Ex Parte Freeman

Patent Trial and Appeal Board

Mar 10, 2015

13168621 (P.T.A.B. Mar. 10, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL A. FREEMAN
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Appeal 2013-003270
Application 13/168,621
1

Technology Center 3600
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Before BIBHU R. MOHANTY, BART A. GERSTENBLITH, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 21–33. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claim 21, the sole independent claim on appeal, is reproduced below:
21. A method of forming filter cake on the wall of a wellbore
as it is drilled through a formation comprising:

1
Appellant identifies M-I LLC as the real party in interest. App. Br. 2.
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placing a down hole tool comprising a rotatable well drilling
tool assembly in the wellbore,
wherein the downhole tool also comprises a compression
element with a compression surface and at least one
extendable support member configured to attach the
compression element to the well drilling tool assembly,
such that the compression surface is free to rotate around
and relative to a compression surface axis which is
movable outwardly from the well drilling tool assembly
by extension of the at least one support member;
flowing a drilling fluid along a sidewall of the wellbore so that
particulate material in the drilling fluid collects as a layer
of filter cake on the sidewall;
extending the at least one support member, thereby moving the
compression surface axis outwardly from the well
drilling tool assembly into contact with the sidewall of
the wellbore so that as the well drilling tool assembly
rotates, the compression surface rolls over the sidewall of
the wellbore and exerts a lateral force pressing the layer
of filter cake against the sidewall of the wellbore thereby
compacting the filter cake against the sidewall of the
wellbore, reducing the permeability of the filter cake and
making it more effective as a seal between the wellbore
and the formation.

REJECTIONS
1. Claims 21–23, 28, 29, and 31–33 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Roddy (US 4,190,123, iss. Feb. 26, 1980);
2

2
The Summary page of the Final Office Action identifies claims 21–33 as
pending and claims 21–33 as rejected. Fin. Off. Act. (mailed Mar. 7, 2012)
at 1. Yet, the Final Office Action includes claim 20, which was cancelled
previously by Amendment (Amend. (filed Dec. 22, 2011) at 8), among the
claims rejected as anticipated by Roddy. Fin. Off. Act. (mailed Mar. 7,
2012) at 3. A rejection of claim 20 is not before us because claim 20 is
cancelled.
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2. Claim 24 is rejected under 35 U.S.C. § 103(a) as being obvious over
Roddy and Lawson (US 6,152,227, iss. Nov. 28, 2000);
3. Claims 25–27 are rejected under 35 U.S.C. § 103(a) as being obvious
over Roddy, Lawson, and Hinterwaldner (US 4,362,566, iss. Dec. 7, 1982);
and
4. Claim 30 is rejected under 35 U.S.C. § 103(a) as being obvious over
Roddy and Vance (US 2,776,111, iss. Jan. 1, 1957).

OPINION
Anticipation – Roddy – Claims 21–23, 28, 29, and 31–33
Claims 21, 22, 28, 29, and 31–33
The Examiner finds that Roddy discloses each limitation of claim 21.
Ans. 3–4. Specifically, the Examiner finds that Roddy’s roller assembly 18
corresponds to the compression element recited in claim 21. The Examiner
finds that “particulate material in the drilling fluid collects as a layer of filter
cake on the sidewall” of the wellbore and that as roller assembly 18 rolls
over the wellbore wall, it exerts a lateral pressing force, which inherently
results in the reduction in permeability recited in claim 21. Id. at 3.
Appellant contends, generally, that “Roddy does not describe filter
cake as recited in claim 21” (App. Br. 6), but notes that a “filter cake . . . is
merely a cake of deposited particulate material” (id. at 7). Appellant does
not dispute the Examiner’s finding that particulate matter is contained in
Roddy’s drilling fluid, and offers no persuasive explanation as to why the
particulate material would not collect as a layer of filter cake on the wellbore
wall.
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Appellant contends that Roddy does not disclose “compacting the
filter cake” as recited in the claim because Roddy’s rollers “forcefully
engage the wall” and “would necessarily have to penetrate through the filter
cake . . . in order to engage the formation rock at the wellbore wall with
sufficient force to apply linear reaction force to the formation rock and
achieve the conversion of rotary motion to linear thrust as Roddy requires.”
Id. The Reply Brief notes that “Appellant[] do[es] not dispute that Roddy’s
rollers will indeed roll as they travel,” but Appellant “believe[s] that the
force applied by each roller must be sufficiently great that the material of the
filter cake will be squeezed out to either side of the roller and will not be left
in place.” Reply Br. 6.
Claim 21 does not limit the force applied by the compression element,
and Appellant does not identify a specific minimum force applied by roller
assemblies 18 in Roddy. As the Examiner explains, “the force as yielded by
rollers of Roddy and the compaction as instantly claimed are not mutually
exclusive, particularly since there is no instant disclosure as to what would
be the limits of a force on the sidewall which would provide such a
distinction as to compact the wall, but not penetrate.” Ans. 3. Even if
Roddy’s roller assemblies 18 forcefully engage the wellbore wall as
Appellant contends, it does not follow, necessarily, that no intervening layer
of filter cake would remain between roller assemblies 18 and the wellbore
wall. Rather, the Examiner has established a reason to believe that some
layer of filter cake (deposited particulate material) would be present between
roller assemblies 18 and the wellbore wall and compacted by roller
assemblies 18 (“reducing the permeability of the filter cake and making it
more effective as a seal”) as roller assemblies 18 pass along the wellbore
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wall. Appellant offers no persuasive explanation or evidence to dispute this
understanding of Roddy. Where, as here, the Patent Office has reason to
believe that a functional limitation is an inherent characteristic of the prior
art, Appellant has the burden to show that the prior art does not possess that
characteristic. See In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977)
(quoting In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971)). Appellant
has not met that burden.
For these reasons, we are not apprised of Examiner error and we
sustain the Examiner’s decision to reject claim 21. Claims 22, 28, 29, and
31–33 depend from claim 21, and Appellant does not argue these claims
separately. Accordingly, because we are not apprised of Examiner error in
the rejection of claim 21, we also are not apprised of Examiner error in the
rejection of claims 22, 28, 29, and 31–33 and sustain the Examiner’s
decision to reject these claims.
Claim 23
Claim 23 depends from claim 21 and further recites that “the drilling
fluid comprises at least one of a group consisting of compressible and
deformable particles, and the force of the compression surface embeds the
compressible and deformable particles mechanically into the sidewall of the
wellbore.” The Examiner finds that Roddy discloses this limitation because
“normal drilling fluid components or at least the debris removed, [Roddy]
col. 3, lines 59–62, would be compressible or deformable” and it is inherent
that the force from roller assemblies 18 would embed the particles
mechanically into the wellbore wall. Ans. 4.
In response, Appellant contends that “Roddy does not disclose
compressible or deformable particles in a drilling fluid” (App. Br. 10), but
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does not address the Examiner’s rejection specifically. The Reply Brief also
fails to address the Examiner’s rejection specifically. See Reply Br. 6–7.
Appellant’s general allegations do not apprise us of Examiner error, and we
sustain the Examiner’s decision to reject claim 23.
Obviousness – Roddy/Lawson – Claim 24
Claim 24 depends from claim 23, and further recites that “the group of
compressible and deformable particles comprises at least one of the group
consisting of thermally softened gilsonite, graphite, polymer beads, glass
ceramic spheres, starches, talc, gross cellulose, swollen, and partially
swollen super-absorbent polymer particles and lead.” The Examiner
acknowledges that Roddy does not teach “the compressible or deformable
particles selected from the group as claimed.” Ans. 5. The Examiner finds
that Lawson teaches these limitations. Id. The Examiner proposes
modifying Roddy’s rock drilling device to include Lawson’s materials for
stabilizing boreholes in shallow water flows (i.e., sands) because “[i]t would
have been obvious to include the particles as taught by Lawson et al. with
the methods of Roddy in order to help consolidate the wellbore.” Id.
Appellant argues that “the combination of references is not effectively
supported by text of a reference or explicit Examiner analysis” and “[t]he
provided rationale, ‘to help consolidate the wellbore,’ is an advantage in
hindsight and is not effective.” App. Br. 10. We agree.
Roddy is directed to using roller assemblies to facilitate rotary
movement against a wellbore wall. Roddy 2:43–45. Roddy describes its
device as “new and useful improvements in drilling, particularly in drilling
in rock formations.” Id. at 1:5–7. Roddy’s roller assemblies 18 engage the
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wellbore wall and provide “extra downward force upon the rock surface
below the drill bit” as the drill string is rotated. Id. at 3:44–50.
Lawson describes “drilling of a borehole through shallow waterflows
and unstable unconsolidated formations and cementing of casing through the
unstable area of the borehole.” Lawson 1:14–17. Lawson explains that
“water-bearing sands [are] known as shallow water flows” and “are
encountered . . . below the mud line.” Id. at 1:34–36. Lawson explains that
the shallow water flows are made of “grains of sand [that] are loosely
packed and unconsolidated, similar to the sand found on beaches and on
river sand bars, thereby contributing to the instability of the formation” and
describes “placing a unique composition of materials in the area of
instability to inhibit and prevent the flow of water into the borehole to inhibit
formation fracture growth, and to facilitate drilling and cementing
operations.” Id. at 1:43–46, 2:60–63.
The Examiner has simply stated the function of Lawson’s materials as
a rationale for the proposed combination, and has failed to explain why one
skilled in the art would want to consolidate the wellbore wall in Roddy.
Accordingly, the Examiner has not established that one skilled in the art
would have combined the teachings of Roddy and Lawson as proposed.
For these reasons, we do not sustain the Examiner’s decision to reject
claim 24.
Obviousness – Roddy/Lawson/Hinterwaldner – Claims 25–27
Claim 25 depends from claim 21, and further recites “the drilling fluid
comprises encapsulated particles containing at least one first reactive
component and the force of the compression surface breaks the encapsulated
particles to release the first reactive component along the sidewall of the
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wellbore.” The Examiner cites Lawson as teaching the reactive component
and provides a rationale for the combination of this feature with the
teachings of Roddy that is the same as that discussed above relative to
claim 24. Ans. 5–6. Appellant again contends that “the combination of
references is not effectively supported by text of a reference or explicit
Examiner analysis” (App. Br. 10–11), with which we agree, for at least the
reasons discussed above relative to claim 24.
Claims 26 and 27 depend from claim 25, and the Examiner’s stated
basis for the rejection of these claims includes the same deficiency discussed
above relative to claim 25. Accordingly, we do not sustain the Examiner’s
decision to reject claims 25–27.
Obviousness – Roddy/Vance – Claim 30
Claim 30 depends from claim 21 and further recites that “the
compression surface is porous.” The Examiner acknowledges that Roddy
does not teach a porous compression surface. Ans. 4. The Examiner finds
that Vance teaches a porous compression surface and reasons that it would
have been obvious “to make the compression surface of Roddy porous as
taught by Vance in order to allow liquids to egress the compression and form
a more stable surface for force application.” Id.
Appellant argues that “[t]he provided rationale, ‘to allow liquids to
egress the compression and form a more stable surface for force
application,’ is an advantage in hindsight and is not effective.” App. Br. 11.
We agree.
Vance describes a “plastering device” to fill voids in a wellbore wall,
and includes “cylinder like shell 30” and explains that “the purpose is to
catch cuttings or sedimentary materials as they come up the hole . . . and
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dispose of them through the openings 38, 38 in the side wall of the cylinder
into crevices or cavities when present.” Vance 4:31–57. Initially, we note
that the Examiner offers no explanation as to why using a porous roller
surface for Roddy’s roller assemblies 18 would result in a more stable
surface for force application as alleged. Further, the Examiner’s rationale
fails to establish why one skilled in the art would have modified Roddy to
include a more stable compression surface (i.e., why a more stable
compression surface is needed or would be beneficial in the rock surface
engaged by Roddy’s roller assemblies 18). Accordingly, the Examiner has
not established that one skilled in the art would have combined the teachings
of Roddy and Vance as proposed.
For these reasons, we do not sustain the Examiner’s decision to reject
claim 30.

DECISION
We AFFIRM the Examiner’s decision to reject claims 21–23, 28, 29,
and 31–33.
We REVERSE the Examiner’s decision to reject claims 24–27 and
30.
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-IN-PART

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