Ex Parte McCoy et al

Patent Trial and Appeal Board

Oct 31, 2018

14453792 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/453,792 08/07/2014 Matthew T. McCoy
44639 7590 11/02/2018
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
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.
PRF4-52373-US-D1 2135
EXAMINER
FULLER, ROBERT EDWARD
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW T. McCOY, MATTHEW D. SOLFRONK,
JACK D. FARMER, WILLIAM A. BURTON, JAMES G. KING,
JASON J. BARNARD, and EDWARD J. O'MALLEY
Appeal 2018-003498
Application 14/453,792 1
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Matthew T. McCoy et al.
("Appellants") appeal from the Examiner's decision rejecting claims 1, 3 ,8,
9, 12, 18, and 19. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, "[t]he real party in interest in this Appeal is
the assignee, Baker Hughes Incorporated." Appeal Br. 2.
Appeal2018-003498
Application 14/453,792
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An actuation system comprising:
a tubular having a passage; and
an assembly disposed with the tubular, the assembly
including a degradable restriction, the restriction only partially
blocking the passage prior to being degraded, the degradable
restriction forming a seat configured to receive a restrictor
thereon to block fluid flow through the passage, the assembly
configured to be actuated by creating a pressure differential
across the restrictor to shift the degradable restriction and the
restrictor seated thereon longitudinally with respect to the tubular
prior to the restriction being degraded, and the assembly further
configured to release the restrictor when the restriction is
degraded.
Rejections
Claims 1, 8, 9, and 12 are rejected on the ground ofnonstatutory
double patenting as being unpatentable over claims 1 and 4--8 of McCoy et
al. (US 9,033,055 B2, iss. May 19, 2015) ("McCoy").
Claims 1, 3, 8, 9, 18, and 19 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Xu (US 2008/0066924 Al, pub.
Mar. 20, 2008) in view of Garcia et al. (US 2011/0192613 Al, pub. Aug. 11,
2011) ("Garcia").
Claim 12 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Xu in view of Garcia and further in view of Applicant's
Admitted Prior Art ("AAP A").
Claims 1, 3, 8, 9, 18, and 19 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Garcia in view of Xu.
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Appeal2018-003498
Application 14/453,792
Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Garcia in view of Xu and further in view of Applicant's
Admitted Prior Art ("AAP A").
ANALYSIS
Double Patenting
The Appellants do not contest the Examiner's rejection of claims 1, 8,
9, and 12 on the ground of nonstatutory double patenting as being
unpatentable over claims 1 and 4--8 of McCoy. 2 We summarily sustain this
ground of rejection.
Obviousness based on Xu in view of Garcia
The Examiner sets forth the following rationale for the rejection:
It would have been considered obvious to one of ordinary
skill in the art ... to have modified Xu such that the assembly
was configured to be shifted by differential pressure in order to
open a sleeve valve, as Garcia discloses that sleeve valves are a
desirable application for temporary ball seat technology.
Final Act. 6.
The Appellants argue that the devices of Xu and Garcia "are very
different in both function and construction, and there is no reasonable
motivation to combine the references as suggested to alter the function
and/or construction of Xu to include features disclosed by Garcia." Appeal
Br. 6; see Reply Br. 4--5. The Appellants assert that "there is no obvious
2 The Applicants (i.e., Appellants) "respectfully submitted that if a double
patenting rejection is appropriate when all the claims are allowed,
Applicants will provide a terminal disclaimer." Amendment and Response
to Non-Final Office Action 8 (filed May 25, 2017).
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Appeal2018-003498
Application 14/453,792
reason why one of ordinary skill in the art would modify the assembly of Xu
to be a sleeve valve that opens a port instead of operating a separate
downhole tool." Appeal Br. 7.
In response, the Examiner offers the following concerning the
motivation to modify Xu's device to be a sleeve valve; "different wellbore
operations require different uses for temporary ball seats. While Xu's seat is
for actuating a packer, the job at hand may require the opening of a sleeve
valve for operations such as staged fracturing (which is the purpose of
Garcia's device)." Ans. 9.
We fail to understand how the foregoing response or the rationale
provided in the Final Action provide an adequate reason to modify Xu's
device as proffered by the Examiner. At best, the Examiner appears to
provide only a reason to stop using Xu's device entirely and use Garcia's
device instead.
Thus, we do not sustain the Examiner's rejection of claims 1, 3, 8, 9,
18, and 19 as unpatentable over Xu in view of Garcia.
Obviousness based on Xu in view of Garcia and AAP A
Claim 12 depends from claim 1. Appeal Br. 13. The Examiner's
rejection of claim 12 as unpatentable over Xu in view of Garcia and further
in view of AAP A relies on the same inadequate reasoning discussed above.
See Final Act. 7-8. The additional findings and/or reasoning associated with
this rejection of claim 12 does not cure the deficiency of the Examiner's
rejection of claim 1.
Thus, we do not sustain the Examiner's rejection of claim 12 as
unpatentable over Xu in view of Garcia and further in view of AAP A.
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Appeal2018-003498
Application 14/453,792
Obviousness based on Garcia in view of Xu
In rejecting claim 1, the Examiner determines that it would have been
obvious for one of ordinary skill in the art to modify Garcia's restriction
142, 146 to include a degradable material, as taught by Xu. See Ans. 4--5.
The Examiner reasons that modifying Garcia's restrictor to include
dissolvable materials provides the advantage of acting as a time delay for
releasing a ball that is easily calibrated and customized for various depths
without the concern for pressures within a well. See id. at 5 ( citing Xu ,r,r 7-
9).
The Examiner's proposed combination appears to result in a device
that has two mechanisms that act as a restriction for Garcia's restrictor (ball)
130. The first mechanism is Garcia's keys 142 and orienting seat 146. The
second mechanism is the dissolvable material, as taught by Xu, which
creates a separate structure positioned exterior to keys 142. See, e.g., Ans. 5
("keys 142 would constitute a protective layer on the radially inner surface
of the degradable material ( 40 of Xu, now positioned radially outside of keys
142 in Garcia)" (emphasis omitted)). See also Reply Br. 2 (Xu's dissolvable
material 40 "is used for holding the seat 20 in the retracted position.").
Accordingly, for Garcia's restrictor ball 130 to pass in an open condition,
keys 142 would need to expand and the dissolvable material positioned
exterior to keys 142 would need to dissolve. See id. at 2-3; Garcia ,r,r 31-
34, Figs. 4A, 4B.
The Appellants argue, "[ e ]ven though the Examiner asserts that the
time delay could be easily calibrated, there is no way the opening of the keys
could be simultaneously timed with the exposure of ports by the movement
of insert 120 if the keys 142 were held in the closed condition by dissolvable
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Appeal2018-003498
Application 14/453,792
material 40." Reply Br. 3. The Appellants argue persuasively that "no
advantage could be gained by making the combination" because having two
mechanisms by which Garcia's restrictor ball 130 would be released
unnecessarily slows down the process in which Garcia's device functions.
See id. We fail to understand from the Examiner's rejection a reason why
one of ordinary skill in the art would be willing to include an unnecessary
delay in releasing Garcia's restrictor ball or otherwise provide a redundant
system for releasing Garcia's restrictor ball.
Thus, we do not sustain the Examiner's rejection of claims 1, 3, 8, 9,
18, and 19 as unpatentable over Garcia in view of Xu.
Obviousness based on Xu in view of Garcia and AAP A
Claim 12 depends from claim 1. Appeal Br. 13. The Examiner's
rejection of claim 12 as unpatentable over Garcia in view of Xu and further
in view of AAPA relies on the same inadequate reasoning discussed above.
See Ans. 6. The additional findings and/or reasoning associated with this
rejection of claim 12 does not cure the deficiency of the Examiner's
rejection of claim 1.
Thus, we do not sustain the Examiner's rejection of claim 12 as
unpatentable over Xu in view of Garcia and further in view of AAP A.
DECISION
We SUMMARILY AFFIRM the Examiner's decision rejecting
claims 1, 8, 9, and 12 on the ground ofnonstatutory double patenting as
being unpatentable over claims 1 and 4--8 of McCoy.
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Application 14/453,792
We REVERSE the Examiner's decision rejecting claims 1, 3, 8, 9, 12,
18, and 19 under pre-AIA 35 U.S.C. § 103(a).
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)(l )(iv).
AFFIRMED-IN-PART
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