Ex Parte Du et al

Board of Patent Appeals and Interferences

Jul 20, 2012

11850243 (B.P.A.I. Jul. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL H. DU, GARY L. RYTLEWSKI, and
WILLIAM D. CHAPMAN
____________

Appeal 2010-007153
Application 11/850,243
Technology Center 3600
____________

Before LINDA E. HORNER, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007153
Application 11/850,243

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STATEMENT OF THE CASE
Michael H. Du et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision to reject under 35 U.S.C. § 102(b) claims 1-3, 12-
14, 18-25 and 29 as anticipated by Barrington (US 4,347,900, issued Sep. 7,
1982); and under 35 U.S.C. § 103(a): (1) claims 6-9, 15, 26 and 27 as
unpatentable over Barrington and Gazewood (US 5,526,888, issued Jun. 18,
1996); (2) claim 4 as unpatentable over Barrington and Restarick (US
2002/0112861 A1, published Aug. 22, 2002); and (3) claim 5 as
unpatentable over Barrington and Grigsby (WO 2005/045175 A2, published
May 19, 2005).1,2 Claims 10, 11, 16, 17 and 28 have been canceled.3 We
have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to methods and systems for moving
an upper completion into and out of engagement with a lower completion
positioned in a wellbore. Spec. 2, para. [0003].
Claims 1 and 12 are illustrative of the claimed invention and read as
follows:

1 The rejection under 35 U.S.C. § 102(b) of claims 1, 6-9, 12-15, 18, 21, 22
and 24-27 as anticipated by Gazewood has been withdrawn by the
Examiner (Ans. 2 and 7).
2 The Examiner also presents objections to the drawings. Final Rej. 2,
mailed Apr. 14, 2009. An objection is a petitionable matter and not an
appealable matter and is not within the jurisdiction of the Board. See
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) §§ 1002.02(c)(4) and
1201 (8th Ed., Rev. 8, Jul. 2010). In re Mindick, 371 F.2d 892, 894 (CCPA
1967).
3 Appellants canceled Claim 10 in an Amendment in Response to the Non-
Final Rejection, filed Jan. 26, 2009.
Appeal 2010-007153
Application 11/850,243

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1. A completion system, comprising:
a lower completion having a lower communication line;
an upper completion having an upper communication
line;
a latch mechanism positioned to enable selective
mechanical engagement and disengagement of the upper
completion with the lower completion while located in a
wellbore; and
a concentric union to enable connection of the upper
communication line with the lower communication line at a
range of rotational orientations of the upper completion relative
to the lower completion.

12. A method, comprising:
moving an upper completion into engagement with a
lower completion positioned in a wellbore;
latching the upper completion with the lower completion;
and
joining an upper communication line of the upper
completion with a lower communication line of the lower
completion via a union able to operationally join the upper
communication line and the lower communication line
regardless of the rotational orientation of the upper completion
relative to the lower completion.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
The anticipation rejection of claims 1-3, 12-14, 18-20, 25 and 29
Independent claim 1 requires a union (connection) of an upper
communication line of an upper completion and a lower communication line
of a lower completion, “at a range of rotational orientations of the upper
completion relative to the lower completion.” App. Br., Claims Appendix.
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Similarly, independent claims 12 and 25 require a union (connection) of an
upper communication line of an upper completion and a lower
communication line of a lower completion, “regardless of the rotational
orientation of the upper completion relative to the lower completion.” Id.
Pointing to Figure 3E of Barrington, the Examiner found that
Barrington teaches a method of enabling engagement and disengagement of
an upper completion 160 and lower completion 192 including an upper
communication line 100 and 268 and a lower communication line 100,
wherein an “annular ring” 206 (union) connects the upper and lower
communication lines regardless of the orientations of the upper and lower
completions relative to each other. Ans. 3-4. In other words, the Examiner
takes the position that annular ring 206 of Barrington permits fluid
communication between the upper and lower communication lines
regardless of the orientations of the upper and lower completions relative to
each other. Ans. 7.
Appellants argue that Barrington fails to teach or suggest a union or
any type of mechanism that connects upper and lower communication lines
regardless of the rotational orientation of the upper and lower completions,
as required by the claims. App. Br. 8. Specifically, according to Appellants,
Barrington teaches communication of fluid via “aligned ports” (e.g., 198,
206, 208) rather than an annular mechanism, as suggested by the Examiner.
App. Br. 7-8. See also, Barrington, fig. 3E. As such, Appellants conclude
that Barrington fails to teach or suggest a completion system that includes
“an upper completion and a lower completion having corresponding
communication lines which may be engaged regardless of relative, rotational
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Application 11/850,243

