Ex Parte Palidwar et al

Patent Trial and Appeal Board

Jul 20, 2017

12683338 (P.T.A.B. Jul. 20, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/683,338 01/06/2010 Troy F. Palidwar 2009-IP-028571U1 2865
99633 7590 07/24/2017
McDermott Will & Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
EXAMINER
BUTCHER, CAROLINE N
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
07/24/2017 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):
mweipdocket @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TROY F. PALIDWAR, BROCK W. MILLER,
FRASER MCNEIL, and LOYD E. EAST JR.
Appeal 2015-003576
Application 12/683,338
Technology Center 3600
Before GEORGE R. HOSKINS, BRANDON J. WARNER, and
AMANDA F. WIEKER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Troy F. Palidwar et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1, 4—11, and 13—23,
which are all the pending claims. See Appeal Br. 3^4. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Halliburton
Energy Services, Inc. Appeal Br. 3.
Appeal 2015-003576
Application 12/683,338
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to “perforating and fracturing
methods and more particularly to single trip methods for multiple interval
perforating and fracturing using straddle packer isolation.” Spec. 11.
Claims 1 and 15 are independent. Claim 1, reproduced below, is illustrative
of the subject matter on appeal.
1. A method for perforating and fracturing a wellbore in a
single trip comprising:
(a) installing one or more reservoir access subs on a
liner at pre-determined intervals, wherein at least one of the
reservoir access subs comprises one or more ports or jets filled
with a soluble material;
(b) running the liner into the wellbore;
(c) securing the liner to the wellbore;
(d) running a bottomhole assembly comprising a
tubing selected from the group consisting of: a jointed pipe, a
coil tubing, a drillpipe, and any combination thereof and at least
one straddle packer configured to be disposed within the liner
when the bottomhole assembly is run into the wellbore, wherein
the at least one straddle packer is attached to the tubing;
(e) activating at least one of the reservoir access subs
so as to allow fluid communication between the liner and the
wellbore, wherein activating the reservoir access subs
comprises reverse circulating a solvent to dissolve the soluble
material in the one or more ports or jets filled with a soluble
material; and
(f) fracturing at least one interval proximate the
activated reservoir access sub; wherein steps (d), (e), and (f) are
performed in a single trip into the wellbore.
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Appeal 2015-003576
Application 12/683,338
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
East US 2008/0156496 A1
Surjaatmadja US 2008/0179060 A1
Mytopher US 2010/0236781 A1
REJECTIONS
The following rejections are before us for review:
I. Claims 1, 5—11, 13—17, and 19-23 stand rejected under
35 U.S.C. § 102(b) as anticipated by Surjaatmadja. Final
Act. 3—5.
II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Surjaatmadja and East. Id. at 5—6.
III. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Surjaatmadja and Mytopher. Id. at 6.
ANALYSIS
Rejection I— Claims 1, 5—11, 13—17, and 19—23 as
anticipated by Surjaatmadja
Appellants present argument against the rejection of independent
claims 1 and 15 together (see Appeal Br. 7—9), and rely on the same
argument when addressing the dependent claims (see id. at 9). We select
claim 1 as representative of the issue that Appellants present in the appeal of
this rejection, with claims 5—11, 13—17, and 19-23 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
July 3, 2008
July 31,2008
Sept. 23,2010
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Appeal 2015-003576
Application 12/683,338
The Examiner found that Surjaatmadja discloses a method including
all of the steps recited in claim 1. Final Act. 2—A. Appellants argue that
Surjaatmadja does not disclose each and every step of the claim, which is
premised on a contention that the Examiner’s interpretation of the claim
term “filled with a soluble material,” as it relates to the one or more ports or
jets of the reservoir access subs, is unreasonably broad. See Appeal Br. 7—9;
Reply Br. 2-A.
Based on Appellants’ argument, the dispositive issue raised in this
appeal centers on the appropriate claim interpretation of the reservoir access
subs including “one or more ports or jets filled with a soluble material,” as
recited in claim 1. In short, although we appreciate that Appellants’
proffered interpretation—that “filled,” without a modifier, must mean
completely filled so as to completely block the opening (port or jet)—may
be reasonable, it does not follow that the Examiner’s admittedly broader
interpretation—that “filled” can encompass partially filled, because the
claim does not require complete blocking of the opening (port or jet)—is
unreasonable. The relevant inquiry is not whether Appellants’ suggested
narrower interpretation is reasonable; rather, it is whether the Examiner’s
broader interpretation is unreasonable. Appellants’ argument, which focuses
on supporting their interpretation, does not demonstrate this to be. Thus,
Appellants do not apprise us of error in the Examiner’s rejection of claim 1,
which we sustain. We address Appellants’ principal argument below simply
as a matter of emphasis.
In particular, during patent examination, claims are to be given their
broadest reasonable interpretation consistent with the specification, with
claim language being read in light of the specification as it would be
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Appeal 2015-003576
Application 12/683,338
interpreted by one of ordinary skill in the art. See In re Am. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, as the Examiner
correctly explains, “[t]he claim language . . . does not state that prior to the
activation there is no fluid communication between the liner and the
wellbore,” such that “the ports or jets . . . need not be filled such that there is
a ‘complete blocking’ of the ports or jets,” as Appellants urge. Ans. 2.
Instead, Appellants’ Specification expressly describes options of partially
filled, completely filled, and overfilled ports or jets—all of which are
reasonably encompassed by the claim language of “filled” without a
modifier. See id. at 2—3 (citing Spec. 122, which discloses that a suitable
embodiment of the claimed invention encompasses soluble material that
“may partially fill, completely fill, or overfill” the openings). Thus, we
agree with the Examiner’s observation that “Appellants] appear[] to be
arguing [an] embodiment where the ports or jets are ‘completely filled’, but
this limitation is not present in the claims.” Id. at 3; see also In re Self 671
F.2d 1344, 1348 (CCPA 1982) (it is well established that limitations not
appearing in the claims cannot be relied upon for patentability).
After careful consideration of all the evidence, we determine that the
findings relied upon from Surjaatmadja, particularly regarding its ports
being “filled” with a soluble material, as required by the claim, fall within a
broad—but reasonable—interpretation of “filled” as claimed.
In conclusion, for the foregoing reasons, Appellants’ argument does
not apprise us of error in the Examiner’s findings. Accordingly, we sustain
the rejection of independent claim 1, and claims 5—11, 13—17, and 19-23
falling therewith, under 35 U.S.C. § 102(b) as anticipated by Surjaatmadja.
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Appeal 2015-003576
Application 12/683,338
Rejections II and III— Claims 4, 17, and 18 as
unpatentable over Surjaatmadja and one of East and Mytopher
With respect to the rejections of these claims, Appellants do not set
forth any additional substantive arguments separate from the argument
discussed supra', instead, Appellants assert that the additional references
“do[] not remedy” asserted deficiencies in Surjaatmadja. Appeal Br. 9-10.
Accordingly, for the same reasons that Appellants’ argument does not
apprise us of error in the rejection of claim 1, Appellants also do not apprise
us of error in the rejections of these claims, which we likewise sustain.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 5—11,
13—17, and 19—23 under 35 U.S.C. § 102(b) as anticipated by Surjaatmadja.
We AFFIRM the Examiner’s decision rejecting claim 4 under
35 U.S.C. § 103(a) as being unpatentable over Surjaatmadja and East.
We AFFIRM the Examiner’s decision rejecting claims 17 and 18
under 35 U.S.C. § 103(a) as being unpatentable over Surjaatmadja and
Mytopher.
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
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