Ex Parte Wesson et al

Patent Trial and Appeal Board

Mar 21, 2013

11469255 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID S. WESSON, KEVIN R. GEORGE and
PHILIP M. SNIDER
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Appeal 2010-005224
Application 11/469,255
Technology Center 3600
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Before LINDA E. HORNER, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 1
final decision rejecting claims 1-9, 11-21, 23-32 and 34-36. The Examiner 2
rejects the following claims under 35 U.S.C. § 102(b): 3

1 The Appellants identify the real party in interest as Marathon Oil
Company.
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Application 11/469,255

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claims 1, 2, 5-9, 13-18, 20, 21, 24, 31, 32 and 34-36 as 1
being anticipated by Lund (US 2003/0230406 A1, publ. Dec. 2
18, 2003); and 3
claims 14, 15, 18, 19, 21, 24, 25 and 28-32 as being 4
anticipated by Brooks (US 3,612,189, issued Oct. 12, 1971). 5
The Examiner also rejects the following claims under 35 U.S.C. § 103(a): 6
claims 1, 2, 5-9, 13-18, 20, 21, 24, 31, 32 and 34-36 as 7
being unpatentable over Lund and Bell (US 2004/0206503 A1, 8
publ. Oct. 21, 2004); 9
claims 14, 15, 18, 19, 21, 24, 31, 32 and 34-36 as being 10
unpatentable over Brooks and Bell; 11
claims 1-9, 11, 13, 26 and 27 being unpatentable over 12
Brooks and Lund; 13
claim 12 as being unpatentable over Brooks, Lund and 14
Wesson (US 5,829,538, issued Nov. 3, 1998); and 15
claim 23 as being unpatentable over Lund and Wesson.2 16
We have jurisdiction under 35 U.S.C. § 6(b). 17
We REVERSE. 18
Claims 1, 14, 25, 31 and 34 are independent. Claims 1 and 34 recite: 19
1. An apparatus for penetrating a 20
formation and selectively establishing fluid 21
communication with the formation, comprising: 22

