Ex Parte LATRILLE et al

Patent Trials and Appeals BoardMar 26, 2019

11616750 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/616,750 12/27/2006 23718 7590 03/28/2019 Schlumberger Technology Center 10001 Richmond Avenue IP Administration Center of Excellence HOUSTON, TX 77042 FIRST NAMED INVENTOR FREDERIC LATRILLE 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. 19.0451 3035 EXAMINER WONG, ALBERT KANG ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 03/28/2019 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): SMarckesoni@slb.com jalverson@slb.com USDOCKETING@slb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FREDERIC LATRILLE, SHY AM B. MEHTA, and MICHAEL A. MONTGOMERY Appeal2017-003680 Application 11/616,750 Technology Center 3600 Before STEFAN STAICOVICI, BRANDON J. WARNER, and ARTHUR M. PESLAK, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frederic Latrille et al. ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1 and 3-14. See Appeal Br. 1, 6; Final Act. 1 (Office Action Summary); see also infra note 2 ( discussing claim 8). Claims 2 and 16-21 have been canceled, and claim 15 has been withdrawn. Appeal Br. 13 (Claims App.). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. According to Appellants, the real party in interest is Schlumberger Technology Corporation. Appeal Br. 3. Appeal2017-003680 Application 11/616,750 CLAIMED SUBJECT MATTER Appellants' disclosed invention relates generally to transferring data to or from a drilling tool while the tool is in a downhole drilling assembly. See Spec. ,r 1. Claims 1 and 10 are independent. Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. A method for transferring data between a surface computer and a downhole assembly comprising a first while drilling tool and a second while drilling tool, the method compnsmg: connecting the first and the second while drilling tools to a high-speed tool data bus wherein the first while drilling tool comprises a single data port and the high speed tool data bus is configured to transfer data from each of the tools to the single data port; connecting the surface computer to the single data port wherein the single data port is in communication with the surface computer; transferring data between the surface computer and the first while drilling tool through the single data port; and transferring data between the surface computer and the second while drilling tool through the single data port, wherein data is transmitted between the single data port and the surface computer without being stored. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Fincher Ballantyne US 2005/0024231 Al US 7,730,967 B2 2 Feb.3,2005 June 8, 2010 Appeal2017-003680 Application 11/616,750 REJECTION The following rejection is before us for review: Claims 1 and 3-14 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Ballantyne and Fincher. 2 Final Act. 2--4. ANALYSIS Appellants present argument against the rejection of independent claims 1 and 10 together (see Appeal Br. 6-12), and rely on the same arguments in addressing the rejection of the associated dependent claims (see id. at 12). We select independent claim 1 as representative of the issues that Appellants present in the appeal of this rejection, with remaining claims 3-143 standing or falling therewith. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner determined that a combination of teachings from Ballantyne and Fincher renders obvious the subject matter recited in claim 1. See Final Act. 2-3. Appellants argue that the rejection is deficient because 2 We note that the Appeal Brief (filed Nov. 10, 2015) is ambiguous with respect to claim 8, stating that Appellants appeal the rejection of claims 1, 3-7, and 9-14 (see Appeal Br. 1), but also acknowledging that claims 1 and 3-14 stand rejected (see id. at 6), and arguing all rejected claims together as a group (see id. at 6-12). We further note that a Corrected Claims Appendix to the Appeal Brief (filed Apr. 13, 2016) properly lists pending claim 8. The Notice of Appeal (filed Sept. 10, 2015) states generally that Appellants appeal "from the last decision of the examiner" (i.e., the Final Action (dated June 10, 2015)), which rejects pending claim 8. Thus, claim 8 (which remains pending and rejected) is before us for review as part of the instant appeal. See 3 7 C.F .R. Â§ 41.31 ( c) ("An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office."). 3 See supra note 2. 