Ex Parte Chalker et al

Patent Trial and Appeal Board

Oct 29, 2014

11851354 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER J. CHALKER, JODY R. MCGLOTHEN,
ROBERT K. BUCKNER, TOMMY L. STAMBAUGH, and
FLOYD R. SIMONDS
____________

Appeal 2012-006367
Application 11/851,3541
Technology Center 3600
____________

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–5, 7–11, 14, 15, and 17–20. Appeal Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 According to Appellants, the real party in interest is Haliburton Energy
Services, Inc. Appeal Br. 3.
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Application 11/851,354

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Claimed Subject Matter
The claimed subject matter is directed to a well completion string.
Claims 1 and 11 are independent. Claim 1 is illustrative and reads:
1. A well completion string, comprising:
at least one set of well tools interconnected as a portion
of the completion string, the set of well tools including at least
one well screen assembly, at least one valve which selectively
permits and prevents fluid communication between an interior
and an exterior of the completion string, and at least two packer
assemblies;
wherein each of the packer assemblies includes at least
one swellable seal element, and an actuator which
longitudinally compresses the swellable seal element while the
swellable seal element is at least partially swollen, and radially
outwardly extends the swellable seal element into sealing
engagement with at least one of a casing and a wellbore; and
wherein the packer assemblies longitudinally straddle the
valve and the well screen assembly in the completion string.

Rejections
Claims 1–5, 8–11, 14, 15, and 18–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Vidrine (US 2006/0060352 A1,
published Mar. 23, 2006) and Laflin (US 4,137,970, issued Feb. 6, 1979).
Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vidrine, Laflin, and Kilgore (US 2005/0205269 A1,
published Sept. 22, 2005).

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Application 11/851,354

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ANALYSIS
Claims 1–5, 8–11, 14, 15, and 18–20 — Vidrine and Laflin
Claims 1, 2, 5, and 8–10
Appellants argue claims 1, 2, 5, and 8–10 as a group. Appeal Br. 14–
16. We select claim 1 to decide the appeal with respect to this ground of
rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 recites at least two packer assemblies, each including “at least
one swellable seal element, and an actuator which longitudinally compresses
the swellable seal element while the swellable seal element is at least
partially swollen, and radially outwardly extends the swellable seal element
into sealing engagement with at least one of a casing and a wellbore.”
Emphasis added.
Appellants describe Figure 2 of the application as follows:
The hydraulic actuator 44 longitudinally compresses the
swellable seal elements 42, and thereby radially outwardly
extends the swellable seal elements. Thus, it is not necessary
for the swellable seal elements 42 to swell (which could take
many hours or days) in order to achieve sealing engagement.
Instead, the seal elements 42 can be radially outwardly
extended by the hydraulic actuator 44, and the seal elements
can enhance the sealing engagement by beginning or continuing
to swell (see page 11, lines 9-27). The swelling of the seal
elements 42 aids in sealing against large irregularities,
washouts, etc., on an inner surface of the wellbore 14 or casing
18, etc.
Appeal Br. 11 (emphasis added).
Thus according to Appellants: (1) the hydraulic actuator 44 can compress the
swellable seal elements 42, which subsequently begin to swell, or (2) the
swellable seal elements 42 can begin to swell, and, subsequently, be
compressed by the hydraulic actuator 44. For cases (1) and (2), the
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swellable seal elements 42 are “at least partially swollen” at the time that
(i.e., “while”) they are longitudinally compressed by the hydraulic actuator
44. We construe claim 1 to cover cases (1) and (2). We do not, however,
construe claim 1 to require that the well completion string is physically
installed in a wellbore.
The Examiner finds that Vidrine discloses packer assemblies (packers
114, 116), but not a swellable material and an actuator that radially
outwardly extends the seal element. Answer 5 (citing Vidrine, Fig. 5).
The Examiner finds that Laflin discloses a swellable seal element,
which is radially expanded by a mechanical actuator to engage a wellbore.
Answer 5 (citing Laflin, col. 3, ll. 49–51 and col. 3, l. 63–col. 4, l. 15). The
Examiner determines that Laflin teaches that the packer may be swellable in
response to fluids naturally present in the formation, “in which case the
packer would naturally be expanded after being partially swollen after
exposure to the fluid already present in the wellbore.” Id. (citing Laflin, col.
4, ll. 30–33 and ll. 55–60). The Examiner concludes that it would have been
obvious to use a swellable seal element in conjunction with a mechanical
actuator, as taught by Laflin, to provide an effective seal against an open
wellbore or uneven surface of a casing. Id. at 6 (citing Laflin, col. 4, ll. 7–
15).
Laflin discloses employing a fluid expandable substance for a
deformable packer element in a mechanically activated packer. Laflin, col.
3, ll. 63–68. According to Laflin, “the deformable packer element is
mechanically deformed in a conventional manner to cause the packer
element to engage the walls of the fluid conduit, and the packer element is
thereafter contacted with a suitable fluid to cause the packer element to
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expand and more tightly engage the walls of the conduit.” Id. at col. 4, ll. 2–
7.
Appellants contend that Laflin requires that the packer be
mechanically compressed prior to it being swollen by contact with water.
Appeal Br. 12. Appellants also contend that in order to use Laflin’s packer
in shaft 12 where water previously accumulated, the packer would have to
be mechanically deformed and then positioned in shaft 12. Id.
Appellants do not, however, identify any description in Laflin stating
that the deformable packer element must be compressed before it begins to
swell, and thus, cannot be compressed if “at least partially swollen.”
Moreover, even if Laflin’s deformable packer element were mechanically
compressed and subsequently contacted with a fluid that causes it to begin to
swell, the packer element would be “longitudinally compress[ed] . . . while
the swellable seal element is at least partially swollen” (emphasis added), as
recited in claim 1, because the deformable packer element would be
longitudinally compressed while it swells.
Appellants also contend that “Vidrine does not disclose the use of a
swellable material with an actuator that radially outwardly extends the seal
element.” Appeal Br. 13. However, the Examiner relies on Laflin for
teaching these features. As noted above, Laflin discloses that “the
deformable packer element is mechanically deformed in a conventional
manner to cause the packer element to engage the walls of the fluid conduit.”
See Laflin, col. 4, ll. 2–4 (emphasis added). Appellants do not explain
persuasively why this mechanical deformation does not utilize an actuator
that “radially outwardly extends” the packer element.
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Appellants further contend that Laflin’s packer is unsuited for use in
mineshafts where the fluid that causes it to expand has accumulated, and
therefore, there is no motivation to combine Vidrine and Laflin, as proposed
by the Examiner. Appeal Br. 13. Appellants contend that if Laflin’s packer
were used in Vidrine’s completion system with fluid that causes the packer
to swell already being present in the wellbore, the packer would prematurely
expand due to contact with the fluid. Id. at 15.
The Examiner states that “the packer [of Laflin] would expand
prematurely due to contact with fluid in the environment of Vidrine.”
Answer 10. We agree with the Examiner, however, that this does not show
that Laflin’s packer could not be combined with Vidrine. Id. In this regard,
Laflin indicates that the material chosen for the packer element depends
upon various factors including the fluid to be restricted and the degree of
swelling required. See col. 3, ll. 47–56. Accordingly, Laflin recognizes that
the material of the packer element can be chosen to control its swelling in a
