WELL ENGINEERING TECHNOLOGY FZCO

Patent Trials and Appeals Board

Jan 26, 2022

2021003730 (P.T.A.B. Jan. 26, 2022)

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. 15/116,585 08/04/2016 Anthony LaPlante 50055/28 2369 32642 7590 01/26/2022 STOEL RIVES LLP - SLC 201 SOUTH MAIN STREET, SUITE 1100 ONE UTAH CENTER SALT LAKE CITY, UT 84111 EXAMINER PATEL, NEEL G ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 01/26/2022 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): patlaw@stoel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ANTHONY LAPLANTE and STEVEN DUTHIE NICOL __________ Appeal 2021-003730 Application 15/116,585 Technology Center 3600 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, 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 1-32. Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we find error in the Examiner’s rejections. Accordingly, we REVERSE the Examiner’s rejections. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “Well Engineering Technology FZCO” as the real party in interest. Appeal Br. 1. Appeal 2021-003730 Application 15/116,585 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a milling apparatus having a use in milling a window in downhole tubing located in a borehole of a well.” Spec. 1:4-5. Apparatus claim 1 is the sole independent claim. Claim 1 is representative of the claims on appeal and is reproduced below. 1. A milling apparatus comprising: a main body comprising an internal bore defining a flow path through the body; a mill head having at least one flow port; an internal chamber which can contain a fluid, the internal bore of the main body defining at least part of the chamber; a first seal assembly disposed within the internal bore; a second seal assembly disposed within the internal bore; and a communication port extending through a wall of the milling apparatus between the internal chamber and an exterior of the milling apparatus, the communication port located at a position which is, in use, uphole of the second seal assembly; in which the first and second seal assemblies are initially sealed relative to the main body, so that fluid communication along the internal bore past the first and second seal assemblies is prevented and fluid contained in the chamber isolated from fluid external to the chamber; in which at least part of the first seal assembly is translatable within the internal bore in a direction towards the second seal assembly, to transmit fluid contained in the chamber through the communication port to a fluid operated device associated with the milling apparatus, to operate the device; and in which the second seal assembly is a piston assembly comprising a piston which is translatable within the internal bore from a closed position in which the piston is in sealing contact with the main body and blocks the internal bore so that fluid is prevented from flowing along the internal bore past the piston and said flow port is out of communication with the chamber, to an open position in which the piston is out of sealing contact with the main body so that fluid can flow along the internal bore around an Appeal 2021-003730 Application 15/116,585 3 external surface of the piston and so out of the apparatus through said flow port. REFERENCES Name Reference Date McGarian et al. (“McGarian”) US 6,050,334 Apr. 18, 2000 Kennedy et al. (“Kennedy”) US 2003/0098152 A1 May 29, 2003 THE REJECTIONS ON APPEAL Claims 1-5, 9, and 13-32 are rejected under 35 U.S.C. § 103 as unpatentable over McGarian. Final Act. 4-16. Claims 6-8 and 10-12 are rejected under 35 U.S.C. § 103 as unpatentable over McGarian and Kennedy. Final Act. 16-20. ANALYSIS The rejection of claims 1-5, 9, and 13-32 as obvious over McGarian Independent claim 1 recites “the communication port located at a position which is, in use, uphole of the second seal assembly.” Appeal Br. 35 (Claims App.) (italics added). The Examiner concedes that McGarian does not disclose this “uphole” limitation but takes the position that it would have been obvious for a skilled artisan to modify (i.e., “rearranging parts of”) the milling apparatus of McGarian to have this missing limitation. Final Act. 7. The Examiner further annotates McGarian’s Figure 5 to show “possible areas in which the communication port can be relocated within McGarian.” Ans. 7. As indicated above, the Examiner reasons that such modification is merely a rearrangement Appeal 2021-003730 Application 15/116,585 4 of parts that involves only routine skill and does not alter the operation of McGarian’s apparatus. Final Act. 7 (referencing In re Japikse, 181 F.2d 1019 (CCPA 1950)). Appellant contends that the proposed modification “would create issues with the functionalities of McGarian’s setting tool 4/milling tool 5.” Appeal Br. 23. Appellant argues, Further, a person of ordinary skill in the art would recognize that the change proposed by the Final Office Action would create an undesirable flow path that would further degrade the combined operation of McGarian’s setting tool 4/main mill 5. In particular, upon consulting FIG. 5 of McGarian, it can be seen that movement of the piston 17 to strike the flow diverter 26 and drive it to the FIG. 5 position results in a condition where the piston 17 has moved to create a clear axial gap between an upper end of the piston 17 and the cylinder 16. This axial gap is required to enable fluid to flow around the piston 17 (indicated by the arrows “A” in McGarian FIG. 5), through ports 28 and into the chamber 20 in the flow diverter 26. Positioning the nipple 22 and the hose 21 (see McGarian FIGS. 4 and 5) upstream of the flow diverter 26 would have the result of at least a portion of the fluid contained in the cylinder 16 behind (i.e., uphole of) the piston 17 flowing around the piston and out of such an upstream located nipple 22 instead of a flowing through the ports 28 of the piston 17. . . Indeed, the spacing between the upper end of the piston 17 and the cylinder 16 makes it clear that fluid could start to flow around the piston 17 to such an upstream nipple 22 even prior to the piston 17 fully driving the flow diverter 26 to the position of FIG. 5, which might negatively affect the driving of the flow diverter 26 by the piston 17. In either situation, incorrect driving and/or contact of the flow diverter 26 by the piston 17 could have the ultimate result of the setting tool 4 remaining in/returning to its closed position, with flow along the cylinder 16 ultimately bypassing the flow diverter 26 entirely and exiting the tool through the upstream nipple 22 instead of the Appeal 2021-003730 Application 15/116,585 5 circulation ports 25, as desired (see McGarian col. 5 ln. 65-col. 6 ln. 2). Appeal Br. 23-24 (italics added). Without elaboration, the Examiner responds that although the proposed modification “would trap fluid in parts of [filling tube] 20 [of McGarian’s milling apparatus], it would not destroy the reference or alter the mode of operation.” Ans. 7. Further, the Examiner appears to assert that the Specification does not disclose criticality in the location of Appellant’s communication port being uphole of the second seal assembly. See Ans. 7-8. Appellant counters that “the Examiner’s Answer does not expressly rebut the contrary reasoning found in [the] Appeal Brief.” Reply Br. 8. Appellant also states, “the Examiner’s Answer merely illustrates the locations where it proposes that asserted communication port may be moved, and baldly states that these adjustments would not ‘destroy the reference or alter the mode of operation.’” Reply Br. 8 (italics added). There is merit to Appellant’s argument. If the proposed modification were to render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. See In re Fritch, 972 F.2d 1260, 1266 n.12 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). We agree with Appellant that moving McGarian’s hose 21 (and nipple 22) from its position downstream blade 14 (see McGarian Fig. 4) to now overlap the entire length of blade 14 within the bore and connect through an upstream outside wall of McGarian’s main mill 5 (at any of the locations identified in the Examiner’s annotated Figure 5 of McGarian (see Ans. 7)) would imperil McGarian’s operation. This is because, unlike before, the relocated hose 21 is now subject to being prematurely ruptured by coextending blade 14 thereby causing piston Appeal 2021-003730 Application 15/116,585 6 17 to strike and relocate flow diverter 26 before such is desired. See McGarian 5:39-6:2. Furthermore, from a reading of McGarian, upon the rupture of hose 21, fluid freely flows through nipple 22. See McGarian 5:50-52 (“Rupture of the hose 21 allows the hydraulic fluid remaining in the chamber 19 to be dumped to the annulus.”). It can be seen that this now-open pathway, along with those of circulation ports 25, enable fluid to “cool and lubricate the blades 13, 14 and displace debris from the blades for circulation up the annulus to the well head.” McGarian 5:67-6:2, Fig. 5. A relocation of McGarian’s hose 21/nipple 22 to an upstream location as envisioned by the Examiner would have a detrimental impact because such relocated fluid flow would now be circulated “up the annulus to the well head” without first either cooling or cleaning the blades because this relocated flow now by-passes blades 13, 14. In other words, as expressed by Appellant above: Positioning the nipple 22 and the hose 21 (see McGarian FIGS. 4 and 5) upstream of the flow diverter 26 would have the result of at least a portion of the fluid contained in the cylinder 16 behind (i.e., uphole of) the piston 17 flowing around the piston and out of such an upstream located nipple 22 instead of a flowing through the ports 28 of the piston 17. Appeal Br. 24. The Examiner does not explain why the proposed modification of relocating hose 21 and nipple 22 “would not destroy the reference or alter the mode of operation” as discussed above. Ans. 7. Thus, we agree with Appellant that the proposed modification would hinder or impede the operation of McGarian’s milling apparatus (or render it useless) with no benefit gained. In other words, one-third of the flow channels normally used to clear and cool the cutting blades would no longer be in service because the flow channel would Appeal 2021-003730 Application 15/116,585 7 have been relocated upstream. Further, the Examiner’s modification would also now expose the hose to a premature (undesirable) rupture which did not exist before. We, thus, are of the opinion that the modification proposed by the Examiner would render McGarian’s device unsatisfactory for its intended purpose because it would now be operated in a third less efficient manner while also creating a chance of downhole failure should the hose be ruptured before planned. We note that even if the Examiner is correct that the Specification does not disclose criticality in the location of Appellant’s communication port being uphole of the second seal assembly, that does not resolve or render moot the problems such a relocation would occur should McGarian’s device