WATSON, Brock W. et al.

Patent Trials and Appeals Board

Jan 23, 2020

15432041 - (D) (P.T.A.B. Jan. 23, 2020)

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.
15/432,041 02/14/2017 Brock W. WATSON TTS-16-16C1US 2149
20558 7590 01/23/2020
SMITH IP SERVICES, P.C.
P.O. Box 997
Rockwall, TX 75087
EXAMINER
GAY, JENNIFER HAWKINS
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
01/23/2020 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):
mail@smithipservices.com
sally@smithipservices.com
scrawford@smithipservices.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BROCK W. WATSON, ANDREW M. FERGUSON,
ROGER L. SCHULTZ, GARY P. FUNKHOUSER, and
JENNA N. ROBERTSON
Appeal 2019-004601
Application 15/432,041
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Thru
Tubing Solutions, Inc. Appeal Br. 3.
Appeal 2019-004601
Application 15/432,041

2
According to Appellant, the “disclosure relates generally to equipment
utilized and operations performed in conjunction with a subterranean well[,]
and . . . more particularly provides for plugging devices and their
deployment in wells.” Spec. 1, ll. 20–23. Claims 1, 11, and 21 are the
independent claims on appeal. Below, we reproduce claim 1 as illustrative
of the appealed claims:
1. A system for use with a subterranean well, the
system comprising:
a perforating assembly including at least one perforator,
the perforating assembly conveyed through a wellbore with
fluid flow through the wellbore into an earth formation; and
plugging devices spaced apart from the perforating
assembly in the wellbore, the plugging devices conveyed
through the wellbore with the fluid flow.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:2,3
I. Claims 21, 23, 29, and 30 under 35 U.S.C. § 102(a)(1) as
anticipated by Trummer et al. (US 2010/0122813 A1, pub.
May 20, 2010) (“Trummer”);
II. Claims 21, 23, 29, and 30 under 35 U.S.C. § 103 as
unpatentable over Trummer and Perf Sealers, The History of
Perforation Ball Sealers in the Oil and Gas Industry, (2014-

2 We reorder the rejections relative to the order the Examiner sets forth in
the Final Office Action.
3 Based on Appellant’s filing of a Terminal Disclaimer on November 13,
2018, the Examiner withdraws a double-patenting rejection of claims 1–6,
11, and 14–16. Answer 31–32.
Appeal 2019-004601
Application 15/432,041

3
2019), https://www.perfsealers.com/history-of-performation-
ball-sealers/ (“History of Perforation Ball Sealers”);
III. Claim 22 under 35 U.S.C. § 103 as unpatentable over Trummer
and Dotson et al. (US 2015/0075793 A1, pub. Mar. 19, 2015)
(“Dotson”);
IV. Claim 22 under 35 U.S.C. § 103 as unpatentable over Trummer,
Dotson, and History of Perforation Ball Sealers;
V. Claims 24 and 26 under 35 U.S.C. § 103 as unpatentable over
Trummer and Davies (US 3,437,147, iss. Apr. 8, 1969);
VI. Claims 24 and 26 under 35 U.S.C. § 103 as unpatentable over
Trummer, Davies, and History of Perforation Ball Sealers;
VII. Claim 25 under 35 U.S.C. § 103 as unpatentable over Trummer,
Davies, Lafferty et al. (US 2012/0285695 A1, pub. Nov. 15,
2012) (“Lafferty”), and Ghassemzadeh (US 2010/0152070 A1,
pub. June 17, 2010);
VIII. Claim 25 under 35 U.S.C. § 103 as unpatentable over Trummer,
Davies, Lafferty, Ghassemzadeh, and History of Perforation
Ball Sealers;
IX. Claims 27 and 28 under 35 U.S.C. § 103 as unpatentable over
Trummer and Lafferty;
X. Claims 27 and 28 under 35 U.S.C. § 103 as unpatentable over
Trummer, Lafferty, and History of Perforation Ball Sealers;
XI. Claims 1–3, 9–13, 19, and 20 under 35 U.S.C. § 103 as
unpatentable over Trummer and Dotson;
XII. Claims 4, 6, 14, and 16 under 35 U.S.C. § 103 as unpatentable
over Trummer, Dotson, and Davies;
Appeal 2019-004601
Application 15/432,041

