Ex Parte Harmer et al

Patent Trial and Appeal Board

Nov 25, 2013

12127881 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD HARMER and LEE F. DOLMAN
____________

Appeal 2011-013244
Application 12/127,881
Technology Center 3600
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-8, 10-13, 16, 17, and 21-23 under 35 U.S.C. § 103(a) as
unpatentable over Ballantyne (US 2005/0279532 A1, published Dec. 22,
2005).1 We have jurisdiction under 35 U.S.C. § 6(b).

1 Although the claim listing of the Examiner’s ground of rejection fails to list
claim 10 (Ans. 3), the body of the rejection addresses the subject matter of
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We AFFIRM-IN-PART and we ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

CLAIMED SUIBJECT MATTER
The claimed subject matter relates to “a methodology and a system for
using multiple downhole sensors that are connected to the surface and/or to
each other via a data transmission medium incorporated into or extending
along oilfield tubulars, such as a drill string.” Spec. 3, para. [0019], ll. 1-4.
Claim 1, reproduced below, is illustrative of the appealed subject matter.
1. A system for use in a well, comprising:
a drillstring having at least a portion of wired drill pipes
comprising a plurality of drill pipes having a cable
communicatively coupled at successive joints;
a plurality of sensors deployed along the drillstring to
provide data from multiple locations along the drillstring during
a drilling operation, the data transmitted to the surface via the
wired drill pipes;
a depth encoder collecting information related to the
depth of the drillstring, the depth encoder time stamping the
information at the surface; and
a surface processor operatively coupled with the plurality
of sensors, the surface processor providing a time stamp to the
data at the surface and wherein the surface processor is adapted
to determine the position of each of the plurality of sensors
based on the data and the information.

claim 10 (see Ans. 6; see also Ans. 12 and App. Br. 8); therefore, we have
included claim 10 in the claim listing of this ground of rejection. In
addition, we have removed claim 20 from the claim listing because the
Examiner withdrew the rejection as to claim 20. Ans. 2.
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OPINION
Claims 1-7
Appellants have not presented arguments for the patentability of
claims 2-7 apart from independent claim 1. See App. Br. 8-14.2 Therefore,
in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select
independent claim 1 as the representative claim, with claims 2-7 falling with
claim 1.
The Examiner finds that Ballantyne substantially discloses the subject
matter of independent claim 1, including “a surface processor 50/52, 72,
130, 350, 252 . . . adapted to determine (i.e., figs. 1, 6-8) the position/
location of each of the plurality of sensors based on data and information
(i.e., figs[.] 3-5, 6, abstract: 14-17, 16, 30, 37: 28-33).” Ans. 3-4; see also
App. Br., Clms. App’x. With respect to the “adapted to . . . ” language, the
Examiner’s explains that Ballantyne’s “surface control unit/computer
requires calculating/identifying/determining/knowing position/location of
each of the plurality of sensors that made the measurement, since the
information/data providing the image depicted in fig. 3 are transmitted from
multipl[e] positioned sensors along the axis of the drill string.” Ans. 4.
Appellants note that they are “unable to locate any portion of the
[Ballantyne] reference that supports” the Examiner’s above-quoted
explanation. App. Br. 8-9. Appellants argue Ballantyne fails to “teach or
suggest that the surface processor determines the position of each of the

2 Appellants’ Appeal Brief does not have page numbers thereon. We
designate page 1 as the page beginning with the caption “IN THE UNITED
STATES PATENT AND TRADEMARK OFFICE . . . ” and ending with
the line “interest in this Appeal,” and pages 2-25 are numbered
consecutively therefrom with the Claims Appendix following thereafter.
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plurality of sensors based on the data and the information as required by
independent claim 1,” and “[t]here is absolutely no teaching or suggestion in
[Ballantyne] even related to determining the position of any sensor
positioned along the drill string.” App. Br. 8. In particular, with respect to
the Examiner’s finding based on Ballantyne’s Figure 3, Appellants argue
there is no teaching that the visual representation therein “permits
determining the position of the sensors along the string or that the position of
any sensor along the string is determined prior to generating this image,” and
“there is certainly no teaching or suggestion that the position of the sensors
in the wellbore are based on the information and the data, as required by
claim 1.” App. Br. 9.
The Examiner responds that, with respect to Figure 3, Ballantyne
discloses “the image 308 . . . of the drill string segment 30 is displayed on
the screen 302,” wherein “[t]he image 308 can include some or all of the
components and equipment making up the drill string segment 30 and also
identify the one or more vulnerable locations that may be susceptible to
failure or malfunction.” Ans. 10 (citing Ballantyne, para. [0047], ll. 1-6, and
figs. 1 and 3). The Examiner also responds that
[f]igure 1 of Ballantyne . . . depicts . . . a plurality of sensors
distributed [along] the drill string and BHA, and the image 308
is produced by the surface control unit/processor 50 based on
the data/information from the plurality of sensors including
azimuth X, inclination Y and depth Z, which represent the
location of the drilling assembly.
Ans. 10-11.
Appellants do not reply to the Examiner’s above-quoted response to
argument. See Reply Br. 2-6. Thus, Appellants have failed to persuasively
explain why Ballantyne’s “display [of] drilling status information such as
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BHA orientation (e.g., azimuth, inclination, depth)” (Ballantyne, para.
[0049]) does not disclose programming which is capable of performing
claim 1’s recitation of intended use of being “adapted to determine the
position of each of the plurality of sensors” (see App. Br., Clms. App’x).
Although Ballantyne may know the position of the sensors along the
drillstring 30 (see Ballantyne, para. [0030]), Ballantyne discloses that: (1)
“[t]he processor 350 is programmed to perform periodic or continuous
diagnostics on the drilling system 100 by using the measurements from the[]
distributed sensors 352, 354”; (2) “[t]he processor 350 (downhole computer
or combination of downhole and surface computers) utilizes the
measurement values to determine the physical condition of the drilling
system”; and (3) “the results of the computations associated with these
determinations are visually presented on a graphical user interface such as a
display panel.” See Ballantyne, paras. [0030], [0058], and [0059]. Based on
the aforementioned disclosure, Ballantyne appears to be using the surface
processor and the data from the sensors and information from the depth
encoder in order to determine the X, Y, Z coordinates or position within the
well in order to know where certain conditions are occurring within the well.
See Ballantyne, para. [0048]. As Ballantyne’s programming to find X, Y, Z
coordinates within the well could be applied to the plurality of sensors to
determine their position within the well, Appellants’ arguments do not
apprise us of Examiner error as the Examiner has shown by a preponderance
of the evidence that Ballantyne has programming capable of performing the
recited intended use of being “adapted to determine the position of each of
the plurality of sensors [in the well] based on the data and the information.”
See Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1348 (Fed. Cir. 2013)
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(“[P]rogramming creates a new machine, because a general purpose
computer in effect becomes a special purpose computer once it is
programmed to perform particular functions pursuant to instructions from
program software.”) (quoting In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir.
1994)).
Appellants also argue that the Examiner’s rejection should be reversed
for “failing to consider and point out how the limitation in claim 1 related to
the depth encoder is taught or suggested by Ballantyne.” App. Br. 11. The
Examiner finds that Fig[ure] 3 of Ballantyne “ . . . depict[s] the image of
drilling assembly created by the surface control unit/computer 50 based on
all the information/data including depth [Z] (fig. 4) with respect to time,”
and “the surface control unit/ computer [50] is considered the depth encoder,
