow restrictors 24, 30 in chamber 36 follows as contributing to the pressure drop through its ICD. Richards ̓ 743 5:11–16. The Examiner does not identify any structure in Franklin’s ICD that defines a similar tortuous path. See generally, Non-Final Act., Ans. In view of these distinctions, the Examiner has not provided a persuasive reason why the teachings of Richards ʼ743 regarding its flow restrictors would have suggested to an ordinarily skilled artisan that the proportionate length of the inlet or outlet of Franklin’s ICD should increase relative to the proportionate length of Franklin’s reduced diameter flow chambers. See Appeal Br. 10; see also Reply Br. 2. Moreover, neither Franklin nor Richards ʼ743 teaches or suggests the use of a transition from one cross-section to another within a tubular conduit in a tube ICD to regulate pressure drop across the ICD. The Examiner cites Franklin’s teaching that “reduced-diameter flow chamber 210 may be configured to regulate fluid flow through the flow control device 116 by generating a pressure drop across the flow control device 116 that generally restricts the fluid flow therethrough” as evidence that a change in cross- section along the length of a tubular conduit can be used to control pressure drop. Ans. 5 (quoting Franklin ¶ 28). However, this passage merely suggests that lengthening or shortening chamber 210, which is depicted in Figure 2 of Franklin as having a uniform cross section, may help to control pressure drop. See Reply Br. 3. Likewise, the Examiner cites a number of passages from Richards ʼ743 as teaching or suggesting that one may change Appeal 2020-003899 Application 15/680,456 9 the length of a flow restrictor in order to obtain a desired pressure drop across an ICD. Ans. 6. However, these disclosures only teach or suggest lengthening or shortening of an internal flow chamber in an ICD without suggesting any variation in the cross-section of that chamber. See Reply Br. 3 (“[The] reduced diameter flow paths [of the cited passages of Richards ʼ743] do not include a change in cross-section along the length of the flow path.”). The Examiner does not provide sufficient evidence or reasoning proposing otherwise. See Ans. 6. Lastly, the Examiner’s reliance on optimization as a reason for modifying the proportionate width of the facing outlet and inlet of two ICDs arranged outlet-to-inlet is not persuasive. The Examiner finds that the “length of a reduced diameter section of an inflow control device” is result effective with respect to optimizing the pressure drop or flow into a base pipe in a particular production string. Non-Final Act. 5. Even assuming this to be the case, the fact that merely adjusting the length of a reduced diameter section of an ICD might result in lengthening or shortening the reduced diameter flow chamber of an ICD, does not necessarily result in the length of the facing outlet and inlet of two ICDs arranged outlet-to-inlet exceeding the lengths of the reduced diameter flow chambers as claimed. See Reply Br. 2–3. As such, the Examiner’s reasoning does not inherently suggest that a tube ICD in which “a length of the tube of the tube ICD having [a] second cross-section is longer than a length of the tube of the tube ICD having [a] first cross-section and [a] third-cross-section,” as recited in claims 1 and 11, necessarily would have been obvious to an ordinarily skilled artisan from the combined teachings of Franklin and Richards ʼ743. Appeal 2020-003899 Application 15/680,456 10 Accordingly, for these reasons, we do not sustain the Examiner’s rejection of claims 1–4, 10–12, 14, and 20 as unpatentable over Franklin and Richards ʼ743. Franklin, Richards ̓ 743, and Voll Claims 8, 13, and 18 Claim 8 depends from independent claim 1 and claims 13 and 18 depend from independent claim 11. Appeal Br. 14–16 (Claims App.). The Examiner cites Voll as teaching a tube ICD having one or more tubes coiled around an outer surface of a base pipe. Non-Final Act. 5–6 (citing Voll, Fig. 3). This teaching fails to remedy the deficiencies in the combined teachings of Franklin and Richards ʼ743 as applied to independent claims 1 and 11. Accordingly, we do not sustain the Examiner’s rejection of claims 8, 13, and 18 as unpatentable over Franklin, Richards ʼ743, and Voll. Franklin, Richards ̓ 743, and Richards ̓ 588 Claims 9 and 19 Claim 9 depends from independent claim 1 and claim 19 depends from independent claim 11. Appeal Br. 14–16 (Claims App.). The Examiner cites Richards ̓ 588 as teaching an ICD having a flow restrictor with a serpentine shape. Non-Final Act. 6 (citing Richards ʼ588, Fig. 4). This teaching fails to remedy the deficiencies in the combined teachings of Franklin and Richards ʼ743 as applied to independent claims 1 and 11. Accordingly, we do not sustain the Examiner’s rejection of claims 9 and 19 as unpatentable over Franklin, Richards ʼ743, and Richards ʼ588. Appeal 2020-003899 Application 15/680,456 11 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 10–12, 14, 20 103 Franklin, Richards ʼ743 1–4, 10–12, 14, 20 8, 13, 18 103 Franklin, Richards ʼ743, Voll 8, 13, 18 9, 19 103 Franklin, Richards ʼ743, Richards ʼ588 9, 19 Overall Outcome 1–4, 8–14, 18–20 REVERSED