Ex Parte Kneisl et al

Board of Patent Appeals and Interferences

Jul 30, 2012

10157609 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIP KNEISL, LAWRENCE A. BEHRMANN, and
BRENDEN M. GROVE
____________

Appeal 2010-002777
Application 10/157,609
Technology Center 3600
____________

Before KEN B. BARRETT, MICHAEL C. ASTORINO, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Philip Kneisl et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 3-15, 18, 19, 38, 39 and 82-86.
Claims 2, 16, 17, 20-37, 40-81, 87 and 88 have been canceled.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6. We REVERSE.

THE INVENTION
Appellants’ invention relates to a system for reducing the amount of
debris generated during perforating with shaped charges. Spec., para. [0002]
and figs 5, 6 and 7A.
Claims 1 and 38 are illustrative of the claimed invention and read as
follows:
1. A perforating system, comprising:
a perforating gun comprising a solid loading tube; and
shaped charges being housed in the solid loading tube,
each of the shaped charges comprising an explosive that
does not rely on a shaped charge case for confinement.

38. A debris free perforating system, comprising:
a shaped charge;
a combustible loading tube to receive the shaped charge,
the loading tube comprising a surface; and
an oxidizer coating closely adhering to the surface of the
loading tube.

1 This is Appellants’ second appeal before the Board of Patent Appeals and
Interferences in the instant application. In the first appeal (Appeal No.
2008-3423, Decision mailed Sep. 26, 2008), the rejection of claims 1, 3-15,
18, 19, 38-51 and 82-88 was reversed.
2 Appellants canceled Claims 40-51, 87 and 88 in an Amendment after Final,
filed Apr. 20, 2009. The Amendment was entered in an Advisory Action,
mailed Sep. 15, 2009.

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THE REJECTIONS

The Examiner relies upon the following as evidence of
unpatentability:

Auberlinder US 3,237,559 Mar. 1, 1966
Bosse-Platiere US 4,191,265 Mar. 4, 1980
Budinger US 4,198,739 Apr. 22, 1980
Ibsen US 4,253,523 Mar. 3, 1981
Yates US 4,829,901 May 16, 1989
Reese US 5,656,791 Aug. 12, 1997
Seeger US 5,831,207 Nov. 3, 1998
Nice US 5,837,925 Nov. 17, 1998
Kapoor US 5,939,664 Aug. 17, 1999
Kenworthy US 6,209,457 B1 Apr. 3, 2001

The following rejections are before us for review:3
I. The Examiner rejected claims 38, 39 and 83-86 under 35
U.S.C. § 102(b) as anticipated by Ibsen.
II. The Examiner rejected claim 82 under 35 U.S.C. § 103(a) as
unpatentable over Ibsen.
III. The Examiner rejected claims 38, 39 and 82-86 under 35
U.S.C. § 103(a) as unpatentable over Nice and Ibsen.
IV. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Auberlinder and Bosse-Platiere.
V. The Examiner rejected claims 3-5 under 35 U.S.C. § 103(a) as
unpatentable over Auberlinder, Bosse-Platiere and Nice.

3 The rejections of claim 82 under 35 U.S.C. § 103(a): (1) as unpatentable
over Ibsen and Seeger; and (2) as unpatentable over Nice, Ibsen and Seeger
have been withdrawn by the Examiner. Ans. 3.
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VI. The Examiner rejected claims 6-9 under 35 U.S.C. § 103(a) as
unpatentable over Auberlinder, Bosse-Platiere and Reese or
Auberlinder, Bosse-Platiere and Kapoor.
VII. The Examiner rejected claims 10-13 under 35 U.S.C. § 103(a)
as unpatentable over Auberlinder, Bosse-Platiere and
Kenworthy.
VIII. The Examiner rejected claims 14, 18 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Auberlinder, Bosse-Platiere and
Yates.
IX. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Auberlinder, Bosse-Platiere, Yates and
Budinger.

OPINION
Rejection I
Independent claim 38 requires an oxidizer coating closely adhering to
the surface of a loading tube. App. Br., Claims Appendix.4 The Examiner
found that material 64 of Ibsen constitutes an “oxidizer coating” that closely
adheres to the inner surface of carrier 12 (loading tube). Supp. Ans. 2.5 See
also, Ibsen, fig. 1. The Examiner also found that Ibsen teaches that material

4 Throughout this Opinion, we shall refer to Appellants’ Appeal Brief, filed
Apr. 20, 2009, as “App. Br.”; Appellants’ Supplemental Appeal Brief, filed
Jul. 15, 2009, as “Supp. App. Br.”; and Appellants’ Reply Brief, filed Dec.
14, 2009, as “Reply Br.”
5 Throughout this Opinion, we shall refer to Examiner’s Answer, mailed Oct.
14, 2009, as “Ans.”; and Examiner’s Supplemental Answer, mailed Nov. 5,
2009, as “Supp. Ans.”