2 This listing of the grounds of rejection is taken from page 14 of the
“Appeal Brief of Appellant in Ex Parte Appeal” dated September 30, 2009.
To the extent that the Examiner’s statement of the grounds of rejection at
pages 3-10 of the Answer superficially appears to differ from the listing on
page 14 of the Appeal Brief, the Examiner appears to agree that the
Appellants’ listing is correct. (See, e.g., Ans. 3 n.1 and 6 n.2).
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a casing having at least one aperture through 1
a wall thereof and comprising a valve member 2
having a first position wherein the aperture is 3
obstructed and a second position wherein the 4
aperture is open; and 5
at least one energetic device positioned 6
exterior of the casing and configured to penetrate a 7
formation surrounding the casing without 8
penetrating the casing. 9
10
34. A method for treating multiple 11
formations traversed by a well bore comprising: 12
providing a well bore casing in a well bore 13
and having at least one perforating gun positioned 14
exterior thereof and adjacent a first formation and 15
at least one second perforating gun positioned 16
exterior thereof and adjacent a second formation; 17
functioning the perforating gun thereby 18
providing first lengthwise distributed perforations 19
in the first formation without perforating the well 20
bore casing; 21
selectively opening at least one aperture in 22
the well bore casing; 23
pumping a fluid from an interior of the well 24
bore casing, through the aperture and into the first 25
distributed perforations; 26
closing the aperture; and 27
functioning the second perforating gun 28
thereby providing second lengthwise distributed 29
perforations in the second formation without 30
perforating the well bore casing. 31
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FINDINGS OF FACT 1
Lund 2
Lund describes a cased well 10 extending through a production zone 3
14 of a subterranean formation 12. The cased well 10 includes a “casing” 16 4
cemented into a well bore (no reference numeral). (Lund, para. [0028] and 5
fig. 1.) Lund also describes a perforating and packing assembly 20 disposed 6
within the casing 16. (Id.) The perforating and packing assembly 20 7
includes packers 22, 24 isolating a middle portion 40 of the interior of the 8
casing 16 from upper and lower portions 38, 42 of the casing interior. A 9
filter 32 resides in this isolated middle portion 40. (Lund, para. [0029] and 10
fig. 1.) The perforating and packing assembly 20 additionally includes an 11
upper conduit 26 coupled to an end 50 of the filter 32. (Lund, paras. [0029] 12
and [0030]; id., figs. 1 and 2.) The upper conduit 26 extends through an 13
upper packing 22 into the upper portion 38 of the interior of the casing 16. 14
A tubing connection 44 connects the upper conduit 26 with a “production 15
tubing” or “tubing string” (not shown in the drawings) disposed within the 16
casing 16. (Lund, para. [0029] and [0032] and fig. 1.) 17
The perforating and packing assembly 20 also includes a perforating 18
gun 34 positioned in the middle portion 40 of the casing 16 exterior to the 19
filter 32. (Lund, para. [0031] and figs. 1 and 2.) The perforating gun 34 is 20
configured to propel perforating charges 66 radially outwardly so as to 21
penetrate through the casing 16 and into the production zone 14 without 22
penetrating the filter 32. (Lund, para. [0031] and figs. 3 and 8.) 23
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Brooks 1
Brooks describes a cased wellbore 11. The cased wellbore 11 2
includes a “casing string” 13 cemented into the wellbore. Brooks also 3
describes a well completion apparatus 10 disposed within the casing string 4
13. (Brooks, col. 2, ll. 37-42 and fig. 1.) The well completion apparatus 10 5
includes a body unit 18. (Brooks, col. 2, ll. 45-47.) The unit 18 includes a 6
cylindrical hollow body 22 defining an enclosed chamber 25. An angulated 7
tube 26 extends through the chamber 25. The angulated tube 26 includes a 8
perforated section 27 within the chamber 25. (Brooks, col. 2, ll. 57-70.) 9
The angulated tube 26 communicates with a conduit 17 which extends 10
toward the surface of the ground. (Brooks, col. 2, ll. 65-67 and fig. 1.) 11
The well completion apparatus 10 also includes a perforator gun 28 12
mounted in the chamber 25 on an inner wall of the cylindrical hollow body 13
