Welltec Oilfield Solutions AG

Patent Trials and Appeals Board

Jun 18, 2020

15039146 - (D) (P.T.A.B. Jun. 18, 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.
15/039,146 05/25/2016 Ricardo Reves VASQUES PTB-5544-144 6808
23117 7590 06/18/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
CARROLL, DAVID P.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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 RICARDO REVES, SATISH KUMAR and LINE BERGMAN
____________

Appeal 2020-000344
Application 15/039,146
Technology Center 3700
____________

Before JOHN C. KERINS, DANIEL S. SONG, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 20, 21, and 23–38. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Welltec Oilfield Solutions AG as the
real party in interest. Appeal Br. 3.
Appeal 2020-000344
Application 15/039,146
2
THE INVENTION
Appellant’s invention relates to “a downhole production casing string
for insertion in a borehole in a reservoir.” Spec. 1:3–4. Claim 20,
reproduced below as the sole independent claim on appeal, is illustrative of
the subject matter on appeal.
20. A downhole production casing string for insertion in a
borehole in a reservoir, the downhole production casing string
having a first end nearest a top of the borehole and a second end
furthest away from the top, the downhole production casing
string extending along a longitudinal axis and comprising:
- at least one opening which during production allows
hydrocarbon-containing fluid from the reservoir into the
downhole production casing string,
- a plurality of casing parts having end sections and a base
section between the end sections, the base section having an
outer diameter, and
- at least one annular projecting element having an outer face
and at least one helical groove arranged in or on the outer face
and having an overall outer diameter which is larger than the
outer dimeter of the base section,
wherein the downhole production casing further comprises at
least one fluid-expandable annular barrier, the annular projecting
element being positioned in front of the annular barrier closer to
the second end of the casing string, and
wherein a diameter of the annular projecting element is larger
than a diameter of the annular barrier before expansion of the
annular barrier, so as to protect the annular barrier against
damage when the annular projecting element and the annular
barrier are together inserted into the borehole.

Appeal 2020-000344
Application 15/039,146
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Baldridge US 5,697,442 Dec. 16, 1997
Le US 2005/0092527 A1 May 5, 2005
Valenti US 2005/0230105 A1 Oct. 20, 2005
Hallundbaek US 2011/0266004 A1 Nov. 3, 2011
Ravensbergen US 2011/0308817 A1 Dec. 22, 2011
Hofman US 2012/0152523 A1 June 21, 2012
The following rejections are before us for review:
I. Claims 20, 21, 23–26, and 28–31 stand rejected under 35
U.S.C. § 103 as being unpatentable over Ravensbergen,
Hofman, and Hallundbaek.
II. Claim 27 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Ravensbergen, Hofman, Hallundbaek,
and Valenti.
III. Claims 32–34 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ravensbergen, Hofman,
Hallundbaek, and Baldridge.
IV. Claims 35–38 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ravensbergen, Hofman,
Hallundbaek, and Le.

Appeal 2020-000344
Application 15/039,146
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OPINION
Rejection I
Claims 20, 21, 23–26, and 29–31
Appellants argue claims 20, 21, 23–26, and 29–31 as a group. Appeal
Br. 7–11. We select independent claim 20 as representative, and claims 21,
23–26, and 29–31 stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 20, the Examiner finds, inter alia, that
Ravensbergen discloses a downhole production casing string with casing
parts (i.e., collars 110), an annular projecting element (i.e., centralizer 116),
and a fluid-expandable annular barrier (i.e., packer 111), as claimed. Non-
Final Act. 6 (citing Ravensbergen ¶ 64, Figs. 4, 5).
The Examiner determines that Ravensbergen does not disclose a
helical groove arranged on the outer face of the annular projecting element
and relies on Hofman for disclosing a helical groove on the outer face of the
middle section 76 of a centralizer 70. Id. at 6–7 (citing Hofman, Figs. 5, 6).
The Examiner also finds that Hofman’s helical groove is “described as
urging rotation of the centralizer,” and reasons that “[b]y urging rotation of
the casing string[,] the centralizer reduces the amount of force needed to
overcome friction between the casing and the borehole, which reduces the
amount of torque needed to rotate the string.” Ans. 4–5 (citing Hofman ¶¶
30, 32). Additionally, the Examiner finds that “it is well known in the art
that helical/spiral configurations of stabilizer/centralizer blades induce
rotation of the stabilizer/centralizer and/or string (depending on attachment
type) as evidenced by Hofman.” Id. at 6 (citing Hofman ¶¶ 30, 32).2 The

