Turner, Don

Patent Trials and Appeals BoardDec 13, 2019

14667758 - (D) (P.T.A.B. Dec. 13, 2019)

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. 14/667,758 03/25/2015 Don Turner THOLAM P574US 8697 20210 7590 12/13/2019 DAVIS & BUJOLD, P.L.L.C. 112 PLEASANT STREET CONCORD, NH 03301 EXAMINER QUAIM, LAMIA ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 12/13/2019 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): mbujold@nhpat.com patent@nhpat.com tclark@nhpat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte DON TURNER __________ Appeal 2019-004421 Application 14/667,758 Technology Center 3600 __________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. HOELTER, 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 1–25. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we do not find error in the Examiner’s rejection. Accordingly, we AFFIRM the Examiner’s rejection. 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 “Renown Down Hole Solutions Inc.” Appeal Br. 1. Appeal 2019-004421 Application 14/667,758 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a liner and bridge plug where both the liner and the bridge plug are installed in a well using a single trip of pipe.” Spec. ¶ 1. Method claim 1 and apparatus claim 14 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A method of installing a liner and a bridge plug in a hydrocarbon well, the hydrocarbon well comprising a first section having a casing and a second section below the first section, the second section comprising an open borehole, the method comprising the steps of: providing a tubing string that carries a bridge plug and a liner setting tool, the liner setting tool carrying a liner; inserting the tubing string into the hydrocarbon well until at least a portion of the liner extends into the second section of the hydrocarbon well; activating the liner setting tool to install the liner such that at least a bottom of the liner is open to the second section of the hydrocarbon well; activating the bridge plug to seal the second section of the hydrocarbon well, the bridge plug being anchored relative to the hydrocarbon well within or above the liner; and disengaging the tubing string from the activated bridge plug and the activated liner. REFERENCES RELIED ON BY THE EXAMINER Neal et al. US 2003/0024712 A1 Feb. 6, 2003 Popilian et al. US 2005/0150659 A1 July 14, 2005 Turley et al. US 2012/0205091 A1 Aug. 16, 2012 Appeal 2019-004421 Application 14/667,758 3 THE REJECTION ON APPEAL2 Claims 1–25 are rejected under 35 U.S.C. § 103 as being unpatentable over Turley, Popilian, and Neal. Final Act. 4. ANALYSIS Claims 1 and 14: Appellant argues independent claims 1 and 14 together. See Appeal Br. 3–9. We select claim 1 for review, with claim 14 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv). In regard to claim 1, the Examiner finds that Turley discloses a method of installing a liner (liner assembly 110) and a bridge plug (down- hole tool 300) in a hydrocarbon well (wellbore 65, well 90) comprising the steps of providing a tubing string 50 that carries the bridge plug and providing a liner setting tool that carries the liner. Final Act. 4–5 (citing Turley ¶¶ 5, 47, 48, 63, Fig. 12); see also Turley Figs. 1, 11. However, the Examiner acknowledges that Turley does not disclose the tubing string carrying both the bridge plug and the liner setting tool. Final Act. 5. On this point, the Examiner finds that Popilian discloses a tubing string (coiled running tube 30) that carries both a bridge plug 20 and a liner setting tool (liner hanger 12). Final Act. 5 (citing Popilian ¶¶ 12, 13, 19–21); see also Popilian Figs. 1, 5. The Examiner concludes that it would have been obvious to modify the method of Turley “with the coiled tubing that conveys both the bridge plug and liner into the well,” as disclosed by Popilian, “in order to save time and money during operation.” Final Act. 6. 2 In the Final Office Action, the disclosure is objected to for informalities. See Final Act. 2. However, the objection is not within the jurisdiction of the Board. See 37 C.F.R. § 1.181. Appeal 2019-004421 Application 14/667,758 4 The Examiner also acknowledges that the combination of Turley and Popilian does not disclose anchoring the bridge plug relative to the hydrocarbon well within or above the liner. Final Act. 6. The Examiner, however, finds that Neal discloses anchoring a bridge plug (bridge plug assembly 10) relative to a hydrocarbon well within a liner (tubing 16). Final Act. 6 (citing Neal Fig. 1). The Examiner concludes that it would have been obvious to modify the method of Turley, as modified by Popilian, to anchor the bridge plug within the liner as disclosed by Neal, “in order to isolate the zone to perform various operations such as perforations or chemical treatments.” Final Act. 6. Appellant contends that: (1) “the element taught by Turley [] is an annular seal, which is not equivalent to the presently claimed bridge plug;” (2) instead, Turley’s “bridge plug 300 – described more generally as downhole tool 300 – is positioned in the annular space formed between the inner surface of the casing and the outer surface of the tubing string” such that it “is incapable of sealing a second section of the hydrocarbon well when positioned within or above a liner;” (3) thus, Turley “merely seals an annular space between tubulars, leaving the central borehole open;” and (4) Turley “shows bridge plug 300 being used to seal around a tubing string that is inserted into a well, and not the wellbore.” Appeal Br. 5–6. Appellant’s contentions are unpersuasive. As to Appellant’s contention that Turley discloses an annular seal and not a bridge plug inserted into a wellbore (see (1) and (4) above), it is not disputed that Turley discloses, “[t]he tubing string 50 also carries a downhole tool 300, such as a packer, a bridge plug or any other downhole tool used to seal a desired location in a wellbore.” Turley ¶ 63 (emphasis added). The Examiner Appeal 2019-004421 Application 14/667,758 5 correctly states, “the claims merely recite ‘a bridge plug’ without any recitation of the specific type or structure of the bridge plug;” and, further, Appellant “has not claimed a specific type of bridge plug to differentiate it from the bridge plug of Turley.” Ans. 16. Additionally, Appellant has not explained how Turley’s wellbore cannot be correlated to the recited wellbore. Accordingly, and in view of Turley’s explicit disclosures, Appellant’s contentions (1) and (4) above are not persuasive of Examiner error. Regarding Appellant’s contention that Turley’s bridge plug 300 is positioned in an annular space and that it “is incapable of sealing” a central section of the well (see (2) and (3) above), we note that Appellant’s annular bridge plug 24 is illustrated in a similar location as disclosed in Turley and that Appellant’s bridge plug similarly seals the annular space between Appellant’s inner tubing string 32 and outer casing 12. Compare Turley Fig. 11 with Spec. Figs. 1–3. Further, regarding the bridge plug sealing a central portion of the borehole, Appellant’s Specification states, “[i]nstallation tool 20 may also include an upper valve 42 above valve 36 that can be closed to seal off the inner bore of installation tool 20” and that “[u]pper valve 42 may also play a role with respect to setting bridge plug 24, if it is hydraulically set.” Spec. ¶ 33 (emphasis added); see also Fig. 3. Thus, even if crediting Appellant’s argument that Turley uses a bridge plug that seals only an annular space and not a central borehole, Appellant illustrates and discusses similar structure of an annular bridge plug that relies on other centrally located components, such as valves 36 and 42, to seal off the central borehole. Furthermore, the Examiner states, “there is no limitation[] recited in the claims that specify that the activation of the bridge plug will seal the Appeal 2019-004421 Application 14/667,758 6 ‘central borehole.’” Ans. 16. Accordingly, and in view of the above, Appellant does not apprise us of Examiner error in relying on Turley for disclosing these teachings. See Final Act. 4–5. Appellant additionally contends that Popilian “does not teach a tubing string that carries a bridge plug and a liner setting tool prior to activation.” Appeal Br. 6. This is because Popilian “explicitly states that the plugs 20/124 are used to seal the well while a liner is assembled in preparation for being lowered into the well.” Appeal Br. 6. Thus, “[i]t is clear that, when the plugs 20/124 are run into the well, and prior to being activated, there is no liner in the well, and the plug 20/124 is run in on a separate tubing string that does not also carry a liner.” Appeal Br. 6; see also id. at 7. These contentions are unpersuasive. Claim 1 recites “providing a tubing string that carries a bridge plug and a liner setting tool, the liner setting tool carrying a liner.” Appeal Br. 10 (Claims App.). The Examiner correctly responds that “[t]here is no recitation of ‘prior to activation’ in claim[] 1.” Ans. 17. The Examiner continues, “nor is there any recitation of the liner and bridge plug being carried on the tubing string separately or simultaneously.” Ans. 17. The Examiner further correctly points out that because Popilian “[discloses that] the entire assembly 10, which includes the bridge plug 20 and liner hanger 12 can be run into the well using tubing 30,” Popilian therefore discloses the limitations of claim 1. Ans. 17–18 (citing Popilian ¶¶ 12, 20). We further note that the Examiner relies on Neal for disclosing installing a bridge plug within a liner, i.e., the liner is installed first and then the bridge plug is installed. See Final Act. 6. Appellant additionally contends that: (1) Popilian’s “plug would be incapable of ‘[sealing] the second section of the hydrocarbon well,’ as Appeal 2019-004421 Application 14/667,758 7 presently claimed;” (2) “there is no apparent reason to modify Popilian [] to allow it to ‘seal the second section of the hydrocarbon well’ and be ‘anchored . . . within or above the liner’ as presently claimed;” (3) Neal “does not teach a tubing string that carries the plug and the liner setting tool;” (4) modifying the disclosure of Popilian would change its principle of operation; and, (5) the Examiner’s rejection is based on improper hindsight reconstruction. Appeal Br. 7–8. Appellant’s contentions are unpersuasive in that they do not address the rejection. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references []. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner relies on Turley, rather than Popilian, for disclosing installing a liner and a bridge plug. See Final Act. 4–5. The Examiner relies on Popilian, rather than Neal, for disclosing a tubing string that carries both the bridge plug and the liner setting tool. See Final Act. 5. The Examiner relies on Neal, rather than Popilian, for disclosing anchoring a bridge plug within a liner and thus sealing a second section of the hydrocarbon well. See Final Act. 6. As such, Appellant’s contentions attack the cited references individually, rather than the teachings of the combination of references. The rejection does not propose modifying the method of Popilian, but rather, proposes modifying the method of Turley; and as such, the proposed modification would not change the principle of operation of Popilian. Further, the Examiner reasons that it would have been obvious to modify the method of Turley “with the coiled tubing that conveys both the bridge plug and liner into the well,” as Appeal 2019-004421 Application 14/667,758 8 disclosed by Popilian, “in order to save time and money during operation.” Final Act. 6. Additionally, the Examiner reasons that it would have been obvious to modify the method of Turley, as modified by Popilian, to anchor the bridge plug within the liner as disclosed by Neal, “in order to isolate the zone to perform various operations such as perforations or chemical treatments.” Final Act. 6. Thus, the Examiner’s rejection is based on evidence and sound technical reasoning rather than improper hindsight reconstruction. As such, Appellant does not apprise us of Examiner error. Accordingly, the rejection of claims 1 and 14 as being obvious over Turley, Popilian, and Neal is sustained. Claims 2–13 and 15–25: Claims 2–13 and 15–25 either depend directly or indirectly from claims 1 and 14, respectively. Appeal Br. 10–12 (Claims App.). Appellant contends that “claims 2–13 and 15–25 are also patentable over the cited references for at least the reason that they depend from either independent claim 1 or independent claim 14.” Appeal Br. 9. As we do not find error in the rejection of parent claims 1 and 14, the rejection of claims 2–13 and 15– 25 as being obvious over Turley, Popilian, and Neal is sustained for the same reasons discussed above. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–25 103 Turley, Popilian, Neal 1–25 Overall Outcome 1–25 Appeal 2019-004421 Application 14/667,758 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED