UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

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2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte PHILIP KNEISL, LAWRENCE A. BEHRMANN, and BRENDEN M. GROVE Appeal Technology Center 3600 Before KEN B. BARRETT, MICHAEL C. ASTORINO, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL

3 STATEMENT OF THE CASE 1 Philip Kneisl et al. (Appellants) appeal under 35 U.S.C. 134 from the Examiner s decision rejecting claims 1, 3-15, 18, 19, 38, 39 and Claims 2, 16, 17, 20-37, 40-81, 87 and 88 have been canceled. 2 jurisdiction over this appeal under 35 U.S.C. 6. We REVERSE. We have THE INVENTION Appellants invention relates to a system for reducing the amount of debris generated during perforating with shaped charges. Spec., para. [0002] and figs 5, 6 and 7A. follows: Claims 1 and 38 are illustrative of the claimed invention and read as 1. A perforating system, comprising: a perforating gun comprising a solid loading tube; and shaped charges being housed in the solid loading tube, each of the shaped charges comprising an explosive that does not rely on a shaped charge case for confinement. 38. A debris free perforating system, comprising: a shaped charge; a combustible loading tube to receive the shaped charge, the loading tube comprising a surface; and an oxidizer coating closely adhering to the surface of the loading tube. 1 This is Appellants second appeal before the Board of Patent Appeals and Interferences in the instant application. In the first appeal (Appeal No , Decision mailed Sep. 26, 2008), the rejection of claims 1, 3-15, 18, 19, and was reversed. 2 Appellants canceled Claims 40-51, 87 and 88 in an Amendment after Final, filed Apr. 20, The Amendment was entered in an Advisory Action, mailed Sep. 15,

4 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Auberlinder US 3,237,559 Mar. 1, 1966 Bosse-Platiere US 4,191,265 Mar. 4, 1980 Budinger US 4,198,739 Apr. 22, 1980 Ibsen US 4,253,523 Mar. 3, 1981 Yates US 4,829,901 May 16, 1989 Reese US 5,656,791 Aug. 12, 1997 Seeger US 5,831,207 Nov. 3, 1998 Nice US 5,837,925 Nov. 17, 1998 Kapoor US 5,939,664 Aug. 17, 1999 Kenworthy US 6,209,457 B1 Apr. 3, 2001 The following rejections are before us for review: 3 I. The Examiner rejected claims 38, 39 and under 35 II. U.S.C. 102(b) as anticipated by Ibsen. The Examiner rejected claim 82 under 35 U.S.C. 103(a) as unpatentable over Ibsen. III. The Examiner rejected claims 38, 39 and under 35 IV. U.S.C. 103(a) as unpatentable over Nice and Ibsen. The Examiner rejected claim 1 under 35 U.S.C. 103(a) as unpatentable over Auberlinder and Bosse-Platiere. V. The Examiner rejected claims 3-5 under 35 U.S.C. 103(a) as unpatentable over Auberlinder, Bosse-Platiere and Nice. 3 The rejections of claim 82 under 35 U.S.C. 103(a): (1) as unpatentable over Ibsen and Seeger; and (2) as unpatentable over Nice, Ibsen and Seeger have been withdrawn by the Examiner. Ans. 3. 3

5 VI. The Examiner rejected claims 6-9 under 35 U.S.C. 103(a) as unpatentable over Auberlinder, Bosse-Platiere and Reese or Auberlinder, Bosse-Platiere and Kapoor. VII. The Examiner rejected claims under 35 U.S.C. 103(a) as unpatentable over Auberlinder, Bosse-Platiere and Kenworthy. VIII. The Examiner rejected claims 14, 18 and 19 under 35 U.S.C. IX. 103(a) as unpatentable over Auberlinder, Bosse-Platiere and Yates. The Examiner rejected claim 15 under 35 U.S.C. 103(a) as unpatentable over Auberlinder, Bosse-Platiere, Yates and Budinger. OPINION Rejection I Independent claim 38 requires an oxidizer coating closely adhering to the surface of a loading tube. App. Br., Claims Appendix. 4 The Examiner found that material 64 of Ibsen constitutes an oxidizer coating that closely adheres to the inner surface of carrier 12 (loading tube). Supp. Ans See also, Ibsen, fig. 1. The Examiner also found that Ibsen teaches that material 4 Throughout this Opinion, we shall refer to Appellants Appeal Brief, filed Apr. 20, 2009, as App. Br. ; Appellants Supplemental Appeal Brief, filed Jul. 15, 2009, as Supp. App. Br. ; and Appellants Reply Brief, filed Dec. 14, 2009, as Reply Br. 5 Throughout this Opinion, we shall refer to Examiner s Answer, mailed Oct. 14, 2009, as Ans. ; and Examiner s Supplemental Answer, mailed Nov. 5, 2009, as Supp. Ans. 4

6 64 can be non-activated (non-explosive) ammonium nitrate. Ans See also, Ibsen, col. 9, ll As such, the Examiner takes the position that (1) ammonium nitrate is an oxidizer (Ans. 12); (2) non-activated (nonexplosive) ammonium nitrate (material 64 of Ibsen) can function as an oxidizer (Ans. 13); and (3) non-activated (non-explosive) ammonium nitrate (material 64 of Ibsen), is used [as an oxidizer] to facilitate the operation of the shaped charge [30] explosive (Ans. 12). In this case, although we do not dispute the Examiner s position that a non-activated ammonium nitrate can function[] as an oxidizer (see Ans. 13), we could not find any portion in Ibsen, and the Examiner has not pointed to any portion, that would suggest that material 64 is used as an oxidizer to facilitate the operation of the shaped charge 30 explosive. Ibsen merely teaches that the space in carrier 12 between the shaped charges 30 positioned in the carrier 12 is filled with spacer material 64 to keep the shaped charges [30] in the desired spaced-apart relation to each other in the carrier 12. Ibsen, col. 5, ll Hence, just because material 64 of Ibsen is used as a spacer to keep the shaped charges 30 in a spaced-apart relationship, it does not mean that material 64 is used as an oxidizer to facilitate the operation of the shaped charge 30 explosive. Therefore, the Examiner s finding that material 64 of Ibsen constitutes an oxidizer is mere speculation and conjecture based on an unfounded assumption that material 64 is used to facilitate the operation of the shaped charge 30 explosive. As such, we find that material 64 of Ibsen does not constitute an oxidizer coating, as required by independent claim 38. The Examiner further found that (1) secondary explosive 66 of Ibsen constitutes an oxidizer coating closely adhering to the surface of the 5

7 loading tube (Supp. Ans. 2. See also, Ibsen, fig. 2); and (2) Ibsen teaches that secondary explosive 66 is preferably packed in bags. Ans. 13. See also, Ibsen col. 7, ll As such, the Examiner takes the position that the term preferably means that the secondary explosive 66 of Ibsen does not have to be put in bags and could be placed in the loading tube much like the ammonium nitrate - at 64 as seen in figure 1 of Ibsen. Id. In this case, although we appreciate that the secondary explosive 66 of Ibsen does not have to be packed in bags, that does not mean that the secondary explosive 66 in any way contacts the interior surface of carrier 12. As such, the Examiner s finding that the secondary explosive 66 of Ibsen constitutes an oxidizer coating that closely adheres to the surface of the loading tube is mere speculation and conjecture based on an unfounded assumption that not packing the secondary explosive 66 in bags means that the secondary explosive 66 contacts the interior surface of carrier 12. See Reply Br. 2. Hence, we find that the secondary explosive 66 of Ibsen does not constitute an oxidizer coating, as required by independent claim 38. Accordingly, for the foregoing reasons, Ibsen does not teach all the limitations of independent claim 38 or its respective dependent claims 39 and Therefore, the rejection of claims 38, 39 and under 35 U.S.C. 102(b) as anticipated by Ibsen cannot be sustained. Rejections II-III Rejections II and III rely on the unsubstantiated findings pertaining to Ibsen, as discussed above. Accordingly, we shall also reverse Rejections II- III. 6

8 Rejection IV Independent claim 1 recites a perforating system including (1) a perforating gun having a loading tube; and (2) shaped charges housed in the loading tube. App. Br., Claims Appendix. The Examiner found that Auberlinder discloses (1) shaped charges 10, 20 (Supp. Ans. 3. See also, Auberlinder, figs. 1 and 2); and (2) that the shaped charges may be put into a borehole through the use of a casing gun (perforating gun) (Ans. 13. See also, Auberlinder, col. 3, ll ). As such, the Examiner takes the position that (1) [i]f a casing gun [perforating gun] is used it is inherent that a loading tube be used to place the shaped charge explosives within the gun; and (2) since loading tubes are well known in the art as being used in casing guns [perforating guns] the Auberlinder reference inherently discloses a loading tube as claimed. Ans. 13. Appellants argue that (1) Auberlinder merely discloses a retrievable casing gun and does not specifically disclose any type of loading tube; (2) perforating guns may or may not contain loading tubes; and (3) the designation [of a] retrievable casing gun [as disclosed in Auberlinder] does not discriminate as to whether the gun includes a loading tube or not. Supp. App. Br. 11. We agree with Appellants position for the following reasons. At the outset, with respect to the Examiner s inherency position, we note that when a reference is silent about an asserted inherent characteristic, it must be clear that the missing descriptive matter is necessarily present in the thing described in the reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). The mere fact that a certain thing 7

9 may result from a given set of circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). In this case, although we appreciate that the shaped charges 10, 20 of Auberlinder may be placed within a casing gun (perforating gun), this in no way demonstrates that the shaped charges 10, 20 are housed in a loading tube, as the Examiner contends. In other words, just because the shaped charges 10, 20 of Auberlinder are placed within a casing gun (perforating gun), it does not necessarily mean that the shaped charges 10, 20 are housed in a loading tube. For example, as pointed out by Appellants, shaped charges placed within a perforating gun can also be mounted to a strip. Reply Br. 4. Inherency may not be established by probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). As such, like Appellants, we are of the view that there is simply insufficient evidence in Auberlinder to support a finding that shaped charges placed within a casing gun (perforating gun) must necessarily be housed in a loading tube. Id. Hence, the Examiner has not provided sufficient evidence to support the finding that shaped charges 10, 20 placed within a casing gun (perforating gun) necessarily means that the shaped charges 10, 20 are housed in a loading tube, so as to constitute a loading tube, as required by independent claim 1. Accordingly, the rejection of independent claim 1 under 35 U.S.C. 103(a) as unpatentable over Auberlinder and Bosse-Platiere, cannot be sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). 8

10 Rejections V-IX Rejections V-IX rely on the unsubstantiated findings pertaining to Auberlinder and Bosse-Platiere, as discussed above. Accordingly, we shall also reverse Rejections V-IX. DECISION The decision of the Examiner to reject claims 1, 3-15, 18, 19, 38, 39 and is reversed. REVERSED hh 9