2 The Examiner also cites additional references as evidence that it is well
known to use a helical groove in or on a centralizer, as claimed. See Ans. 6–
7.
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Examiner reasons that it would have been obvious to modify
Ravensbergen’s annular projecting element (i.e., centralizer 116) to include
a helical groove, as taught by Hofman, “to reduce friction/torque during run-
in by urging rotation of the centralizer and attached tubing.” Non-Final Act.
7 (Hofman ¶¶ 24, 30).
The Examiner also finds that Ravensbergen fails to disclose that the
annular projecting element (i.e., centralizer 116) has an overall outer
diameter that is larger than the outer diameter of the base section of the
casing parts, as claimed,3 and relies on Hofman for teaching that annular

3 Notably, claim 20 requires casing parts having a base section
between end sections, for example, casing part 8 having base section
10. See, e.g., Spec. 6:21 (“casing parts have end sections 9 and a base
section 10 between the end sections forming one pipe section”), Figs.
1, 2, 4a. Thus, the structures in Ravensbergen that correspond to the
claimed casing parts are pipe sections 106A–C. See, e.g.,
Ravensbergen ¶ 41 (disclosing, with reference to Figures 2 and 3, that
“casing 104 can include multiple casing lengths 106A, 106B, and
106C that can be connected by one or more collars, such as collars
108 and 110”); id. ¶ 42 (“[c]ollar 110 can include one or more fracture
ports 112 . . . which can be positioned longitudinally in centralizers
116”). A preponderance of the evidence supports a finding that the
base section of Ravensbergen’s casing parts (i.e., the portion of pipe
sections 106A-C between the ends) correspond to the claimed casing
parts having a base section, and also that Ravensbergen’s annular
projecting element (i.e., centralizer 116) has an overall outer diameter
larger than the outer diameter of such base sections. See,
Ravensbergen, Figs. 2, 3. Moreover, Baldridge discloses that it is
generally known that “centralizers . . . are connected [to] a part of the
casing string or disposed thereabout at desired intervals [and] have
outwardly extending parts to engage the well bore,” such that the
overall outer diameter of centralizers (or annular projecting elements)
are known to be larger than the outer diameter of the base section of
the casing parts. Baldridge 1:65–2:2.
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projecting element (i.e., “near 76”) has an overall outer diameter larger than
the outer diameter of the base section (i.e., “between 80/74”). Non-Final
Act. 7 (citing Hofman, Fig. 5).
The Examiner further finds that although Ravensbergen discloses an
annular barrier (i.e., packer 111), Ravensbergen fails to disclose a fluid-
expandable annular barrier, wherein the diameter of the projecting element
(i.e., centralizer 116) is larger than the diameter of the annular barrier before
expansion, so as to protect the annular barrier against damage when the
casing string is inserted into the borehole, as claimed. Non-Final Act. 7.
The Examiner relies on Hallundbaek for disclosing a fluid-expandable
annular barrier (i.e., annular barrier 1) with a projecting element (i.e., “near
21/22”) having the claimed diameter. Id. at 8 (citing Hallundbaek, Fig. 1).
The Examiner reasons that it would have obvious to modify Ravensbergen,
as modified by Hofman, “to have used the known annular barrier of
Hallundbaek, . . . as Ravensbergen teaches a generic annular barrier and
using the known annular barrier of Hallundbaek yields the predictable result
of allowing the operator [to] form an annular seal at a desired location within
the borehole.” Id. Notably, where “a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007).
Appellant argues that “there is no reason” to modify Ravensbergen’s
centralizer 116 to have Hofman’s helical groove, because “the cited
paragraphs [from Hofman] say nothing about reducing friction/torque during
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run-in.” Appeal Br. 8 (citing ¶¶ 24, 30). Appellant submits that, instead,
Hofman discloses that
centralizer 70 and sleeve 90 are freely rotatable relative to the
casing string above swivel sub 20. As such, when the centralizer
engages the ground surface 202 . . . , the sleeve 90 begins to
rotate. Once sleeve 90 rotates such that a flat surface 119
engages the ground, the centralizer also stops rotating. At that
point, neither centralizer 70 nor sleeve 90 rotates, and the casing
string is moved (“dragged straight”) further down the lateral . . .,
i.e., without rotating. Because centralizer 70 and sleeve 90 stop
rotating upon encountering the bottom side of the wellbore, due
to the connection 40 allowing free relative rotation, it is clear that
the centralizer does not reduce friction/torque – it only freely
rotates when there are no obstructions. Moreover, because it
stops rotating and is dragged/pushed through the wellbore upon
contacting the wellbore, the centralizer 70 is not fixedly rotatable
with the casing string so the groove functions as screw to help
advance the casing string into the borehole, per claim 20.4
Id.; see also Reply Br. 1. Appellant also argues that, in Hofman, the rotation
of centralizer 70 is very limited so as to only function to open ports, and
therefore, Hofman does not teach rotation of helical flutes to reduce friction
or torque. Reply Br. 2. Appellant submits that the Examiner impermissibly
picks and chooses elements from the prior art (id.) and impermissibly relies
on hindsight (Appeal Br. 9).
Regarding the Examiner’s reliance on additional references in support
of the Examiner’s finding that helical grooves on centralizers are well
known, as set forth supra, Appellant argues that “[t]hese references are not
relevant because they are not part of the rejection,” and “even if they were

