Weatherford Technology Holdings, LLC

Patent Trials and Appeals Board

May 3, 2021

2020005956 (P.T.A.B. May. 3, 2021)

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.
15/273,048 09/22/2016 Rocky A. TURLEY WEAT/1308US 5481
36735 7590 05/03/2021
PATTERSON & SHERIDAN, L.L.P. / Weatherford
24 Greenway Plaza, Suite 1600
HOUSTON, TX 77046
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
PSDocketing@pattersonsheridan.com
Pair_eOfficeAction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROCKY A. TURLEY

Appeal 2020-005956
Application 15/273,048
Technology Center 3600
Before EDWARD A. BROWN, CARL M. DEFRANCO, and
BRANDON J. WARNER, Administrative Patent Judges.

DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision in the Final Office Action rejecting claims 1–3 and 5–
22. Claim 4 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm in part.
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to a seal between downhole
tubulars within a wellbore. Spec. ¶ 1. Of the pending claims, four are

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Weatherford
Technology Holdings, LLC. Appeal Br. 3.
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independent—claims 1, 11, 15, and 22. We select claims 1 and 15 as
illustrative of the claimed subject matter:
1. A downhole seal, comprising:
a cylindrical body comprising an elastomer;
a plurality of exterior sealing elements disposed on an
exterior surface of the body;
a plurality of interior sealing elements disposed on an
interior surface of the body, wherein the exterior sealing
elements are offset from the interior sealing elements along the
body; and
the body having an annular y-shaped end.
15. A downhole seal, comprising:
a cylindrical body comprising an elastomer;
a plurality of exterior sealing elements disposed at an
angle on an exterior surface of the body; and
a plurality of interior sealing elements disposed at an
angle on an interior surface of the body, wherein the exterior
sealing elements are aligned with the interior sealing elements
and angled in the same direction.
Appeal Br. 13, 15 (Claims App.) (emphases added).
EXAMINER’S REJECTIONS
1. Claims 1–3, 5–10, and 15–18 stand rejected under 35 U.S.C. § 103
as unpatentable over Benzie (US 2012/0193088 A1, pub. Aug. 2, 2012) and
Zheng (US 6,869,079 B2, iss. Mar. 22, 2005).2 Final Act. 2–6.
2. Claims 11–14 and 19–22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Benzie, Zheng, and Sundararajan (US 6,966,537 B2, iss.
Nov. 22, 2005). Final Act. 6–9.

