Ex Parte DiFoggio et al

Patent Trial and Appeal BoardApr 28, 2016

12796817 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121796,817 06/09/2010 Rocco DiFoggio 44639 7590 05/02/2016 CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED 20 Church Street 22nd Floor Hartford, CT 06103 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ACU4-48447-US(INT0076US2) 3632 EXAMINER MURPHY, DANIELL ART UNIT PAPER NUMBER 3645 NOTIFICATION DATE DELIVERY MODE 05/02/2016 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@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROCCO DIFOGGIO, ERIC B. MOLZ, and ANJANI R. ACHANTA Appeal2014-003446 Application 12/796,817 Technology Center 3600 Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and AMEE A. SHAH, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 appeal under 35 U.S.C. Â§ 134 from the Examiner's rejections of claims 1-21. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 The Appellants identify the real party in interest as "BAKER HUGHES INCORPORATED." (Appeal Br. 1.) Appeal2014-003446 Application 12/796,817 STATEMENT OF THE CASE The Appellants' invention "relates to estimating a gas influx into a drilling mud." (Spec. i-f 1.) Illustrative Claim2 1. An apparatus for estimating an influx of a formation fluid into a borehole fluid disposed in a borehole penetrating the earth, the apparatus comprising: a carrier configured for being conveyed in the borehole; an acoustic transducer disposed at the carrier and configured to at least one of transmit an acoustic signal and receive a reflection of the acoustic signal; a first reflector disposed a first distance from the acoustic transducer and defining a first path having a first round trip distance; a second reflector disposed a second distance from the acoustic transducer and defining a second path having a second round trip distance; and a processor in communication with the acoustic transducer and configured to measure a difference between a first travel time for the acoustic signal traveling the first round trip distance in the borehole fluid and a second travel time for the acoustic signal traveling the second round trip distance in the borehole fluid to estimate the influx of the formation fluid; wherein the acoustic transducer, the first reflector, and the second reflector are disposed in the borehole fluid that is in the borehole. Takahashi Georgi Hassan Frost DiFoggio References us 5,499,190 US 6,618,322 Bl US 2004/0095847 Al US 7 ,082,994 B2 US 2007 /0022803 Al May 12, 1996 Sept. 9, 2003 May 20, 2004 Aug. 1, 2006 Feb. 1,2007 2 This illustrative claim is quoted from the Claims Appendix ("Claims App.") set forth on pages 12-15 of the Appeal Brief. 2 Appeal2014-003446 Application 12/796,817 Chemali Kenison US 2008/0047337 Al US 2009/0078411 Al Rejections Feb.28,2008 Mar. 26, 2009 I. The Examiner rejects claims 1, 3, 4, and 10-14 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison and Georgi. (Final Action 6.) II. The Examiner rejects claims 2 and 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, and Hassan. (Id. at 13.) III. The Examiner rejects claims 5-8 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, and Takahashi. (Id. at 15.) IV. The Examiner rejects claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, Takahashi, and DiFoggio. (Id. at 18.) V. The Examiner rejects claims 16-18 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, Hassan, and Takahashi. (Id. at 19.) VI. The Examiner rejects claim 19 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, Hassan, Takahashi, and DiFoggio. (Id. at 21.) VII. The Examiner rejects claim 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, and Frost. (Id. at 22.) VIII. The Examiner rejects claim 21under35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, and Chemali. (Id. at 23.) ANALYSIS Independent Claim 1 Independent claim 1 is directed to "[a]n apparatus for estimating an influx of a formation fluid into a borehole fluid [e.g., mud]" comprising "an acoustic transducer" that is "configured to at least one of transmit an 3 Appeal2014-003446 Application 12/796,817 acoustic signal and receive a reflection of the acoustic signal." (Claims App.) In Kenison, "[a] gas influx detection system 38 comprises a pressure modulation device 40 designed to transmit a pressure signal downhole through tubing 22." (Kenison i-f 16; see also id. Figs. 2 and 3.) Hence, Kenison discloses an influx-estimating apparatus 38 comprising a transducer 40 that transmits a pressure (i.e., an acoustic) signal. (See Final Action 6.) Independent claim 1 recites "a first reflector disposed a first distance from the acoustic transducer" and "a second reflector disposed a second distance from the acoustic transducer." (Claims App.) In Kenison, "[p ]arameters of the pressure signal are measured by a first sensor 44 at uphole location 26 and a second sensor 46 at downhole location 28." (Kenison i-f 16; see also id. Figs. 2 and 3.) Hence, Kenison's influx- estimating apparatus 3 8 comprises a first sensor 44 (not a reflector) disposed a first distance from transducer 40 and a second sensor 46 (not a reflector) disposed a second distance from transducer 40. (See Final Action 6-7.) Independent claim 1 requires the first reflector to define "a first path having a first round trip distance" and the second reflector to define "a second path having a second round trip distance." (Claims App.) In Kenison, "the time at which the pressure signal passes first sensor 44 and second sensor 46" is measured. (Kenison i-f 17; see also id. Figs. 2 and 3.) Hence, Kenison's first sensor 44 defines a first path having a first one-way- trip (not round-trip) distance; and Kenison's second sensor 46 defines a second path having a second one-way-trip (not round-trip) distance. Independent claim 1 additionally recites "a processor" that is configured to measure "a difference between a first travel time for the 4 Appeal2014-003446 Application 12/796,817 acoustic signal traveling the first round trip distance" and "a second travel time for the acoustic signal traveling the second round trip distance." (Claims App.) In Kenison, "the travel time or time delay between sensors 44 and 46 can be determined" and these determinations "can be performed on a control system 48." (Kenison i-f 17; see also id. Fig. 3.) Hence, Kenison's processor 48 measures a difference between a first travel time for the acoustic signal traveling the first one-way-trip distance (from transducer 40 to sensor 44) and a second travel time for the acoustic signal traveling the second one-way-trip distance (from transducer 40 to sensor 46).3 (See Final Action 7.) Thus, in summary, Kenison' s influx-estimating apparatus 3 8 differs from the Appellants' claimed apparatus in that Kenison uses sensors (not reflectors) and its travel times represent one-way-trip distances (not round- trip distances) of the acoustic signal through the borehole fluid (e.g., mud). Georgi discloses that acoustic mud velocity can be determined from a "travel time" that "represents of the round trip time of the acoustic pulse" from a transducer 610 to a reflecting fixed target 612 and back to the transducer." (See Georgi, col. 7, line 65 to col. 8, line 2.) Hence, Georgi teaches that a travel time of a mud-evaluating acoustic signal can represent the round-trip distance of the acoustic signal to and from a reflector. (See Final Action 7-8.) Georgi also teaches "simultaneous measurement of the 3 We disagree with the Appellants' contention that it is conceded that Kenison does not teach "a first travel time" and "a second travel time." (See Appeal Br. 5.) Although Kenison's disclosed travel times do not represent "round trip" distances (see Reply Br. 2), they are nonetheless each a "travel time" representing a "distance" traveled by the acoustic signal in the borehole fluid (see Answer 23). 5 Appeal2014-003446 Application 12/796,817 acoustic mud velocity, and acoustic standoff or acoustic caliper." (Georgi, col. 5, lines 14--18.) The Examiner determines that it would have been obvious to one of ordinary skill in the art to combine an influx-estimating apparatus (e.g., Kenison' s apparatus 3 8) with the teachings of Georgi because "such combination can further serve as a caliper instrument." (Final Action 8.) The Appellants argue that "the combination of Kenison and Georgi" fails to teach the measurement of a difference between "a first travel time for the acoustic signal traveling the first round trip distance" and "a second travel time for the acoustic signal traveling the second round trip distance." (Appeal Br. 4--5, (emphasis omitted).) These arguments appear to be premised upon neither reference individually disclosing the determination of the difference between round-trip travel times. The Appellants point out, for example, that "there is no round-trip path in Kenison" and "[ n Jo difference between travel times of the two round-trip paths is used in Georgi." (Id. at 5.) We are not persuaded by these arguments because the Examiner's rejection is based on the combined teachings of Kenison and Georgi; and it is not necessary for either reference to individually teach the determination of the difference between round-trip travel times for influx-estimating purposes.4 In Kenison's disclosed influx-estimating apparatus 38, the travel times for the acoustic signal represent one-way-trip distances through mud to respective sensors 44 and 46. Georgi teaches that a travel time for an 4 See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non- obviousness cannot be established by attacking references individually where the rejection is based on the teachings of a combination of references"). 