given environment. Laflin also describes “an aqueous fluid, particularly
water and other aqueous fluids such as brines naturally present in a
subterranean formation.” See col. 3, ll. 56–58. Accordingly, Laflin also
discloses that the packers are useful in environments in which fluids are
always present. Appellants do not identify any disclosure in Vidrine
showing that the well completion can only be installed in wellbores in which
the packers would be contacted with fluid that would cause Laflin’s
deformable packer element to prematurely swell such that it could not be
longitudinally compressed by mechanical deformation in the wellbore.
Laflin does not describe that the force applied to mechanically deform
the deformable packer element is removed before the packer element begins
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to expand due to contact with the fluid. Nor does Laflin explicitly describe
that the deformable packer element cannot be mechanically deformed after it
has begun to swell. Appellants’ contention that there would be no
reasonable expectation of success in using Laflin’s packer in Vidrine’s
completion system is not supported by evidence.
Appellants also do not apprise us of error in the Examiner’s stated
reason for combining Vidrine and Laflin—to provide an effective seal
against an open wellbore or uneven surface of a casing. Laflin states, “[t]his
embodiment is particularly beneficial where the surface of the fluid conduit
is uneven, e.g., as in an open borehole where bare formation surfaces define
the conduit, or where joints, cracks, pits, scale or other surface
discontinuities are present on the interior of a pipe.” See col. 4, ll. 7–12.
This function is substantially similar to the function of seal elements 42 of
Appellants’ well completion string—“to aid[] in sealing against large
irregularities, washouts, etc., on an inner surface of the wellbore 14 or casing
18, etc.” (see Appeal Br. 11).
Thus, we sustain the rejection of claim 1, and of claims 2, 5, and 8–
10, which depend from claim 1 and are not separately argued.
Claims 3 and 4
Claim 3 recites that “the inflow control device variably restricts the
fluid flow at least in response to a proportion of water in the fluid flow,” and
claim 4 recites that “the inflow control device variably restricts the fluid
flow at least in response to a proportion of gas in the fluid flow.” Emphasis
added.
The Examiner finds that Vidrine discloses the limitations of claims 3
and 4. Answer 7 (citing Vidrine, ¶ 41). In particular, the Examiner finds
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that Vidrine contemplates using sensing devices 146, 148 to detect fluid
composition, and that these devices communicate with surface control
equipment that can hydraulically operate valves 122, 124, 126, and 128. Id.
(citing Vidrine, ¶ 45, ll. 20–21). According to the Examiner, “[a] proportion
of oil or water could inherently be detected by a fluid composition sensor,
which could inherently send a signal via cable 150 to the surface control
equipment which could choke or shut valves 122 or 124 to restrict the fluid
flow.” Id. (emphasis added). The Examiner also determines that “[t]here is
no other function a fluid composition sensor in combination with an inflow
control valve could have other than to selectively restrict or allow fluid flow
based on a desired or undesired fluid composition, which always includes an
analysis of a proportion of water or gas.” Id. at 10 (emphasis added).
We understand the Examiner’s position is that Vidrine’s apparatus
inherently “variably restricts the fluid flow at least in response to a
proportion of water [or gas] in the fluid flow.”
Appellants contend that the Examiner does not establish that Vidrine’s
apparatus inherently “variably restricts the fluid flow at least in response to a
proportion of water [or gas] in the fluid flow.” See Appeal Br. 16–18; see
also Reply Br. 17–19. Appellants correctly note that Vidrine does not
explicitly describe any system that meets the limitations of claim 3 (Appeal
Br. 17; Reply Br. 18) or claim 4 (Appeal Br. 17–18; Reply Br. 18).
Appellants also contend that there are other possible uses for Vidrine’s flow
control devices than the claimed functions of the inflow control device.
Appeal Br. 17, 18; Reply Br. 18, 19.
Appellants’ contentions are persuasive. The Examiner does not
identify any description in Vidrine of the function of the fluid composition
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measurement device, or the function of the system when it includes a fluid
composition measurement device. “Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted). Because the Examiner does not provide sufficient
evidence to establish that Vidrine’s apparatus, even when including a fluid
composition measurement device, inherently, that is, necessarily, functions
as recited in claim 3 or 4, we do not sustain the rejection of these claims.
Claims 11, 14, 15, and 18–20
For claims 11, 14, 15, and 18–20, the Examiner relies on the same
findings as those made for claims 1–5 and 8–10. Appeal Br. 8.
Claim 11 recites “an inflow control device which restricts fluid flow
through the screen assembly, wherein the inflow control device variably
restricts the fluid flow at least in response to a proportion of at least one of
water and gas in the fluid flow.” For the reasons discussed above for the
rejection of claims 3 and 4, we agree with Appellants that the Examiner has
not provided sufficient evidence to show that Vidrine inherently discloses
these limitations of claim 11. See Appeal Br. 18–19; Reply Br. 19–20.
We do not sustain the rejection of claim 11, or dependent claims 14,
15, and 18–20, for reasons similar to those discussed above for claims 3 and
4.
Claims 7 and 17 — Vidrine, Laflin, and Kilgore
Appellants rely on the dependency of claim 7 from claim 1 for
patentability. Appeal Br. 21. Thus, we sustain the rejection of claim 7.
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Claim 17 depends from claim 11. The Examiners’ application of
Kilgore for the rejection of claim 17 does not cure the above-described
deficiencies of the rejection of claim 11. Accordingly, we do not sustain the
rejection of claim 17.

DECISION
We affirm the rejection of claims 1, 2, 5, and 7–10, and reverse the
rejection of claims 3, 4, 11, 14, 15, and 17–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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