Ex Parte Bankston et al

Patent Trial and Appeal BoardSep 27, 2012

11247737 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BILLY BANKSTON and CLIVE MENEZES ___________ Appeal 2010-008207 Application 11/247,737 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008207 Application 11/247,737 2 STATEMENT OF THE CASE Billy Bankston and Clive Menezes (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject (1) under 35 U.S.C. § 102(b) claims 1-16 and 22-27 as anticipated by Raad (US 6,087,750, issued Jul. 11, 2000); and (2) under 35 U.S.C. § 103(a) claims 17-21 as unpatentable over Raad and Ciglenec (US 2005/0115716 Al, published Jun. 2, 2005). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention relates to a device, a system, and a method to generate, store, and supply power in a downhole environment. Spec. para. [0001] and figs. 1 and 2. Claims 1 and 22 are illustrative of the claimed invention and read as follows: 1. An apparatus, including: a stator to couple to a borehole; and a rotor electromagnetically coupled to the stator to generate electrical current, the rotor to rotate using power. 22. A method, including: coupling a stator to a borehole; and moving a rotor relative to the stator to generate electrical current to power a borehole tool. Appeal 2010-008207 Application 11/247,737 3 OPINION The anticipation rejection based upon Raad Independent claim 1 requires an apparatus including “a stator to couple to a borehole.” App. Br., Claims Appendix. Similarly, independent claim 22 requires a method including the method step of “coupling a stator to a borehole.” App. Br., Claims Appendix. The Examiner found that Raad teaches a permanent magnet generator 100 including stators (stationary armature assemblies 3 and 4) to couple to a borehole (i.e., for use in an oil exploration well). Ans. 3. In addition, the Examiner takes the position that, based on Appellants’ definition of the term “couple” in the Specification, “for a stator to be coupled to a borehole it suffices that the stator be substantially stationary with respect to the borehole.” Ans. 3-4. Appellants argue (1) “Raad does not disclose why the armature assemblies 3, 4 are characterized as ‘stationary;’” and (2) “Appellant[s] [were] unable to find anything within the bounds of Raad to indicate that the stationary armature assemblies 3,4 were stationary with respect to the borehole, rather than the drillstring (which rotates with respect to the borehole).” App. Br. 8-9. In response, the Examiner takes the position that (1) Appellants’ definition of the term “couple” in the Specification “is not considered a special definition;” (2) Raad “teaches that the assemblies [3, 4] are stationary;” and (3) “[w]hether the assemblies 3, 4 (stators) are stationary with respect to the borehole, drillstring, or otherwise is not material to the claims.” Ans. 6. At the outset, we note that Appellants’ Specification expressly defines the term “couple” to the borehole to mean “the stator[] is held in a substantially stationary position in the borehole with respect to the direction of rotation R.” Spec. para. [0009] and fig 1. Where an explicit definition is provided by the applicant for a term, [the] definition will control Appeal 2010-008207 Application 11/247,737 4 interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999). In this case, similar to Appellants, we find that Raad does not disclose why armature assemblies 3, 4 are characterized as “stationary.” See App. Br. 8. Further, although we appreciate that Raad teaches stationary armature assemblies 3, 4 (see Raad, col. 2, ll. 15-19, 62-63 and fig. 1; see also, Ans. 6) that does not mean that armature assemblies 3, 4 of Raad are stationary with respect to (i.e., are coupled to) the borehole. The Examiner articulates no reason to believe that the armature assemblies 3, 4 inherently must be stationary with respect to the borehole. Hence, the Examiner’s finding that Raad’s armature assemblies 3, 4 are stationary with respect to (i.e., are coupled to) the borehole is mere speculation and conjecture based on an unfounded assumption that Raad’s teaching that armature assemblies 3, 4 are stationary means that armature assemblies 3, 4 are stationary with respect to (i.e., are coupled to) the borehole. An anticipation rejection cannot be predicated on an ambiguous reference. Rather, disclosures in a reference relied on to prove anticipation must be so clear and explicit that those skilled in the art will have no difficulty in ascertaining their meaning. In re Turlay, 304 F.2d 893, 899 (CCPA 1962). In conclusion, the armature assemblies 3, 4 of Raad do not satisfy the limitation of (1) “a stator to couple to a borehole,” as required by independent claim 1; or (2) “coupling a stator to a borehole,” as required by independent claim 22. Therefore, the rejection of independent claims 1 and 22 and their respective dependent claims 2-16 and 23-27 as anticipated by Raad cannot be sustained. Appeal 2010-008207 Application 11/247,737 5 The obviousness rejection over Raad and Ciglenec Independent claim 17 requires a system including “a stator to couple to a borehole.” App. Br., Claims Appendix. As discussed above, Raad fails to teach a stator to couple to a borehole. The Examiner’s application of Ciglenec as a separate additional reference in conjunction with Raad does not remedy the deficiencies of Raad as described above. Therefore, for the foregoing reasons, the rejection of independent claim 17 and its respective dependent claims 18-21 as unpatentable over Raad and Ciglenec cannot be sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). DECISION The decision of the Examiner is reversed as to claims 1-27. REVERSED mls