Ex Parte Lembcke et al

Patent Trial and Appeal Board

Mar 20, 2013

11680717 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFFREY J. LEMBCKE and FRANCIS X. BOSTICK, III
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Appeal 2011-001154
Application 11/680,717
Technology Center 3600
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Before LINDA E. HORNER, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jeffrey J. Lembcke and Francis X. Bostick, III (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims
1-21, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
Appellants’ claimed invention relates to “an apparatus and method of
protecting one or more optical fibers.” Spec., para. [0001]. Claims 1 and
15, reproduced below, are illustrative of the subject matter on appeal.
1. A wellbore system, comprising:
a tubular located in a wellbore; and
a cable proximate to the tubular wherein the cable
comprises:
one or more optical fibers; and
a layer of non-thermoplastic elastomeric material
on at least a portion of an outer surface of the cable
configured to resist an abrasive condition in the wellbore.

15. A method of monitoring a condition in a wellbore,
comprising:
placing a cable proximate a tubular in the wellbore, the
cable having at least one optical fiber and a layer of elastomeric
material on an outer surface of the cable;
locating the layer of elastomeric material proximate a
sand screen coupled to the tubular;
flowing production fluid into the tubular through the sand
screen;
absorbing energy with the layer of elastomeric material,
wherein the energy is created by a plurality of particles in the
production fluid impacting the elastomeric material of the
cable;
preventing the erosion of the cable by absorbing energy;
and
interrogating a sensor in the optical fiber to determine a
condition in the wellbore.

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THE EVIDENCE
The Examiner relies upon the following evidence:
Thompson US 4,522,464 Jun. 11, 1985
Bentley US 4,978,346 Dec. 18, 1990
Wetzel US 6,789,621 B2 Sep. 14, 2004
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1-9 and 11-19 under 35 U.S.C. § 103(a) as being unpatentable
over Wetzel and Thompson; and
2. Claims 10, 20, and 21 under 35 U.S.C. § 103(a) as being unpatentable
over Wetzel, Thompson, and Bentley.
ANALYSIS
The Examiner determined that Wetzel discloses the claimed wellbore
system and method except that it is silent as to the details of the fiber optic
cable. Ans. 3-4. The Examiner relied on Thompson to disclose “a fiber
optic cable (10) for use in a wellbore comprising a layer of non-
thermoplastic elastomeric material (26) on its outer surface, configured to
resist abrasive conditions in the wellbore (see Abstract).” Ans. 3.
With regard to claim 1, the Examiner made two additional findings.
First, the Examiner determined:
[L]ayer 26 is “configured to resist” an abrasive condition in the
wellbore, since every element around optical fibers 14 is
exposed to the downhole environment, not just the outermost
surface. Therefore, each element must be “configured to resist”
abrasive conditions . . . .
Id. at 6. Second, the Examiner construed “configured to resist an abrasive
condition” as calling for the elastomeric material to be capable of resisting
abrasive conditions upon exposure to such conditions, and thus determined
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that “elastomeric material 26 would resist abrasive conditions in the same
way that the elastomeric material recited in appellant’s claims resists
abrasive conditions.” Id.
We agree with Appellants (Reply Br. 2-3) that the Examiner erred in
making the first additional finding that simply because layer 26 is placed in
the downhole environment it must be configured to resist abrasive
conditions. The elastomeric layer 26 of Thompson is not exposed to
abrasive conditions in the wellbore because it is surrounded by inner armor
24, corrosion resistant and lubricating material 34, and outer armor 32
(Thompson, fig.), and thus does not come into contact with abrasive
particles within the wellbore.
We also agree with Appellants (Reply Br. 3) that the Examiner’s
second additional finding is based on an unreasonably broad interpretation
of claim 1 as requiring only that the elastomeric material is capable of
resisting abrasive conditions in the wellbore. Appellants argue that the
“configured to” limitation of claim 1 requires that the elastomeric material
be positioned on at least a portion of an outer surface of the cable such that it
comes into direct contact with the abrasive conditions in the wellbore.
Reply Br. 3 (citing Spec., para. [0031]).1 We construe the claim language
“configured to resist an abrasive condition in the wellbore” in light of the
Specification to refer to the location of elastomeric material on the portion of
an outer surface of the cable relative to the wellbore. As such, we
understand claim 1 to call for the elastomeric material to be disposed on a

1 The sentence Appellants cite in paragraph [0031] states, “Due to the
location of the abrasive resistant portions 114, only the elastomeric layer 204
or the partial elastomeric layer 300 of the cable 112 come in direct contact
with the flowing sand and/or particles.”
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portion of an outer surface of the cable such that it comes into direct contact
with abrasive conditions in the wellbore, such as those caused by flowing
sand or particles.
As we noted supra, the elastomeric layer 26 of Thompson does not
come into direct contact with abrasive conditions in the wellbore. As such,
we disagree with the Examiner’s determination that the combined teachings
of Wetzel and Thompson render obvious the wellbore system called for in
claim 1. Accordingly, we reverse the rejection of claim 1, and its dependent
claims 2-9 and 11-14 under 35 U.S.C. § 103(a).
With regard to claim 15, the Examiner determined:
The elastomeric material 26 [of Thompson] absorbs energy
from particle impacts by virtue of its placement directly
adjacent lubricating material 34. Impact forces act on the
elastomeric layer 26 through lubricating material 34. As
discussed above, all the layers around the optical fibers 14 play
a role in absorbing all of the forces created by the downhole
environment. Not being located on the outermost surface does
not prevent the elastomeric layer from absorbing energy from
particle impacts.
Ans. 7. Claim 15 calls for “locating the layer of elastomeric material
proximate a sand screen coupled to the tubular” and “absorbing energy with
the layer of elastomeric material, wherein the energy is created by a plurality
of particles in the production fluid impacting the elastomeric material of the
cable.” We agree with Appellants (App. Br. 12; Reply Br. 3) that Thompson
does not teach absorbing energy resulting from particles impacting the
elastomeric material. As we found supra, Thompson’s elastomeric material
26 does not come into direct contact with particles in the production fluid,
thus particles would be incapable of “impacting the elastic material of the
cable” in Thompson in the manner called for in claim 15. As such, we
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disagree with the Examiner’s determination that the combined teachings of
Wetzel and Thompson render obvious the method of claim 15. Accordingly,
we reverse the rejection of claim 15, and its dependent claims 16-19 under
35 U.S.C. § 103(a).
The Examiner’s rejection of claims 10, 20, and 21 as being
unpatentable over Wetzel, Thompson, and Bentley suffers from the same
deficiency in the underlying combination of Wetzel and Thompson as
discussed above. Accordingly, we also reverse the rejection of claims 10,
20, and 21 under 35 U.S.C. § 103(a).
DECISION
We REVERSE the decision of the Examiner to reject claims 1-21.

REVERSED

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