BAKER HUGHES INCORPORATEDDownload PDFPatent Trials and Appeals BoardMay 28, 202014957589 - (D) (P.T.A.B. May. 28, 2020) Copy Citation 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. 14/957,589 12/02/2015 Scott G. Nelson 020569-36700 (CT4-58286) 3468 71762 7590 05/28/2020 JONES DELFLACHE LLP 1333 HEIGHTS BOULEVARD SUITE 300 HOUSTON, TX 77008 EXAMINER SUE-AKO, ANDREW B. ART UNIT PAPER NUMBER 3674 MAIL DATE DELIVERY MODE 05/28/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT G. NELSON, JIMIE DEVON LEMONS, D.V. SATYANARAYANA GUPTA, HAROLD DEAN BRANNON, ANNA JENSEN, BENJAMIN TATUM, and ALEXANDER PIROGOV Appeal 2019-003145 Application 14/957,589 Technology Center 3600 Before DANIEL S. SONG, JILL D. HILL, and MICHAEL L. WOODS, Administrative Patent Judges. SONG, 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 1–11, 15, 20, and 22–30. 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 the real party in interest as Baker Hughes Incorporated. Appeal Br. 1. Appeal 2019-003145 Application 14/957,589 2 CLAIMED SUBJECT MATTER The claims are directed to a method of enhancing circulation during drill-out of a wellbore barrier using dissolvable solid particulates. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of enhancing the efficiency in the removal of debris from a wellbore penetrating a multi-zoned subterranean reservoir wherein the debris originates, at least in part, from more than one fluid-impermeable barrier separating perforated zones, the method comprising: (a) breaking a fluid-impermeable barrier which separates two perforated zones into pieces and creating a flow path between the perforated zones; (b) circulating a fluid through the well bore and into the created flow path, wherein the fluid comprises water or brine and dissolvable solid particulates; (c) collecting debris within the flow path in the circulating fluid, wherein the debris includes pieces broken from the fluid- impermeable barrier in step (a); (d) preventing flow of the circulating fluid with the collected debris into the perforated zones by plugging perforation clusters with the dissolvable solid particulates; (e) removing the circulating fluid with the collected debris from the well bore; (f) after removal of the collected debris from the well bore, breaking another fluid impermeable barrier farther removed from the wellbore into pieces and creating a flow path between perforated zones separated by the another fluid-impermeable barrier; and (g) repeating steps (b) through (f). Appeal 2019-003145 Application 14/957,589 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ischy et al. US 5,990,051 Nov. 23, 1999 Willberg et al. US 2008/0200352 A1 Aug. 21, 2008 Williamson US 2011/0036564 A1 Feb. 17, 2011 Shkurti et al. US 2011/0259610 A1 Oct. 27, 2011 Gupta US 2013/0341025 A1 Dec. 26, 2013 REJECTIONS The Examiner rejects various claims under 35 U.S.C. § 103 as follows: 1. Claims 1–5, 10, 11, 15, 20, and 22–25 as unpatentable over Williamson in view of Willberg, as evidenced by Ischy. Final Act. 3. 2. Claims 6–9 as unpatentable over Williamson in view of Willberg, as evidenced by Ischy, further in view of Gupta. Final Act. 12. 3. Claim 30 as unpatentable over Williamson in view of Willberg, as evidenced by Ischy, and further in view of Shkurti. Final Act. 13. 4. Claims 26–28 as unpatentable over Williamson in view of Willberg and Shkurti, as evidenced by Ischy. Final Act. 13. 5. Claim 29 as unpatentable over Williamson in view of Willberg and Shkurti, as evidenced by Ischy, and further in view of Gupta. Final Act. 17. OPINION Rejection 1: Williamson, Willberg, Ischy The Examiner rejects claims 1–5, 10, 11, 15, 20, and 22–25 as unpatentable over Williamson in view of Willberg, as evidenced by Ischy. Appeal 2019-003145 Application 14/957,589 4 Final Act. 3. The Appellant argues all of the claims in this rejection together, and thus, we select claim 1 as representative. As to independent claim 1, the Examiner finds that Williamson discloses the invention substantially as claimed, including the recited steps of “(a) breaking a fluid-impermeable barrier which separates two perforated zones into pieces and creating a flow path between the perforated zones.” Final Act. 3–4. The Examiner concedes that Williamson does not describe the fluid as comprising “water or brine and dissolvable solid particulates.” Final Act. 5. The Examiner relies on Willberg for disclosing such a circulating fluid for well bore2 cleanout, and concludes that it would have been obvious to one of ordinary skill in the art to have used the circulating fluid of Willberg in Williamson for well bore cleanout. Final Act. 5. The Examiner further explains that claim 1 is obvious because it is no more than the use of familiar elements (known degradable materials as in Willberg) according to known techniques (known milling/cleaning as in Williamson and known plugging perforations with a cleaning fluid as in Willberg) in a manner that achieves predictable results (known multi-zonal fracturing treatment as in Williamson). Final Act. 6. The Appellant initially argues that “[t]here is no disclosure in Williamson to the plugging of a perforation cluster” or disclosure “relating to dissolvable solid particulates in a circulating fluid.” Appeal Br. 7, citing Williamson ¶ 34. However, the rejection relies on Willberg for disclosing such a fluid having dissolvable solid particulates that would plug the perforation cluster upon circulation. Final Act. 3; see also Ans. 4 (“these 2 The record utilizes the terms “well bore” and “wellbore” interchangeably. Appeal 2019-003145 Application 14/957,589 5 limitations are taught by Willberg.”); Willberg, Abstract, ¶¶ 33, 35. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Appellant also argues that “Williamson relates to removing the plugs intact in a single step.” Appeal Br. 10; see also Reply Br. 3 (“Williamson teaches a mechanical device which enables the removal (retrieval) of all of the plugs in tandem upon completion of stimulation.”). Accordingly, the Appellant argues that “the circulating fluid of Williamson would not flow ‘past the removed plug down to the next plug,’” and that Williamson “only discloses a circulating fluid as the fluid which removes debris prior to movement of the barrier downward to the lower barrier.” Appeal Br. 8–9. These arguments are unpersuasive because the Appellant only focuses on a typical mode of operation disclosed in Williamson, and does not address the rejection, which is based on Williamson’s additional teaching of milling the plug if it is stuck. In particular, as the Examiner points out and explains, Williamson discloses that “[a]s an added advantage, the plug’s components in this set condition are prevented from rotating, which can make milling of the plug 100 easier if needed when the plug 100 is stuck or the like.” Williamson ¶ 46; Final Act. 3; Ans. 5. Thus, the rejection is based on Williamson’s disclosure of milling of the plug, not on its tandem removal of the plugs. The Appellant further argues that milling of the plug disclosed in Williamson “does not suggest or imply that a flow path is created as claimed,” and that “[t]here simply is no reason to conclude that the upper Appeal 2019-003145 Application 14/957,589 6 plug of Williamson is milled into pieces to the extent the barrier is broken or removed such that a flow path is created.” Appeal Br. 10, 11. The Appellant asserts that milling in Williamson “only relates to the plugging of the zones during the stimulation operation.” Reply Br. 5. We do not find these arguments persuasive. To the contrary, we agree with the Examiner’s finding that: “Milling of the plug” refers to, e.g., “In milling, a milling cutter is used to grind the tool, or at least the outer components thereof, out of the well bore” (see Shkurti [0010]). Appellant even uses the same meaning for “milling” in the Specification (e.g., [0004] “In drill-out, the barrier is first milled leaving behind debris, such as rubber and metal”). Ans. 5. Indeed, Shkurti clearly evidences that “milling of plugs” as used in the art of well bore drilling, refers to the process of removing the plugs from the well bore, and the evidence further indicates that such milling of the plugs is a well-known practice in the art of drilling well bores. See Shkurti ¶ 10 (“In milling, a milling cutter is used to grind the tool, or at least the outer components thereof, out of the well bore.”); ¶ 59 (“during a drilling/milling process, i.e. drilling/milling the frac plug out of the casing, the cones 110, 112, element barrier assemblies 116, and sealing element 114 are more easily and quickly drilled out, because the components do not spin relative to one another.”); ¶ 105 (“it may be more economical to drill out or mill out the frac plug, and the designs and materials of each component of the frac plug may be chosen with this end in mind.”). Accordingly, based on the preponderance of the evidence, we agree with the Examiner that Williamson “disclose[s] milling/drilling/breaking into pieces the plug, as claimed.” Ans. 5. Moreover, based on the Appeal 2019-003145 Application 14/957,589 7 preponderance of the evidence, we further agree with the Examiner that it does not make sense that “a milling cutter could grind the plug out of the well bore and yet the plug would not be broken or removed such that a flow path is created,” and find that such a flow path would be created upon milling. Ans. 6; see also In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (an artisan must be presumed to know something about the art apart from what the references disclose); Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013) (prior art of record not specifically relied upon in the rejection considered as evidence of the state of the art, common knowledge, and common sense of one of ordinary skill in the art). The Appellant has not provided any persuasive evidence or argument that establishes the contrary. The Appellant also argues that Williamson “do[es] not reference milling of the plug and then clearing debris prior to releasing the upper plug,” and “does not disclose removing the plug in between the clearing away of debris from two zones.” Reply Br. 7. These arguments are again unpersuasive in view of the above discussion. In accordance with the disclosure of Williamson, debris is initially cleared from the plug, for example, the upper plug, so that it can be removed. However, if the plug is stuck, it is milled, and thus, removed. Milling of the plug results in the adjacent perforated zones previously separated by the plug to be fluidically connected such that the debris of the milled plug now resides in the two connected perforated zones. In seeking to remove the subsequent lower plug, the debris stemming from the milled plug is also cleared from the lower plug. Thus, milling of the upper plug would necessarily precede circulating fluid to clear debris from the subsequent lower plug, and the Examiner is correct that “the debris is also removed from the 2nd plug after the removal of the uppermost bridge plug by milling, as claimed.” Ans. 6; Appeal 2019-003145 Application 14/957,589 8 see also Ans. 4 (“(a) milling of the plug . . . . precedes (b) circulating fluid to clear debris. . . . Williamson plainly discloses washing the plug of debris, removing the plug, washing the next plug of debris, removing the next plug, etc. Appellant has not actually provided any evidence otherwise.”). The Appellant also asserts that “the milling of the plug referenced by Williamson does not occur during the retrieval process of the plug.” Reply Br. 8. We find no basis for this assertion, and the relevance thereof is not readily apparent considering that as discussed above, the teachings of Williamson results in the recited steps of claim 1. The Appellant further argues that in the claimed invention, the collected debris “includes pieces from the barrier (plug). Williamson doesn’t reference removing debris originating from the plug with the circulating fluid. The debris removed in Williamson is the debris from the fracturing operation.” Appeal Br. 11. Likewise, the Appellant argues that “Willberg provides no indication that a fluid containing a degradable material could be circulated into the wellbore after breaking apart a fluid-impermeable barrier. Neither does Willberg provide any indication for the removal of collected debris from the wellbore in the fluid.” Appeal Br. 14–15; see also Reply Br. 9. These arguments are unpersuasive because the debris from Willberg’s milled plug would not have anywhere to go except into the circulating fluid. The circulated fluid cannot distinguish the types of debris so as to remove only the debris from fracturing at the exclusion of debris from milling. Accordingly, we agree with the Examiner that “the milled plug debris in Williamson would also necessarily be swept away by the circulated fluid.” Ans. 7. The Appellant also argues that there is no motivation to modify Williamson in the manner suggested because “[n]othing in Williamson Appeal 2019-003145 Application 14/957,589 9 suggests breaking apart the bridge plug or removal of the bridge plug, much less creating a flow path between two perforated zones.” Appeal Br. 12–13. This argument is unpersuasive for the reasons already addressed above in that no modification is needed except for the use the fluid of Willberg for well bore cleanout. The Appellant further argues that the claimed method is continuous and repetitive. Appeal Br. 13. However, the Examiner is correct that “Williamson plainly discloses ‘These steps are repeated to retrieve other bridge plugs (i.e., 100A) lower downhole.’” Ans. 7, quoting Williamson ¶ 38. Indeed, it would have been obvious to one of ordinary skill in the art to have repeated the above discussed steps in accordance with Williamson if multiple plugs were stuck. See also Ans. 6. The Appellant also argues that in the claims, “the barriers are removed in a sequential order but not in a single step,” whereas “[i]n Williamson, the fluid-impermeable barrier is removed from the wellbore in tandem in a single step.” Appeal Br. 14; see also Reply Br. 3. Again, while this may be applicable to the typical mode of operation disclosed in Williamson, it is not pertinent to the rejection that is based on the disclosure in Williamson of milling a stuck plug. The Appellant further argues that the Examiner’s rejection engages in impermissible hindsight. Appeal Br. 18. However, this argument is also unpersuasive because as discussed above, the Examiner’s rejection is based on the actual disclosure of Williamson. Therefore, in view of the above, it is apparent that Appellant’s arguments do not fully consider the method steps that result from the teachings of Williamson and how these steps satisfy the claim language. Accordingly, we affirm the Examiner’s rejection of independent claim 1. As Appeal 2019-003145 Application 14/957,589 10 noted, the Appellant argues all of the claims in this rejection together. Thus, we likewise affirm the Examiner’s rejection of claims 2–5, 10, 11, 15, 20, and 22–25 as well. Rejections 2–5 The Appellant argues that Rejections 2–5 should be reversed because the tertiary references relied upon by the Examiner in these rejections do not cure the deficiencies of the combination of Williamson and Willberg as applied in Rejection 1. Appeal Br. 19. However, having found no deficiencies as to Rejection 1, we affirm Rejections 2–5 as well. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 10, 11, 15, 20, 22–25 103 Williamson, Willberg 1–5, 10, 11, 15, 20, 22– 25 6–9 103 Williamson, Willberg, Gupta 6–9 30 103 Williamson, Willberg, Shkurti 30 26–28 103 Williamson, Willberg, Shkurti 26–28 29 103 Williamson, Willberg, Shkurti, Gupta 29 Overall Outcome 1–11, 15, 20, 22–30 Appeal 2019-003145 Application 14/957,589 11 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation