Ex Parte McGlothen et al

Patent Trial and Appeal BoardDec 19, 2012

11458173 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JODY R. MCGLOTHEN and JEFFERY R. ACKER ____________________ Appeal 2010-010678 Application 11/458,173 Technology Center 3600 ____________________ Before: WILLIAM V. SAINDON, LYNNE H. BROWNE, and BARRY L. GROSSMAN, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010678 Application 11/458,173 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A window cutting system, comprising: a cutting assembly including multiple cutting faces for cutting the window; and a diverter for guiding displacement of the cutting assembly relative to the window, the diverter including multiple separate guide paths for the respective multiple cutting faces, at least one guide path being laterally offset from another guide path at a same longitudinal position along the diverter. References The Examiner relies upon the following prior art references: Brunet US 6,186,233 B1 Feb. 13, 2001 Neff GB 2 420 359 A May 24, 2006 Rejections Appellants seek review of the following rejections (App. Br. 1, 9)1: Claims 15-17 and 19, rejected under 35 U.S.C. §112, second paragraph; and 1 The rejection of claim 2 under 35 U.S.C. §112, first paragraph, has been withdrawn by the Examiner. Ans. 3. Appeal 2010-010678 Application 11/458,173 3 Claims 1-20, rejected under 35 U.S.C. §103(a) as being unpatentable over Brunet in view of Neff. ANALYSIS Claims 15-17 and 19 Rejected Under 35 U.S.C. §112 Independent claim 14, reproduced below, is a method claim. 14. A method of cutting a window through a tubular string in a subterranean well, the method comprising the steps of: positioning a diverter in the tubular string, the diverter including multiple separate guide paths in at least one lateral cross-sectional plane through the diverter for respective multiple cutting faces of a cutting assembly, each of the guide paths providing a separate wear surface for the respective cutting face; and cutting the window. In relevant part, claim 14 calls for two steps – “positioning a diverter” and “cutting the window.” Claim 15, dependent on claim 14, is reproduced below. 15. The method of claim 14, further comprising the step of contacting the guide paths with the cutting faces to thereby form the window, after the positioning step. Claim 15 calls for an additional step (“further comprising the step …”). The additional step is “contacting the guide paths with the cutting faces to thereby form the window, after the positioning step.” (emphasis added). Relevant to the issue raised by Appellants, the Examiner found that claim 14 positively recites the step of “cutting the window.” Ans. 3. Appellants do not dispute this conclusion regarding claim 14. App. Br. 19; Appeal 2010-010678 Application 11/458,173 4 Reply Br. 16. 2 The Examiner also found that it is “unclear whether the ‘forming’ of the window recited in claim 15 is the same as the ‘cutting’ of the window from claim 14.” Ans. 3. The Examiner found that the phrase “to thereby form” in claim 15 implies that contacting the guide paths by the cutting faces actually forms the window, resulting in claim 15 reciting a step of forming the window, which is in addition to the step of “cutting the window” in claim 14. Ans. 7. The Examiner concluded, therefore, that claim 15 “is confusing and indefinite” and thus fails to satisfy the requirements of 35 U.S.C. §112, second paragraph. Id. Appellants argue that claim 15 does not recite any step of “forming” the window; and that the “contacting step” of claim 15 need not be, and is not necessarily, part of “the window cutting step of claim 14.” Reply Br. 16. They also argue that the “qualifier, ‘to thereby form the window’ is a statement of the reason for contacting the guide paths with the cutting faces,” and that the “contacting step” is “so that the window will be formed.” Reply Br. 17-18. The Patent and Trademark Office determines the scope of claims in patent applications giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,1364 (Fed. Cir. 2004). An essential purpose of the examination process is to determine whether or not the claims are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as 2 The Appeal Brief and the Reply Brief are nearly identical. The Reply Brief repeats the same arguments Appellants made in the Appeal Brief, with very minor deviation. Citation will be made to the Reply Brief unless citation to the Appeal Brief is necessary. Appeal 2010-010678 Application 11/458,173 5 possible, during the administrative process. In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected. Id. Contrary to Appellants’ arguments that the “contacting step” is “so that the window will be formed” (Reply Br. 18, emphasis added), claim 15 does not state a future intended step. As found by the Examiner, claim 15 states that the additional step added in claim 15 is for the purpose of “thereby” forming the window. Ans. 7. The Specification uses the phrase “to thereby form” to mean the result of cutting through the casing (e.g., Spec. 1, l. 23 – 2, l. 1 – “lateral deflection causes the mills to cut through the casing string to thereby form a window in the casing sidewall” (emphasis added)). Thus, in light of the Specification, “cutting the window” in claim 14 and contacting the guide paths “to thereby form” the window in claim 15 both result in a window being formed and thus are redundant. Appellants’ argument concerning the meaning of the preposition “to” is not persuasive of error. Reply Br. 18-19. The focus on the word “to” is misplaced and fails to consider the entire infinitive phrase3 at issue, which is “to thereby form the window,” in the context of the entire claim. Claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“proper claim construction ... demands interpretation of the entire claim in context, not a single element in isolation.”). 3 More precisely, this is a split infinitive phrase, where the adverb “thereby” is placed between the two parts of the infinitive verb “to form”, thus splitting the word “to” from the word “form”. Appeal 2010-010678 Application 11/458,173 6 Appellants ignore the word “thereby.” The word “thereby” is an adverb that means “by that means; because of that.”4 Thus, claim 15 states that because of contacting the guide paths after the diverter has been positioned the cutting faces form the window. However, the claim already includes a step of cutting a window. Appellants also admit that the “step recited in claim 15 (contacting the guide paths with the cutting faces) can occur while cutting the window, it can also occur while the window is not actually being cut.” Reply Br. 18 (emphasis added). This admission confirms that it is unclear whether the “forming” of the window recited in claim 15 is the same as the “cutting” of the window from claim 14, as found by the Examiner. In reviewing a claim for compliance with 35 U.S.C. § 112, second paragraph, the examiner must consider the claim as a whole to determine whether the claim apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by 35 U.S.C. § 112, second paragraph, by providing clear warning to others as to what constitutes infringement of the patent. MPEP 2173.02 (II); see also, e.g., Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000). Here, as found by the Examiner, claim 15 is “confusing and indefinite” (Ans. 7) and thus does not provide the clarity, particularity, and precision required by Section 112, second paragraph. Appellants have not pointed to any evidence or stated any persuasive reasoning to apprise us that the Examiner erred in his findings and conclusions regarding the rejection of claims 15-17 and 19 under §112, 4 THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000). Appeal 2010-010678 Application 11/458,173 7 second paragraph. Accordingly, we affirm the rejection of claim 15 and claims 16, 17, and 19 dependent on claim 15. Claims 1-20 Rejected Under 35 U.S.C. § 103(a) Claims 1-6, 8-12, 14-18 and 20 Claim 1 calls for a cutting assembly including multiple cutting faces for cutting the window. Claim 1 also calls for a diverter for guiding the cutting assembly relative to the window, with the diverter including multiple separate guide paths for the respective multiple cutting faces. Also, as called for in claim 1, at least one of the guide paths is laterally offset from another guide path at a same longitudinal position along the diverter. With regard to claim 1, the Examiner found Brunet discloses a window cutting system, comprising multiple cutting faces (16, 35) for cutting the window; and a diverter for guiding displacement of the cutting assembly relative to the window. Ans. 4. The Examiner also found that the diverter included multiple separate guide paths for the respective multiple cutting faces. Id. However, the Examiner noted that since Brunet discloses that the cutting faces are provided on separate drill strings, it therefore fails to disclose the multiple cutting faces being supported on a single cutting assembly. Id. The Examiner found that Neff discloses a window cutting system having a cutting assembly with multiple cutting faces (8, 9) supported on a single drill string. Ans. 4. The Examiner concluded that it would have been obvious to a person of ordinary skill in the art, at the time the invention was made, to have modified Brunet's window cutting system to have both cutting faces on a single assembly as shown by