be so modified. Hence, in light of the above discussions, we are not persuaded that a skilled artisan would have made the proposed modification as proffered by the Examiner in order to arrive at the claimed subject matter. Additionally, independent claim 1 recites “an open position in which the piston is out of sealing contact with the main body so that fluid can flow along the internal bore around an external surface of the piston and so out of the apparatus through said flow port.” Appeal Br. 36 (Claims App.) (italics added). Appellant argues that, as shown in Figure 5 of McGarian, “fluid clearly does not flow ‘around an external surface’ of the flow diverter 26” but rather, “fluid flows into the chamber 20 (via the ports 28) and then through the aligned ports 29 and 30 in, respectively, the flow diverter 26 and the sleeve 31, before flowing to the circulation ports 25.” Appeal Br. 21 (italics added). The Examiner explains that the claim language is broad in nature and the claim language in light of the specification does not specify whether the fluid flows directly or indirectly around the external surface of the piston 26. Appeal 2021-003730 Application 15/116,585 8 In the open position (figure 5 of McGarian), the fluid flows through the internal bore (i.e. at least [hydraulic chamber] 19, [filling tube] 20) and out the apparatus in the wellbore annulus (i.e. area between the subterranean formation and apparatus), which would establish for the fluid to flow radially around the external surface of the piston 26, without making direct contact thereof. Also, during the transitioning from figure 4 to figure 5 of McGarian, when the ports 29, 30 are partially open, fluid can flow radially outwardly therethrough making direct contact with the external surface of the piston 26 temporarily. Ans. 6 (italics added). Appellant responds that “the behavior of McGarian is not reasonably understood to be a flow ‘around an external surface of a piston’ as recited” but instead, “the flow clearly must pass through the flow diverter 26.” Reply Br. 3 (italics added). Appellant has the better position. “[T]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation” “divorced from the specification and the record evidence.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations and internal quotation marks omitted); see also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751-53 (Fed. Cir. 2016). The present matter revolves around the interpretation of fluid flowing “along the internal bore around an external surface of the piston,” as recited in claim 1. Appellant directs us to Figure 8 of Appellant’s Specification, which is reproduced below. Reply Br. 5. Appeal 2021-003730 Application 15/116,585 9 Appellant’s Specification states that Figure 8 above shows “the low piston 24 is in its open position” in which “a flow path is defined . . . between the wall of the main body and an outer surface of the lower piston 24. This is illustrated by the arrows ‘A.’” Spec. 21:3-7. In light of Figure 8, as depicted by arrows A, we construe claim 1’s recitation of fluid flowing “along the internal bore around an external surface of the piston” as fluid flowing along the internal bore and also flowing in contact with and around an external surface of piston 24. The Examiner’s annotated Figure 5 of McGarian is reproduced below. Appeal 2021-003730 Application 15/116,585 10 Annotated Figure 5 of McGarian above shows arrows added by the Examiner (lighter in color) to indicate fluid flow. Ans. 5. Here, McGarian’s arrows A along with those added by the Examiner clearly show fluid flow along the internal bore of McGarian’s main mill 5 and through the interior 20 of flow diverter 26 via entry ports 28 before exiting through either (now aligned) ports 29 and 30 or nipple 22 (after hose 21 has been ruptured). Hence fluid will flow either along the outside of mounting sleeve 31 to ports 25 or through nipple 22 into the wellbore. We do not agree with the Examiner’s assessment that McGarian’s flow “radially around the external surface of the piston 26, without making direct contact thereof” teaches the limitation of flow “around an external surface of the piston” as recited. Ans. 6. In other words, the Examiner’s interpretation of fluid flowing “along the internal bore around an external surface of the piston,” of claim 1 as being taught by McGarian’s fluid flow is an unreasonable interpretation. Even if crediting the Examiner’s explanation about the claim language not requiring fluid flow directly around the external surface of the piston and the fluid flow during the transitioning from McGarian’s Figure 4 to Appeal 2021-003730 Application 15/116,585 11 Figure 5 when ports 29 and 30 are partially open, the Examiner’s position does not remedy the deficiency of an unreasonably broad interpretation of the claim language. Accordingly, and based on the record presented, we do not sustain the Examiner’s rejection of claims 1-5, 9, and 13-32 as being unpatentable over McGarian. The rejection of claims 6-8 and 10-12 as obvious over McGarian and Kennedy In regard to the rejection of dependent claims 6-8 and 10-12, the Examiner’s reliance on Kennedy does not remedy the deficiencies discussed above. See Final Act. 16-20. Thus, we likewise do not sustain the Examiner’s rejection of claims 6-8 and 10-12 as being unpatentable over McGarian and Kennedy. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-5, 9, 13-32 103 McGarian 1-5, 9, 13-32 6-8, 10- 12 103 McGarian, Kennedy 6-8, 10- 12 Overall Outcome 1-32 REVERSED