THRU TUBING SOLUTIONS, INC.

Patent Trials and Appeals Board

Oct 19, 2020

15837502 - (D) (P.T.A.B. Oct. 19, 2020)

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.
15/837,502 12/11/2017 Brock W. WATSON TTS-16-21US 3726
20558 7590 10/19/2020
SMITH IP SERVICES, P.C.
P.O. Box 997
Rockwall, TX 75087
EXAMINER
AHUJA, ANURADHA
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
10/19/2020 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 BROCK W. WATSON and GARY P. FUNKHOUSER
____________

Appeal 2020-000858
Application 15/837,502
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
LEE L. STEPINA, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Mar. 28, 2019, hereinafter “Final
Act.”) rejecting claims 1 and 4–9.2 We have jurisdiction over this appeal
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. Thru Tubing Solutions, Inc. is identified as the real party
in interest in Appellant’s Appeal Brief (filed July 16, 2019, hereinafter
“Appeal Br.”). Appeal Br. 3.
2 Claims 2, 3, and 10–32 are canceled. Appeal Br. 20, 21 (Claims App.).
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Application 15/837,502

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SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to a method for blocking temporarily or
permanently existing passageways in a wellbore. Spec. 2, ll. 18–20, Spec. 3,
ll. 5–6.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A method of deploying plugging devices in a wellbore,
the method comprising:
conveying a dispensing tool through the wellbore, the
dispensing tool including an enclosure containing the plugging
devices; and
then pulling one end of the enclosure relative to an
opposite end of the enclosure, thereby tearing open the
enclosure and releasing the plugging devices from the enclosure
into the wellbore at a downhole location.

REJECTIONS3

I. The Examiner rejects claims 1, 6, and 8 under 35 U.S.C. § 103
as being unpatentable over Creel.4

3 The Examiner has withdrawn the rejections of claims 1 and 4–9 under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement and under 35 U.S.C. § 112(b) as being indefinite. See
Examiner’s Answer (dated Sept. 12, 2019, hereinafter “Ans.”) 3; Final Act.
2–3.
4 Creel et al., US 2006/0213662 A1, published Sept. 28, 2006.
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Application 15/837,502

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II. The Examiner rejects claim 9 under 35 U.S.C. § 103 as being
unpatentable over Creel and Schafer.5
III. The Examiner rejects claims 4, 5, and 7 under 35 U.S.C. § 103
as being unpatentable over Creel and Yeh.6

ANALYSIS
Rejection I
The Examiner finds Creel discloses a method for dispensing plugging
devices in a wellbore including, inter alia, conveying a dispensing tool,
containing an enclosure with plugging devices, through a wellbore, and
tearing, puncturing, or bursting the enclosure to release the plugging devices
from the enclosure into the wellbore. Final Act. 4 (citing Creel, paras. 13,
14, 25–35). The Examiner further finds that because in general Creel
discloses tearing, puncturing, or bursting the enclosure “by known chemical
and/or mechanical methods,” and in particular discloses “applying pressure
to the container wall to cause rupture/tearing” by “expanding the container
volume to tear/rupture,” Creel “is considered to encompass one end pulling
away relative to an opposite end thereby tearing open the enclosure” as also
recited. Id. (citing Creel, paras. 25, 33–35) (emphasis added). Thus, the
Examiner concludes that “one of ordinary skill in the art could have pursued
pulling as instantly claimed with a reasonable expectation of success”
because
there had been a recognized need in the art for enhancing oil
recovery employing plugging devices, and a finite number of
identified, predictable solutions including the delivery of

5 Schafer et al., US 2009/0090506 A1, published Apr. 9, 2009.
6 Yeh et al., US 2009/0120641 A1, published May 14, 2009.
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Application 15/837,502

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plugging devices in an enclosure and releasing the plugging
devices by tearing the container by suitable chemical and
mechanical means, including two opposite ends pulling away
from each other.

Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007))
(emphasis added).
Appellant argues that Creel’s disclosure of “tearing the container by
suitable chemical and mechanical means” does not include “two opposite
ends [of the container] pulling away from each other.” Appeal Br. 13
(emphasis omitted); Reply Brief (filed Nov. 12, 2019, hereinafter “Reply
Br.”) 10. In particular, Appellant contends that Creel’s “descriptions of
puncturing the container with a drill bit, dissolving the container and
rupturing the container wall with pressure are in no way a description of
tearing the container by pulling two opposite ends of the container away
from each other.” Appeal Br. 13; Reply Br. 10. Furthermore, Appellant
asserts that the Examiner’s reliance on KSR is misplaced because, in contrast
to KSR where “the invention comprised a combination of known elements,”
the step of pulling one end of the enclosure relative to an
opposite end of the enclosure . . . was not a known option at the
time the invention was made, thus there was no anticipated
success known to those skilled in the art, and there was no
combination for those skilled in the art to try.

Appeal Br. 15 (emphasis added); Reply Br. 12. Thus, according to
Appellant, “there was no motivation for a person skilled in the art to try an
unknown step of pulling one end of the enclosure relative to an opposite end
of the enclosure, thereby tearing open the enclosure and releasing the
plugging devices from the enclosure into the wellbore,” and hence, the
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Application 15/837,502

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claimed invention would not have been obvious to the skilled artisan. Reply
Br. 13.
In response, the Examiner takes the position that the chemical and
mechanical methods disclosed in Creel represent “a finite number of
identified, predictable solutions for releasing the plugging devices by tearing
the container by suitable chemical and mechanical means,” which “includ[e]
two opposite ends moving/pulling away from each other.” Ans. 6. The
Examiner explains that the reasoning to modify Creel’s method to include
the step of tearing open the enclosure by “pulling” opposite ends of the
enclosure away from each other is based on KSR’s “Obvious to Try”
rationale. Id.
The Federal Circuit has pointed out that in a proper obvious to try
approach to obviousness, the possible options for solving a problem must
have been “known and finite.” Rolls-Royce, PLC v. United Techs.
Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010) (citing Abbott Labs. v. Sandoz,
Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008)). As such, the obvious to try
rationale can properly be used to support a conclusion of obviousness only
when the claimed solution would have been selected from a finite number of
potential solutions known to persons of ordinary skill in the art. Here, we
agree with Appellant that “[n]one of the [tearing, bursting, or puncturing]
mechanisms disclosed by Creel involve pulling one end of the enclosure
relative to an opposite end of the enclosure.” Reply Br. 13. More
specifically, Creels’ methods involving dissolution of the container wall,
bursting of the container wall by swelling (expansion) of the material inside
the container, and puncturing of the container (using a cutting tool, a drill
bit, a conduit in the wellbore, or by squeezing the container against a
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Application 15/837,502

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structure in the wellbore) do not constitute “pulling one end of the enclosure
relative to an opposite end of the enclosure,” as called for by claim 1. See
Creel, paras. 25, 35.
In particular, we do not agree with the Examiner’s finding that Creel’s
“expansion of the container . . . encompass[es] two opposite ends
moving/pulling away from each other.” Ans. 5 (citing Creel, paras. 25, 33–
35). A person of ordinary skill in the art would have readily understood that
expansion of the material in Creel’s container causes “bursting” of the
container due to a force that pushes one end of the container relative to an
opposite end. See 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.). In contrast, Appellant’s “pulling” causes “tearing” of
the enclosure due to a force that pulls one end of the container relative to an
opposite end.
As such, Appellant is correct that the Examiner’s rejection fails to
“identif[y] any prior art that shows ‘pulling one end of the enclosure relative
to an opposite end of the enclosure.’” Reply Br. 13. Therefore, “pulling one
end of the enclosure relative to an opposite end of the enclosure,” as called
for by independent claim 1, “would not have presented itself as an option at
all, let alone an option that would have been obvious to try.” Rolls-Royce,
603 F.3d at 1339.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103 of claims 1, 6, and 8 as unpatentable over
Creel.

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Application 15/837,502

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Rejections II and III
The Examiner’s use of the Schafer and Yeh disclosures does not
remedy the modification of Creel discussed supra. See Final Act. 5–8.
Accordingly, for the same reasons discussed above, we also do not sustain
the rejections under 35 U.S.C. § 103 of claim 9 as unpatentable over Creel
and Schafer and of claims 4, 5, and 7 as unpatentable over Creel and Yeh.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 6, 8 103 Creel 1, 6, 8
9 103 Creel,
Schafer
9
4, 5, 7 103 Creel, Yeh 4, 5, 7
Overall
Outcome
1, 4–9

REVERSED