Adam Wheeler et al.

Patent Trials and Appeals Board

Dec 31, 2019

15158661 - (D) (P.T.A.B. Dec. 31, 2019)

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.
15/158,661 05/19/2016 Adam Wheeler ICN4-59855USNP/
BAO1396US2
9638
44639 7590 12/31/2019
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
BOLOURCHI, NADER
ART UNIT PAPER NUMBER
2631
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM WHEELER, STEPHEN COULSTON, and PAUL
HALSTEAD
Appeal 2019-000074
Application 15/158,661
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Baker Hughes,
Incorporated. Appeal Br. 1.
Appeal 2019-000074
Application 15/158,661
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Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A method of communicating between a surface processing
unit and an energy industry tool, comprising:
[A.] receiving a power signal from a power source at an
integrated interface device of a communication and
processing system, the communication and
processing system located between the surface
processing unit and the energy industry tool, the
interface device including a processor and a
variable output power supply;
[B.] receiving a surface communication at the processor
from the surface processing unit;
[C.] transmitting a control signal from the processor to
the variable output power supply, the control
signal including a series of pulses having a duty
cycle that is varied to cause the variable output
power supply to generate a modulated direct
current (DC) output signal having at least one of
a frequency and an amplitude that is modulated
according to a communication protocol to
represent the surface communication; and
[D.] transmitting the modulated DC output signal from
the variable output power supply to the energy
industry tool.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Abney US 5,289,560 Feb. 22, 1994
Hesbol US 2010/0052940 A1 Mar. 4, 2010

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Application 15/158,661
3
REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hesbol and Abney. See Final Act. 12–
26.
Appellant separately argues claim 1. Appellant does not present
separate arguments for claims 2–20. Thus, the rejection of these claims turn
on our decision as to claim 1. Except for our ultimate decision, we do not
discuss the § 103(a) rejection of claims 2–20.
OPINION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred.
The Examiner finds the combination of Hesbol and Abney teaches or
suggests, inter alia, “transmitting a control signal from the processor to the
variable output power supply, the control signal including a series of pulses
having a duty cycle that is varied to cause the variable output power supply
to generate a modulated direct current (DC) output signal,” and “transmitting
the modulated DC output signal from the variable output power supply to
the energy industry tool,” recited in claim 1. See Final Act. 12–16 (citing
Hesbol ¶¶ 2, 28, 30, 32, Fig. 1; Abney 1:6–12, 3:41–4:19, Figs. 1, 4, 6).
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).2
[T]he configuration of Hesbol precludes the reference from
teaching the method recited by Claim 1. To be clear, Claim 1

2 Appellant raises additional arguments in contending the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a). See Appeal Br. 5–8. We do not
reach these additional arguments because the identified issue is dispositive
of the appeal.
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Application 15/158,661
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requires “transmitting a control signal from the processor to the
variable output power supply.” This “control signal including a
series of pulses having a duty cycle that is varied to cause the
variable output power supply to generate a modulated direct
current (DC) output signal,” which is what is transmitted “from
the variable output power supply to the energy industry tool.” In
summary, the claim requires: processor -control signal →
variable output power supply -modulated DC output signal →
energy industry tool.
As FIG. 1 of Hesbol shows and FIG. 2 of Hesbol further
details, the alternative current/direct current power supply 33
(referred to, per the Examiner’s assertion, as the asserted claimed
variable output power supply) supplies the modem 2 (referred to,
per the Examiner’s assertion, as the asserted claimed processor).
According to paragraph [0033] of Hesbol, the alternative
current/direct current power supply 33 (the asserted claimed
variable output power supply) outputs a 24 V/100 W direct
current output. As FIG. 1 of Hesbol also shows, the external
electronic units 26 (referred to, per the Examiner’s assertion, as
the asserted claimed energy industry tool) are within the modem
2 (asserted claimed processor) and supplied by the FPGA 4 of
the modem 2 (asserted claimed processor). The external
electronic units 26 (asserted claimed energy industry tool) are
regarded as being outside the modem 2 (asserted claimed
processor) for purposes of comparison with the summary of
Claim 1 above. Thus, when summarized, Hesbol describes:
asserted claimed variable output power supply -direct current
output → asserted claimed processor -binary signal → asserted
claimed energy industry tool.
Thus, even ignoring what is transmitted, the very
configuration in Hesbol precludes the reference from teaching
the claimed “transmitting a control signal from the processor to
the variable output power supply,” where the control signal is
defined as “including a series of pulses having a duty cycle that
is varied to cause the variable output power supply to generate a
modulated direct current (DC) output signal,” which is what is
transmitted to the energy industry tool. That is, instead of
processor → variable output power supply → energy industry
tool, as required by Claim 1, Hesbol describes asserted claimed
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variable output power supply → asserted claimed processor →
asserted claimed energy industry tool.
Appeal Br. 8–9 (Appellant’s emphasis omitted; panel’s emphasis added).
In response to Appellant’s arguments, the Examiner further finds:
Therefore, main point of contention is that the Applicant still
suggests that the energy industry tool is connected directly and
without any intervening device to the variable output power
supply and argues that in Hesbol, the energy industry tool is
connected to the variable output power supply through the
processor.
However, Claim 1 solely recites: “transmitting the modulated
DC output signal from the variable output power supply to the
energy industry tool” (lines 13 and 14 of claim 1, emphasis
added), i.e., the Applicant does not exclusively claim:
“transmitting the modulated DC output signal from the variable
output power supply without any intervening step, function or
device, and directly to the energy industry tool”.
Furthermore, the specification, as originally [filed], explicitly
recites (see [para. 52]) and the drawing clearly shows (see Fig.
6) that the modulated power output signal is transmitted from
the interface assembly to the tool over a power line.
Ans. 19–20 (emphasis added).
In response, Appellant further argues:
The error in the Examiner’s rejection does not stem from
an allegation by Appellants that there cannot be any intervening
devices between the variable output power supply and the energy
industry tool. Instead, Appellants’ arguments were that the
specific arrangement and teachings of Hesbol preclude the
reference from teaching the claimed invention. Specifically, the
arrangement of Hesbol precludes the reference from teaching a
“control signal from the processor to the variable output power
supply . . . to cause the variable output power supply to generate
a modulated direct current (DC) output signal . . . and
transmitting the modulated DC output signal from the variable
output power supply to the energy industry tool,” as required by
Claim 1.
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Appellants summarized the argument as follows: instead
of processor → variable output power supply → energy
industry tool, as required by Claim 1, Hesbol describes asserted
claimed variable output power supply → asserted claimed
processor → asserted claimed energy industry tool. However,
the discussion preceding this summary makes clear why the
alternative current/direct current power supply 33 of Hesbol,
which is alleged to teach the claimed variable output power
supply, cannot generate and transmit - directly or indirectly - a
modulated DC output signal to the external electronic units 26,
which are asserted to teach the claimed energy industry tool (see
e.g., page 6 of the Appeal Brief). The alternating current/direct
current power supply 33, which is asserted to teach the claimed
variable output power supply, does not generate any
communication at all for transmission - directly or indirectly -
to the external electronic units 26, which are asserted to teach
the claimed energy industry tool. Instead, as noted in paragraph
[0034] of Hesbol, the alternating current/direct current power
supply 33, which is asserted to teach the claimed variable output
power supply, is designed to limit frequencies in a certain range
from being fed back into the power line 3 to minimize electronic
interference and noise on the power line 3.
As also stated in the Appeal Brief, the alternative
current/direct current power supply 33 of Hesbol, along with the
power line 3, is connected to the diplexer 9 of the modem 2,
which is asserted to teach the claimed processor. This modem 2,
which is asserted to teach the claimed processor, is what
communicates with the external electronic units 26, which are
asserted to teach the claimed energy industry tool. This gives rise
to the summary asserting that Hesbol describes asserted claimed
variable output power supply → asserted claimed processor →
asserted claimed energy industry tool. This indicates that the
arrangement of Hesbol precludes “control signal from the
processor to the variable output power supply” and “transmitting
the modulated DC output signal from the variable output power
supply to the energy industry tool,” as required by Claim 1,
which is summarized as processor → variable output power
supply → energy industry tool. Thus, with regard to this
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Application 15/158,661
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argument, the communication sequence, rather than any
intervening devices, is the issue.
Reply Br. 2–3 (Appellant’s emphasis omitted; panel’s emphasis added).
We are persuaded that, on this record, the Examiner has not shown
that the combination of Hesbol and Abney teaches or suggests the
aforementioned limitations of claim 1. More specifically, we agree with
Appellant that claim 1 recites a sequence of: (a) transmitting a control signal
from a processor to a variable output power supply; (b) the control signal
causing the variable output power supply to generate a modulated direct
current (DC) output signal; and (c) transmitting the modulated DC output
signal from the variable output power supply to the energy industry tool.
See Appeal Br. 9; see also Reply Br. 4. However, Hesbol discloses that an
alternating current/direct current power supply (identified by the Examiner
as the claimed “variable output power supply”) provides energy to a modem
(identified as the claimed “processor”) configured to modulate and
demodulate binary payload data to and from an electrical signal of a power
line in order to limit a range of frequencies from being fed back into the
power line. See Hesbol ¶¶ 30, 32, 34, Fig. 1. The Examiner has not
identified which portion of Hesbol teaches or suggests the modem
transmitting a control signal to the alternating current/direct current power
supply, where the control signal causes the alternating current/direct current
power supply to generate an electrical output signal. The Examiner has also
not addressed this discrepancy between the claim and the cited references in
its obviousness analysis. Thus, on this record, we do not sustain the
rejection.
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CONCLUSION
Appellant has established that the Examiner erred in rejecting claims
1–20 under 35 U.S.C. § 103(a).
On this record, claims 1–20 have not been shown to be unpatentable.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103(a) Hesbol, Abney 1–20

REVERSED