Ex Parte Arce et al

Patent Trial and Appeal Board

Jul 24, 2013

11734574 (P.T.A.B. Jul. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID A. ARCE and SIDNEY K. SMITH
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Appeal 2011-007230
Application 11/734,574
Technology Center 3600
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Before GAY ANN SPAHN, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a liner top packer seal system”
that may be used with a liner hanger “to seal a liner to a downhole tubular
such as a casing or another liner” (Spec. 1, paras. [0001], [0003]) and “a
method of sealing a liner top packer to a tubular” (Spec. 2, para. [0005]).
Claims 1, 16, and 17 are the independent claims on appeal. Claim 1 is
illustrative of the appealed subject matter and is reproduced below with
emphasis added:
1. A liner top packer seal system, comprising:
a body;
a sleeve in radial alignment with the body;
a first deformable metal member in operable
communication with the sleeve such that movement of the
sleeve along its longitudinal axis in a first direction causes
deformation of the first deformable metal member, the first
deformable metal member being sealably engagable with a
tubular in response to being in a deformed position; and
a second deformable metal member in operable
communication with the sleeve such that movement of the
sleeve along its longitudinal axis in the first direction causes
deformation of the second deformable metal member, the
second deformable metal member occluding an annular space
between the body and the first deformable metal member, and
being sealably engagable with both the body and the first

1 Appellants identify the real party in interest as Baker Hughes Incorporated.
App. Br. 2.
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deformable metal member in response to being in a deformed
position.
REJECTIONS
Appellants seek review of the following rejections:
(1) the rejection of claims 1, 4, 10-12, and 16 under 35 U.S.C.
§ 102(b) as anticipated by Patel (US 2005/0161232 A1, pub. Jul. 28, 2005)
(Ans. 3-5);
(2) the rejection of claims 17 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Patel (Ans. 6-7); and
(3) the rejection of claims 2, 3, 5-9, 13-15, and 19-21 under 35 U.S.C.
§ 103(a) as unpatentable over Patel and Moyes (US 2003/0217844 A1, pub.
Nov. 27, 2003) (Ans. 7-8).

ANALYSIS
Rejection (1)
The Examiner found that Patel discloses a “second deformable metal
member 18 . . . being sealably engagable with . . . the body 20 (member 18
engages the body 20 through stop 30).” Ans. 4. Appellants contend that the
Examiner incorrectly found that Patel discloses a second deformable metal
member sealably engagable with the body. In particular, Appellants contend
that Patel requires a “rubber o-ring” to create a seal between body 20 and
stop 30 such that Patel lacks a metal member sealably engagable with body
20. Reply Br. 2; see Patel, para. [0020] (“[a] mandrel seal 24 is carried on
mandrel 20 and forms a barrier to fluid flow between mandrel 20 and seal
element 10 at the end where mandrel seal 24 is located”).
The Specification does not provide a definition of the claim term
“engagable.” An ordinary and customary meaning of the verb “engage” is
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“to come into contact or interlock with: MESH; [2] . . . also : to cause (parts)
to engage.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY,
UNABRIDGED, Merriam-Webster, Incorporated, Copyright 1993, accessed at
http://lionreference.chadwyck.com (last visited Jul. 23, 2013). Appellants’
Specification describes that “[t]he second deformable member 118 sealably
engages with . . . an outer surface 126 of the body 14.” Spec. 6, ll. 1-3.
Appellants’ drawing figure 4 illustrates the second deformable member 118
coming into contact with or engaging outer surface 126 of body 14. Thus,
one of ordinary skill in the art would understand the claims to call for the
second deformable metal member to be able to come into working contact
with or engage the body to create a seal. In light of this claim construction,
Appellants’ argument that Patel fails to disclose a second deformable metal
member being sealably engagable with the body is persuasive, because the
Examiner-identified second deformable metal member of Patel (i.e., Patel’s
conformable layer18) does not make working contact with the body (i.e.,
Patel’s mandrel 20) to create a seal. Rather, Patel’s mandrel seal 24 (or
rubber o-ring as identified by Appellants) is necessary to create a seal at the
end where mandrel seal 24 is located, with fluid communication between
annulus 26 and chamber 28 behind second deformable member (i.e., Patel’s
inner conformable layer 18) occurring through a leak path or port through
end stop 32 at the end without a mandrel seal. See Patel, paras. [0020],
[0024].

2 An ordinary and customary meaning of the verb “mesh” is “to come into or
be in working contact with esp. by the fitting together of teeth: ENGAGE.”
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED,
Merriam-Webster, Incorporated, Copyright 1993, accessed at
http://lionreference.chadwyck.com (last visited Jul. 23, 2013).
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Accordingly, Patel fails to disclose a second deformable metal
member being sealably engagable with both the body and the first
deformable metal member in response to being in a deformed position as
required by independent claims 1 and 16. See App. Br., Claims App’x. For
the foregoing reasons, the Examiner’s finding that Patel discloses all of the
limitations recited in independent claims 1 and 16 is in error, and we do not
sustain the rejection of independent claims 1 and 16 and their dependent
claims 4 and 10-12 under § 102(b) as anticipated by Patel.
Rejections (2) and (3)
The Examiner’s rejections of the remaining claims are based on the
same erroneous finding that Patel discloses a second deformable metal
member being sealably engagable with the body in response to being in a
deformed position, and the Examiner does not explain how Moyes would
remedy the deficiency of Patel. Ans. 6, 7. Accordingly, we also do not
sustain, under 35 U.S.C. § 103(a), the rejections of: claims 17 and 18 as
unpatentable over Patel; and claims 2, 3, 5-9, 13-15, and 19-21 as
unpatentable over Patel and Moyes.

DECISION
The Examiner’s rejection of claims 1, 4, 10-12, and 16 under 35
U.S.C. § 102(b) is REVERSED.
The Examiner’s rejections of claims 2, 3, 5-9, 13-15, and 17-21 under
35 U.S.C. § 103(a) are REVERSED.

REVERSED

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