6 Appeal2014-003446 Application 12/796,817 acoustic signal through mud can instead represent a round-trip distance to and from a reflector. One of ordinary skill in the art would infer from the teachings of Georgi that Kenison's travel times for the acoustic signal could instead represent round-trip distances to and from respective reflectors. 5 The Appellants also argue that the claimed apparatus is not proved obvious "by demonstrating that each element was independently, known in the prior art" as there must also be "some articulated reasoning with some rational underpinning to support the legal conclusion obviousness." (Appeal Br. 6.) However, the Appellants do not contend that the motivation articulated by the Examiner (i.e., providing a caliper instrument) is unreasonable and/or without rational underpinnings. Instead, the Appellants assert that "the modification of Kenison with Georgi to provide a caliper is irrelevant to whether the combination actually teaches the claimed invention." (Appeal Br.7 (emphasis omitted)). Hence, the Examiner's articulated reasoning, and the Examiner's findings related to rational underpinnings, go unchallenged by the Appellants (See Answer 27.) Moreover, findings by the Examiner and/or evidence of record support a rationale based upon the combination of familiar elements according to known methods that yields predictable results. 6 As discussed 5 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (An obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim" as "the inferences and creative steps that a person of ordinary skill in the art would employ" can be taken into account). 6 See KSR 550 U.S. at 416 ("[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results"). See also MPEP Â§2143 Rationale (A). 7 Appeal2014-003446 Application 12/796,817 above, Kenison's influx-estimating apparatus 38 differs from the Appellants' claimed apparatus in that Kenison uses sensors (rather than reflectors) and Kenison uses one-way-trip travel times (rather than round-trip travel times). However, the Examiner finds these familiar elements, or details, are taught by Georgi. 7 The Examiner also finds that one of ordinary skill in the art could have combined these familiar elements. 8 In this combination, each reflector and round-trip travel time would perform the same function, namely the measurement of a travel time of an acoustic signal for mud- evaluating purposes. 9 The results of this combination are predictable in that Kenison monitors changes in the time delay to determine whether an influx of gas is happening (see Kenison i-f 14); and such a relative change would seemingly occur regardless of whether the time delays are determined from one-way-trip or round-trip travel times. Additionally or alternatively, findings by the Examiner and/or evidence of record support a rationale based upon a simple substitution of one element for another known in the field to yield a predictable result. 10 A prior art influx-estimating apparatus (i.e., Kenison's apparatus 38) is being 7 See e.g., Answer 30 ("One tool lacks particular details, but those details can be found in another tool"). 8 See e.g., Answer 30 ("One of ordinary skill in the art would have been able to combine the teachings of Kenison with those of Georgi"). 9 See e.g., Answer 30 ("[B]oth teachings involve downhole tools that utilize propagation of pressure variations in borehole fluid and measure travel time of sound in the fluid using acoustic transducers"). 10 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (When "a structure already known in the prior art [] is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result"); see also MPEP Â§2143 Rationale (B). 8 Appeal2014-003446 Application 12/796,817 altered by the substitution of reflectors for sensors and the substitution of round-trip travel times for one-way-trip travel times. 11 The Examiner finds that the substituted components and functions were known in the field; and the Examiner finds that one of ordinary skill in the art could have achieved the substitutions. 