Ex Parte Zielinska et al

Patent Trial and Appeal Board

Mar 28, 2013

11607461 (P.T.A.B. Mar. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BARBARA J.A. ZIELINSKA,
ANDREW C. POSLUSZNY,
and
DAVID J. REED
____________

Appeal 2011-000999
Application 11/607,461
Technology Center 3600
____________

Before STEFAN STAICOVICI, HYUN J. JUNG, and
ADAM V. FLOYD, Administrative Patent Judges.

FLOYD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-4, 6-17, and 19-26. Claims 5 and 18 have
been cancelled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
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CLAIMED SUBJECT MATTER
Claims 1, 11, 17, and 20 are the independent claims on appeal.
Claim 1 is representative of the subject matter on appeal, and recites:
1. An apparatus for use in a wellbore, comprising:
a module for deployment downhole in the wellbore and
having a nozzle with an output to provide a jet of fluid,
wherein the module further has a valve associated with
the nozzle to control fluid flow through the nozzle; and
a structure proximate the nozzle and positioned a set
distance away from the output of the nozzle, wherein the
set distance is greater than a length of a potential core of
the jet of fluid.

REJECTIONS
Claims 1-4, 6-8, and 101 are rejected under 35 U.S.C. § 102(b) as
anticipated by Buell (US 5,060,725, issued Oct. 29, 1991).
Claims 1-4, 6-17, and 19-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Buell and Szarka (US 5,381,862, issued Jan. 17, 1995).
Claims 1-4, 6-17, and 19-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Szarka and Buell.

ANALYSIS
The rejections of claims 1-4, 6-8, and 10 as anticipated by Buell.
The Appellants argue that Buell fails to disclose “a module for
deployment downhole in the wellbore” having both “a nozzle” and “a valve
associated with the nozzle to control fluid flow through the nozzle.” App.

1 The Examiner inadvertently included cancelled claim 5 in this rejection.
Ans. 3. The Examiner also withdrew the 35 U.S.C. § 102(b) rejection of
claims 20 and 26 as anticipated by Buell. Ans. 3.
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Br. 6. Specifically, the Appellants note that the Examiner has identified jets
23 in a jet washing tool 17 of Buell as corresponding to the nozzle of claim 1
and that the Examiner has cited well head valves shown in Figure 1 of Buell
as corresponding to the “valve” of claim 1. Id.; see also Ans. 4 (“Buell
teaches a method for providing a well tool having nozzles 23 for cleaning,
. . . valves shown in Figure 1 as ‘well head valves’ associated with the
nozzles that are production valves . . .”). The Appellants then argue that the
well head valves are shown as being above and outside of a wellbore, and
thus, Buell fails to teach a module for deployment downhole in a wellbore
having both a nozzle and a valve associated with the nozzle. Id. The
Examiner responds that “the claims are regarded to require that at least part
of the module is disposed downhole, and does not require all elements of the
module disposed downhole.” Ans. 7. The Examiner specifically notes that
the claim recites that the valve is “associated with the nozzle that is disposed
downhole” without restriction to the physical location of the valve. Ans. 7.
The Appellants argue the Examiner’s position is contrary to the express
language of the claim and improperly interprets claim 1 to insert the phrase
“at least part of” before the recitation “a module for deployment downhole
in the wellbore.” Reply Br. 2.
We agree with the Appellants that Buell fails to teach a module for
deployment downhole having both a nozzle and a valve, as required by
claim 1. A proper finding of anticipation requires a showing that each
element or limitation in a claim is present in the cited reference, either
explicitly or inherently, and that the elements must be arranged in the same
manner as in the claim under review. In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990). The Examiner finds that the jets 23 of the jet washing tool 17
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teach the nozzles of claim 1 and the well head valves of Figure 1 teach the
valve associated with the nozzle. Ans. 4. However, Buell does not disclose
by a preponderance of the evidence that the “well head valves” are
associated with the jets 23 to control fluid through the jets 23, as called for
by claim 1. App. Br. 6; Reply Br. 2.
Also, the Examiner’s interpretation of claim 1 does not give effect to
all terms in the claim. Claims are construed with an eye toward giving effect
to all terms in the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950
(Fed. Cir. 2006); see also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases
in claims superfluous). In this case, the record indicates that the Examiner’s
interpretation appears to render superfluous the phrase “to control fluid flow
through the nozzle” because it is not addressed by the Examiner. See Ans. 4
and 7-8. Thus, the rejection of claims 1-4, 6-8, and 10 under 35 U.S.C.
§ 102(b) as anticipated by Buell is not sustained.

The rejections of claims 1-4, 6-17, and 19-26 as unpatentable over Buell and
Szarka2.
As an alternative ground of rejection, the Examiner rejects all claims
on appeal as unpatentable over Buell in view of Szarka and over Szarka in
view of Buell. Ans. 5-6. The Examiner finds that Szarka discloses a valve
(376) adjacent the nozzle (374) deployed downhole in the wellbore. Ans. 5
and 6; see e.g., Fig. 8. The Examiner also finds that duplication of valves

2 The Examiner rejected claims 1-4, 6-17, and 19-26 as unpatentable over
both Buell in view of Szarka (Ans. 5-6) and over Szarka in view of Buell
(Ans. 6-7). The Appellants treated the second rejection (i.e., Szarka in view
of Buell) as synonymous with the first (i.e., Buell in view of Szarka). App.
Br. 17. Therefore, we address the two rejections together.
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for redundancy would not render the modified device inoperable and
additionally, substituting the above ground casing valve of Buell for the
downhole sleeve valve for Szarka is a simple substitution of known
elements. Ans. 8-9; see also Ans. 5 and 6.
The Appellants argue that combining Szarka with Buell would
interfere with the intended goal in Buell, namely maximizing the energy of
the jet produced by the washing tool in Buell. App. Br. 10-11; Reply
Br. 4-5. Specifically, the Appellants argue that Buell utilizes “high velocity
jets” to clean plugged openings downhole. App. Br. 10-11 (citing Buell,
col. 6, ll. 56-61). Buell desires to achieve pressures exceeding 5,000 psi to
permit maximum energy release. App. Br. 11 (citing Buell, col. 6, l. 67 –
col. 7, l. 1). The Appellants point out that using a downhole valve in Buell,
such as that disclosed by Szarka, would likely interfere with the goal of
maximizing the energy of the jet produced in Buell and that the Examiner is
engaging in impressible hindsight reconstruction of the claimed invention.
Id. The Examiner was not convinced that substituting the downhole slide
valve of Szarka for the above ground casing value of Buell would decrease
the energy from the nozzle at least in the case where both valves were fully
open. Ans. 9. The Appellants argue that placing additional valve
mechanisms would prevent maximizing energy of the jet and that
substituting the above ground nozzle with a downhole nozzle would likely
reduce the amount of energy released by the jet. Reply Br. 5. The
Appellants have failed to convincingly argue that the Examiner’s finding
that the substitution of the valves would not interfere with the function of
Buell was in error because the Examiner finds a sliding sleeve 376 of Szarka
adjacent to its nozzles 374 controls fluid through the nozzles 374. See
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Ans. 5. The Appellants’ argument does not explain how the sleeve 376 upon
on downward movement to allow flow through the nozzles 374 would
reduce the amount of energy released by the nozzles 374. See Szarka,
col. 12, l. 68 to col. 13, l. 3). Moreover, attorney argument cannot take the
place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997). As for the Appellants’ hindsight argument, we are unpersuaded
as the record indicates that Szarka supports the Examiner’s findings and
rationale. See Ans. 5 (citing Szarka, col. 13, ll. 1-3). Thus, the rejection of
claims 1-4, 7-9, 11-17, and 19-24 as unpatentable over Buell and Szarka is
sustained.
With respect to claim 6, the Appellants argue that Buell in
combination with Szarka fail to disclose wherein “the module has additional
valves associated with additional nozzles.” App. Br. 12. Specifically, the
Appellants argue that while Szarka discloses multiple nozzles all of them are
associated with just one valve. Id. (citing Szarka, col. 12, ll. 65-68 and Fig.
21). The Examiner agrees with the Appellants’ reading of Szarka, but states
that the broadest reasonable interpretation of “additional valves associated
with the additional nozzles” encompasses multiple openings with a single
sliding valve. Ans. 9. We disagree that in the context of the Specification
the broadest reasonable interpretation of “valves associated with nozzles”
would encompass a single valve. Emphasis added. The Examiner points to
nothing in the Specification to support that “valves” is defined to include a
single valve. Thus, the rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Buell and Szarka is not sustained.