3 Appeal2017-003680 Application 11/616,750 of an asserted shortcoming with Ballantyne's telemetry unit being relied upon to teach the recited data port, urging that a data port ( or connector) includes defined structure that is absent from the telemetry unit. See Appeal Br. 6-8. Appellants further assert that Ballantyne and Fincher are insufficient for teaching transmission of data over a high speed tool bus without first storing it downhole. See id. at 8-11. After careful consideration of the record before us, Appellants' arguments do not apprise us of error in the Examiner's factual findings from Ballantyne or Fincher, which are supported by a preponderance of the evidence, or the Examiner's conclusion of obviousness, which is rationally articulated based on prior art teachings. In short, we sustain the Examiner's rejection of claim 1 based on the reasoned positions set forth therein and in light of the Examiner's responses to Appellants' arguments. See Final Act. 2-3; Ans. 5-10. We address Appellants' principal assertions below simply as a matter of emphasis. In particular, Appellants focus much of their argument on an assertion that the Examiner has interpreted the recited "data port" as a means-plus- function limitation, and that Ballantyne's telemetry unit is not a functional equivalent of a data port. See Appel Br. 6-8. However, as the Examiner expressly clarifies, this claim term was not interpreted as a means-plus- function limitation, but was simply given its broadest reasonable interpretation, consistent with Appellants' Specification, "which would include any structure to connect one communication device with another," including-per Appellants' Specification-wireless communication. Ans. 6; see id. at 5-6; see also Spec. ,r,r 15-18 ( describing that the data port may be a wireless port and that the surface computer may be connected to 4 Appeal2017-003680 Application 11/616,750 the downhole assembly via a wireless connection). Appellants' argument does not apprise us of error in the Examiner's position that the broadest reasonable interpretation of the recited data port is sufficiently taught by Ballantyne' s telemetry unit. See Final Act. 2-3; Ans. 5---6. Further, to the extent that Appellants suggest that the recited data port must be "a connector" specifically "having structure clearly defined in the specification," we disagree. Appeal Br. 8. Initially, such a suggestion is undermined by the breadth afforded by Appellants' Specification, as discussed above. More importantly, however, no such "defined structure" is recited in the claim itself. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well established that limitations not appearing in the claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 ( CCP A 19 82). Thus, although the claim is interpreted in light of the Specification, details or other limitations from the Specification are not read into the claim. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellants' argument does not apprise us of Examiner error. Appellants also assert that Ballantyne' s telemetry unit is incapable of transmitting data to the surface computer without the data first being stored. See Appeal Br. 9. As the Examiner explains, however, this limitation relating to transferring data was interpreted as sending the data as soon as it is available, rather than storing it for later transmission, where Ballantyne's telemetry unit sufficiently operates in this manner. See Ans. 8-10. Appellants do not submit a Reply Brief to identify error with respect to this reasonable claim interpretation or the corresponding teachings from 5 Appeal2017-003680 Application 11/616,750 Ballantyne. On the record before us, Appellants' assertion regarding Ballantyne does not apprise us of Examiner error. Additionally, Appellants contend that Fincher does not sufficiently teach a high speed data bus, as relied on in the rejection. See Appeal Br. 10-11. But the Examiner reasonably explains that Fincher teaches data transfer over fiber optic transmission lines, which are known to be "capable of very high speed communications," such that "the use of fiber optics is a clear teaching or suggestion of a high speed data bus." Ans. 7-9 ( citing Fincher ,r 11 ). Again, Appellants do not submit a Reply Brief to identify error with respect to this explanation of the relevant teachings from Fincher. On the record before us, Appellants' contention regarding Fincher does not apprise us of Examiner error. In conclusion, after careful consideration of the evidence of record and for the foregoing reasons, Appellants' arguments do not apprise us of error in the Examiner's findings or reasoning in support of the conclusion of obviousness. Accordingly, we sustain the rejection of independent claim 1, and claims 3-144 falling therewith, under 35 U.S.C. Â§ 103(a) as being unpatentable over Ballantyne and Fincher. DECISION We AFFIRM the Examiner's decision rejecting claims 1 and 3-14 under 35 U.S.C. Â§ 103(a) as being unpatentable over Ballantyne and Fincher. 4 See supra note 2. 6 Appeal2017-003680 Application 11/616,750 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7