22. (Brooks, col. 2, ll. 71-73; col. 3, ll. 2-5; and figs. 1 and 4.) Brooks 14
teaches that the charges of the perforating gun “are oriented to fire in a 15
direction which lies in a plane passing through the axes of body 22 . . . away 16
from tube 26.” (Brooks, col. 3, ll. 2-5 and figs. 4 and 5.) 17
18
Bell 19
Bell describes a perforating system for perforating a casing 102 from 20
the outside. The perforating system is attached to the outside of the casing 21
102 and conveyed along with the casing when the casing is inserted into the 22
wellbore. (Bell, para. [0076].) As depicted in Figure 13 of Bell, the 23
perforating system includes a first set 42 of relatively small perforating 24
charges facing the casing 102. The perforating system also includes a 25
second set 44 of relatively larger perforating charges facing a formation 304. 26
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(Bell, para. [0086].) Brooks does not appear to disclose whether the first 1
and second sets 42, 44 are to be discharged simultaneously or consecutively. 2
3
Wesson 4
Wesson describes a perforating apparatus 27 including shaped 5
explosive charges 53, 55. The shaped explosive charges 53, 55 have special 6
charge cases formed of a material which will vaporize (that is, disintegrate) 7
on detonation. (Wesson, col. 4, ll. 21-48.) 8
9
ANALYSIS 10
Rejections under § 102(b) 11
Claim 1 recites an apparatus including “at least one energetic device 12
positioned exterior of the casing and configured to penetrate a formation 13
surrounding the casing without penetrating the casing.” Claim 14 recites a 14
method including the step of “penetrating the formation of interest while not 15
perforating the casing, using an energetic device.” Claim 25 recites an 16
apparatus including “an elongate manifold disposable exterior of a 17
casing . . . ; and a fluid flow path within the manifold.” Claim 31 recites a 18
method including the step of providing a flow path “exterior of the casing 19
and along an axis substantially parallel thereto.” Claim 34 recites a method 20
including the steps of “providing a well bore casing in a well bore and 21
having at least one perforating gun positioned exterior thereof;” and 22
“functioning the perforating gun thereby providing first lengthwise 23
distributed perforations in the first formation without perforating the well 24
bore casing.” 25
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The Examiner finds that Lund’s tubing connection 44 (or perhaps 1
Lund’s upper conduit 26) is a “casing” within the meaning of that term as 2
used in independent claims 1, 14, 31 and 34. (Ans. 3.) The Examiner also 3
finds that Brooks’ angulated tube 26 is a “casing” within the meaning of that 4
term as used in independent claims 14, 25 and 31. (Ans. 6.) The 5
Examiner’s findings that Lund anticipates claims 1, 14, 31 and 34; and that 6
Brooks anticipates claims 14, 25 and 31, is dependent on the Examiner’s 7
findings regarding Lund’s tubing connection 44 and Brooks’ angulated tube 8
26. The Examiner’s findings regarding Lund’s tubing connection 44 and 9
Brooks’ angulated tube 26 are erroneous. 10
The Appellants do not identify any formal definition of the term 11
“casing” in the Specification. Therefore, the term should be interpreted as 12
broadly as the ordinary usage of the term by one of ordinary skill in the art 13
reasonably would permit. In re ICON Health & Fitness, Inc., 496 F.3d 14
1374, 1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 15
1997). The Appellants assert that “[c]asing is a well defined and understood 16
term of art which refers to a pipe used in wells to seal off fluids from the 17
bore hole and to prevent the wall of the bore hole from sloughing off or 18
caving.” (Br. 16-17.) The Appellants’ definition appears consistent with the 19
use of the term “casing” in the Specification. (See, e.g., Spec., para. [0002]). 20
While the Appellants themselves provide no evidence to support their 21
definition of the term “casing,” their definition appears consistent with the 22
ordinary usage of the term in the field of oil and gas well drilling. (See, e.g., 23
N. Hyne, editor, DICTIONARY OF PETROLEUM EXPLORATION, DRILLING & 24
PRODUCTION (PennWell Publ. Co., Tulsa, OK 1991) (def. of “casing”).) A 25
particular well bore may contain more than one casing. (See, e.g., 26
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Application 11/469,255

