Baker Hughes Incorporated

Patent Trials and Appeals Board

Dec 14, 2021

2021001398 (P.T.A.B. Dec. 14, 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. 15/166,499 05/27/2016 Jeffrey R. Honekamp BAKR1140-1 5609 90082 7590 12/14/2021 Sprinkle IP Law Group 1301 W. 25th Street, Suite 408 Austin, TX 78705 EXAMINER HARCOURT, BRAD ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 12/14/2021 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): USPTOMAIL@SPRINKLELAW.COM mberrier@sprinklelaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEFFREY R. HONEKAMP Appeal 2021-001398 Application 15/166,499 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and KENNETH G. SCHOPFER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “BAKER HUGHES, A GE COMPANY, LLC, a limited liability company, formerly BAKER HUGHES INCORPORATED.” Appeal Br. 4. Appeal 2021-001398 Application 15/166,499 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 1, 8, and 13 are the independent claims on appeal. Claims 1 and 13, reproduced below, are illustrative of the claimed subject matter. 1. A system comprising: one or more pieces of surface equipment positioned at the surface of a well; an electric submersible pump (ESP) installed downhole in the well; a primary power cable coupled between the one or more pieces of surface equipment and the ESP; one or more remote tools which are separate from the ESP and are independently installed in the well below the ESP; and a secondary cable which is separate from the primary power cable, wherein the secondary cable is coupled between the ESP and the one or more remote tools; wherein the one or more remote tools receives power from the ESP via the secondary cable; and wherein the one or more remote tools receives power from the surface equipment via the primary power cable, the ESP and the secondary cable, and wherein the one or more remote tools communicates with the surface equipment through the primary power cable, the ESP and the secondary cable. Appeal Br., Claims App. Rejections Claims 1-20 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claims 1-20 are rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. Appeal 2021-001398 Application 15/166,499 3 ANALYSIS The rejections of claims 1-20 under 35 U.S.C. § 112(a) as failing to comply with the written description and enablement requirements In view of our determination that claims 1-20 are indefinite, infra, it follows that the rejections of these claims under 35 U.S.C. § 112(a) must fall because they are necessarily based on a speculative assumption as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Thus, we do not sustain the Examiner’s rejections of claims 1-20. It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter set forth below, and does not reflect on the merits of the rejections. New Ground of Rejection Independent claims 1, 8, and 13 are rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter that the Applicant/Appellant regards as the invention. See In re Packard, 751 F.3d 1307, 1310-13 (Fed. Cir. 2014) (“[A] claim is indefinite when it contains words or phrases whose meaning is unclear,” i.e., “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.”); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (explaining that the USPTO considers a claim indefinite when it “contains words or phrases whose meaning is unclear”). Further, dependent claims 2-7, 9-12, and 14-20 are indefinite due to their dependency on an indefinite claim. With regards to claim 1, it is unclear what is “independently installed.” Supra. There appears to be two non-overlapping possibilities: first, the “one or more remote tools” are independently installed from each Appeal 2021-001398 Application 15/166,499 4 other; and second, the “one or more remote tools” are independently installed from the ESP. We cannot discern from the Specification and the drawings, which possibility is being claimed, or if some other possibility is being claimed. Therefore, we determine that independent claim 1 is indefinite. Additionally, under the first possibility (i.e., the “one or more remote tools” are independently installed from each other), we note that the broadest reasonable interpretation of “one or more remote tools” includes a scenario where there is only a single tool. However, a single tool cannot be independently installed from itself. Under the second possibility (i.e., the “one or more remote tools” are independently installed from the ESP), this possibility requires that the installation of the one or more remote tools does not depend on the installation of the ESP. However, the claim requires that the one or more remote tools are coupled to the ESP by use of a secondary cable, that the one or more remote tools receive power from the ESP via the secondary cable, and that the one or more remote tools receive power and communicate to surface equipment through the ESP and secondary cable. These claim requirements are understood as part of the installation of the one or more remote tools. Support for this understanding comes from claim 13, which recites with added emphasis, “wherein installing the ESP and the one or more remote tools includes coupling a primary cable between the one or more pieces of surface equipment and the ESP and coupling a secondary cable which is separate from the primary power cable between the ESP and the one or more remote tools.” Infra. Here, claim 13 requires the step of installing the one or more remote tools to include a step of coupling a Appeal 2021-001398 Application 15/166,499 5 secondary cable between the ESP and the one or more remote tools. Therefore, we determine that under this second possibility the installation of the one or more remote tools depends on the installation of the ESP in the well. This contradicts the second possibility, i.e., the “one or more remote tools” are independently installed from the ESP. Further, we note that the Specification does not provide any guidance as to how one of ordinary skill in the art might understand the term “independently installed” in light of its context in the claim. See also Final Act. 4, 5; Ans. 6, 7. More specifically, the Specification refers to the installation of the ESP and one or more remote tools, but does not do so in a manner that includes adequate details to understand how installation is independent as required by the claim. For example, the Specification at paragraph 9 describes with added emphasis: [0009] This disclosure is directed to systems and methods for conveying power and data