4
XIII. Claims 5 and 15 under 35 U.S.C. § 103 as unpatentable over
Trummer, Dotson, Lafferty, and Ghassemzadeh;
XIV. Claims 7, 8, 17, and 18 under 35 U.S.C. § 103 as unpatentable
over Trummer, Dotson, and Lafferty; and
ANALYSIS
Rejection I—Anticipation rejection of independent claim 21, and
dependent claims 23, 29, and 30
Independent claim 21, and its dependent claims 23 and 29
For the reasons discussed in detail below, Appellant does not persuade
us that the Examiner’s anticipation rejection of claims 21, 23, and 29 is in
error. Thus, we sustain the rejection.
Independent claim 21 recites the following:
21. A method of deploying plugging devices in a
wellbore, the method comprising:
conveying the plugging devices through the wellbore
with fluid flow through the wellbore; and
conveying a perforating assembly through the wellbore
while the plugging devices are being conveyed through the
wellbore outside of the perforating assembly.
Appeal Br., Claims App. Appellant argues that the Examiner errs in
rejecting the claims as anticipated by Trummer, because Trummer does not
disclose conveying a perforating assembly through a wellbore while
conveying plugging devices through the wellbore outside of the perforating
assembly. See, e.g., Reply Br. 13–15. Based on our review of the record,
we disagree with Appellant.
We note Appellant’s citation of Trummer’s paragraph 43. Id. at 13–
14. Nonetheless, the Examiner’s reliance on Trummer’s Figure 2 adequately
supports a finding that Trummer discloses conveying (or having conveyed)
Appeal 2019-004601
Application 15/432,041

5
perforating gun assembly 50 (on which the Examiner relies to disclose the
claimed “perforating assembly”) through wellbore 20, while ball sealers 24
(on which the Examiner relies to disclose the claimed “plugging devices”)
are outside of assembly 50 and being conveyed through the wellbore.
Answer 9–11. Specifically, the Examiner states that
[a]s can been seen in . . . [Trummer’s] Figure 2, . . .
perforating gun 34A, which is used to create perforations 22 in
zone 14A, [(see Trummer ¶ 32)], has created . . .
perforations 22 in zone 14A[,] and has also been moved away
from zone 14A but is not yet adjacent the next zone[,
zone] 14B. In order for the perforating gun assembly to have
moved away from its position adjacent zone 14A it must have
been conveyed in an upward direction. As can also be seen in
Figure 2, ball sealers 24 are located in the wellbore but have as
of yet [not] sealed the perforations. Thus, the ball sealers are
still being conveyed, pumped into the wellbore [(see id. ¶ 33)],
while the perforating gun assembly is being moved or conveyed
in the wellbore.
Answer 10–11 (bold omitted).
Dependent claim 30
For the following reasons, we sustain the Examiner’s anticipation
rejection of dependent claim 30.
Claim 30 recites the following:
30. The method of claim 21, further comprising
cutting the plugging devices, after the plugging devices have
sealingly engaged openings.
Appeal. Br., Claims App. The Examiner’s reliance on Trummer’s
paragraph 22 adequately supports the rejection (Answer 13), and Appellant
does not persuade us that the Examiner errs (Reply Br. 15). Specifically,
Trummer’s paragraph 22 discloses, in relevant part, that the plugging
devices “may implode or explode” (Trummer ¶ 22), and the Examiner
Appeal 2019-004601
Application 15/432,041

6
determines that implosion or explosion of the plugging devices discloses
cutting the plugging devices, as claimed (Answer 13). Appellant does not
address the Examiner’s findings, and, thus, does not persuade us of
Examiner error.

Rejection II—Obviousness rejection of independent claim 21, and
dependent claims 23, 29, and 30
As discussed above, we sustain the Examiner’s anticipation rejection
of claims 21, 23, 29, and 30 based on Trummer. In this case, Trummer
anticipates each of these claims, and therefore a combination of Trummer
and History of Ball Perforation Sealers discloses all of the claims’
recitations. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is
well settled that ‘anticipation is the epitome of obviousness.’”).

Rejections III and IV—Obviousness rejections of dependent claim 22
Appellant argues that we should reverse claim 22’s obviousness
rejections for the same reasons that we should reverse claim 21’s
anticipation and obviousness rejections. Reply Br. 13–15, 41. Inasmuch as
we sustain claim 21’s rejections, we also sustain claim 22’s rejections.

Rejections V and VI—Obviousness rejections of dependent claims 24
and 26
Appellant argues that we should reverse the obviousness rejections of
claims 24 and 26 for the same reasons that we should reverse claim 21’s
anticipation and obviousness rejections. Reply Br. 32, 42. Inasmuch as we
sustain claim 21’s rejections, we also sustain the rejections of these
dependent claims.
Appeal 2019-004601
Application 15/432,041

7
Rejections VII and VIII—Obviousness rejections of dependent
claim 25
Appellant argues that we should reverse claim 25’s obviousness
rejections for the same reasons that we should reverse claim 21’s
anticipation and obviousness rejections. Reply Br. 33, 43. Inasmuch as we
sustain claim 21’s rejections, we also sustain claim 25’s obviousness
rejections.

Rejections IX and X—Obviousness rejections of dependent claims 27
and 28
Appellant argues that we should reverse the obviousness rejections of
claims 27 and 28 for the same reasons that we should reverse claim 21’s
anticipation and obviousness rejections. Reply Br. 34, 44. Inasmuch as we
sustain claim 21’s rejections, we also sustain the rejections of dependent
claims 27 and 28.

Rejections XI—Obviousness rejection of independent claims 1 and 11,
and dependent claims 2, 3, 9, 10, 12, 13, 19, and 20
Independent claim 1, and its dependent claims 2, 3, 9, and 10
As set forth above, independent claim 1 recites, in relevant part, “a
perforating assembly including at least one perforator, the perforating
assembly conveyed through a wellbore with fluid flow through the wellbore
into an earth formation.” Appeal Br., Claims App. (emphases added).
Based on our review, the Examiner does not support adequately that it would
have been obvious to combine Trummer and Dotson to provide a perforating
assembly that is conveyed as claimed.
Appeal 2019-004601
Application 15/432,041

8
The Examiner does not rely on Trummer to disclose conveying a
perforator assembly through a wellbore with fluid flow through the wellbore
into an earth formation. Instead, the Examiner relies on Dotson to disclose
conveying a perforator assembly as claimed, and determines that it would
have been obvious to so-convey Trummer’s perforator assembly. See, e.g.,
Answer 13–21.
We agree with Appellant, however, that each of the portions of
Dotson on which the Examiner relies discloses conveying perforating
tool 10 with fluid flow only into production string 15—no portion discloses
anything beyond flowing fluid through something other than production
string 15, and no portion discloses otherwise conveying perforating tool 10
with fluid flow. Reply Br. 16–22, n.b. at 16 (“Dotson does not disclose or
suggest pumping a perforating assembly through a wellbore with fluid flow
through the wellbore into an earth formation, as required by claim 1.
Dotson instead describes that . . . jet perforating tool 10 may be pumped
down . . . tubing string 15 until it comes to rest on . . . seat nipple 17 (see at
least paragraphs 0010, 0014 and 0041, and F[igure]1). The fluid can flow
down the bore of . . . tubing string 15 and back up the annulus between . . .
tubing string 15 and . . . casing 13.”).
Thus, in view of foregoing, the Examiner does not support adequately
that it would have been obvious to modify Trummer, based on Dotson, to
convey a perforating assembly through a wellbore with fluid flow through
the wellbore into an earth formation, as claimed. Accordingly, we do not
sustain the Examiner’s obviousness rejection of independent claim 1, and of
claims 2, 3, 9, and 10 that depend from claim 1.

Appeal 2019-004601
Application 15/432,041

9
Independent claim 11, and its dependent claims 12, 13, 19,
and 20
Independent claim 11 includes a recitation similar to that discussed
above for claim 1. See Appeal Br., Claims App. (Claim 11) (“conveying a
perforating assembly including a dispensing tool through the wellbore with
fluid flow through the wellbore into an earth formation.”). Therefore, for
reasons similar to those discussed above with respect to claim 1, we also do
not sustain the Examiner’s obviousness rejection of independent claim 11,
and its dependent claims 12, 13, 19, and 20.

Rejections XI–XIV—Obviousness rejections of dependent claims 4–8
and 14–18
Each of claims 4–8 and 14–18 depends from one of independent
claims 1 and 11. Because we do not sustain the independent claims’
obviousness rejection, and the Examiner does not rely on any of Davies,
Lafferty, and Ghassemzadeh to disclose anything that would remedy the
above-discussed deficiency in the independent claims’ rejection, we also do
not sustain any of the Examiner’s obviousness rejections of claims 4–8
and 14–18.
CONCLUSION
We AFFIRM the Examiner’s anticipation and obviousness rejections
of claims 21–30.
We REVERSE the Examiner’s obviousness rejections of claims 1–20.
In summary:
Appeal 2019-004601
Application 15/432,041

10
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
21, 23,
29, 30
102(a)(1) Trummer 21, 23,
29, 30

21, 23,
29, 30
103 Trummer, History of
Perforation Ball Sealers
21, 23,
29, 30

22 103 Trummer, Dotson 22
22 103 Trummer, History of
Perforation Ball Sealers,
Dotson
22
24, 26 103 Trummer, Davies 24, 26
24, 26 103 Trummer, History of
Perforation Ball Sealers,
Davies
24, 26
25 103 Trummer, Davies,
Lafferty, Ghassemzadeh
25
25 103 Trummer, History of
Perforation Ball Sealers,
Davies, Lafferty,
Ghassemzadeh
25
27, 28 103 Trummer, Lafferty 27, 28
27, 28 103 Trummer, History of
Perforation Ball Sealers,
Lafferty
27, 28
1–3, 9–
13, 19, 20
103 Trummer, Dotson 1–3, 9–
13, 19, 20
4, 6, 14,
16
103 Trummer, Dotson, Davies 4, 6, 14,
16
5, 15 103 Trummer, Dotson,
Lafferty, Ghassemzadeh
5, 15
7, 8, 17,
18
103 Trummer, Dotson,
Lafferty
7, 8, 17,
18
Overall
Outcome:
21–30 1–20

Appeal 2019-004601
Application 15/432,041

11
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