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Pennsylvania Environmental Quality Bd. New Regulations for Oil & Gas 1
Casing & Cementing (Amendments to Chapter 78) Plain Language 2
Summary, available at http://files.dep.state.pa.us/PublicParticipation 3
/Office%20of%20Environmental%20Advocac/EnvAdvocacyPortalFiles 4
/2012/EJ_websiteupdate/Final%20Regs%20PL%20Summary%20Feb%20205
11.pdf (last visited March 18, 2013)(“Diagram of a Natural Gas Well”).) 6
Nevertheless, literature and regulations addressed to the oil and gas industry 7
appear to distinguish between a casing and a production tubing. (Id.; 8
compare OSHA, Oil & Gas Well Drilling & Servicing eTool: Glossary of 9
Terms—C, available at http://www.osha.gov/SLTC/etools/oilandgas 10
/glossary_of_terms/glossary_of_terms_c.html (last visited March 18, 11
2013)(def. of “casing) with OSHA, Oil & Gas Well Drilling & Servicing 12
eTool: Glossary of Terms—P, available at http://www.osha.gov/SLTC 13
/etools/oilandgas/glossary_of_terms/glossary_of_terms_p.html (last visited 14
March 18, 2013)(def. of “production tubing”).) 15
Lund uses the term “casing” to refer to the structure 16 cemented into 16
the wellbore. (Lund, para. [0028].) Lund’s upper conduit 26 and tubing 17
connection 44 communicate with a production tubing or tubing string (Lund, 18
para. [0029]), thereby suggesting that neither the Lund’s upper conduit 26 19
nor the tubing connection 44 is a casing. (See Br. 17.) Brooks uses the term 20
“casing string” to refer to the structure 13 cemented into the wellbore. 21
(Brooks, col. 2, ll. 37-42.) Since Brooks’ perforated angulated tube 26 22
(Brooks, col. 2, ll. 57-70) is incapable of sealing off fluids, it is not a casing. 23
(See Br. 24.) Since neither Lund’s tubing connection 44 nor Brooks’ 24
angulated tube 26 is a “casing;” and since neither Lund nor Brooks appear to 25
describe any structure or axially-directed flow path outside their respective 26
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casings, we do not sustain the rejection of claims 1, 2, 5-9, 13-18, 20, 21, 24, 1
31, 32 and 34-36 under § 102(b) as being anticipated by Lund; or the 2
rejection of claims 14, 15, 18, 19, 21, 24, 25 and 28-32 under § 102(b) as 3
being anticipated by Brooks. 4
5
Rejections under § 103(a) 6
Bell does not remedy the deficiencies in the description of Lund as 7
applied to in independent claims 1, 14, 31 and 34; or in Brooks as applied to 8
independent claims 14, 25 and 31. Lund and Brooks teach perforating 9
systems for perforating a casing from the inside. Bell describes a perforating 10
system for perforating a casing 102 from the outside. (Bell, para. [0076].) 11
Neither Lund, nor Brooks, nor Bell teaches a perforating device configured 12
to penetrate a formation of interest while not perforating the casing. (See, 13
e.g., Br. 21-22.) Likewise, neither Lund, nor Brooks, nor Bell teaches an 14
apparatus including an elongate manifold disposable exterior of a casing and 15
a fluid flow path within the manifold. The Examiner provides no persuasive 16
reasoning which might explain why one of ordinary skill in the art might 17
have modified the structures described by either Brooks or Lund so as to 18
satisfy either limitation. Indeed, the Examiner states that Bell “was not 19
relied upon to teach the configuration of the penetration of the energetic 20
device/ perforation gun.” (Ans. 11.) We do not sustain the rejection of 21
claims 1, 2, 5-9, 13-18, 20, 21, 24, 31, 32 and 34-36 under § 103(a) as being 22
unpatentable over Lund and Bell; or the rejection of claims 14, 15, 18, 19, 23
21, 24, 31, 32 and 34-36 under § 103(a) as being unpatentable over Brooks 24
and Bell. For similar reasons, we do not sustain the rejection of claims 1-9, 25
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11, 13, 26 and 27 under § 103(a) being unpatentable over Brooks and Lund. 1
(See Br. 29.) 2
The Examiner cites Wesson solely for the teaching that it was well 3
known in the art “to use a disintegrating support structure—or gun carrier—4
with a downhole perforating gun.” (Ans. 9, citing Wesson, cols. 16-32.) 5
This teaching does not remedy the deficiencies in the teachings of Lund as 6
applied to parent claims 14 and 15; or of Brooks and Lund as applied to 7
parent claims 1, 5 and 6. Therefore, we do not sustain the rejection of claim 8
12 under § 103(a) as being unpatentable over Brooks, Lund and Wesson; or 9
the rejection of claim 23 under §103(a) as being unpatentable over Lund and 10
Wesson. (See Br. 30-31.) 11
12
DECISION 13
We REVERSE the Examiner’s decision rejecting claims 1-9, 11-21, 14
23-32 and 34-36. 15
16
REVERSED 17
18
19
20
Klh 21