between surface equipment, an ESP and one or more remote tools while requiring a reduced number of penetrations through a tubing hanger. One embodiment comprises system that includes surface equipment positioned at the surface of a well, an ESP installed downhole in the well, and one or more remote tools which are separate from the ESP and are installed in the well below the ESP. A primary cable that may carry power and data between the surface equipment and the downhole equipment is coupled between the surface equipment and the ESP. A secondary cable which is separate from the primary power cable is coupled between the ESP and the remote tools. The ESP receives power from the surface equipment via the primary cable, and the remote tools receive power from the ESP via the secondary cable. The ESP may have a step-down transformer that transforms received AC power at a higher voltage to lower-voltage AC power or generates a rectified signal which is then provided to the remote tools via the secondary cable. The ESP may include a data transceiver which is configured to communicate data (e.g., Appeal 2021-001398 Application 15/166,499 6 sensor data and control information) between the ESP and the surface equipment. The data transceiver may also communicate data between the ESP and the remote tools. The data transceiver enables the communication of data between the surface equipment and the remote tools through the ESP. The ESP may include a gauge package or other sensors, and data from these sensors may be communicated by the data transceiver to the surface equipment. Because the primary cable requires only two penetrations of the tubing hanger for the well, carrying the power and communications for the remote tools through the primary cable and the ESP eliminates the need for additional penetrations to accommodate separate cables for the remote tools. This paragraph describes that the ESP and the one or more remote tools are installed, but does not provide any guidance as to how the one or more remote tools are independently installed while being coupled to the ESP via a secondary cable and while the ESP provides power to the one or more remote tools or helps in providing power and communication to the one or more remote tools. See also Spec. ¶¶ 11, 36. Similarly, the drawings do not provide any guidance in this regard. At best, Figures 2A and 2B show how the one or more remote tools can be either coupled to the ESP via a secondary cable (Spec., Fig. 2A) or not coupled to the ESP (Spec., Fig. 2B). See Final Act. 3; Ans. 6. Thus, we determine that independent claim 1 is indefinite. Claims 2-7 and 18 are indefinite due to their dependency on an indefinite claim. Claim 8 recites: 8. An electric submersible pump (ESP) comprising: a pump; a motor coupled to the pump and configured to drive the pump; Appeal 2021-001398 Application 15/166,499 7 a primary cable interface at which AC power at a first voltage is received, wherein the motor is coupled to receive the AC power at the first voltage; first circuitry configured to receive the AC power at the first voltage and to convert the AC power at the first voltage to a reduced voltage; and a secondary cable interface coupled to the first circuitry, wherein AC power at the reduced voltage is provided as an output at the secondary cable interface to one or more remote tools which are separately installed in the well below the ESP. Appeal Br., Claims App. (emphasis added). With respect to this claim, it is unclear what structures are “separately installed.” Similar to claim 1, there appears to be only two non-overlapping possibilities: first, the “one or more remote tools” are separately installed from each other; and second, the “one or more remote tools” are separately installed from the ESP. For reasons substantially similar to those discussed with respect to claim 1, we cannot discern from the Specification and the drawings, which possibility is being claimed, or if some other possibility is being claimed. Thus, we determine that independent claim 8 is indefinite. Claims 9-12 are indefinite due to their dependency on an indefinite claim. Claim 13 recites: 13. A method implemented in a system having equipment positioned at the surface of a well, an electric submersible pump (ESP) installed in the well and remote tools installed in the well below the ESP, the method comprising: installing the ESP in the well; installing the one or more remote tools in the well, wherein the one or more remote tools are separate from the ESP and are separately installed in the well below the ESP; wherein installing the ESP and the one or more remote tools includes coupling a primary cable between the one or more pieces of surface equipment and the ESP and Appeal 2021-001398 Application 15/166,499 8 coupling a secondary cable which is separate from the primary power cable between the ESP and the one or more remote tools; providing AC power at a first voltage from the surface equipment to the ESP through the primary cable; providing the AC power at the first voltage to a motor of the ESP; converting the AC voltage at the ESP to a reduced voltage; and providing AC power at the reduced voltage from the ESP to the one or more remote tools through the secondary cable. Appeal Br., Claims App. (emphasis added). We determine that claim 13 is indefinite for similar reasons as independent claim 8. Additionally, we note that claim 13’s preamble and body are incompatible. Specifically, the preamble of the method claim sets forth a system having an installed ESP, however, the first step of the method is installing the same ESP. It appears self-evident that one cannot install something that was installed already. A similar issue occurs with the installed remote tools in the preamble and the second step of the method, which requires installing the one or more remote tools. Thus, we determine that independent claim 13 is indefinite. Claims 14-18 and 20 are indefinite due to their dependency on an indefinite claim. CONCLUSION We REVERSE pro forma the Examiner’s rejections of claims 1-20 under 35 U.S.C. § 112(a) as failing to comply with the written description and enablement requirements. We enter a NEW GROUND OF REJECTION of claims 1-20 under 35 U.S.C. § 112 (b) as indefinite pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2021-001398 Application 15/166,499 9 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1-20 Written Description 1-20 1-20 Enablement 1-20 1-20 Indefiniteness 1-20 Overall Outcome 1-20 1-20 REVERSED; 37 C.F.R. § 41.50(b)