2 Although the Examiner omits reference to claims 3, 5, and 6 in the heading
for this rejection (see Final Act. 2), the Examiner nonetheless addresses
these claims in the body of the rejection (see id. at 4).
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ANALYSIS
A. Obviousness (Claims 1–3, 5–10, and 15–18)
Appellant argues independent claims 1 and 15 separately. See Appeal
Br. 9. The notable difference between the two claims is that claim 1 recites
that the exterior and interior sealing elements “are offset” from each other,
while claim 15 recites that they “are aligned” with each other. We first
address claim 1 (and its dependent claims) before turning to claim 15 (and
its dependent claims).
1. Claims 1–3 and 5–10
With respect to claim 1, the Examiner finds that Benzie discloses a
downhole seal substantially as claimed, except for the body having a
“y-shaped end” and being made of an “elastomer.” Final Act. 3. The
Examiner points to Zheng for teaching that a downhole seal may be
provided with y-shaped end, and from that teaching, reasons that a skilled
artisan would have been led to modify the ends of Benzie’s seal to include a
y-shaped profile, as taught by Zheng, in order that the seal may easily
engage with the corresponding end of an adjacent seal. Id. The Examiner
further finds that, although Benzie and Zheng may not “explicitly disclose”
seals made of elastomer, they nonetheless disclose that “exemplary seals are
often made of nonmetallic, elastomeric materials” and that a skilled artisan
would have known to select elastomer material as an obvious design choice
given that both Benzie and Zheng operate as mechanically expandable
sealing elements. Id. at 3, 9.
Appellant makes three arguments in response. See Appeal Br. 7–9.
First, Appellant argues that a skilled artisan would not have undertaken to
combine Benzie and Zheng because they perform different functions. Id. at
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7–8; Reply Br. 2–3. According to Appellant, the function of Benzie’s “box
and pin” ends is “to connect adjacent tubulars,” whereas the function of
Zheng’s y-shaped ends is “to prevent fluid leakage.” Appeal Br. 7–8. As
such, Appellant surmises the y-shaped profile of Zheng’s seal is not a
suitable alternative to the box and pin connection of Benzie. Id. at 8; Reply
Br. 3.
We disagree. Zheng teaches that y-shaped ends are commonly known
in the oil and gas industry as a means for mating together stackable seals in
an overlapping fashion. See Zheng, 1:12–32, 3:43–58, Figs. 1, 3. Benzie’s
so-called box and pin configuration serves that same function by connecting
together the ends of its tubular seal in an overlapping fashion to prevent fluid
leakage. Benzie ¶¶ 4, 6, Figs. 1, 3, 6. That similar function of overlapping
the seals to make them fluid tight provides ample support for the Examiner’s
finding that a skilled artisan would have considered Zheng’s y-shaped
profile for the ends of its seals to be a suitable substitute for the box and pin
configuration of Benzie’s tubular seal.
Next, Appellant argues that Benzie “does not teach or suggest a seal
having a cylindrical body comprising an elastomer.” Appeal Br. 7. That
Benzie may not expressly disclose its tubular seal as being made of
elastomeric material does not mean that a skilled artisan would not recognize
it as an obvious choice. For instance, Benzie repeatedly describes its seal in
terms of being an “expandable compliant” seal. Benzie, Abstract, ¶¶ 7, 8,
13, 26, 29, 33, 34. And Benzie discloses that the seal may be formed of
“any suitable material,” including, “[w]ithout limitation . . . suitable
malleable metals.” Id. ¶ 36. Most notably, however, Benzie discloses that
“one or more advantages may be achieved through incorporation of elastic
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elements,” such as “O-ring type elements,” which suggests that at least some
portion of the seal may be elastomeric. Id. ¶ 33, Fig. 5 (depicting elastic
element 52). Nowhere does Benzie preclude the elastomeric element from
being integral with the seal. Indeed, Benzie discloses that incorporation of
elastic elements “may provide additional sealing capability.” Id. Moreover,
aside from Benzie, Zheng teaches that, “[i]n many industries, such as the oil
and gas industry, . . . seals are often made of nonmetallic, elastomeric
materials,” and goes on to list several examples of stackable, downhole seals
made with an elastomeric material. Zheng, 1:15–32. Those disclosures, in
our view, provide clear evidentiary support for the Examiner’s finding that it
would have been “within the general skill of a worker in the art to select a
known material,” such as “an elastomer material,” for the downhole seal of
Benzie. See Final Act. 3, 9; see also Ans. 4.
Finally, Appellant argues that combining Zheng’s y-shaped end into
Benzie’s tubular seal “would also render Benzie inoperable for its intended
purpose.” Appeal Br. 8; see also Reply Br. 3–4 (expanding on same
argument). According to Appellant, if the ends of Benzie’s tubular seal
were modified to include Zheng’s y-shaped ends, then Zheng’s retaining
element 132 also must be included in order to force the y-shaped ends into
contact with a corresponding seal. Appeal Br. 8. But the inclusion of
Zheng’s retaining element, Appellant contends, would prevent the
longitudinal elongation of Benzie’s seal. Id.
We do not find Appellant’s reasoning persuasive. The Examiner
relies on Zheng simply for the fact that y-shaped ends are particularly suited
for mating together tubular seals in downhole applications. See Final Act. 3,