With respect to claims 10, 25, and 26, the Appellants argue that the
combination of Buell and Szarka does not disclose “a production valve to
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produce fluids from a reservoir surrounding the wellbore.” App. Br. 13 and
16. The Appellants specifically note that the valve in Buell and the valve in
Szarka are both designed to cause fluid to be injected down into the well-
bore. Reply Br. 6. The Examiner does not disagree with the Appellants’
reading of the references, but because the term “production valve” has not
been defined in the claim, the Examiner finds that the broadest reasonable
interpretation of “production valve” would be a valve that can be used to
allow fluid from the wellbore to be produced uphole to the surface.
Ans. 9-10. The Examiner finds “the valve identified in Buell . . . can allow
fluid from the wellbore (shown as arrows in Figure 1A) to be routed
uphole.” Ans. 8. Apparently, the Examiner interprets the upward arrow in
Fig. 1A of Buell as indicating that the jet washing tool is creating a upward
flow and hence is acting as a production valve. We agree with the
Appellants that the Examiner is misreading Buell. Reply Br. 2. Figure 1A
depicts slots (indicated by the dashed lines) which pass through the liner
(20) and the cement sheath (14) of the well and allow fluids from formation
(19) to flow up the well for production. Buell, col. 6, ll. 38-43. These slots
get clogged and need to be cleaned giving rise to the problem that Buell’s jet
washing tool is attempting to solve. Id., col. 6, ll. 44-55. Thus, the upward
arrow in Figure 1A is not related to any valve in the jet washing tool. We
agree with the Appellants that in contrast to a production valve, the valve of
Buell and Szarka constitutes an injection valve that injects fluid into the
reservoir. Reply Br. 4. The Examiner has not provided any evidence that
the injection valve of Buell and Szarka can also be a production valve.
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Therefore, for the foregoing reasons, the rejection of claims 10, 25, and 26
under 35 U.S.C. § 103(a) as unpatentable over Buell and Szarka is not
sustained.
With respect to claims 11-16 and 24, the Appellants argue that the
combination of Buell and Szarka does not disclose “selecting a size of an
opening of the nozzle based on the determined distance.” App. Br. 14-15.
The Examiner finds that Buell discloses that the length of the fluid jet is
directly dependent upon the diameter of the nozzle, and specifically that a jet
will extend 5-100 times the diameter of the nozzle depending upon the fluid
being ejected. Ans. 10 (citing Buell, col. 7, ll. 34-36). Thus, the Examiner
finds that while Buell does not explicitly recite first determining the distance
from the nozzle to the downhole structure (i.e., the length of the desired fluid
jet) and then the diameter of the nozzle, the Examiner finds the
determination of the jet length and nozzle diameter can be done
simultaneously or interchangeably. Ans. 10. Buell discusses a relationship
between the diameter of the nozzle, the number of nozzles, the fluid being
injected, the pressure used, and the jet length and provides various specific
combinations of the same. See e.g., Buell, col. 5, ll. 6-17; col. 5, ll. 43-52;
col. 6, l. 67 – col. 7, l. 26; and Tables 1-3. Thus, because Buell discloses
that the jet length depends on the nozzle diameter, and the jets of Buell are
used to clean openings located at a distance from the nozzle, we agree with
the Examiner that Buell utilizes a “determined distance,” as called for by
claim 11, as one factor to determine the nozzle diameter needed to clean the
openings in the wellbore casing of Buell and Szarka. Therefore, the
rejection of claims 11-16 and 24 as unpatentable over Buell and Szarka is
sustained.
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DECISION
We REVERSE the rejection of claims 1-4, 6-8, and 10 under 35
U.S.C. § 102(b) as anticipated by Buell.
We AFFIRM the rejections of claims 1-4, 7-9, 11-17, and 19-24 and
REVERSE the rejections of claims 6, 10, 25, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Buell and Szarka.3
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)(1)(iv).

AFFIRMED-IN-PART

JRG

3 Unlike the examiner, we do not consider the order in which prior art is
applied in a rejection to be significant. See e.g., In re Bush, 296 F.2d 491,
496 (CCPA 1961).