12 Also, as discussed above, the results of this substitution would have been predictable to one of ordinary skill in the art. As such, the Examiner establishes a prima facie case of obviousness even if the Examiner's reasoning that "such combination can further serve as a caliper instrument" (Final Action 8) is not factored into the analysis. Thus, we sustain the Examiner's rejection of independent claim 1under35 U.S.C. Â§ 103(a) as unpatentable over Kenison and Georgi (Rejection I). Dependent Claims 2-13 Claims 3, 4, and 10-13 depend directly or indirectly from independent claim 1 (see Claims App.), are rejected on the same ground as independent claim l (see Final Action 6), and are not argued separately (see Appeal Br. 7). Thus, they fall with independent claim 1; and we sustain the Examiner's rejection of dependent claims 3, 4, and 10-13 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison and Georgi (Rejection I). Claims 2 and 5-9 depend directly or indirectly from independent claim 1 (see Claims App) and are rejected on grounds involving Kenison 11 See e.g., Answer 30 ("One tool lacks particular details, but those details can be found in another tool"). 12 See e.g., Answer 30 ("One of ordinary skill in the art would have been able to combine the teachings of Kenison with those of Georgi, as both teachings involve downhole tools that utilize propagation of pressure variations in borehole fluid and measure travel time of sound in the fluid using acoustic transducers"). 9 Appeal2014-003446 Application 12/796,817 and Georgi in combination with additional prior art references (see Final Action 14--18). The Appellants argue only that these dependent claims patentably define over Kenison and Georgi "for at least the same reasons as [ c] laim 1" and that the additional applied prior art "fails to cure the deficiencies of the combination of Kenison and Georgi with regard to [c]laim 1." (Appeal Br. 7-8.) As we do not consider the Kenison-Georgi combination deficient with regard to independent claim 1, we are not persuaded by these arguments. Thus, we sustain the Examiner's rejection of dependent claim 2 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, and Hassan (Rejection II); we sustain the Examiner's rejection of dependent claims 5-8 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, and Takahashi (Rejection III); and we sustain the Examiner's rejection of dependent claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, Takahashi, and DiFoggio (Rejection IV). Independent Claim 14 The Appellants argue that "[c]laim 14 patentably defines over the combination of Kenison and Georgi for reasons that are similar to those discussed above with regard to [c]laim 1." (Appeal Br. 7.) Thus, for the same reasons discussed above in our analysis of independent claim 1, we sustain the Examiner's rejection of independent claim 14 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison and Georgi (Rejection I). Dependent Claims 15-20 Claims 15-20 depend directly or indirectly from independent claim 14 (see Claims App.) and are rejected on grounds involving Kenison 10 Appeal2014-003446 Application 12/796,817 and Georgi in combination with additional prior art references (see Final Action 14--15, 19-23). The Appellants argue only that these dependent claims patentably define over Kenison and Georgi "for at least the same reasons as [ c ]laim 14" and that the additional applied prior art "fails to cure the deficiencies of the combination of Kenison and Georgi with regard to [c]laim 14." (Appeal Br. 7-9.) As we do not consider the Kenison-Georgi combination deficient with regard to independent claim 14, we are not persuaded by these arguments. Thus, we sustain the Examiner's rejection of dependent claim 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, and Hassan (Rejection II); we sustain the Examiner's rejection of dependent claims 16-18 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, Hassan, and Takahashi (Rejection V); we sustain the Examiner's rejection of dependent claim 19 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, Hassan, Takahashi, and DiFoggio (Rejection VI); and we sustain the Examiner's rejection of dependent claim 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, and Frost (Rejection VII). Independent Claim 21 The Appellants argue "[c]laim 21 patentably defines over the combination of Georgi and Kenison for reasons similar to those discussed above with reference to [ c ]laim 1" and Chemali does not "cure the deficiencies of Georgi and Kenison." (Appeal Br. 9-10.) Thus, for the same reasons discussed above in our analysis of independent claim 1, we sustain the Examiner's rejection of independent claim 21under35 U.S.C. Â§ 103(a) as unpatentable over Kenison, Georgi, and Chemali (Rejection VIII). 11 Appeal2014-003446 Application 12/796,817 DECISION We AFFIRM the Examiner's rejections of claims 1-21. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12