10; Ans. 5. No other aspect of Zheng is needed because Benzie already
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discloses an “expansion mandrel,” which applies radial pressure to force
elongation of the seal into contact with an adjacent seal within the downhole
casing. Benzie ¶¶ 28–29, 34–35, Figs. 2A–2C, 7A–7C. There being no
need for Zheng’s retaining element in Benzie’s system, we reject the notion
that merely incorporating y-shaped ends into the tubular seal of Benzie’s
seal would somehow detract from Benzie’s intended purpose of elongating
the seal within the downhole casing.
In sum, because the Examiner provides sufficient reasoning with
rational underpinning for why a skilled artisan would choose to make
Benzie’s tubular seal of an elastomer material and to incorporate y-shaped
ends in Benzie’s tubular seal and to make the seal of an elastomer material,
we sustain the rejection of claim 1 as obvious over the combined teachings
of Benzie and Zheng. And because Appellant does not argue claims 2, 3,
and 5–10 separately from claim 1, we likewise sustain the Examiner’s
rejection of those claims. See Appeal Br. 7–9; Reply Br. 2–4.
2. Claims 15–18
Independent claim 15 recites that the exterior and interior sealing
elements “are aligned” with each other, as opposed to being “offset” from
each other as recited in the other independent claims. The Examiner
acknowledges that neither Benzie nor Zheng discloses this feature, but
asserts that “it would have been obvious to one of ordinary skill in the art at
the time the invention was made to rearrange the sealing element in
alignment since it has been that rearranging parts of an invention involves
only routine skill in the art.” Final Act. 5. According to the Examiner,
“[n]othing in the disclosure of the Benzie reference attributes the function of
the offset alignment to allowing bending moments.” Ans. 7.
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We disagree. More persuasive is Appellant’s position that aligning
Benzie’s exterior and interior sealing elements, as proposed by the
Examiner, would be detrimental to the “bending moments” necessary to
achieve expansion of Benzie’s tubular seal upon application of a radial
force. See Appeal Br. 9–10; Reply Br. 4–5. In other words, if Benzie’s
internal and external protrusions were aligned with each other, the radial
force applied to the internal protrusions would be directly opposed by the
external protrusions and preclude the radial force from acting to compress
and flatten the groove span of the seal. Indeed, Benzie emphasizes
throughout its disclosure that not until radial pressure is applied to the
protrusions do the groove spans exhibit any sort of plastic bending and
flattening. See, e.g., Benzie ¶¶ 29–30, 34, Figs. 2A–2C, 4A–4C, 7A–7C.
And nowhere does Benzie disclose or suggest any other means for achieving
the bending moments necessary for expansion of the tubular seal. The
Examiner’s assertion to the contrary—that Benzie’s bending moments “are
not a result of the offset alignment”—is speculative and unsupported by the
evidence. Final Act. 11; Ans. 7.
In sum, because the offset configuration of Benzie’s protrusions is
critical to expansion and flattening of the tubular seal, we are persuaded of
error in the Examiner’s finding that a skilled artisan would have been led to
rearrange Benzie’s protrusions into an aligned configuration. Thus, we do
not sustain the Examiner’s obviousness rejection of independent claim 15
and the claims depending therefrom, i.e., claims 16–18.
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B. Obviousness over Benzie, Zheng, and Sundarajan
1. Claims 11–14, 21, and 22
The Examiner rejects claims 11–14, 21, and 22 as unpatentable over
the combined teachings of Benzie, Zheng, and Sundarajan. Final Act. 6–9.
In contesting the rejection of the claims, Appellant advances the same
unpersuasive arguments discussed above with respect to claim 1. See
Appeal Br. 10–11. For instance, Appellant argues that a skilled artisan
would not combine Benzie and Zheng because they function differently. Id.
at 11. For the same reasons that Appellant’s arguments are not persuasive
for claim 1, they likewise are not persuasive for claims 11–14, 21, and 22.
Equally unpersuasive is Appellant’s assertion that “Zheng does not
teach or suggest the annular y-shaped ends face each other.” Id. That is
because, outside of a general allegation, Appellant fails to meaningfully
address the Examiner’s finding that Zheng teaches opposing y-shaped ends,
nor otherwise refutes the Examiner’s reasoning that modifying Benzie’s
tubular seals to incorporate Zheng’s teaching is nothing more than an
obvious rearrangement of parts involving only routine skill. See Final Act.
4, 7. Without more, Appellant does not persuade us of error in the
Examiner’s rejection of claims 11–14, 21, and 22 as unpatentable over
Benzie, Zheng, and Sundarajan.
2. Claims 19 and 20
Claims 19 and 20 ultimately depend from claim 15. The rejection of
these claims relies on the Examiner’s erroneous finding that it would have
been obvious to rearrange Benzie’s protrusions to be “aligned” with one
another. Accordingly, we do not sustain the rejection of claims 19 and 20 as
unpatentable over Benzie, Zheng, and Sundararajan.
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CONCLUSION
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–3, 5–10,
15–18
103 Benzie, Zheng 1–3, 5–10 15–18
11–14,
19–22
103 Benzie, Zheng,
Sundararajan
11–14, 21,
22
19, 20
Overall
Outcome
1–3, 5–14,
21, 22
15–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART