Ex Parte Bittar

Patent Trial and Appeal BoardMar 21, 2017

12526552 (P.T.A.B. Mar. 21, 2017)

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. 1391-740.06 7200 EXAMINER BEMKO, TARAS P ART UNIT PAPER NUMBER 3672 MAIL DATE DELIVERY MODE 12/526,552 09/26/2010 36177 7590 Iselin Law PLLC (HAL) P. O. BOX 1906 CYPRESS, TX 77410-1906 Michael S. Bittar 03/21/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL S. BITTAR Appeal 2015-006088 Application 12/526,552 Technology Center 3600 Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and JEFFREY A. STEPHENS, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael S. Bittar (Appellant) appeals under 35 U.S.C. § 134 from the rejection of claims 1—6 and 8—25. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2015-006088 Application 12/526,552 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A parallel drilling method that comprises: gathering azimuthally- sensitive measurements of electromagnetic signals while drilling a new borehole near an existing borehole, said measurements being indicative of a formation resistivity; and steering a drill string along a path at a substantially constant distance from the existing borehole, wherein the drill string includes both transmit and receive antennas for making the azimuthally-sensitive measurements, and determining the substantially constant distance based at least in part on the formation resistivity measurements. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Meador Kuckes ’170 Bittar Kuckes ’008 US 3,982,176 US 5,923,170 US 7,265,552 B2 US 2007/0278008 A1 Sept. 21, 1976 July 13, 1999 Sept. 4, 2007 Dec. 6, 2007 REJECTIONS I. Claims 1, 3, 4, 6, and 8—25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kuckes ’008 and Bittar. II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kuckes ’008, Bittar, and Kuckes ’170. III. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kuckes ’008, Bittar, and Meador. 2 Appeal 2015-006088 Application 12/526,552 DISCUSSION Rejection I The Examiner finds that Kuckes ’008 and Bittar disclose or suggest all of the limitations of independent claims 1,11, and 18. See Final Act. 2. In particular, the Examiner determines that it would have been obvious to modify the method disclosed by Kuckes ’008 to gather “measurements [that are] indicative of a formation resistivity, as disclosed by Bittar, to steer the downhole tool to maintain the borehole within a desired geological formation and at a constant distance from the existing borehole.” Id. In the Answer, the Examiner clarifies that “[t]he combination of Kuckes ’008 and Bittar is the simple substitution of Bittar’s precision steering utilizing formation resistivity measurements for Kuckes’ ’008 precision steering utilizing EM-ranging.” Ans. 3. Appellant contends that the proposed modification would render Kuckes ’008 unsuitable for its intended purpose because “Bittar’s resistivity measurement tool would not be useful in a ranging context due to its sensitivity range (about 3 meters) being less than the desired well spacing mentioned in Kuckes ’008 (about 5 meters).” Appeal Br. 8. In other words, Appellant argues that Bittar’s resistivity tool could not be used to perform Kuckes ’008’s method because its sensitivity range is too small to maintain the desired distance between the new well and the reference well. Appellant’s argument is persuasive because Bittar’s method is not concerned with maintaining the distance between a new well and a reference well. Rather, Bittar describes a “method and apparatus for steering a downhole tool during a drilling operation in order to maintain the borehole within a desired earth formation.” Bittar, Abst. Thus, in Bittar a range of 3 meters is all that is required to properly steer the downhole tool. Bittar 3 Appeal 2015-006088 Application 12/526,552 15:38-40. Modifying Kuckes ’008’s method by substituting Bittar’s steering method for Kuckes ’008’s steering method would result in a method that is no longer capable of maintaining Kuckes ’008’s desired distance between the new well and the reference well. If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). Moreover, as Appellant argues in the Reply Brief, the proposed modification is more than a simple substitution of known equivalents. See Reply Br. 2. The rejection proposes substituting Bittar’s precision steering for Kuckes ’008’s precision steering, and then optimizing Bittar’s precision steering to perform Kuckes ’008’s method. The Examiner reasons that it would have been obvious “to contrive any number of desirable ranges since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.” Ans. 7 (citation omitted). However, the Examiner makes no finding that Bittar’s and Kuckes ’008’s precision steering are known equivalents and doesn’t explain why one skilled in the art would make this substitution. Thus, the Examiner’s reasoning lacks rational underpinning. For these reasons, we do not sustain the Examiner’s decision rejecting claims 1,11, and 18, and claims 3, 4, 6, and 8—25, which depend from these independent claims. Rejections II and III Rejections II and III rely on the same faulty reasoning as Rejection I. Neither Kuckes ’170 nor Meador cure the deficiency in the combination of Kuckes ’008 and Bittar discussed supra. Accordingly, we do not sustain the 4 Appeal 2015-006088 Application 12/526,552 Examiner’s decision rejecting claim 2 (Rejection II) or claim 5 (Rejection III) for the same reasons. DECISION The Examiner’s rejections of claims 1—6 and 8—25 are REVERSED. REVERSED 5