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64 can be non-activated (non-explosive) ammonium nitrate. Ans. 12-13.
See also, Ibsen, col. 9, ll. 15-18. As such, the Examiner takes the position
that (1) ammonium nitrate is an oxidizer (Ans. 12); (2) non-activated (non-
explosive) ammonium nitrate (material 64 of Ibsen) can function as an
oxidizer (Ans. 13); and (3) non-activated (non-explosive) ammonium nitrate
(material 64 of Ibsen), “is used [as an oxidizer] to facilitate the operation of
the shaped charge [30] explosive” (Ans. 12).
In this case, although we do not dispute the Examiner’s position that a
non-activated ammonium nitrate can “function[] as an oxidizer” (see Ans.
13), we could not find any portion in Ibsen, and the Examiner has not
pointed to any portion, that would suggest that material 64 is used as an
oxidizer to facilitate the operation of the shaped charge 30 explosive. Ibsen
merely teaches that the space in carrier 12 between the shaped charges 30
positioned in the carrier 12 is filled with spacer material 64 “to keep the
shaped charges [30] in the desired spaced-apart relation to each other in the
carrier 12.” Ibsen, col. 5, ll. 37-40. Hence, just because material 64 of Ibsen
is used as a spacer to keep the shaped charges 30 in a spaced-apart
relationship, it does not mean that material 64 is used as an oxidizer to
facilitate the operation of the shaped charge 30 explosive. Therefore, the
Examiner’s finding that material 64 of Ibsen constitutes an “oxidizer” is
mere speculation and conjecture based on an unfounded assumption that
material 64 is used to facilitate the operation of the shaped charge 30
explosive. As such, we find that material 64 of Ibsen does not constitute an
“oxidizer coating,” as required by independent claim 38.
The Examiner further found that (1) secondary explosive 66 of Ibsen
constitutes an oxidizer coating “closely adhering to the surface of the
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loading tube” (Supp. Ans. 2. See also, Ibsen, fig. 2); and (2) Ibsen teaches
that secondary explosive 66 is “preferably” packed in bags. Ans. 13. See
also, Ibsen col. 7, ll. 17-22. As such, the Examiner takes the position that
the term “preferably” means that the secondary explosive 66 of Ibsen “does
not have to be put in bags and could be placed in the loading tube much like
the ammonium nitrate - at 64 as seen in figure 1 of Ibsen.” Id.
In this case, although we appreciate that the secondary explosive 66 of
Ibsen does not have to be packed in bags, that does not mean that the
secondary explosive 66 in any way contacts the interior surface of carrier 12.
As such, the Examiner’s finding that the secondary explosive 66 of Ibsen
constitutes an “oxidizer coating” that closely adheres to the surface of the
loading tube is mere speculation and conjecture based on an unfounded
assumption that not packing the secondary explosive 66 in bags means that
the secondary explosive 66 contacts the interior surface of carrier 12. See
Reply Br. 2. Hence, we find that the secondary explosive 66 of Ibsen does
not constitute an “oxidizer coating,” as required by independent claim 38.
Accordingly, for the foregoing reasons, Ibsen does not teach all the
limitations of independent claim 38 or its respective dependent claims 39
and 83-86. Therefore, the rejection of claims 38, 39 and 83-86 under 35
U.S.C. § 102(b) as anticipated by Ibsen cannot be sustained.

Rejections II-III
Rejections II and III rely on the unsubstantiated findings pertaining to
Ibsen, as discussed above. Accordingly, we shall also reverse Rejections II-
III.

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Rejection IV
Independent claim 1 recites a perforating system including (1) a
perforating gun having a loading tube; and (2) shaped charges housed in the
loading tube. App. Br., Claims Appendix. The Examiner found that
Auberlinder discloses (1) shaped charges 10, 20 (Supp. Ans. 3. See also,
Auberlinder, figs. 1 and 2); and (2) that the shaped charges may be put into a
borehole through the use of a casing gun (perforating gun) (Ans. 13. See
also, Auberlinder, col. 3, ll. 25-28). As such, the Examiner takes the
position that (1) “[i]f a casing gun [perforating gun] is used it is inherent that
a loading tube be used to place the shaped charge explosives within the
gun;” and (2) “since loading tubes are well known in the art as being used in
casing guns [perforating guns] the Auberlinder reference inherently
discloses a loading tube as claimed.” Ans. 13.
Appellants argue that (1) Auberlinder merely discloses “a
retrievable casing gun” and does not specifically disclose “any type of
loading tube;” (2) “perforating guns may or may not contain loading tubes;”
and (3) “the designation [of a] ‘retrievable casing gun’ [as disclosed in
Auberlinder] does not discriminate as to whether the gun includes a loading
tube or not.” Supp. App. Br. 11. We agree with Appellants’ position for the
following reasons.
At the outset, with respect to the Examiner’s inherency position, we
note that when a reference is silent about an asserted inherent characteristic,
it must be clear that the missing descriptive matter is necessarily present in
the thing described in the reference. Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1268 (Fed. Cir. 1991). “The mere fact that a certain thing
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may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
In this case, although we appreciate that the shaped charges 10, 20 of
Auberlinder may be placed within a casing gun (perforating gun), this in no
way demonstrates that the shaped charges 10, 20 are housed in a loading
tube, as the Examiner contends. In other words, just because the shaped
charges 10, 20 of Auberlinder are placed within a casing gun (perforating
gun), it does not necessarily mean that the shaped charges 10, 20 are housed
in a loading tube. For example, as pointed out by Appellants, shaped
charges placed within a perforating gun can also be mounted to a strip.
Reply Br. 4. Inherency may not be established by probabilities or
possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). As such, like
Appellants, we are of the view that there is simply insufficient evidence in
Auberlinder to support a finding that shaped charges placed within a casing
gun (perforating gun) must necessarily be housed in a loading tube. Id.
Hence, the Examiner has not provided sufficient evidence to support the
finding that shaped charges 10, 20 placed within a casing gun (perforating
gun) necessarily means that the shaped charges 10, 20 are housed in a
loading tube, so as to constitute a “loading tube,” as required by independent
claim 1.
Accordingly, the rejection of independent claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Auberlinder and Bosse-Platiere, cannot be
sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).

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Rejections V-IX
Rejections V-IX rely on the unsubstantiated findings pertaining to
Auberlinder and Bosse-Platiere, as discussed above. Accordingly, we shall
also reverse Rejections V-IX.

DECISION
The decision of the Examiner to reject claims 1, 3-15, 18, 19, 38, 39
and 82-86 is reversed.

REVERSED

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