since the surface control unit/computer (hardware/software) collects the
information/data including the depth [Z] and modifies the information/data
to certain format for viewing the assembly.” Ans. 4. The Examiner’s
finding adequately points out that the Examiner considers the surface control
unit of Ballantyne to be performing the depth encoder function to thus serve
as the depth encoder. We agree with the Examiner’s finding and are not
apprised of Examiner error based on Appellants’ argument that Ballantyne
fails to teach or suggest a depth encoder.
With respect to claim 1, the Examiner also finds that Ballantyne fails
to disclose “time stamping the information at the surface and the surface
processor providing a time stamp to the data at the surface”; however,
Ballantyne “teaches the synchronizing between the downhole and surface
clock/control unit,” and synchronizing between downhole and surface
clock/control unit reads on time stamping the information at the surface,
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since “synchronizing” defines occurring at the same time/operating in
unison, and . . . [the] surface control unit/computer communicating with the
sensors is a time stamping since the computer generally contains an internal
clock system and timestamp is the time at which an event is recorded by the
computer. Ans. 5 (citing Ballantyne, p. 2, paras. [0012] and [0015], p. 4,
para. [0035], and p. 8, para. [0065]). Thus, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify
Ballantyne to “utilize the surface control unit/computer for providing time
stamping [of] the information at the surface, in an attempt to achieve
predictable performance of downhole sensor system.” Id. Appellants argue
that Ballantyne teaches away from time stamping data and information at the
surface as required by claim 1. App. Br. 11. More particularly, Appellants
argue that Ballantyne “teaches time stamping the data downhole” by stating
that “‘sensor measurement data is time-stamped, pre-processed and stored in
a memory module [ . . . ] [and] can be retrieved when the drill string is
pulled out of the wellbore and/or transmitted in situ.’” App. Br. 11-12
(quoting Ballantyne, p. 2, para. [0012]).
We are not persuaded by Appellants’ argument that Ballantyne
teaches away from time stamping data and information at the surface. “The
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed . . . .”
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). As pointed out by
Appellants, Ballantyne teaches that time stamped sensor measurement data
can be “transmitted in situ” and thus, the periodic synchronization of the
surface clock 70 and the downhole clock 66, described in Ballantyne’s
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paragraph [0065], and the fact that the synchronization signal is transmitted
to the surface via a suitable telemetry system is enough to suggest that the
surface processor may be modified to time stamp the data at the surface.
Thus, we are not apprised of Examiner error by Appellants’ teaching away
argument.
To the extent that Appellants are not arguing teaching away, but rather
are arguing that Ballantyne “disclose[s] the opposite of what is alleged by
the Examiner,” i.e., “that the time stamping is performed downhole” (Reply
Br. 4), we note that the Examiner acknowledged that Ballantyne does not
disclose time stamping the information at the surface, but the Examiner
modified Ballantyne to time stamp at the surface (Ans. 5). The Examiner’s
reasoning for the modification is that “it would have been obvious to
synchronize downhole/surface clock/processor or utilize the surface control
unit/computer for providing time stamping the information at the surface, in
an attempt to achieve predictable performance of downhole sensor system.”
Id. Appellants have failed to explain why the Examiner’s articulated
reasoning for modifying Ballantyne to time stamp the information at the
surface lacks a rational underpinning. See KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (holding that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”). Thus, we are not apprised of Examiner
error based on Appellants’ arguments.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 2-7 which fall therewith, under 35 U.S.C. § 103(a) as
unpatentable over Ballantyne.
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Claim 8
Claim 8 depends from claim 1, and recites that the “depth encoder
determine[s] depth by accounting for stretching or compression of the
drillstring.” App. Br., Clms. App’x.
The Examiner finds that Ballantyne’s “‘hook load’ and ‘mud flow
rates’ [which] reads on accounting for stretching or compression of the
drillstring.” Ans. 6 (citing Ballantyne, p. 2, para. [0014]); see also Spec. 15-
16, para. [0057].
Appellants argue that “[n]owhere does Ballantyne . . . teach any
method of determining depth by accounting for stretching or compression, as
required by claim 8.” App. Br. 14.
We are not persuaded by Appellants’ argument. The Examiner’s
