Appeal No. 2006-1576 4
Application No. 10/223,170
Before addressing the merits of the rejections on appeal, we
note that the sole issue raised by appellant is whether claims 1-4,
7 and 16 are properly rejected for anticipation by Urbanosky (main
brief, page 2 and corrected brief, page 2). The above statement was
followed in the main brief by an indication that “[a]ll the
rejected dependent claims stand or fall with claim 1.” Thus, we
look only to independent claim 1 to decide the appeal in the
present case, with all of the dependent claims standing or falling
with our determination on claim 1.
Independent claim 1 is directed to a sealing apparatus for
selectively sealing a tubular downhole, comprising a mandrel; a
sealing element mounted to the mandrel and made of a first
material; and a second material on said sealing element, wherein
the second material is “movable, in a direction other than radially
toward the tubular, with respect to said first material, to
obstruct at least one void created between said first material and
the tubular, when the first material is compressed into contact
with the tubular.” In reading claim 1 on the expandable well packer
of Urbanosky, the examiner has determined that Urbanosky discloses
a sealing apparatus for selectively sealing a tubular downhole
(69), wherein the sealing apparatus comprises a mandrel (12); a
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