Ex Parte 5271468 et al

Board of Patent Appeals and Interferences

Jun 30, 2009

90007289 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HALLIBURTON ENERGY SERVICES, INC.,
Patent Owner and Appellant
____________

Appeal 2009-002732
Reexamination Controls 90/007,108, 90/007,284, and 90/007,289
Patent 5,271,4681
Technology Center 3900
____________

Decided:2 July 1, 2009
____________

Before ROMULO H. DELMENDO, LINDA E. HORNER, and DANIEL S.
SONG, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Halliburton Energy Services, Inc., the owner of the patent under
reexamination, appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1-18, 30-38, 40, 41, 73, 76-80, 168, and 169 (Appeal

1 The patent under reexamination (hereinafter the “‘468 Patent”) issued to
Streich et al. on December 21, 1993 from Application 07/719,740 filed on
June 21, 1991.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date.
Appeal 2009-002732
Reexamination Controls 90/007,108, 90/007,284, and 90/007,289
Patent 5,271,468

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Brief filed October 22, 2007, hereinafter “App. Br.,” 8; Examiner’s Answer
mailed May 7, 2008, hereinafter “Ans.,” 2; Final Office Action mailed
January 8, 2007).3 Claims 21-27, 29, 34-41, 43, 46-72, 81-90, 92-100, 106-
110, 112-122, 125, 131-134, 136-153, 156, 157, 161-167, and 170-194 have
been indicated as patentable and/or confirmed.4 Claims 102-105, the only
other pending claims, have been objected to as depending upon a rejected
base claim but otherwise indicated as allowable (App. Br. 8; Ans. 2). We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM IN PART.

STATEMENT OF THE CASE
This merged reexamination proceeding arose from a consolidation of
three separate reexamination proceedings, which are: (i) 90/007,108 filed by
Halliburton Company on July 6, 2004; (ii) 90/007,284 filed by BJ Services
Company on November 3, 2004; and (iii) 90/007,289 filed by Stephen H.
Cagle of Howrey Simon Arnold & White, LLP on November 8, 2004
(Decision Merging Reexamination Proceedings mailed May 25, 2006).
According to Appellant, “[t]here are currently no other appeals,
interferences, or judicial proceedings . . . that will directly affect or be
directly affected by or have a bearing” on our Decision (App. Br. 7). It
appears, however, that the ‘468 Patent has been the subject of a patent

3 See Patent Assignment Abstract of Title, which was entered into the
record of this proceeding as “Title Report” on November 16, 2004.
4 It appears that the Examiner is actually indicating that multiple dependent
claims 34-38, 40, and 41 contain allowable subject matter conditioned on
their dependencies to particular base and/or intervening claims because these
claims have also been rejected.
Appeal 2009-002732
Reexamination Controls 90/007,108, 90/007,284, and 90/007,289
Patent 5,271,468

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infringement action captioned Halliburton Energy Services, Inc. v.
Weatherford Int’l, Inc. and BJ Services Co., Civil Action No. 3:02-CV-
1347-N (N.D. Tex.) (Reexamination Litigation Search entered November
19, 2004; Request for Reexamination filed July 6, 2004 at 1-2).
We heard oral arguments on May 6, 2009, a written transcript of
which has been entered into the electronic record on June 9, 2009.
The ‘468 Patent states that the “invention relates to downhole tools for
use in well bores and methods of drilling such apparatus out of well bores,
and more particularly, to such tools having drillable components therein
made of non-metallic materials . . . .” (col. 1, ll. 12-16). Figure 2 of the ‘468
Patent, which depicts a cross section of one non-limiting embodiment of the
invention in the form of a drillable packer, is reproduced below:
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Figure 2 depicted above shows a drillable packer, wherein the device
includes, inter alia, center mandrel 22, lock ring housing 24, lock ring 26,
retaining band 30, plurality of upper slips 28, wedge retaining ring 34, upper
slip wedge 32, generally conical lower slip wedge 46, wedge retaining ring
52, plurality of lower slips 54, retaining band 56, and lower slip support 58
(col. 4, ll. 52-54; col. 5, l. 19 to col. 7, l. 18).
Claims 1 and 30 on appeal read as follows:
1. A well bore process comprising the steps of:
constructing a downhole tool such that a component
thereof is made of a non-metallic material, said tool
comprising:
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a center mandrel; and
a plurality of slips disposed around said mandrel for
grippingly engaging a well bore when in a set position;
wherein, at least one of said mandrel and said plurality of
slips is said component;
positioning said downhole tool into locking, sealing
engagement with said well bore; and
drilling said tool out of said well bore.

30. A downhole apparatus for use in a well bore, said
apparatus comprising:
a center mandrel made of a non-metallic material; and
slip means disposed on said mandrel for grippingly
engaging said well bore when in a set position.
(Claims App’x, App. Br. 75 and 78.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed May 7, 2008, hereinafter
“Ans.,” 3-7):
Fisher 1,684,266 Sep. 11, 1928
Hall 2,160,804 May 30, 1939
Is Bad Water Eating Away Your Flood Profits? Baker Introduces Two
Packers as Corrosion-Proof as Fiberglass Tubing – Because They Are
Fiberglass!, WORLD OIL, June 1968 (no pagination) (hereinafter “Baker I”).
SPECIAL PRODUCTS MANUAL: BAKER PRIME FIBERGLASS PACKER
PRODUCT 739-09, BAKER OIL TOOLS, INC. April 25, 1968 (2 pages;
hereinafter “Baker II”).
Allen M. Shibley, Glass-Filled Thermoplastics in HANDBOOK OF
COMPOSITES 115-135 (George Lubin ed. 1981) (hereinafter “Shibley”).
Document hand-labeled as “FIBERITE” (18-pages; publication date
unknown) (hereinafter “FIBERITE”).
Appeal 2009-002732
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Patent 5,271,468

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Lonnie C. Helms and Bob L. Sullaway, SALES TECHNICAL PAPER:
SUCCESSFUL DRILL OUT OF SHOE JOINTS WITH PDC BITS, Halliburton
Services (publication date illegible or unknown) (hereinafter “Helms”).

Appellant relies on the following documents in support of
nonobviousness (Evidence App’x, App. Br. 87-89):
Morrisett 2,589,506 Mar. 18, 1952
Perkins 3,163,225 Dec. 29, 1964
Williams 3,517,742 Jun. 30, 1970
Watson 4,858,687 Aug. 22, 1989
Zimmerman 6,769,491 B2 Aug. 3, 2004

Declaration of Robert M. Pearson executed on August 20, 2004 (hereinafter
“Pearson I Declaration”).
Supplemental Declaration of Robert M. Pearson executed on October 23,
2006 (hereinafter “Pearson II Declaration”).
Declaration of David Brisco executed on March 14, 2003 (hereinafter
“Brisco I Declaration”).
Supplemental Declaration of David Brisco executed on May 22, 2003
(hereinafter “Brisco II Declaration”).
Declaration of Jack Hulme executed on March 15, 2003 (hereinafter “Hulme
Declaration”).
Copy of Amendment filed on August 21, 1992 in Application No.
07/719,740.
Eddie E. Smart, How to Select the Right Packer for the Job, PETROLEUM
ENGINEER 70, 72, 76, 78, 80, unnumbered page (1978).
WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY 1058 (1984).
R.C. Sweet, C.M. Pumphrey, Jr., and R.J. Funk, Design Guidelines Help
Select Fiber Glass Injection-Well Tubulars, OIL & GAS JOURNAL 148, 151,
152, 154 (1981).
A DICTIONARY FOR THE PETROLEUM INDUSTRY 27, 175 (3d. ed. 2001).

The Examiner rejected the claims as follows (Ans. 4-7):
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I. claims 1-4, 6-8, 30-32, 34, 38, 40, 73, 76, 77, 80, 168, and 169
under 35 U.S.C. § 102(b) as anticipated by Hall;
II. claims 1-6, 30-32, 73, 76, and 80 under 35 U.S.C. § 102(b) as
anticipated by Fisher;
III. claims 30-34, 38, 41, and 73 under 35 U.S.C. § 102(b) as
anticipated by Baker I;
IV. claims 30-34, 38, 40, 41, and 73 under 35 U.S.C. § 102(b) as
anticipated by Baker II;
V. claims 9, 10, 35-37, 78, and 79 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Hall, Shibley, and
FIBERITE; and
VI. claims 11-18 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Hall and Helms.

ISSUES
Rejection I
Claims 1-4, 6-8, 76, 77, 80, 168, and 169:
The Examiner finds that Hall describes a process in which a downhole
tool comprising a central, hollow mandrel and a plurality of slips, both of
which can be made of plastic, is positioned within a well bore by a
releasable setting mechanism to form a gripping, sealing engagement and
then removed (after well operation is complete) by drilling the tool out of the
well bore (Ans. 4).
Appellant does not dispute these factual findings (App. Br. 31-32, 38).
Rather, Appellant contends that “Hall does not meet the limitation of claim 1
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requiring the step of ‘positioning said downhole tool into locking . . .
engagement with said well bore’” (id.). Relying on declaration evidence,
Appellant asserts that the term “lock” limits the downhole tool to one that “is
fixed in place in the well bore and not movable in either axial direction” (id.
at 32). According to Appellant, “[n]othing in Hall teaches or suggests that
its disclosed tool will not move upward in response to pressure forces from
below, and no structure is disclosed which would prevent upward
movement” (id. at 40).
Thus, the dispositive issue arising from the contentions of the
Examiner and Appellant is:
Has Appellant shown reversible error in the Examiner’s factual
finding that Hall describes “positioning [of the] downhole tool into locking .
. . engagement with [the] well bore” as required by claim 1?

Claims 30-32, 34, 38, 40, and 73:
With respect to the language “slip means . . . for grippingly engaging
said well bore” recited in claim 30, the Examiner asserts that the disclosure
of the ‘468 Patent identifies the “slip means” with the phrase “may
comprise” without providing a “strict definition,” and, therefore, “‘slip
means’ must be given a reasonably broad definition” (Ans. 9). The
Examiner then holds that the claimed “slip means” reads on “Hall’s tool
which includes slips 22, a wedge 21 for forcing the slips into engagement
with the well bore, and slip support members 23-26 for supporting the slips
in the engaged position” (id.). According to the Examiner, the “structure of
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Hall does in fact function in substantially the same manner as the” claimed
“slip means” (id.).
Appellant, on the other hand, contends that the claim language
invokes 35 U.S.C. § 112, ¶6, thus limiting the “slip means . . .” to the
disclosed structure and its equivalents (App. Br. 15). Quoting M.P.E.P. §
2181, Appellant urges that the Examiner may not “‘[interpret] such a
limitation as reading on any prior art means or step which performed the
function specified in the claim without regard for whether the prior means or
step was equivalent to the corresponding structure, material or acts described
in the specification’” (App. Br. 15). Relying on the disclosure of the ‘468
Patent, Hall, and the Pearson I Declaration, Appellant argues that Hall does
not describe the claimed “slip means” (id. at 42-49).
Thus, the dispositive issue arising from the contentions of the
Examiner and Appellant is:
Has Appellant shown reversible error in the Examiner’s conclusion
that the claimed “slip means disposed on said mandrel for grippingly
engaging said well bore” encompasses Hall’s elements 21-26?

Rejection II
Claims 1-6, 76, and 80:
It is undisputed that Fisher discloses a drillable tool with segments 10
and a mandrel 14 made out of wood and slidable slips 17 made out of cast
iron (Ans. 4-5; App. Br. 50). The Examiner asserts, however, that the
language “sealing engagement” in claim 1 does not require complete sealing
of the well bore but rather only a “sealing engagement” between the tool and
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Patent 5,271,468

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the well bore, as shown in Fisher (Ans. 11). Appellant, on the other hand,
contends that this is an incorrect interpretation of the claim language because
the term “sealing engagement” requires a complete seal between the mandrel
and well bore (App. Br. 36, 51). According to Appellant, the relied upon
evidence demonstrates that Fisher cannot provide “sealing engagement” as
required by the claims because Fisher explicitly teaches that segments 10
(which surround the mandrel 14) separate, thus creating axial flow channels
through the plug (id. at 51-55).
Thus, the dispositive issue raised by the contentions of the Examiner
and Appellant is:
Has Appellant shown reversible error in the Examiner’s conclusion
that the term “sealing engagement” in claim 1 does not require a complete
seal between the mandrel and the well bore as in Fisher?

Claims 30-32 and 73:
The Examiner asserts that the term “slip means” in claim 30 must be
given a broad definition because the disclosure of the ‘468 Patent uses the
phrase “may comprise” in describing the components that make up the “slip
means” (Ans. 13). According to the Examiner, the claimed “slip means”
encompasses the structure shown in Fisher in that “Fisher’s tool includes
slips 17, 19, a wedge 14 for forcing the slips into engagement with the well
bore, and a mandrel 10 with shoulders for supporting the slips in the
engaged position” (id.).
Appellant counters that the claimed means invokes 35 U.S.C. § 112,
¶6, and that Fisher does not describe the corresponding structure disclosed in
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the ‘468 Patent or its equivalent (App. Br. 58-60). In particular, Appellant
urges that the components in Fisher asserted to be the wedge and slip
support are not on opposite sides of the slips (id. at 59).
Thus, the dispositive issue raised by the contentions of the Examiner
and Appellant is:
Has Appellant shown reversible error in the Examiner’s conclusion
that the limitation “slip means disposed on said mandrel for grippingly
engaging said well bore when in a set position” encompasses the slip 17, 19,
mandrel 14, and segments 10 shown in Fisher?

Rejection III
Claims 30-34, 38, 41, and 73:
The Examiner asserts that Baker I discloses the “slip means” recited
in claim 30 in the form of “slips, a wedge for forcing the slips into
engagement with the well bore, and a setting tool for supporting the slips in
the engaged position” (Ans. 14-15). Appellant, on the other hand, contends
that Baker I has not been shown to disclose such a setting tool (App. Br. 62-
63).
Thus, the dispositive issue arising from the contentions of the
Examiner and Appellant is:
Has Appellant shown reversible error in the Examiner’s conclusion
that the “slip means disposed on said mandrel for grippingly engaging said
well bore when in a set position” recited in claim 30 encompasses the
structures described in Baker I, if any?

Appeal 2009-002732
Reexamination Controls 90/007,108, 90/007,284, and 90/007,289
Patent 5,271,468

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Rejection IV
Claims 30-34, 38, 40, 41, and 73:
In response to Appellant’s argument that the shoulder of the mandrel
shown in Baker II does not support the slips as required by the recited “slip
means” (App. Br. 68), the Examiner contends that Baker II describes a
setting tool, which corresponds to the slip support disclosed in the ‘468
Patent (Ans. 16). Appellant, on the other hand, contends that while Baker II
does disclose a “tubing string” for supporting the tool in the well, it is not
part of a “slip means disposed on said mandrel” (App. Br. 68).
Thus, a dispositive issue is:
Has Appellant shown reversible error in the Examiner’s conclusion
that the “slip means disposed on said mandrel” recited in claim 30
encompasses the structure shown in Baker II?

Rejection V
Claims 9, 10, 78, and 79:
The Examiner relies on Shibley and FIBERITE to show that a person
having ordinary skill in the art would have found it obvious to make Hall’s
mandrel or slips out of nylon or Fiberite phenolic material (Ans. 6).
Appellant, however, relies on the same arguments offered in connection with
the rejection of claim 1 over Hall alone (App. Br. 41, 71, 72).
Thus, the issue is:
Has Appellant shown reversible error in the Examiner’s factual
finding that Hall describes “positioning [of the] downhole tool into locking .
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Patent 5,271,468

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. . engagement with [the] well bore” as required by claim 1 (from which
claims 9 and 10 indirectly depend)?

Claims 35-37:
Again, the Examiner relies on Shibley and FIBERITE to show that a
person having ordinary skill in the art would have found it obvious to make
Hall’s mandrel or slips out of nylon or Fiberite phenolic material (Ans. 6).
Appellant, however, relies on the same arguments offered in connection with
the rejection of claim 30 over Hall alone (App. Br. 71).
Thus, the issue is:
Has Appellant shown reversible error in the Examiner’s conclusion
that the claimed “slip means disposed on said mandrel for grippingly
engaging said well bore” encompasses Hall’s elements 21-26?

Rejection VI
Claims 11-18:
The Examiner relies on Helms to show that a person having ordinary
skill in the art would have found it obvious to use a polycrystalline diamond
compact (PDC) bit to drill out downhole tools (Ans. 6). Appellant, however,
relies on the same arguments offered in connection with the rejection of
claim 1 over Hall alone (App. Br. 41, 72).
Thus, the issue is:
Has Appellant shown reversible error in the Examiner’s factual
finding that Hall describes “positioning [of the] downhole tool into locking .
. . engagement with [the] well bore” as required by claim 1?
Appeal 2009-002732
Reexamination Controls 90/007,108, 90/007,284, and 90/007,289
Patent 5,271,468

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FINDINGS OF FACT
Rejection I
Claims 1-4, 6-8, 76, 77, 80, 168, and 169:
1. Appellant did not direct us to any explicit definition in the ‘468
Patent of the disputed claim language “locking, sealing
engagement with said well bore” (See generally App. Br.).
2. The ‘468 Patent describes the tools shown in the figures,
including those with dual opposed slips, as embodiments or
preferred embodiments (col. 4, ll. 49-68; col. 5, ll. 1-7).
3. Robert M. Pearson, Patent Owner’s expert, testifies (Pearson I
Declaration, ¶34):
The term “lock” is used in the industry to describe
well tools that have a mechanism for retaining or
“locking in” the setting forces applied to the tool
during the setting operation.
4. Pearson also suggests that a downhole tool that has a
mechanism for locking in the setting forces “remains fixed in
position in the well and is not movable axially in either
direction to a pre-defined design limit” and that they must be
removed by drilling (Pearson II Declaration, ¶9; Pearson I
Declaration, ¶35).
5. Pearson states that downhole tools with dual opposed slips are
examples of mechanisms for locking setting forces (Pearson I
Declaration, ¶34).
6. Pearson opines that Hall’s downhole tool is known as a Type II
Compression Packer that requires a tubing weight and that
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“[d]ifferential pressure from below and decreasing temperature
changes in the tubing string can tend to unset” the tool (Pearson
II Declaration, ¶¶8, 17).
7. Appellant did not direct us to any description in the ‘468 Patent
that limits the “locking” to withstand any particular pressure
and/or temperature.
8. The ‘468 Patent states that the claimed invention, which uses
non-metallic parts for ease of drilling, solves a problem of prior
art tools made of cast iron because “[i]n fact, in the majority of
wells, the pressure is less than about 5,000 psi, and the
temperature is less than about 250° F” and such metallic parts
are unnecessary (col. 2, ll. 37-58).
9. Hall’s Figure 1 is reproduced below:
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Patent 5,271,468

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Hall’s Figure 1, shown above, depicts a tool for repairing well
liners, wherein the tool includes, inter alia, a drillable tubular
body 10 that may be formed of various materials such as
aluminum, aluminum alloy, cement, glass, suitable plastic
materials, and combinations thereof, and a plurality of slips 22
that are toothed to effectively grip the interior of the liner L for
the purpose of resisting or preventing downward movement of
the sleeves 21 (p. 1, left col., l. 41 to right col., l. 2; p. 1, right
col., ll. 10-13; p. 1, right col., l. 50 to p. 2, left col., l. 19; p. 2,
right col., ll. 4-7).
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Patent 5,271,468

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10. Hall teaches that the tool provides complete sealing (p. 1, left
col., ll. 19-30; p. 1, left col., l. 51 to right col., l. 2).
11. Hall discloses that the tool may be removed by drilling (p. 3,
left col., ll. 69-73).
12. Hall does not indicate that the well pressures would move the
tool upward from its engaged or set position but instead
discloses that “[t]he packing means A and B are such that they
remain set and effective indefinitely and the device does not
require repair or replacement” (emphasis added; p. 3, left col.,
ll. 65-68).
13. Hall teaches that the tool provides “complete sealing” and
“dependable fluid-tight seals with the interior of the liner or
casing” (p. 1, left col., ll. 19-22; p. 1, left col., l. 51 to right col.,
l. 2).
14. Appellant did not direct us to any experimental evidence
demonstrating that Hall’s tool would move in an upward
direction in response to forces exerted by typical well pressures.

Claims 30-32, 34, 38, 40, and 73:
15. With respect to the “slip means disposed on said mandrel for
grippingly engaging said well bore in a set position” recited in
claim 30, the Specification of the ‘468 Patent states (col. 3, ll.
26-28): “The slip means may comprise a wedge engaging a
plurality of slips with a slip support on the opposite side of the
slips from the wedge.”
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Patent 5,271,468

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16. The Specification of the ‘468 Patent describes the action of the
slip means as follows (col. 13, ll. 29-33):
The lock ring housing [24] is thus moved relatively
downwardly along mandrel 22 which forces upper slips
28 outwardly and shear screws 36, pushing upper slip
wedge 32 downwardly against packer elements 40 and
42.
17. Hall discloses (p. 2, right col., ll. 2-16):
Sets of slips 22 are engaged on the sleves [sic, sleeves]
21 to be actuated thereby. The outer sides of the slips 22
are toothed to effectively grip the interior of the liner L
for the purpose of resisting or preventing downward
movement of the sleeves 21. Reins 23 are connected
with the slips 22 and extend downwardly therefrom. The
lower ends of the reins 23 are secured to shiftable rings
24 surrounding the body 10. Shiftable rings 25 encircle
the body 10 below the rings 24 and outwardly bowed leaf
springs 26 extend between and connect the adjacent
spaced rings 24 and 25. The springs 26 are adapted to
frictionally engage the interior of the liner L to resist
movement of the associated slips 22. Latch means are
provided for initially or normally holding the slips 22 in
their down and retracted positions . . . The latches 27 are
adapted to engage pins 28 on the body 10 to releasably
latch the slips 22 in their down and retracted positions.
The latches 27 may be such that they are released from
the pins 28 by a partial rotation of the body 10 in a left-
hand direction, followed by a downward movement of
the body.

Rejection II
Claims 1-6, 76, and 80:
18. In discussing the context of the invention, the ‘468 Patent states
(col. 1, ll. 18-26):
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In the drilling or reworking of oil wells, a great
variety of downhole tools are used. For example, but not
by way of limitation, it is often desirable to seal tubing or
other pipe in the casing of the well, such as when it is
desired to pump cement or other slurry down tubing and
force the slurry out into a formation. It then becomes
necessary to seal the tubing with respect to the well
casing and to prevent fluid pressure of the slurry from
lifting the tubing out of the well.
19. Pearson avers that the term “sealing” is understood in the art to
mean “blocking the flow of well fluids around the mandrel”
(Pearson I Declaration, ¶24).
20. According to Pearson, the tools disclosed in the ‘468 Patent
“provide a complete seal between the mandrel of the packer and
the well bore and can, therefore, be used to isolate the portion
of a well bore above it from the portion of the well bore below
it” (Pearson II Declaration, ¶9).
21. Fisher’s Figures 1-7 are reproduced below:
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Fisher’s Figures 1-7 depict a bridging plug including, inter alia,
segments 10 and mandrel 14 made of wood to facilitate ease of
drilling (p. 1, ll. 16-21 and 94-98).
22. Fisher teaches that “the plug is expanded as a result of the
separation of the segments by the mandrel 14 . . . .” (p. 2, ll. 64-
68).
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23. Jack Hulme, Patent Owner’s expert, testifies (Hulme
Declaration, ¶6):
I personally made an operating scale working
model of the bridge plug identical to the drawings and
description contained in the Fisher ‘266 patent. The
model I made functions as described in the Fisher ‘266
patent except that the patent fails to describe any method
or structure for sealing between the segments when they
are in the seated position. By following the description
in the patent it was impossible for the bridge plug to seal
between the segments when the tool was moved to the
position described and illustrated in regard to Figure 2.
When the Fisher model was moved to the position of
Figure 2 flow passageways were opened up through the
length of the tool.

Claims 30-32 and 73:
24. Pearson declares (Pearson II Declaration, ¶22):
Fisher does not include any structure that is
identical to the structure disclosed in the ‘468 patent to
place and maintain the packer in gripping engagement
with the well bore when the packer is in the set position.
In addition, Fisher does not disclose any structure that
functions in substantially in the same way and does not
disclose and [sic] structure that achieves substantially the
same results. The shoulders of segments 10 adjacent to
the recess in which the slips are located is not a slip
support located on the opposite side of the slips from the
cone. Nor does the Fisher [tool] have any structure that
functions in substantially the same way as the slip
support of the Type VI ‘468 patent to force the slips up
the cone. [Emphasis added.]

Appeal 2009-002732
Reexamination Controls 90/007,108, 90/007,284, and 90/007,289
Patent 5,271,468

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25. Baker I is an advertisement, reproduced below:

The advertisement depicts “two packers as corrosion-proof as
fiberglass tubing – because they are fiberglass!”
26. Pearson states that the Baker I packers do not include the same
structure disclosed in the ‘468 Patent but rather a drag
mechanism, which does not perform the gripping function in
substantially the same way as the claimed device (Pearson II
Declaration, ¶16).

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Rejection IV
Claims 30-34, 38, 40, 41, and 73:
27. Baker II describes an injection packer using fiberglass tubing
strings (p. 1, “Purpose” section).
28. Some portions of the drawing in Baker II are illegible.
29. Pearson states that the Baker II packers do not include the same
structure disclosed in the ‘468 Patent but rather a drag
mechanism, which does not perform the gripping function in
substantially the same way as the claimed device (Pearson II
Declaration, ¶16).

Rejection V
Claims 9, 10, 78, and 79:
30. Appellant does not dispute the Examiner’s conclusion that it
would have been obvious to a person having ordinary skill in
the art to combine Shibley or FIBERITE with Hall in the
manner stated by the Examiner (App. Br. 71, 72).

Claims 35-37:
31. Shibley and FIBERITE have not been relied upon for the “slip
means” limitation (Ans. 6).

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Rejection VI
Claims 11-18:
32. Appellant does not dispute the Examiner’s conclusion that it
would have been obvious to a person having ordinary skill in
the art to combine Helms with Hall in the manner stated by the
Examiner (App. Br. 72).

PRINCIPLES OF LAW
On appeal to this Board, Appellant must show that the Examiner
reversibly erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977,
985-986 (Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”). “[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” ICON
Health, 496 F.3d at 1379.
The use of means-plus-function language under 35 U.S.C. § 112, ¶6,
requires the PTO to construe the language in light of the disclosed means for
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performing the recited function and equivalents thereof. In re Donaldson,
16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).

Anticipation
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“A patent applicant is free to recite features of an apparatus either
structurally or functionally . . . Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” Schreiber, 128 F.3d
at 1478 (internal citation omitted). When the PTO has reason to believe that
a functional limitation asserted to be critical may in fact be an inherent
characteristic of the prior art, it possesses the authority to shift the burden of
proof to applicant or patent owner to prove otherwise. Id.; accord In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Whether the rejection is based on inherency under 35 U.S.C.
§ 102 or on obviousness under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products. Best, 562 F.2d at 1255.

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
Rejection I
Claims 1, 76, 77, 80, 168, and 169:
We select claim 1 as representative of claims 1, 76, 77, 80, 168, and
169, which have been argued together (App. Br. 36-41), and confine our
discussion to this selected claim. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant acknowledges, as it must, that “[t]here is no dispute that the
tool of Hall is ‘positioned within the well bore by a releasable setting
mechanism,’ ‘is removed by drilling the tool out of the well bore,’ and
includes a non-metallic liner and metallic slips” (App. Br. 38). Rather, it is
Appellant’s position that Hall does not describe the limitation “locking . . .
engagement with said well bore” in claim 1 (id.). According to Appellant,
the limitation “locking, sealing engagement with a well bore” in claim 1
“requires the tool to be fixed in place in both locked and sealing engagement
with the well bore such that it remains in place, holds pressure from either
direction, and therefore must be later drilled out” (App. Br. 28).
We agree with Appellant’s claim construction in view of the
Specification disclosure and the relied upon evidence, namely the Pearson I
Declaration (Facts 1, 3, and 4). We disagree, however, that the Appellant
showed reversible error in the Examiner’s finding (Ans. 8) that Hall
describes, either explicitly or inherently, the disputed claim limitation.
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As discussed above, Appellant does not dispute that Hall discloses
constructing a downhole tool including a center mandrel and a plurality of
slips, wherein at least the center mandrel is non-metallic, positioning the
downhole tool in the well bore, and drilling the tool at the time of its
removal from the well (Facts 9-11 and 13). Specifically, Hall teaches that
the plurality of slips 22 are toothed to effectively grip the interior of the liner
L such that downward movement of the sleeves 21 is resisted or prevented
(Fact 9). As to upward movement, nothing in Hall suggests that the tool
may be unset by forces exerted by well pressure (Fact 12). Indeed, Hall
indicates otherwise by disclosing that “[t]he packing means A and B are
such that they remain set and effective indefinitely . . .” (emphasis added;
Fact 12) and that drilling may be used to remove the tool (Fact 11).
Under these circumstances, the burden of proof was on Appellant to
provide objective evidence (e.g., experimental evidence) establishing that
Hall’s tool would be incapable of “locking, sealing engagement with the
well bore.” Best, 562 F.2d at 1255. Appellant failed to discharge this
burden with persuasive evidence (Fact 14).
Relying on the Pearson II Declaration (Fact 6), Appellant argues that
Hall’s tool is a Type II compression packer that requires a tubing weight and
cannot withstand differential pressures from below (App. Br. 38-40). This
argument is unpersuasive because Pearson’s testimony is not based on any
factual evidence such as experimental evidence but instead on speculation.
In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“The affidavit and
specification do contain allegations that synergistic results are obtained with
all the claimed compositions, but those statements are not supported by any
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factual evidence . . . .”). See also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984) (“Mere argument or conclusory statements in the specification
does not suffice”).
Conspicuous by its absence is any meaningful discussion in Pearson’s
testimony on why Hall’s tool cannot withstand pressure from below when
Hall teaches that the tool remains set indefinitely and that drilling may be
used to remove the tool after the well operation is complete (Facts 3, 4, 11,
and 12). Pearson’s testimony is further ineffective because it does not take
into account the absence of any language in claim 1 that positively excludes
unrecited components such as a tubing weight. Along these lines, Pearson
also failed to appreciate that claim 1 or the Specification of the ‘468 Patent
fails to limit the tool to withstand any particular pressure (Facts 1, 7, and 8).
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s
arguments fail from the outset because, as the solicitor has pointed out, they
are not based on limitations appearing in the claims.”).
Appellant appears to be contending that the tool recited in claim 1
requires dual opposed slips (App. Br. 28-29). This contention is without
merit. For one thing, claim 1 does not recite dual opposed slips, as aptly
pointed out by the Examiner (Ans. 8). Moreover, Pearson himself
acknowledges, in a manner consistent with the disclosure of the ‘468 Patent,
that downhole tools with dual opposed slips are merely examples of suitable
mechanisms for locking setting forces (Facts 2 and 5).
For these reasons, we uphold the Examiner’s rejection as to claims 1,
76, 77, 80, 168, and 169.

