13878609 - (D) (P.T.A.B. Dec. 13, 2019)

J¿rgen Hallundb¿k

Patent Trials and Appeals BoardDec 13, 2019

13878609 - (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. 13/878,609 05/14/2013 Jørgen Hallundbæk PTB-5544-40 3410 23117 7590 12/13/2019 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER GRAY, GEORGE STERLING 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JØRGEN HALLUNDBÆK Appeal 2018-001083 Application 13/878,609 Technology Center 3600 ____________ Before BRUCE T. WIEDER, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision rejecting claims 1 and 3–21. 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 WELLTEC A/S as the real party in interest. Appeal Br. 3. USPTO assignment records indicate that WELLTEC OILFIELD SOLUTIONS AG is the present assignee of the application in this Appeal. Reel/Frame 047724/0079 (Received Oct. 25, 2018). Appeal 2018-001083 Application 13/878,609 2 We REVERSE and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). ILLUSTRATIVE CLAIM 1. An annular barrier to be expanded in an annulus between a well tubular structure and an inside wall of a borehole downhole for providing zone isolation between a first zone and a second zone of the borehole, comprising - a tubular part for mounting as part of the well tubular structure, - an expandable metal sleeve surrounding the tubular part to contain pressure and having an inner face facing the tubular part and an outer face facing towards the inside wall of the borehole, each end of the expandable metal sleeve being connected with a connection part which is connected with the tubular part, - a space between the inner face of the expandable metal sleeve and the tubular part, and - an expansion opening in the tubular part through which fluid may enter into the space in order to expand the expandable metal sleeve by fluid pressure, wherein the annular barrier further comprises a first safety metal sleeve surrounding the tubular part to contain pressure if the expandable metal sleeve has an opening, said first safety metal sleeve having a first inner face directly abutting the outer face of the expandable metal sleeve, each end of the first safety metal sleeve being connected with the connection part which is connected with the tubular part. Appeal 2018-001083 Application 13/878,609 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Wood US 4,967,846 Nov. 6, 1990 Rummel et al. (“Rummel”) US 6,640,893 B1 Nov. 4, 2003 Gambier US 2005/0072579 A1 Apr. 7, 2005 Gorrara US 2006/0027371 A1 Feb. 9, 2006 AK Steel 304/304L Stainless Steel Product Data Sheet, (2007) (“AK Steel 304”) AK Steel 439 Stainless Steel Product Data Bulletin (2007) (“AK Steel 439”) REJECTIONS I. Claims 1, 3–8, 13, 15–18, and 20 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as unpatentable over Rummel and Gambier. II. Claims 9–11 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as unpatentable over Rummel, Gambier, AK Steel 304, and AK Steel 439. III. Claims 12 and 14 are rejected under 35 U.S.C. § 103(a) (pre- AIA) as unpatentable over Rummel, Gambier, and Gorrara. IV. Claims 19 and 21 are rejected under 35 U.S.C. § 103(a) (pre- AIA) as unpatentable over Rummel, Gambier, and Wood. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Obviousness Among the arguments presented, the Appellant contends that the Examiner erred in rejecting independent claim 1, because the cited prior art Appeal 2018-001083 Application 13/878,609 4 does not teach the claimed “first safety metal sleeve . . . to contain pressure if the expandable metal sleeve has an opening.” Appeal Br. 13. Notably, claim 1 also recites that “fluid may enter into the space” that is situated “between the inner face of the expandable metal sleeve and the tubular part,” “in order to expand the expandable metal sleeve by fluid pressure.” Accordingly, claim 1 requires the “first safety metal sleeve” to “contain pressure” in the form of “fluid pressure.” The Examiner relies upon the “seal element 16” and/or the “support sleeve 18” of the Gambier reference to teach the claimed “first safety metal sleeve.” Final Action 8 (citing Gambier ¶¶ 22–25, Figs. 1, 2A, 2B); see also Answer 20–21. The Appellant argues that the rejection of claim 1 is flawed, because Gambier does not disclose that either the “seal element 16” or the “support sleeve 18” can contain fluid pressure. Appeal Br. 13; see also Reply Br. 5. Indeed, in Gambier’s embodiments, an “energizing element 20” presses against “seal layer 16” and/or “support sleeve 18” causing the “seal element 16” or the “support sleeve 18” to deform and to press against a wall, thus forming a seal therewith. See Gambier ¶ 25. Gambier discloses various ways in which “energizing element 20” may generate a force that presses against “seal element 16” or “support sleeve 18” — including through the use of an elastic material for the energizing element (that deforms under compression), a “bimetallic material” (that deforms upon exposure to certain temperatures), a spring, a “bi-stable element,” a “swelling material,” “a bag or container which is energized with gas,” a bow, and a slotted tube that “will expand when compressed axially.” Id. ¶¶ 27–37. Appeal 2018-001083 Application 13/878,609 5 Yet, none of Gambier’s various techniques for exerting a force against “seal layer 16” and/or “support sleeve 18” discloses that either of these elements “contain[s]” fluid pressure, as claim 1 requires. The Examiner takes the position that such a disclosure appears in paragraph 34 of Gambier, with reference to a “pressure-based bag.” See Answer 16–19. Paragraph 34 of Gambier states: In another embodiment, energizing element 20 could be a bag or container which is energized with gas or other compressible material and placed beneath seal layer 16. The bag can be compressed at its ends once the packer is in the proper position downhole. The compression of the bag will cause the bag to compress lengthwise and expand radially to energize the seal element 10. A gas chamber or spring behind a piston could maintain the compression to keep the seal energized. Gambier ¶ 34. Although Gambier’s embodiment of paragraph 34 employs fluid pressure to activate a seal with “seal layer 16,” it does not disclose that “seal layer 16” contains fluid pressure. Instead, it is the “energizing element 20” (in the form of “a bag or container”) that contains fluid pressure. Id. The Examiner states that “the entire length of the inner structure 20 is covered by the sealing of either of sleeve 18 or 16, and this will contain pressure if a hole existed in the underlying expanding structure” of Gambier. Answer 20–21. However, Gambier discloses no circumstance in which such a “hole” exists, let alone any disclosure of “seal layer 16” and/or “support sleeve 18” containing fluid pressure, in such an event. In view of the foregoing, the Examiner has not provided adequate support for the finding that Gambier teaches claim 1’s “first safety metal sleeve . . . to contain pressure if the expandable metal sleeve has an Appeal 2018-001083 Application 13/878,609 6 opening.” Accordingly, we do not sustain the rejections of independent claim 1 and dependent claims 3–21, under 35 U.S.C. § 103(a) (pre-AIA). Written Description (New Ground of Rejection) Pursuant to the written-description requirement of 35 U.S.C. § 112(a), “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co, 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (concerning 35 U.S.C. § 112 (pre-AIA), first paragraph). The Appellant’s Specification lacks such a written description of claim 1’s “first safety metal sleeve . . . to contain pressure if the expandable metal sleeve has an opening.” As discussed above, this limitation requires the “first metal sleeve” to “contain” fluid pressure. Yet, the Specification does not disclose an “expandable metal sleeve” having an “opening,” such that a “first metal sleeve” might “contain” fluid pressure. Indeed, the Specification states that “it is an object” of the disclosed invention “to provide an improved annular barrier solution which does not rupture during expansion while still maintaining a required collapse rating.” Spec. 2, l. 37– 3, l. 2. The Specification explains that a “rupture of the expandable sleeve typically arises due to irregularities in the material leading to a ‘weak area’ on the expandable sleeve.” Id. at 2, ll. 19–20. The Specification further explains: When the annular barrier having such a weak area is expanded, the expandable metal sleeve starts to deform more rapidly around the weak area 17a and bulge due to the reduced strength Appeal 2018-001083 Application 13/878,609 7 in this weak area, as shown in Fig. 6b. The more rapid expansion of the material around the weak area leads to the creation of a “bubble” on the expandable metal sleeve 7 near the weak area. Since the material around the weak area expands more rapidly than the rest of the material of the expandable metal sleeve, the expandable metal sleeve thins in this area and is more likely to have a fracture 20 near the weak area 17a, leading to at least a local rupture if not a circumferential rupture of the annular barrier as illustrated in Fig. 6c. Id. at 10, ll. 1–11. By contrast, the Specification discloses techniques that prevent the creation of any “opening” in the “expandable metal sleeve” (as claim 1 recites), because the implementation of a “first safety metal sleeve” provides reinforcement to potential weak areas in the “expandable metal sleeve,” where such an “opening” might otherwise occur. “Even though the first safety metal sleeve also has a weak area . . . it is not likely to be arranged opposite the weak area of the expandable metal sleeve.” Id. at 10, ll. 16–18. “Therefore,” the Specification explains (with reference to Figures 7a–7c), should the safety metal sleeve 8 comprise a weak area 17b, the part of the expandable metal sleeve close to the weak area will brace the weak area 17b of the safety metal sleeve so that a bubble is not formed on the safety metal sleeve as well. The force on the safety metal sleeve is distributed evenly to the safety metal sleeve by means of the expandable metal sleeve, and thus no force will be applied to a part of the safety metal sleeve which is not in contact with the expandable metal sleeve until the expandable metal sleeve is once again in contact with that part of the safety metal sleeve. Thus, no bulging of the safety metal sleeve can occur as no force will be applied to the somewhat bulging part, resulting in a subsequent burst of the safety metal sleeve. Id. at 10, ll. 27–37. Appeal 2018-001083 Application 13/878,609 8 Therefore, the Specification does not disclose the performance of the “safety metal sleeve,” in the event of a rupture or other opening in the “expandable metal sleeve.” Accordingly, the Specification does not disclose claim 1’s “first safety metal sleeve . . . to contain pressure if the expandable metal sleeve has an opening.” In view of the absence of disclosure indicating that the Appellant possessed the subject matter of claim 1 as of the filing date, and pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of independent claim 1 and dependent claims 3–21, as lacking a sufficient written description under 35 U.S.C. § 112(a). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 3–8, 13, 15– 18, 20 § 103(a) (pre-AIA) Rummel, Gambier 1, 3–8, 13, 15–18, 20 9–11 § 103(a) (pre-AIA) Rummel, Gambier, AK Steel 304, AK Steel 439 9–11 12, 14 § 103(a) (pre-AIA) Rummel, Gambier, Gorrara 12, 14 19, 21 § 103(a) (pre-AIA) Rummel, Gambier, Wood 19, 21 1, 3–21 112(a) Written description 1, 3–21 Overall Outcome 1, 3–21 1, 3–21 Appeal 2018-001083 Application 13/878,609 9 This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the MPEP § 1214.01. Appeal 2018-001083 Application 13/878,609 10 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). REVERSED; 37 C.F.R. § 41.50(b)