WELLTEC A/S

Patent Trials and Appeals Board

Dec 3, 2020

2020003139 (P.T.A.B. Dec. 3, 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.
15/428,451 02/09/2017 Satish KUMAR PTB-5544-176 6387
23117 7590 12/03/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LAMBE, PATRICK F
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
12/03/2020 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):
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 SATISH KUMAR
____________

Appeal 2020-0031391
Application 15/428,451
Technology Center 3600
____________

Before JEFFREY N. FREDMAN, EDWARD A. BROWN, and
JEREMY M. PLENZER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner’s
Final decision rejecting claims 16–31.2 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

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.
2 Claims 1–15 are cancelled. Appeal Br. 11 (Claims App.).
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CLAIMS
Claims 16, 28, and 29 are independent claims. Claim 16, reproduced
below, illustrates the claimed subject matter.
16. A downhole device for being moved downwards in a
well by fluid to assist stimulation of a production zone of the
well, the well comprising a well tubular structure having a first
opening and a first movable sleeve arranged opposite the first
opening, the well tubular structure having an inner diameter, the
downhole device having an axial extension and comprising:
- a first part comprising:
- two projection elements having a profile
matching grooves in the sleeve, and
- a second part comprising:
- a body,
- two anchor elements projectable from the body
for anchoring the second part in the well tubular
structure, and
- a sealing element configured to seal against the
well tubular structure, the sealing element being spaced
from and, in use, positioned downhole from the two
anchor elements,
wherein the downhole device further comprises a
displacement mechanism comprising a piston movable within a
piston cylinder to displace, in the axial extension, the first part
in relation to the second part when the two anchor elements are
anchored in the well tubular structure and the two projection
elements are engaged with the grooves in the sleeve to operate
the sleeve.

Appeal Br. 11 (Claims App.).

REJECTION
Claims 16–31 are rejected under 35 U.S.C. § 103 as unpatentable over
Hazel (WO 2015/197532 A1; published Dec. 30, 2015) and Carmody (US
4,295,528; issued Oct. 20, 1981).
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ANALYSIS
For claim 16, the Examiner finds that Hazel discloses, in part, a
downhole device (downhole stimulation system 1) moved downwards in a
well (well 2) comprising a well tubular structure (tubular structure 4) having
a first opening (opening 19) and a first movable sleeve (sliding sleeve 17)
arranged opposite the first opening. Final Act. 2. The Examiner further
finds that the downhole device comprises a first part (“upper [downhole
tube] 20”) including two projection elements (keys 23); and a second part
(“lower [downhole tube] 20”) comprising a body and a sealing element
(inflatable device 22). Id. at 2–3 (citing Hazel, Figs. 2, 3); see also Ans. 5
(“[F]irst part” is “the left side of Fig. 6.”). The Examiner concedes that
Hazel does not disclose: (a) two anchor elements configured to seal against
the well tubular structure; (b) the sealing element being spaced from and, in
use, positioned downhole from the two anchor elements; and (c) a
displacement mechanism comprising a piston movable within a piston
cylinder to displace, in the axial extension, the first part in relation to the
second part when the two anchor elements are anchored in the well tubular
structure to operate the sleeve. Final Act. 3; see also Ans. 6–7 (“[T]he Final
Rejection clearly states that Hazel does not teach the anchor elements in
paragraph 5.”).
The Examiner relies on Carmody as teaching a downhole device
comprising: (a) two anchor elements (locking dogs 34) configured to seal
against a well tubular structure (tubing string 14); and (b) a displacement
mechanism comprising a piston movable within a piston cylinder (plunger
100) to displace, in an axial extension, a first part in relation to a second part
when the anchor elements are anchored in the well tubular structure to
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operate a sleeve. Final Act. 3 (citing Carmody, col. 7, ll. 46–65). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to modify Hazel with Carmody’s anchoring system as a
combination of known prior art elements according to known methods to
yield predictable results. Final Act. 3; see also Ans. 7–8. The Examiner
determines that Carmody’s anchoring system would function in the same
manner in Hazel. Final Act. 3. The Examiner further determines that
Hazel’s and Carmody’s devices use alternative means to secure the tools in
place, and, as such, it would have been obvious that a redundant securing
system would function in a predictable manner. Ans. 8.
Appellant contends that there is no teaching to place Carmody’s dogs
34 on the second part of Hazel, and the Examiner does not indicate that it
would have been obvious to do so. Appeal Br. 8.
In the Answer, the Examiner provides a claim construction of “a
second part” as recited in claim 16. Ans. 3–4. The Examiner determines
that “[t]he plain structure of the claim establishes that the sealing element,
anchor elements, and body are part of the second part, which along with the
projection elements, is a part of the first part. The claimed downhole device
solely comprises the first part.” Id. at 4 (emphasis added). That is, although
claim 16 recites both “a first part” and “a second part,” the Examiner
determines that the downhole device does not comprise both parts; rather,
the second part (including the sealing element, anchor elements, and body) is
part of the first part.
Appellant disputes this claim construction. Reply Br. 1–5. Appellant
explains that claim 16 includes “an extra inadvertent tab or indent for the
recitation of ‘the second part comprising.’” Id. at 2–3. Appellant contends
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that “[t]he original specification is clear that the first and second parts are
different from each other and move relative to one another.” Id. at 3. In
support, Appellant notes that the Specification describes, for example, “the
first part 7 has a first end 23 and a second end 24, and that the second end 24
is connected to toe [sic] second part 11.” Id. (citing Spec. 10, ll. 14–16).
Appellant’s contentions are persuasive. During examination, claims
are to be given their broadest reasonable interpretation consistent with the
specification. In re American Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). “The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the [S]pecification is . . . an
interpretation that corresponds with what and how the inventor describes his
invention in the [S]pecification, i.e., an interpretation that is ‘consistent with
the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed.
Cir. 2017) (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997))
(citation and quotation marks omitted).
First, as to the language and format of claim 16 as set forth in the
Claims Appendix, although the recitation “a second part comprising” is
further indented as compared to the preceding recitation of “a first part
comprising,” the intrinsic claim language makes clear that the second part is
a different part than the first part, and also is not part of the first part.
Claim 16 recites that the second part comprises “a body” and “two
anchor elements projectable from the body.” Appeal Br. 11 (Claims App.).
Claim 16 further recites “a piston movable within a piston cylinder to
displace . . . the first part in relation to the second part.” Id. Appellant
contends that, “[i]f the second part were part of the first part, it would be
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non-sensical for the second part to move relative to the first part (of which it
is a part).” Reply. Br. 4. We agree.
We also agree with Appellant that the Specification supports
Appellant’s position that the recited second part is a different part than the
first part, and is not part of the first part. For example, Figure 4 shows first
part 7 moved downward relative to second part 11 in the open position of
sleeve 5, and Figure 5 shows first part 7 moved upward relative to second
part 11 in the closed position of sleeve 5, where, in these positions,
projection elements 8 of first part 7 are engaged with grooves in sleeve 5,
and anchor elements 14 of second part 11 are anchored in well tubular
structure 3. See Spec. 7, ll. 21–25, Figs. 4, and 5.
Appellant also notes that the Examiner fails to identify any persuasive
support in Appellant’s Specification for the position that the second part is
part of the first part. Reply Br. 5. The Examiner’s construction is
inconsistent with the Specification, and thus, is not a reasonable
interpretation. Smith, 871 F.3d at 1382–83. We agree with Appellant that
claim 16 should be construed as meaning that “the first and second parts are
part of the downhole device, i.e., the second part is not part of the first part.”
Reply Br. 5.
In response to Appellant’s contention that claim 16 requires the
anchor elements to be on the second part, the Examiner provides two
positions. Ans. 9–11. First, the Examiner relies on the above-discussed
claim construction, stating “[t]he first part is defined to comprise the two
projection elements and the second part. Therefore, any part that has the
anchor elements is part of the body of the second part.” Id. at 10.
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Appellant replies that the Examiner’s first position “is flawed because
the second part is not part of the first part.” Reply Br. 7. We agree that the
Examiner’s first position is flawed because it is premised on an erroneous
claim construction.
Second, the Examiner maintains that the prior art does teach placing
the anchor elements on the second part. Ans. 10. In support, the Examiner
reproduces and arranges Appellant’s Figure 8, Hazel’s Figure 6, and
Carmody’s Figure 1 side-by-side “all oriented in the same direction relative
to their placement in a tubular.” Id. Based on this arrangement, the
Examiner determines that the anchor elements (14) of the claimed invention
are located in the same vicinity as the dogs (34) of Carmody, and, when
juxtaposed with Hazel, it is clear that the dogs would be placed on Hazel’s
body near the sealing element 22. Id. at 11. According to the Examiner, this
modification “would allow the dogs to function in the disclosed manner and
secure the tool with a bulk of the tool structure above.” Id.
Appellant replies that the Examiner’s second position also is deficient
because it relies on conjecture based on the manipulation of the size and
orientation of various views to achieve general alignment. Reply Br. 7–8.
We agree with Appellant that the Examiner’s arrangement and
relative sizing of the figures is premised on conjecture, and thus, does not
support the Examiner’s determination as to where Carmody’s dogs 34 would
be located in Hazel’s device. Indeed, the depicted location of dogs 34 in
Carmody does not, alone, teach or suggest incorporating them in addition to
Hazel’s keys 23, much less on the “second part” of Hazel including
inflatable device 22. Nor does the Examiner provide a persuasive reason to
make the argued modifications.
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Appellant contends that, in Hazel, once projection elements 23 are
engaged with the sleeve and pressure is applied to cause the entire tool to
move down the hole to open the sleeve, no anchoring of projecting elements
23 in the well tubular structure occurs when the sleeve is opened. Reply Br.
7. In contrast, Appellant contends, “claim 16 . . . specifies that the first part
is displaced in relation to the second part when the two anchoring elements
are anchored in the well tubular structure and the two projection elements
are engaged with the grooves in the sleeve to operate the sleeve.” Id.
(emphasis added). Appellant disagrees that a skilled artisan would have
added Carmody’s dogs 34 to Hazel’s system to create a “‘redundant’
securing system.” Reply Br. 7. Appellant points out that, as recited in claim
16, the projection elements and the anchor elements have different functions;
namely, the projection elements engage with the grooves in the sleeve and
the anchor elements anchor in the well tubular structure to operate the
sleeve. Id. Appellant contends that adding such redundant projection
elements (23) of Hazel would not address this claim language. Id.
We agree with Appellant that Hazel’s projection elements 23 do not
provide the same claimed function as the anchor elements, which “are
anchored in the well tubular structure . . . to operate the sleeve,” and thus,
adding “anchor elements” that provide the same function as keys 23 in Hazel
would not satisfy the “wherein” clause of claim 16.
Appellant also contends that the only purpose of allowing relative
movement between the two parts in Hazel is to properly locate keys 23 in
the sleeve when distance Xa (Fig. 1) is unknown. Appeal Br. 9; see also
Reply Br. 8–9. Once keys 23 are located in the sleeve, the entire tool is
moved down the hole to open the sleeve by pressurizing the inside of the
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well tubular structure. Id. Appellant further explains that, in contrast to
claim 16:
in order the [sic] operate the sleeve in Hazel, the projection
elements 23 are engaged with the sleeve, but the seal (and thus
the added dogs 34 of Carmody) would need to be disengaged
with the well tubular structure in order to allow the tool as a
whole to slide down the well (which would then open the
sleeve).
Reply Br. 8 (emphasis added).
Appellant contends that applying Carmody’s dogs 34 to Hazel’s
second part including inflatable device 22 would prevent Hazel’s tool from
sliding within the well. Appeal Br. 8; see also Reply Br. 8. Particularly,
Appellant notes that, in Hazel, inflatable device 22 is inflated and then the
inside of the well tubular structure is pressurized, thereby applying pressure
onto inflatable device 22 and moving the downhole tool away from the top
of the well. Id. Consequently, inflatable device 22 slides within the well
when this pressure is applied to allow sleeve 17 to open. Id. Appellant
contends that adding Carmody’s dogs 34 to Hazel’s second part would
prevent the sleeve from opening. Appeal Br. 8–9; see also Reply Br. 8.
We agree with Appellant that preventing this sliding of inflatable
device 22 appears to conflict with the disclosed operation of Hazel’s tool.
Moreover, claim 16 requires that the projection elements engage with the
grooves in the sleeve and the anchor elements anchor in the well tubular
structure to operate the sleeve. It is not apparent how the Examiner’s
proposed modification of Hazel would allow opening of the sleeve if
Carmody’s dogs 34 were provided on Hazel’s second part and engaged with
well tubular structure.
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Appellant also contends that there is no teaching or suggestion to use
the displacement mechanism in Hazel, even as modified by Carmody, to
operate the sleeve, as claimed. Appeal Br. 9; see also Reply Br. 9.
We agree. In addition to the above issues with modifying Hazel to
add Carmody’s dogs 34 on the second part, Carmody discloses that plunger
100 is operable to manipulate dogs 34 from a retracted position to an
expanded position. See Carmody, col. 7, ll. 58–60. The Examiner does not
explain adequately how Carmody’s plunger 100 would be incorporated in
Hazel to move the “first part” relative to the “second part,” especially “when
the two anchor elements are anchored in the well tubular structure” as
recited in claim 16.
Accordingly, we do not sustain the rejection of claim 16, and claims
17–27 and 31 depending therefrom. Claims 28 and 29 incorporate all
limitations of claim 16, and thus, we likewise do not sustain the rejection of
claims 28 and 29, and claim 30 depending from claim 29.

CONCLUSION
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–31 103 Hazel, Carmody 16–31

REVERSED