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Claims 2-4 and 6-8:
Because Appellant has offered the same unpersuasive arguments for
claims 2-4 and 6-8 as it has for claim 1, we uphold the rejection of these
claims for the same reasons given for claim 1.

Claims 30-32, 34, 38, 40, and 73:
We agree with Appellant that the Examiner erred in construing the
claimed “slip means disposed on said mandrel for grippingly engaging said
well bore” to encompass Hall’s elements 21-26. Under 35 U.S.C. § 112, ¶6,
the Specification of the ‘468 Patent would have indicated to one skilled in
the relevant art that the claimed “slip means” is a wedge, a plurality of slips,
and a slip support on the opposite side of the slips from the wedge as well as
equivalents thereof (Fact 15; App. Br. 42). The Examiner has not identified
with any reasonable specificity how Hall describes a structure identical to
that disclosed in the ‘468 Patent.
The Examiner also failed to establish that Hall’s elements would have
been considered an “equivalent” of the claimed “slip means” within the
meaning of 35 U.S.C. § 112, ¶6. In the claimed invention, a lock ring
housing 24 “move[s] relatively downwardly along mandrel 22 which forces
upper slips 28 outwardly and shear screws 36, pushing upper slip wedge 32
downwardly against packer elements 40 and 42” (Fact 16). By contrast,
Hall discloses a completely different type of structure that includes, inter
alia, springs 26 adapted to frictionally engage the interior of the liner L to
resist movement of the associated slips 22 (Fact 17). Nothing substantiates
the Examiner’s allegation that the prior art means perform the recited
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function in substantially the same manner. Nor has the Examiner offered
any evidence to show that a person having ordinary skill in the art would
have considered Hall’s elements to be interchangeable with the elements
shown in the ‘468 Patent. See Supplemental Examination Guidelines for
Determining Applicability of 35 U.S.C. § 112, ¶6, 65 Fed. Reg. 38,510,
38,514-515 (Jun. 16, 2000).
Because the Examiner has erroneously construed the claimed “slip
means” to, in effect, read on any structure that performs the recited function,
we cannot affirm the rejection of these claims.

Rejection II
Claims 1-6, 76, and 80:
We agree with Appellant that the Examiner erred by giving the claim
term “sealing engagement” an unreasonable construction. As Pearson
testified, one skilled in the relevant art would have understood the term
“sealing engagement” to mean blocking the flow of well fluids around the
mandrel (i.e., provide complete sealing between the mandrel and the well
bore) (Facts 19-20). We find this testimony to be consistent with the
disclosures of the ‘468 Patent (Fact 18).
When properly construed, Fisher cannot be said to describe “sealing
engagement” as required by the rejected claims. As Hulme testified, based
on the explicit description found in Fisher, Fisher’s tool does not provide
“sealing engagement” as that term would be understood by one skilled in the
relevant art because the separation of segments 10 results in axial flow
channels in a manner contrary to the established meaning of “sealing
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engagement” (Facts 21-23). While the Examiner argues that Fisher’s
segments 10 “can fairly be considered to be a ‘mandrel’” (Ans. 13), the
Examiner fails to explain how this cures the deficiency with respect to
“sealing engagement.”
For these reasons, we cannot affirm the rejection of these claims on
this ground.

Claims 30-32 and 73:
Again, the Examiner erred by construing the recited “slip means” in a
manner contrary to 35 U.S.C. § 112, ¶6. As pointed out by Appellant,
Fisher’s segments 10 (which the Examiner considers as corresponding to the
wedge disclosed in the ‘468 Patent) separate and create axial flow channels
(Facts 21-23). The Examiner, however, has not established that the wedge
disclosed in the ‘468 Patent contains structure that separates in the manner
as described in Fisher. Thus, the Examiner has not established that Fisher’s
segments 10 are the same structure disclosed in the ‘468 Patent. Nor has the
Examiner shown that Fisher’s segments 10 are equivalent to the structure
disclosed in the ‘468 Patent within the meaning of 35 U.S.C. § 112, ¶6,
particularly in view of the significant differences in operation based on
structural differences. Furthermore, the Examiner has not accounted for the
requirement in the claimed “slip means” that the corresponding structure
requires a slip support in the form of a ring that is on the opposite side of the
slips from the wedge (Facts 15, 16, and 24).
For these reasons, we cannot affirm the rejection of these claims.

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Rejection III
Claims 30-34, 38, 41, and 73:
We must agree with Appellant that the Examiner’s rejection is not
well founded. The Examiner has failed to identify any specific disclosure in
the Baker I advertisement that would constitute a description of the claimed
“slip means.” For example, the Examiner alleges that Baker I discloses a
setting tool that corresponds to the slip support of the claimed “slip means”
(Ans. 14-15). But the skeletal disclosure of Baker I advertisement fails to
support such an allegation (Fact 25). And, the Examiner ignores the main
arguments in Appellant’s rebuttal evidence regarding the absence in the
prior art device of Baker I of the same or similar structure and function as
the claimed invention (Fact 26).
Accordingly, we reverse the Examiner’s stated rejection.

Rejection IV
Claims 30-34, 38, 40, 41, and 73:
The Examiner did not respond, in any meaningful way, to Appellant’s
argument that the setting tool (tubing string) of Baker II is not part of a slip
means that is disposed on a mandrel as required by claim 30 (Facts 27 and
28). Nor did the Examiner explain, with reasonable specificity, why the
testimony of Pearson has not been credited (Fact 29).
For these reasons, we find no basis to affirm the Examiner’s rejection.

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Rejection V
Claims 9, 10, 78, and 79:
Appellant has not disputed the Examiner’s conclusion that it would
have been obvious to a person having ordinary skill in the art to combine
Shibley or FIBERITE with Hall in the manner as stated by the Examiner
(Fact 30). Rather, Appellant has referred to the same arguments made in
support of the rejection of claim 1 over Hall alone (App. Br. 71, 72).
Accordingly, we affirm the rejection of these claims for the same
reasons given with respect to claim 1 in Rejection I.

Claims 35-37:
By the same token, the Examiner has not relied on Shibley or
FIBERITE to cure the deficiency in the rejection over Hall alone with
respect to the “slip means” (Fact 31).
Accordingly, we reverse the rejection of these claims for the same
reasons given with respect to claim 30 in Rejection I.

Rejection VI
Claims 11-18:
Appellant has not disputed the Examiner’s conclusion that it would
have been obvious to a person having ordinary skill in the art to combine
Helms with Hall in the manner as stated by the Examiner (Fact 32). Rather,
Appellant relies on the same arguments made in connection with the
rejection of claim 1 over Hall alone (App. Br. 72).
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Accordingly, we affirm for the same reasons given wit respect to
claim 1 in Rejection I.

CONCLUSION
On this record, Appellant has failed to demonstrate any error in the
Examiner’s factual finding that Hall describes “positioning [of the]
downhole tool into locking . . . engagement with [the] well bore” as required
by claim 1.
Appellant has, however, shown reversible error in the Examiner’s
conclusion that:
the “slip means disposed on said mandrel for grippingly engaging said
well bore” recited in claim 30 encompasses Hall’s elements 21-26;
the term “sealing engagement” in claim 1 does not require a complete
seal between the mandrel and the well bore as in Fisher;
the limitation “slip means disposed on said mandrel for grippingly
engaging said well bore when in a set position” in claim 30 encompasses the
slip 17, 19, mandrel 14, and segments 10 shown in Fisher;
the “slip means disposed on said mandrel for grippingly engaging said
well bore when in a set position” recited in claim 30 encompasses the
structures described in Baker I; and
the “slip means disposed on said mandrel” recited in claim 30
encompasses the structure shown in Baker II.

DECISION
The Examiner’s decision to reject:
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claims 1-4, 6-8, 76, 77, 80, 168, and 169 under 35 U.S.C. § 102(b) as
anticipated by Hall is AFFIRMED;
claims 30-32, 34, 38, 40, and 73 under 35 U.S.C. § 102(b) as
anticipated by Hall is REVERSED;
claims 1-6, 30-32, 73, 76, and 80 under 35 U.S.C. § 102(b) as
anticipated by Fisher is REVERSED;
claims 30-34, 38, 41, and 73 under 35 U.S.C. § 102(b) as anticipated
by Baker I is REVERSED;
claims 30-34, 38, 40, 41, and 73 under 35 U.S.C. § 102(b) as
anticipated by Baker II is REVERSED;
claims 9, 10, 78, and 79 under 35 U.S.C. § 103(a) as unpatentable
over combined teachings of Hall, Shibley, and FIBERITE is AFFIRMED;
claims 35-37 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Hall, Shibley, and FIBERITE is REVERSED; and
claims 11-18 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Hall and Helms is AFFIRMED.
Accordingly, the Examiner’s decision to reject the appealed claims is
affirmed in part.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART

ack

cc:

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FOR PATENT OWNER:

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON DC 20001-4413

FOR THIRD PARTY REQUESTER(S):

J. DEAN LECHTENBERGER
HOWREY SIMON ARNOLD & WHITE LLP
2941 FAIRVIEW PARK DRIVE, BOX 7
FALLS CHURCH, VA 22042

STEPHEN H. CAGLE
HOWREY SIMON ARNOLD & WHITE LLP
2941 FAIRVIEW PARK DRIVE, BOX 7
FALLS CHURCH, VA 22042