citation to lines 5-8 of paragraph [0057] of Appellants’ Specification, i.e.,
“[i]n other examples, the depth encoder may account for stretching and
compression of the drillstring, and it may acquire[] data related to the
hookload, mud flow rates, mud density, and weight on bit,” suggests that
hookload, mud flow rates, and weight on bit are related to either stretching
or compression of the drillstring. Appellants have not established that it was
unreasonable for the Examiner to conclude that Ballantyne’s depth encoder
may reasonably be construed as determining depth by accounting for
stretching or compression of the drillstring. There is no requirement that the
rejection be in the language or format of each claim rejected; rather the
proper test relates to the substance of the rejection, not the format. Cf. In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (“The elements must be arranged
as in the claim under review, but this is not an ‘ipsissimis verbis’ test.”)
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(citations omitted). Thus, we are not persuaded of Examiner error by
Appellants’ argument.
Accordingly, we sustain the Examiner’s rejection of claim 8 under 35
U.S.C. § 103(a) as unpatentable over Ballantyne.
Claim 10
Claim 10 depends from claim 1, and recites “a clock operatively
coupled to the surface processor and configured to provide the time stamp to
the data.” App. Br., Clms. App’x.
The Examiner finds that Ballantyne discloses “a clock 66, 86, 70
operatively coupled to the surface processor [50] and configured to provide
the time stamp to the data,” and “the surface processor/computer [50]
generally contains internal clock system to provide the time stamp to the
data.” Ans. 6 (citing Ballantyne, p. 8, para. [0065] and figs. 1, 2A, and 2B).
Appellants argue that Ballantyne “do[es] not disclose a clock
operatively coupled to the surface processor and configured to provide the
time stamp to the data as required by dependent [c]laim 10,” because
Ballantyne’s Figures 2A and 2B “depict that a downhole clock is operatively
coupled to the downhole sensor.” App. Br. 16. Appellants then quote
language from Ballantyne’s paragraph [0065] and paraphrase other language
from Ballantyne’s paragraph [0054]. Id.
The Examiner responds that “[t]he surface control unit contains
computer with internal clock system, and thus time stamping data/
information is occur[ing] at the surface.” Ans. 12.
We are not persuaded by Appellants’ argument. Ballantyne’s clocks
66 and 86 are operatively coupled to the surface processor 50 via short-hop
telemetry 62 and 82, respectively, so as to be configured to provide the time
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stamp to the data. See Ballantyne, p. 4, para. [0033]. Further, “clock 66 is
synchronized with a surface clock 70” (Ballantyne, p. 4, para. [0035]) and
thus, is also configured to provide the time stamp to the data. Thus, we are
not apprised of Examiner error by Appellants’ argument.
Accordingly, we sustain the Examiner’s rejection of claim 10 under
35 U.S.C. § 103(a) as unpatentable over Ballantyne.
Claims 11-13 and 17
Appellants have not presented arguments for the patentability of
claims 12, 13, and 17 apart from independent claim 11. See App. Br. 8-9,
11-14. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011),
we select independent claim 11 as the representative claim to decide the
appeal of the rejection of these claims, with claims 12, 13, and 17 falling
with claim 11.
Independent claim 11 is directed to a method including steps of
“sensing a parameter in a well using a plurality of sensors disposed on a
drillstring; applying a time stamp to the parameter at the surface, the time
stamp relating to a time in which the parameter was measured by one of the
plurality of sensors or received by a surface processor;” “collecting data at
the surface to determine a depth of the drillstring, the data including
information to account for stretching or compression of the drillstring;” and
“determining a position of the sensor in the well based on the data and the
time stamp of the parameter.” App. Br., Clms. App’x.
The Examiner sets forth similar findings for claim 11 as those
discussed supra for claim 1 (Ans. 7-8), and makes a similar conclusion, i.e.,
it would have been obvious to one of ordinary skill in the art “to synchronize
downhole/surface clock/processor or utilize the surface control
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unit/computer for applying a time stamp to the parameter at the surface, in
an attempt to achieve predictable performance of downhole sensor system”
(Ans. 8).
Appellants present similar arguments to those discussed supra for
claim 1.
For reasons similar to those discussed supra, we are not persuaded by
Appellants’ arguments of Examiner error.
Accordingly, we sustain the Examiner’s rejection of independent
claim 11, and claims 12, 13, and 17 which fall therewith, under 35 U.S.C.
§ 103(a) as unpatentable over Ballantyne.
Claim 16
Claim 16 depends from claim 11, and recites that the step of
“applying the time stamp is performed by the surface processor, using a
clock operatively coupled to the surface processor.” App. Br., Clms. App’x.
The Examiner makes similar findings to those discussed supra for claim 10,
and Appellants set forth arguments similar to those discussed supra for
claim 10. Ans. 8 and 11-13; App. Br. 18-19.
For reasons similar to those discussed supra, we are not persuaded by
Appellants’ arguments of Examiner error.
Accordingly, we sustain the Examiner’s rejection of claim 16 under
35 U.S.C. § 103(a) as unpatentable over Ballantyne.
Claim 21
Claim 21 depends from claim 17, and recites “applying a time stamp
to a pressure measurement of the first sensor and the second sensor at the
surface.” App. Br., Clms. App’x.
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The Examiner finds claim 21’s recitation disclosed by Ballantyne at
paragraphs [0006], [0011], [0012], [0015], [0039], [0043], and [0044] and
figs. 3-5.
Appellants argue that claim 21 was intended to depend from claim 20,
that the Examiner applied the rejection as if claim 21 was dependent upon
claim 20, and Appellants request that claim 21 be reviewed by the Board as
dependent upon claim 20. App. Br. 20. Since the Examiner withdrew the
rejection of claim 20 (Ans. 2) and thus, claim 20 is not subject to this appeal,
we will address claim 21 as it is worded, i.e., dependent upon claim 17.
Appellants also argue that Ballantyne “teach[es] that data is ‘time
stamped’ downhole,” whereas “[c]laim 21 requires applying a time stamp to
a pressure measurement of the first sensor and the second sensor at the
surface.” App. Br. 21.
For reasons similar to those discussed supra with respect to claim 1,
we are not persuaded by Appellants’ arguments of Examiner error, because
the Examiner found it would be obvious to modify Ballantyne to time stamp
the data and the information as the surface, and Appellants have not
adequately explained why the Examiner’s articulated reason lacks rational
underpinning.
Accordingly, we sustain the Examiner’s rejection of claim 21 under
35 U.S.C. § 103(a) as unpatentable over Ballantyne.
Claims 22 and 23
Claim 22 depends from claim 18, and recites “determining a position
of the first sensor and the second sensor based on the time stamp.” App. Br.,
Clms. App’x. Claim 23 depends from claim 19, and recites that the step of
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“determining the position of the first sensor and the second sensor includes
accounting for stretching and compression of the drillstring.” Id.
Appellants cancelled claims 18 and 19 on which claims 22 and 23,
respectively, depend. App. Br. 2. The Examiner indicates that claims 22
and 23 were rejected as if they were dependent on claim 11. Ans. 13-14.
Appellants argue that claims 22 and 23 were intended to depend from
independent claim 20. App. Br. 21 and 23. However, the Examiner
responds that claim 20 does not include the time stamp or determining a
position of the first sensor and the second sensor, and therefore lacks
antecedent basis. Ans. 13-14.
Since claims 22 and 23 depend from cancelled claims 18 and 19,
respectively, one of ordinary skill in this art would not be able to determine
the metes and bounds of this subject matter with adequate precision.
Our analysis of claims 22 and 23 indicates that considerable
speculation as to the meaning of the terms employed and assumptions as to
the scope of the claimed subject matter needs to be made. A rejection under
35 U.S.C. § 103 should not be based on such speculation and assumptions.
In re Steele, 305 F.2d 859, 862 (CCPA 1962).
Accordingly, we do not sustain the Examiner’s rejection of claims 22
and 23 under 35 U.S.C. § 103(a) as unpatentable over Ballantyne.

NEW GROUNDS OF REJECTION
Claims 22 and 23 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention. As noted
supra, we are unable to ascertain the metes and bounds of these claims, and
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one of ordinary skill would not have been able to do so. This rejection is
made under the provisions of 37 C.F.R. § 41.50(b).

DECISION
We AFFIRM the Examiner’s decision to reject claims 1-8, 10-13, 16,
17, and 21.
We REVERSE the Examiner’s rejection of claims 22 and 23, and we
ENTER A NEW GROUND OF REJECTION of claims 22 and 23 under 35
U.S.C. § 112, second paragraph, as indefinite, pursuant to our authority
under 37 C.F.R. § 41.50(b).

FINALITY OF DECISION
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellants may file a single request for rehearing within two months of the
date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 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 Appellants, 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
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reconsidered by the examiner, in which event the proceeding
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. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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