4 Notably, as set forth supra, claim 1 requires the annular projecting element
to have “at least one helical groove arranged in or on the outer face,” but
does not require the helical groove to advance the casing string into the
borehole.
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part of the rejection, they do not change the operation of Hofman.” Reply
Br. 2.
We are not persuaded by Appellant’s argument. A preponderance of
the evidence supports the Examiner’s finding that Hofman discloses that a
helical flute on a centralizer urges rotation of the centralizer: “[w]hen the
centralizer 70 engages with the ground surface, fluted middle section 76
engages the low side of the wellbore and urges rotation of the centralizer
and attached tubing, including the ported sleeve 90, in the direction of the
flutes 78.” Hofman ¶ 90 (emphasis added). Although Hofman discloses, as
argued by Appellant, that “rotation of the ported sleeve 90 will continue
until [engagement surface 119 contacts low side 202 of wellbore 204],”
wherein “frictional engagement of the engagement surface 119 [of sleeve
90] is sufficient to resist the rotational urging caused by the fluted centralizer
70,” the Examiner’s modification, as set forth supra, does not include
incorporating Hofman’s ported sleeve 90 to limit rotation of the centralizer
urged on by the helical flutes, or a swivel sub 20. Hofman ¶¶ 31, 32; see
Ans. 8 (“Hofman was not relied upon to teach the attachment mechanism,
the centralizer itself, swivel sub, sleeve, or engagement surface on the
sleeve,” rather, “Hofman was relied upon to teach using helical grooves on
the outer face of the centralizer”). “It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012); see also Ans. 8. Appellant also does
not provide sufficient argument or evidence to dispute the Examiner’s
reasoning that urging rotation of Ravensburgen’s casing string via the
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modified, helically grooved centralizer, results in reducing the torque
necessary to set the casing string in the well hole.
Although not necessary in view of Hofman’s factual disclosure in
support of the Examiner’s reasoning as discussed supra, the Examiner cites
additional references, which are consistent with Hofman, as evidence that “it
is well known in the art that helical/spiral configurations of
stabilizer/centralizer blades induce rotation of the stabilizer/centralizer
and/or string.” Non-Final Act. 6 (citing, e.g., Fiasseler5 ¶ 73 (disclosing,
with reference to Figure 3, that “[t]he profile of the centralizing section is
similar to a conventional spiral-blade stabilizer in order to . . . reduce torque
and drag”)). We are not persuaded by Appellant’s argument that the
Examiner erred by relying on prior art not specifically relied upon in the
rejection as evidence that certain subject matter is well known in the art. See
Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013) (prior art of
record not specifically relied upon in the rejection considered as evidence of
the state of the art, common knowledge, and common sense of one of
ordinary skill in the art). Further, an artisan must be presumed to know
something about the art apart from what the references disclose. See In re
Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Appellant also argues that “[b]oth the Ravensbergen centralizer and
the Hofman centralizer are not designed to protect an annular barrier during
the insertion process,” and further, “Hofman teaches no annular barrier to
protect.” Id. 8–9; see also id. at 10 (alternatively, arguing that Hofman’s
“centralizer 70 does not appear to have a diameter that is larger than the
sleeve 90”). Appellant submits that Ravensbergen’s packer 111 is depicted

5 US 2005/0109538 A1; published May 26, 2005.
Appeal 2020-000344
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in Figure 8 as having a larger diameter than Ravensbergen’s centralizer 116,
and that Ravensbergen “does not teach that [packer 111] has a diameter that
is less than the centralizer.” Id. at 9; see also id. at 9–10 (arguing that, with
respect to Ravesnbergen’s “packers plus-like system” or swellable,
mechanical packers, “Ravensbergen is silent as to the diameter of the
projecting element being larger than the diameter of the annular barrier
before its expansion”). Appellant submits that the Examiner improperly
relies on hindsight. Id. at 9.
However, as set forth supra, the Examiner relies on Hallundbaek, not
Ravensbergen or Hofman, for disclosing a fluid-expandable annular barrier,
which, when incorporated into Ravensbergen’s downhole production casing
string, is protected, when unexpanded, by Ravensbergen’s annular projecting
element during insertion. In other words, the Examiner neither relies on
Hofman’s centralizer 70, nor Hofman’s sleeve 90 for disclosing the claimed
annular projecting element or fluid-expandable annular barrier. See Ans. 10
(“Hofman is not used to teach a sleeve in addition to the centralizer of
Ravensbergen”). As set forth supra, the Examiner relies on Ravensbergen’s
centralizer 116 as disclosing the claimed annular projecting element, and
proposes modifying Ravensbergen’s packer 111 to be a fluid-expandable
annular barrier, as disclosed with reference to Hallundbaek’s annular barrier
1. Thus, Appellant’s argument does not apprise us of error in the
Examiner’s rejection.
Appellant further argues that “the skilled person would not be
motivated when starting from Ravensbergen to adjust the main barrier
packer of Ravensbergen with another packer design of Hallundbaek to
protect such ‘upper packer’ by an ‘annular projecting element’ . . . since
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11
such ‘upper packer’ does not need protection.” Appeal Br. 11. However,
Ravensbergen discloses packers 111 “positioned between the inner diameter
of the wellbore 107 and the outer diameter of the case 104, as illustrated in
FIG. 8,” on either side of Ravensbergen’s annular projecting element (i.e.,
centralizer 116), such that we are not persuaded by Appellant’s argument
that Ravensbergen’s packer 111 does not need protection. Ravensbergen ¶
50, Fig. 8 (depicting packers 111 on either side of centralizer 116 along the
downhole production casing string). In other words, we are not apprised of
error in the Examiner’s reasoning that the proposed substitution of
Hallundbaek’s fluid-expandable annular barrier for Ravensbergen’s packers
111 would result in the packer following annular projecting element (i.e.,
centralizer 116) to be protected by the annular projecting element.
Finally, Appellant argues that Hofman fails to disclose that the
annular projecting element (i.e., Hofman’s centralizer 70) has an overall
outer diameter which is larger than the diameter of a base section (i.e.,
Hofman’s sleeve 90). Appeal Br. 9. However, Appellant’s argument does
not address the Examiner’s finding supra that Hofman’s annular projecting
element (i.e., “near 76,” wherein reference numeral 76 refers to the middle
section of centralizer 70) has an overall outer diameter larger than the outer
diameter of the base section (i.e., “between 80/74,” wherein reference
numeral 80 refers to an annular front surface of middle section 76 and 74
generally indicates a pipe section of centralizer 70), as depicted in Figures 5,
6. In other words, the Examiner does not rely on Hofmans’ sleeve 90, and
therefore, Appellant’s argument does not apprise us of error in the
Examiner’s findings.
Appeal 2020-000344
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Accordingly, we sustain the Examiner’s rejection of independent
claim 20 and claims 20, 21, 23–26, and 29–31 fall therewith.

Claim 28
Claim 28, which depends from independent claim 20, recites, in
relevant part, “wherein the helical groove has a cutting edge.” Appeal Br.
14 (Claims App.). The Examiner finds, inter alia, that “[i]t is known in the
art that sharp edges on centralizers cut / scrape into the formation during
rotation.” Non-Final Act. 12 (citing, as evidence, Wheeler6 ¶ 28).
Appellant argues that “front edge 80 of [Hofman’s] centralizer is not
likely able to form a cutting edge due to its angular orientation,” and also
that the Examiner’s reliance on Wheeler, as evidence that a cutting edge on a
helical groove of a centralizer is well known, is “improper.” Appeal Br. 11.
We are not persuaded by Appellant’s argument, which lacks sufficient
evidence. Moreover, Wheeler discloses that “centralizing blades 20 rotate
across and against the bore hole with a bruising (glancing impact) not in a
digging or direct impact as would occur with a profile including sharp
edges.” Wheeler ¶ 28. As discussed supra, it is not improper for the
Examiner to refer to prior art, which is of record but not specifically relied
upon in the rejection, as evidence of common knowledge, for example, as
here, as evidence that it is well known for the edges of helical grooves (or
spiral blades) on centralizers to be intentionally cutting edges.
Accordingly, we sustain the Examiner’s rejection of claim 28.

6 US 2007/0163778 A1 (published July 19, 2007).
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Rejections II–IV
Appellant does not present arguments for the patentability of claims
27 and 32–38 apart from the arguments presented in Rejection I supra.
Appeal Br. 7–12. Therefore, for essentially the same reasons as presented
supra, we also sustain the Examiner’s rejection of claims 27 and 32–38.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s) Affirmed Reversed
20, 21, 23–
26, 28–31
103 Ravensbergen, Hofman,
Hallundbaek
20, 21, 23–
26, 28–31

27 103 Ravensbergen, Hofman,
Hallundbaek, Valenti
27
32–34 103 Ravensbergen, Hofman,
Hallundbaek, Baldridge
32–34
35–38 103 Ravensbergen, Hofman,
Hallundbaek, Le
35–38
Overall
Outcome
20, 21, 23–
38

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