Neff. Ans. 4. Appeal 2010-010678 Application 11/458,173 8 The rationale for the modification proposed by the Examiner based on the applied references was that the modified structure would increase the rate of penetration, “thereby leading to faster sidetracking” by eliminating the need to run multiple drill strings. Ans. 4. Appellants admit that Brunet describes a cutting assembly with multiple guide surfaces 18, 33. Reply Br. 20. Appellants also admit that Brunet describes that a second bit 21 could be combined with the first drill bit 16. Reply Br. 21.5 Appellants argue, however, that Brunet’s guide surfaces 18, 33 do not together guide any cutting assembly that includes multiple cutting faces. Reply Br. 20. According to Appellants, Brunet discloses that a first drill bit16 is used to cut a window 20 and then, in a separate milling operation, a second drill bit 35 is used to cut a keyway 51. Id. Appellants argue that the first drill bit 16 is guided by the first guide surface 18 and, in a separate operation, the second drill bit 35 is guided by the second guide surface 33. Id. According to Appellants, Brunet does not suggest that the first and second drill bits are included in an overall cutting assembly. Reply Br. 21. Appellants argue that, if Brunet’s window cutting system were to be modified so that both of the drill bits 16, 35 were incorporated into a single cutting assembly (as proposed in the Office Action), Brunet’s window cutting system would not function as intended and the window 20 and keyways 50, 51 would not be properly formed. Furthermore, Appellants argue that Brunet teaches away from conveying the second drill bit 35 with the first drill bit 16. Reply Br. 26. 5 We also note that Appellants state in their patent application that a window milling system having a lead mill and a follow mill on a single drill string was known in the prior art. Spec. 6, ll. 3-9; see also fig. 1. Appeal 2010-010678 Application 11/458,173 9 We agree with Appellants. The Examiner reasoned that one of ordinary skill could have combined the two milling bits (16, 35) of Brunet onto a single string as advised by Neff-with the smaller bit 35 ahead of larger bit 16-simply to achieve faster formation of the initial window 20, before the keyway was formed. Ans. 8. However, the claimed invention is more than two milling bits on a single drill string. Such an arrangement is admitted as prior art (see fig. 1 of the application showing lead mill 20 and follow mill 22 on a single drill string). The combination of Brunet and Neff proposed by the Examiner would result in a structure which seemingly renders Brunet unsatisfactory for its intended purpose, and thus there appears to be no rational underpinning for making the proposed modification in the manner suggested by the Examiner. In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). In effect, the Examiner’s proposed combination would frustrate the operation of Brunet. One purpose of Brunet is providing an assembly for down hole milling of at least one longitudinal window and at least one orientation key-way in communication with the longitudinal window. Col. 8, ll. 25-28. The second drill bit 35 in Brunet, to which the Examiner cited, is for the specific purpose of drilling the down hole key-way 51. Col. 12, ll. 16-20. Putting the multiple cutting faces (16, 35) of Brunet on a single assembly would result in the single assembly being guided by one of the multiple guide surfaces (18, 33), but not both. Thus, either the window or the key-way would be cut, but not both. Cutting both a window and a key- way is the fundamental objective of Brunet, and this objective would appear to be frustrated by the combination proposed by the Examiner. Appeal 2010-010678 Application 11/458,173 10 The Examiner’s rejection of claims 1-6, 8-12, 14-18, and 20 are all premised on this deficiency. Accordingly, we reverse the rejection of claims 1-6, 8-12, 14-18 and 20 under 35 U.S.C. § 103(a). Claims 7, 13 and 19 Rejected Under 35 U.S.C. § 103(a) Claim 7 calls for the cutting face to oscillate as it traverses the guide path. Appellants argue that a prima facie case of obviousness has not been made out for these claims because Neff does not describe that a guide path causes a cutting face to oscillate. Reply Br. 28. Because the rejections of the claims on which claims 7, 13, and 19 depend have been reversed, we similarly reverse the rejections of claims 7, 13, and 19 because the Examiner’s rejection of these claims does not cure the deficiency identified above. DECISION The rejection of claims 15-17 and 19 under 35 U.S.C. §112, second paragraph, is affirmed. The rejection of claims 1-20 under 35 U.S.C. §103(a) is reversed. AFFIRMED-IN PART mls