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orientation of the upper and lower completions.” App. Br. 8. We agree with
Appellants’ position for the following reasons.
At the outset, we note that Barrington specifically teaches that, (1)
“[t]he first sleeve valve 202 [disposed about upper completion 160] has a
first valve port[4] 206 disposed therein for communication with first
hydraulic port 198 when first sleeve valve 202 is in its said open position.”
(Barrington, col. 9, ll. 41-44 and 20-21. Emphasis added); and (2) “first and
second valve ports 206 and 208 are in communication with each other when
said first and second sleeve valves 202 and 204 [disposed within the lower
completion 192] are in their respective open positions.” (Barrington, col. 9,
ll. 50-54, 27-29 and fig. 3E). As such, while we do not dispute the
Examiner’s position that port 206 of Barrington “allows for connection” of
the upper and lower communication lines (see Ans. 3-4), we could not find
any portion in Barrington, and the Examiner has not pointed to any portion
in Barrington, that would suggest that port 206 of Barrington constitutes an
“annular ring” that permits fluid communication between the upper and
lower communication lines regardless of the orientations of the upper and
lower completions relative to each other. As far as we can tell, port 206 of
Barrington is an opening/passageway in first sleeve valve 202, which aligns
(is in communication) with the opening/passageway of port 208 of second
sleeve valve 204, to merely serve as a point of connection between the first
and second respective sleeve valves 202 and 204. See Barrington, col. 9, ll.
50-54 and fig. 3E. As such, the Examiner’s finding that the port 206 of

4 An ordinary and customary meaning of the term “port” is “2 a : an opening
(as in a valve seat or valve face) for intake or exhaust of a fluid.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (11th ed. 2005).
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Barrington permits fluid communication between the upper and lower
communication lines regardless of the orientations of the upper and lower
completions relative to each other is mere speculation and conjecture based
on an unfounded assumption that port 206 of Barrington constitutes an
“annular ring.”
Lastly, regarding the Examiner’s position that port 206 of Barrington
is “shown as annular in cross section in Figure 3E” (see Ans. 4), first, we
note that Barrington does not provide any teachings as to the shape or
dimensions of port 206. Second, since Barrington does not indicate that
Figure 3E is drawn to scale, it cannot be relied upon to establish the precise
geometry of port 206. See Hockerson-Halbertstadt, Inc. v. Avia Group Int'l,
Inc., 222 F.3d 951, 956 (Fed. Cir. 2000).
Consequently, because port 206 of Barrington is an
opening/passageway that merely serves as a point of connection between
upper and lower communication lines, it does not satisfy the limitation of a
union (connection) of upper and lower communication lines (1) “at a range
of rotational orientations of the upper completion relative to the lower
completion,” as required by claim 1; or (2) “regardless of the rotational
orientation of the upper completion relative to the lower completion,” as
required by claims 12 and 25. As such, Barrington does not teach all the
elements of independent claims 1, 12 and 25. “A claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
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Since Barrington does not teach all the elements of independent
claims 1, 12 and 25, the rejection of claims 1-3, 12-14, 18-20, 25 and 29
under 35 U.S.C. § 102(b) as anticipated by Barrington cannot be sustained.

The anticipation rejection of claims 21-24
Appellants argue that Barrington fails to teach or suggest “a lower
completion” and “an upper completion,” as required by claim 21. App. Br.
9. See also, App. Br., Claims Appendix. Appellants further argue that, “the
subsea test tree 44 [of Barrington] is landed in installation 22 rather than
being delivered downhole.” Reply Br. 6. We are not persuaded by
Appellants’ arguments for the following reasons.
In this case, the Examiner found that Barrington teaches a downhole
subsea test tree 44 (system) that includes a stinger mandrel 160 (upper
completion) and a receiving tube 192 (lower completion). Ans. 3 and 7. See
also, Barrington, col. 8, ll. 37-46 and figs. 3A-3E. In addition, Barrington
specifically teaches that (1) the subsea test tree 44 (system) “may generally
be referred to as a downhole tool;” (2) the subsea test tree 44 (system) “is
located at an intermediate point within the test string 34;” and (3) the
internal components of the subsea test tree 44 (system) “are disposed within
the well test string 34.” See Barrington, col. 5, ll. 4-6 and 15-20 and figs. 1
and 2. As such, we find that the subsea test tree 44 (system) of Barrington is
a downhole tool that is located at an intermediate point within test string 34,
wherein the internal components of the subsea test tree 44 (system) (i.e., the
tubular upper and lower completions, 160 and 192, respectively) are
disposed within the well test string 34, which is lowered into borehole 14
(see Barrington, fig. 1). Hence, we agree with the Examiner that (1) stinger
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Application 11/850,243

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mandrel 160 of Barrington constitutes “an upper completion;” and (2)
receiving tube 192 of Barrington constitutes “a lower completion.” Ans. 3.
We further agree with the Examiner that the upper and lower completions of
Barrington are “tubulars held downhole.” Ans. 7.
Lastly, Appellants argue that Barrington fails to teach or suggest (1)
“a flexible mechanism to selectively mechanically engage the upper
completion with the lower completion;” and (2) a “shiftable power sleeve”
movable to a locked position “in which the flexible mechanism is held in a
position to maintain engagement of the upper completion and the lower
completion,” as required by claim 21. App. Br. 9. However, the Examiner
found that Barrington teaches (1) a flexible collet/latch 246 (flexible
mechanism) to selectively mechanically engage the upper completion 160
with the lower completion 192; and (2) a shiftable power sleeve 254
movable to a locked position in which the flexible collet/latch 246 (flexible
mechanism) is held in a position to maintain engagement of the upper
completion 160 and the lower completion 192. Ans. 3-4. Appellants have
not shown why the Examiner’s interpretation of Barrington does not satisfy
these limitations of claim 21.
Accordingly, for the foregoing reasons, the rejection of independent
claim 21 under 35 U.S.C. § 102(b) as anticipated by Barrington is sustained.
Regarding the rejection of claims 22-24, Appellants do not present
any additional arguments. App. Br. 6-10. As such, the rejection of claims
22-24 under 35 U.S.C. § 102(b) as anticipated by Barrington is likewise
sustained.

Appeal 2010-007153
Application 11/850,243

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The obviousness rejections of claims 4-9, 15, 26 and 27
The Examiner’s application of Restarick, Grigsby or Gazewood as
separate additional references in conjunction with Barrington does not
remedy the deficiencies of Barrington as described above. As such, the
rejections under 35 U.S.C. § 103(a): (1) of claim 4 as unpatentable over
Barrington and Restarick; (2) of claim 5 as unpatentable over Barrington and
Grigsby; and (3) of claims 6-9, 15, 26 and 27 as unpatentable over
Barrington and Gazewood likewise cannot be sustained.

DECISION
The decision of the Examiner is affirmed as to claims 21-24 and
reversed as to claims 1-9, 12-15, 18-20, 25-27 and 29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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