Roger L. Schultz et al.Download PDFPatent Trials and Appeals BoardOct 30, 201914698578 - (D) (P.T.A.B. Oct. 30, 2019) 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. 14/698,578 04/28/2015 Roger L. SCHULTZ TTS-15-11US 4310 20558 7590 10/30/2019 SMITH IP SERVICES, P.C. P.O. Box 997 Rockwall, TX 75087 EXAMINER LEFF, ANGELA MARIE DITRAN ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 10/30/2019 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): mail@smithipservices.com sally@smithipservices.com scrawford@smithipservices.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROGER L. SCHULTZ, BROCK W. WATSON, and ANDREW FERGUSON ____________ Appeal 2018-000873 Application 14/698,578 Technology Center 3600 ____________ Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and SEAN P. O’HANLON, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–6, 10–15, 19, and 20 in this application,2 under 35 U.S.C. § 103, as unpatentable over Davies (US 3,437,147, issued Apr. 8, 1969) and Naedler (US 2012/0181032 A1, published July 19, 2012). The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Thru Tubing Solutions, Inc. as the real party in interest. Appeal Br. 3. 2 Claims 2, 8, 9, 16, 17, and 21–30 are canceled. See Appeal Br. 18–20 (Claims App.). The Examiner has withdrawn the rejection as to claims 7 and 18. See Ans. 2, 7. Appeal 2018-000873 Application 14/698,578 2 CLAIMED SUBJECT MATTER Claim 1 illustratively recites: 1. A method of controlling flow in a subterranean well, the method comprising: introducing a device into the well, the device comprising a plurality of fibers extending outwardly from a body; conveying the device by flow in the well; and a material of the body engaging an opening in the well and degrading in the well in response to at least one of the group consisting of: passage of a predetermined period of time in the well, exposure to a predetermined temperature in the well, exposure to a predetermined fluid in the well, exposure to radiation in the well and exposure to a predetermined chemical composition in the well. Appeal Br. 18 (Claims App.). OPINION Claims 1, 3, 4, and 10–15 Appellant argues claims 1, 3, 4, and 10–15 as a group, without separately arguing any one claim in the group. See Appeal Br. 8–13. Accordingly, we select claim 1 to decide the appeal as to the rejection of these claims, with the other grouped claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds the plugging element illustrated in Davies’ Figure 3 is a device comprising, as recited in claim 1, a plurality of fibers (i.e., tentacles 29–35) extending outwardly from a body (i.e., central body member 28). Final Act. 2; see Davies, 4:53–59. The Examiner finds Davies also discloses using a plurality of such plugging elements to control flow in a subterranean well, by introducing the plugging elements into the well and conveying the plugging elements by flow in the well to engage openings in Appeal 2018-000873 Application 14/698,578 3 the well. Final Act. 2; see Davies, Fig. 1, 2:63–70, 3:39–53. The Examiner finds Davies further discloses removing the plugging elements from the well “to allow for recovery of the previously injected treating fluid and fluids indigenous to the formation.” Final Act. 2 (citing Davies, 3:63–4:2). The Examiner finds Davies does not, however, disclose removing the plugging elements by “degrading” them, as required by claim 1. Id. The Examiner finds Naedler “teaches balls used to seal a frac plug seat that are capable of disintegrating, degrading or dissolving for the purpose of eliminating the need for unnecessary extraction operations upon completion of the fracturing process.” Final Act. 2–3 (citing Naedler ¶¶ 2, 4–5). Naedler’s “degradation mechanisms,” according to the Examiner, “include at least response to certain fluids downhole and temperatures.” Id. at 3 (citing Naedler ¶¶ 17–19). The Examiner determines it would have been obvious to create Davies’ central body member 28 from a degradable material, as taught by Naedler, “to eliminate the need for extracting the balls from the well subsequent to the treatment operation being conducted therein . . . when the balls do not return to the surface and are blocking production of fluids from the formation.” Id. at 3 (emphasis added). Appellant argues the Examiner’s proposed modification of Davies is improper, because “Davies teaches that his plugging element body should be made of a material that does not degrade in a well, so that the plugging element can be retrieved from the well and examined to determine whether it effectively sealed a perforation.” Appeal Br. 11, 13 (emphasis by Appellant) (citing Davies, 3:63–4:3). Appellant cites Davies’ disclosure that “[t]he plugging elements themselves are, of course, inert with respect to the treating fluid” (Davies, 5:75–6:2 (emphasis by Appellant)), as “clearly Appeal 2018-000873 Application 14/698,578 4 recogniz[ing] that certain materials are indeed dissolvable in well fluids, but specifically teach[ing] directly away from constructing the plugging element body 28 itself of such dissolvable materials.” Appeal Br. 11–12 (emphasis by Appellant), 13. Appellant dismisses Naedler as “deal[ing] with an altogether different problem” than Davies. Id. at 12–13 (citing Naedler, Fig. 1). Appellant, further, relies upon the fact that Davies was filed in February 1969, “almost a half century prior to” Appellant’s priority filing date. Id. at 9–10. Thus, Appellant concludes a person of ordinary skill in the art would not have been motivated to modify Davies, in light of Naedler, as proposed by the Examiner. Id. at 13. The Examiner answers that “Davies does not teach away from the use of degradable materials, but rather, teaches an alternative mechanism for the removal of the plugging elements from the openings that may be desirable to be used.” Ans. 4–5 (emphases by Examiner) (citing Davies, 3:63–4:3). Further according to the Examiner, Naedler teaches that degradable plugging devices are “an improvement upon previously used plugging elements, such as those disclosed by Davies, that may be extracted from a well.” Id. at 5 (emphasis by Examiner). Nadler’s degradation of plugging elements is an improvement over Davies’ extraction of plugging elements, in the Examiner’s view, because it “would eliminate any unnecessary extractions should the plugging devices not be retrieved by flowback and thereby prevent any subsequent blocks to production from the reservoir.” Id. In reply, Appellant reiterates that modifying Davies’ plugging elements to be degradable “would completely defeat [Davies’] purpose,” or at least render Davies less well suited for its purpose, to recover the plugging elements to determine whether they were seated against a perforation. Reply Appeal 2018-000873 Application 14/698,578 5 Br. 13. Appellant also contends the Examiner errs in finding Davies’ recovery of plugging elements is merely an alternative method of unplugging well perforations, because recovery is the only unplugging method taught by Davies, and Davies teaches away from degradable plugging elements. Id. at 13, 14. Appellant further asserts the Examiner errs in finding Naedler teaches a degradable plugging element as being an improvement on Davies’ plugging elements, because Naedler “describes a very different plugging device” than the Davies plugging elements. Id. (“there is no question that” Naedler’s ball 10 will plug seat 12 when it is dropped into tube 16, so “there is no reason to retrieve the ball 10 to the surface to see whether or not it engaged the seat 12,” and “Naedler’s ball 10 does not engage any of the apertures 28 in the side wall of the tube 16”) (emphasis by Appellant). We determine a preponderance of the evidence supports the Examiner’s determination of obviousness. We are, first, not persuaded by Appellant’s argument that the age of the Davies reference is indicative of non-obviousness. See Appeal Br. 9–10 (discussing Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013)). “[M]ere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016) (quoting In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)), overruled on other grounds, Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1296 n.1 (Fed. Cir. 2017). “The relevant portion of Leo Pharmaceutical stands for the proposition that the age of a reference can highlight the fact that no one in the art understood the problem to be Appeal 2018-000873 Application 14/698,578 6 solved.” Nike, 812 F.3d at 1337–38 (emphasis added) (citing Leo Pharm., 726 F.3d at 1353–57). In this case, there is no evidence that persons of ordinary skill in the art tried and failed to solve any problem, or did not understand the problem to be solved. Further, the Examiner has satisfied the burden to provide a rational underpinning sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The evidence establishes that, before Appellant’s claimed invention, there were at least two different methods of providing plugging devices that would temporarily seal one or more openings in a subterranean well, and then be unsealed from the openings in a controlled manner. In the first method, described in Davies, plugging elements 22 selectively plug some perforations 17 in well casing 14 when fluid 23 is pressurized to perform a fracturing operation, to divert fluid 23 to the unplugged perforations. Davies, Fig. 1, 1:49–50, 1:64–2:7, 2:63–70, 3:15– 26. Then, when it is desired to re-open the sealed perforations 17, the fluid 23 pressure is decreased, which “results in disengagement” of the plugging elements 22 from perforations 17. Id. at 2:4–7, 3:59–62. In the second method, described in Naedler, ball 10 selectively seals plug seat 12 when fluid 20 is pressurized to perform a fracturing operation, so fluid 20 is supplied only to the zone above plug seat 22 via holes 28 in well tube 16. Naedler ¶¶ 2, 3, 28. Following the well stimulation, plug seat 22 is re-opened when hydrocarbons and heat disintegrate, dissolve, or otherwise degrade ball 10, so that “[e]xtraction from the hole . . . is not necessary upon completion of the well fracturing process.” Id. ¶¶ 2, 13, 17. Appeal 2018-000873 Application 14/698,578 7 According to Naedler, it was also known to use “[d]issolvable” balls 40 to plug individual perforations 42 in well casing 44 directly, during a well fracturing operation, in a process similar to Davies’ process. Id. at Fig. 4, ¶ 5 (emphasis added), ¶ 31. In light of the foregoing disclosures in Davies and Naedler, we agree with the Examiner’s conclusion that it would have been obvious to create Davies’ central body member 28 from a degradable material, “to eliminate the need for extracting the balls from the well subsequent to the treatment operation,” as is taught by Naedler. Final Act. 3 (emphasis added); Ans. 53; Naedler ¶¶ 2, 4. Appellant’s contention that Naedler does not support obviousness because “Naedler deals with an altogether different problem” (Appeal Br. 12–13; Reply Br. 13–14) is not persuasive. Davies and Naedler address the same problem: temporarily plugging holes in a subterranean well to focus the fracturing energy of a fracturing fluid. Indeed, Naedler discusses using dissolvable balls for temporarily plugging seat 22 within well tube 16 (Figure 1), and for temporarily plugging perforations 42 in well casing 44 (Figure 4). We appreciate that Davies indicates the plugging elements may be recovered after a fracturing operation, “to ascertain the number of perforations actually sealed by the plugging elements” during the fracturing operation. Davies, 3:63–75. We also appreciate that Davies indicates its plugging elements may each include a temporary jacket to restrain the 3 In the Answer, the Examiner finds Naedler teaches that “degradable plugging devices [are] an improvement upon previously used plugging elements, such as those disclosed by Davies.” Ans. 5. We do not rely on that specific finding in affirming the rejection. Appeal 2018-000873 Application 14/698,578 8 element’s tentacles when the element is introduced initially in the well, and then the jacket is dissolved in the fracturing fluid, wherein “[t]he plugging elements themselves are, of course, inert with respect to” the fracturing fluid. Id. at Fig. 4, 5:34–6:2 (emphasis added). However, we are not persuaded by Appellant’s argument that these disclosures teach away from modifying the plugging elements to be degradable. In order to teach away, a reference must criticize, discredit, or otherwise discourage the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, by contrast, Davies merely indicates “it may be desirable” to recover the plugging elements. Davies, 3:63–75 (emphasis added). That is, according to Davies, in some instances it may be beneficial to recover the plugging elements, but in other instances such recovery may not be beneficial. Davies does not criticize, discredit, or otherwise discourage dissolving the plugging elements in the well bore, rather than recovering them. Even in the absence of a teaching away, general preferences as stated in the prior art are still relevant to determining whether a skilled artisan would be motivated to combine the prior art in the manner claimed. Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1067–70 (Fed. Cir. 2018). Thus, “a reference ‘must [be] considered for all it taught, disclosures that diverged and taught away from the invention at hand as well as disclosures that pointed towards and taught the invention at hand.’” Id. (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 296 (Fed. Cir. 1985)). In this case, weighing the evidence as a whole, we determine a person of ordinary skill in the art would have been motivated to make Davies’ plugging elements degradable, to achieve the labor-saving Appeal 2018-000873 Application 14/698,578 9 benefit of eliminating the need to recover the elements from the well. See, e.g., Final Act. 2–3; Ans. 5; Naedler ¶¶ 2, 4l; In re Urbanski, 809 F.3d 1237, 1243–44 (Fed. Cir. 2016) (persons of ordinary skill in the art may be motivated to pursue desirable properties of one prior art reference, even at the expense of foregoing a benefit taught by another prior art reference). For the foregoing reasons, we sustain the rejection of claims 1, 3, 4, and 10–15 as having been obvious over Davies and Naedler. Claims 5 and 19 Claim 5 recites: “The method of claim 1, wherein the fibers are joined together and form one or more lines extending outwardly from the body.” Appeal Br. 18 (Claims App.). Claim 19 depends from independent claim 11, and recites an identical limitation. Id. at 20 (Claims App.). The Examiner finds Davies discloses the limitation of claims 5 and 19. Final Act. 3, 5–6 (citing Davies, Fig. 3, 4:52–62). Appellant contends Davies does not support this finding. Appeal Br. 14–15. We agree with Appellant. Davies’ Figure 3 is reproduced below. Figure 3 illustrates a plugging element comprising central body member 28 with seven tentacles 29–35 extending from body 28. Davies, 4:53–56. Tentacles 29–35 “may take the form of thin fibers which are threaded Appeal 2018-000873 Application 14/698,578 10 through the core of the body member [28].” Id. at 4:61–63. This disclosure establishes that the fibers are threaded through and therefore joined to the central body member, but it does not establish that any of the fibers are “joined together” as required by claims 5 and 19 (emphasis added). The Examiner’s finding that Davies discloses fibers that are joined together, because “it would appear thin fibers 33, 34 and 29 are, respectively, joined together with thin fibers 30, 31 and 32 so as to extend outwardly from the body” (Ans. 6), rests upon speculation and not the cited disclosures of Davies. Thus, we do not sustain the rejection of claims 5 and 19 as having been obvious over Davies and Naedler. Claims 6 and 20 Claim 6 recites: “The method of claim 5, wherein the lines comprise one or more ropes.” Appeal Br. 19 (Claims App.). Claim 20 recites: “The system of claim 19, wherein the lines comprise ropes.” Id. at 20 (Claims App.). The Examiner’s consideration of claims 6 and 20 does not cure the deficiency of Davies with respect to the respective parent claims 5 and 19, noted above. See Final Act. 3, 5–6. Therefore, for the reasons provided above, we do not sustain the rejection of claims 6 and 20 as having been obvious over Davies and Naedler. The Examiner additionally finds Davies discloses the limitations of claims 6 and 20. Final Act. 3, 5–6 (citing Davies, Fig. 3, 4:52–62). Appellant contends Davies does not support this finding. Appeal Br. 15. We agree with Appellant. Davies’ Figure 3, reproduced above, illustrates each tentacle 29–35 as comprising a single fiber, not a collection Appeal 2018-000873 Application 14/698,578 11 of fibers as is required by the ordinary meaning of “rope” cited by the Examiner. See Final Act. 3, 5–6 (“see definition of ‘rope’ in non-final action dated 04/13/16, wherein a ro[p]e is made by twisting fibers together, as well as a row or string consisting of things united by threading”). As discussed above, Davies discloses tentacles 29–35 “may take the form of thin fibers which are threaded through the core of the body member [28]” (Davies, 4:61–63), but Davies does not indicate that the fibers are twisted or threaded together to form a rope. Thus, we do not sustain the rejection of claims 6 and 20 as having been obvious over Davies and Naedler. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 3–6, 10–15, 19, 20 103 Davies, Naedler 1, 3, 4, 10–15 5, 6, 19, 20 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)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation