Ex Parte Bonner et al

Patent Trial and Appeal Board

Aug 30, 2016

13545317 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/545,317 07/10/2012
26232 7590 09/01/2016
FISH & RICHARDSON P,C (HALLIBURTON)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
Aaron James Bonner
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
24428-0015002 I 2008-IP-O 5991
EXAMINER
ANDREWS, DAVID L
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON JAMES BONNER and JEAN-MARC LOPEZ
Appeal2014-008629
Application 13/545,317 1
Technology Center 3600
Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-8 and 21-25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
According to Appellants, the Specification "relates to well screen
assemblies for use in subterranean wellbores." Spec. ,-r 1.
1 According to Appellants, the real party in interest is Halliburton Energy
Services, Inc. Br. 1.
Appeal2014-008629
Application 13/545,317
CLAHvIS
Claims 1-8 and 21-25 are on appeal. Claim 1 is the only independent
claim and recites:
Br. 8.
1. A well screen assembly, comprising:
an elongate base pipe;
a shroud layer about the base pipe;
a mesh layer between the shroud layer and the base pipe,
a portion of the mesh layer overlaps another portion of the mesh
layer to form an area of overlap; and
a spine, discrete from all other layers of the screen
assembly, proximate substantially an entire length of the area of
overlap and transmitting a force from the shroud layer to the
mesh layer that compresses and seals the area of overlap against
passage of particulate.
REJECTIONS
1. The Examiner rejects claims 1-7, 22, 24, and 25 under 35 U.S.C.
§ 102(b) as anticipated by Richard. 2
2. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Richard in view of Kluger. 3
3. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Richard.
4. The Examiner rejects claim 21under35 U.S.C. § 101, statutory
type double patenting, as claiming the same invention as that of
claim 1 of U.S. Patent No. 8,251, 138.
2 Richard et al., US 5,611,399, iss. Mar. 18, 1997.
3 Kluger et al., US 7 ,588,079 B2, iss. Sept. 15, 2009.
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Application 13/545,317
5. The Examiner rejects claims 1-8 and 22-25 on the ground of
non-statutory obviousness-type double patenting as unpatentable
over claims 1-20 of U.S. Patent No. 8,251,138.
DISCUSSION
Double Patenting
Appellants do not address the double patenting rejections in their
brief. See Br. 1-11. Accordingly, we summarily sustain these rejections.
Anticipation
Claim 1
With respect to claim 1, the Examiner finds that Richard discloses a
well screen assembly as claimed including a base pipe 10, a shroud layer 58
or 32, a mesh layer 22, and spines 16. Final Act. 3 (citing Richard Figs. 4, 8;
col. 3, 11. 57----65. Additionally, the Examiner finds that the spines 16 are
discrete from the base pipe and the first outer layer 18. Id.
Appellants argue only that Richard does not disclose a spine as
claimed because "support member 16 is not discrete from all other layers of
the screen assembly." Br. 2. Appellants assert that Richard's support
member "is an integral part of another layer of the screen assembly, i.e., part
of the coarse screen 14" and "is inseparably a part of this other layer." Id.
We are not persuaded of error by this argument. We agree with the
Examiner that under the broadest reasonable interpretation of the claim, the
support members 16 may be considered a discrete layer. See Ans. 3.
Specifically, we find that the Examiner's interpretation of the claim is
consistent with the Specification, which does not provide a definition of
discrete and states that the spine "may be braised, welded, adhered with an
adhesive and/or otherwise bonded to a component of the screen assembly"
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Application 13/545,317
or "may be integrated, built into or formed in another component." Spec. i1
26. We agree that the support members as depicted in the Figures cited by
the Examiner form a separate and distinct, i.e. discrete, layer around the base
pipe. Ans. 3. For this reason, we sustain the rejection of claim 1.
Appellants do not present separate arguments for dependent claims 2, 3, 5-7,
22, 24, and 25, and thus, we sustain the rejection of those claims for the
same reason.
Claim 4
Appellants raise separate arguments regarding claim 4, which requires
that "the spine has a c-shaped cross-section." Br. 3. Appellants argue that
Richard includes two partial cross-sectional views showing support
members 16, which are not shown as having a c-shaped cross-section.
Br. 4--5. The Examiner responds that "[t]he cross-sectional shape of the
spine 16 of Richard et al. has rounded comers each of which forms a 'c-
shape'" and that Appellants have not provided any "argument as to 'c-
shaped' as requiring any particular feature not found." Ans. 4.
We are persuaded that the Examiner has not identified a spine with a
c-shaped cross-section as claimed. With respect to the Examiner's response,
we are not persuaded, on the record before us, that a preponderance of the
evidence supports the Examiner's finding that Richard discloses a c-shaped
cross-section. Accordingly, we are constrained to not sustain the rejection of
claim 4 on the record before us.
Obviousness
Claim 8
Claim 8 requires that "the spine is positioned between the shroud
layer and the mesh layer and compresses the area of overlap against the base
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Application 13/545,317
pipe." The Examiner acknowledges that Richard does not disclose this
configuration, and the Examiner concludes that it would have been obvious
to rearrange Richard as claimed because "it has been held that rearranging
parts of an invention involves only routine skill in the art." Final Act. 5.
Appellants argue that Richard teaches away from the claimed
configuration and rearrangement would render a critical feature of Richard
unsuitable for its intended purpose. Appeal Br. 5. Appellants contend:
Specifically, Richard states "Another object of the
invention is to create a more efficient sand-control screen
assembly by employing a substrate of a coarse screen." Richard,
1 : 5 9-61. In Richard's design, support members 16 are part of the
coarse screen 14. The coarse screen 14 is a substrate to the mesh
layer (i.e., fine screen 22), positioned beneath the mesh layer and
adjacent the base pipe 10. Richard, 2:53-61 and FIG. 1. A shroud
32 is positioned around the exterior. Richard, FIG. 1.
To place the support members 16, and thus the coarse
screen 14, between the mesh layer (fine screen 22) and the shroud
32, as proposed in the rejection, would be directly counter to the
above-mentioned explicitly stated object of the invention
because the coarse screen 14 would no longer be a substrate.
Therefore, Richard's object of the invention teaches directly
away from the configuration proposed in the rejection.
Id. We are not persuaded that Richard teaches away from the claimed
configuration. As the Examiner notes (Ans. 5), it is not clear that the object
restated by Appellants is achieved by the arrangement of layers or the fact
that the coarse screen has "wound wires of a more rounded or arcuate cross-
section, to reduce the dead zones between the filtering screen and the
underlying coarse screen." Richard col. 1, 11. 60-64. Regardless, Appellants
have not adequately shown that Richard discourages or discredits using an
arrangement as claimed.
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Application 13/545,317
Appellants also argue that the proposed modification of Richard
"would render a critical feature of Richard inoperable for its intended
purpose" because rearranging the support members as proposed would
"prevent the mesh layer from being folded and clamped into the recess by
the course screen 14, and this critical feature of Richard to overcome the
problems of welded longitudinal seams would not work." Appeal Br. 6.
However, we are not persuaded that rearranging the layers would prevent the
mesh layer from being folded and clamped as Richard teaches. In particular,
we agree with the Examiner that one of ordinary skill in the art would have
known how to accommodate the rearrangement such that the folded mesh
layer may be retained in the modified device. See Ans. 5.
Accordingly, we are not persuaded of error, and thus, we sustain the
rejection of claim 8.
Claim 23
Appellants do not present arguments with respect to the rejection of
claim 23 over Richard and Kluger. Accordingly, we sustain the rejection of
this claim for the same reasons stated above with respect to claim 1, from
which claim 23 depends.
CONCLUSION
For the reasons set forth above, we AFFIRM double patenting
rejections of claims 1-8 and 21-25; we AFFIRM the anticipation rejection
of claims 1-3, 5-7, 22, 24, and 25; we AFFIRM the obviousness rejections
of claims 8 and 23; and we REVERSE the anticipation rejection of claim 4.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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Application 13/545,317
AFFIRivIED
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