Ex Parte Menger et al

Patent Trial and Appeal BoardMar 31, 2017

13053415 (P.T.A.B. Mar. 31, 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. 13/053,415 03/22/2011 Christian Menger 92.1156-US-NP 8201 23718 7590 04/04/2017 Schlumberger Technology Center Intellectual Property Counsel Houston Formation Evaluation Intergration 200 Gillingham Lane MD-9 Sugar Land, TX 77478 EXAMINER GRAY, GEORGE STERLING ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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 CHRISTIAN MENGER and NOBUYOSHINIINA Appeal 2015-007151 Application 13/053,415 Technology Center 3600 Before JILL D. HILL, JEFFREY A. STEPHENS, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christian Menger and Nobuyoshi Niina (“Appellants”) seek review under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final Office Action dated September 19, 2014 (“Final Act.”), and as further explained in the Advisory Action dated November 18, 2014 (“Adv. Act.”), rejecting claims 1, 3—7, and 16-20.1 Claims 2 and 9 have been canceled. Br. 2. The Examiner indicates that claims 8 and 10—15 are allowable. Adv. Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Schlumberger Technology Corporation as the real party in interest. Br. 1. Appeal 2015-007151 Application 13/053,415 BACKGROUND The disclosed subject matter relates to a flex joint for downhole drilling applications. Spec., Title. Claims 1 and 16 are independent. Claim 1 is reproduced below, with emphasis added: 1. A system to enable bending in a borehole, comprising: a flex joint having a first component pivotably coupled to a second component via a universal joint, the flex joint further comprising a spring assembly and a sleeve rotationally affixed to one of the first component and the second component and unattached with respect to the other of the first component and the second component, the sleeve extending past the universal joint and being of sufficient size to allow pivoting motion of the second component with respect to the first component within the sleeve, the sleeve comprising a mechanism to limit the relative pivoting motion to a maximum offset angle, the spring assembly being disposed within the sleeve and adjustable to vary the bending stiffness of the first component with respect to the second component. REJECTIONS 1. Claims 1, 3, 4, and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Camp (US 7,270,198 B2, issued Sept. 18, 2007), Alexy (US 5,808,191, issued Sept. 15, 1998), and Hisaw (US 5,797,453, issued Aug. 25, 1998). 2. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Camp, Alexy, Hisaw, and Watkins (US 7,748,474 B2, issued July 6, 2010). 2 Appeal 2015-007151 Application 13/053,415 3. Claims 16—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Camp, Alexy, Hisaw, and Watkins. DISCUSSION Rejection 1 — The rejection of claims 1, 3, 4, and 7 Appellants argue the patentability of independent claim 1 and do not separately argue claims 3, 4, and 7, which depend from claim 1. Br. 5—8. Thus, we address claim 1, with claims 3, 4, and 7 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). Claim 1 recites: a flex joint having a first component pivotably coupled to a second component via a universal joint, the flex joint further comprising ... a sleeve . . . , the sleeve . . . being of sufficient size to allow pivoting motion of the second component with respect to the first component within the sleeve, the sleeve comprising a mechanism to limit the relative pivoting motion to a maximum offset angle. In the rejection, the Examiner identified (1) element 24 in Camp as the “first component,” (2) element 27 as the “second component,” (3) element 26 as the “universal joint,” (see Final Act. 3 (discussing Camp, Fig. 4, col. 6,11. 29-33)) and (4) elements 34, 36 as the “sleeve” (see Final Act. 4 (discussing Camp, Figs. 2, 3, col. 6,11. 10-13, 23—33)). Appellants argue that the combination of references relied on “fails to disclose, teach, or suggest” a flex joint comprising a sleeve ‘“being of sufficient size to allow pivoting motion of the second component with respect to the first component within the sleeve, the sleeve comprising a mechanism to limit the relative pivoting motion to a maximum offset angle’ as recited in independent claim 1.” Br. 8. Appellants argue that: 3 Appeal 2015-007151 Application 13/053,415 [T]he fixed bend 36 described in the Camp reference holds drive shaft 24 and orienter drive shaft 27 at a fixed angle with respect to each other. The flexible coupling 26 allows the drive shaft 24 and the orienter drive shaft 27 to rotate together within the fixed bend 36, but the fixed bend 36 is not of sufficient size to allow the drive shaft sections to pivot with respect to each other up to a maximum offset angle within the fixed bend 36. Br. 7. The Examiner responds that “[t]he term ‘allow’ with respect to pivoting motion is very broad and would include any relative motion in a plane defined at any time by the two shafts.” Ans. 2. The Examiner states: Camp chose a universal joint 26 which, generally, would allow pivoting between the shafts. Absent some structure forcing a single, unchangeable angle between the shafts, in any plane, some pivoting will occur. No such structure is shown. To the contrary, Camp Fig. 4 clearly shows clearance between the shafts and the inside of the sleeve 34, 36 and pivoting will occur to the extent allowed by such clearance. Movement of shaft 27 to the limited extent provided by such clearance is compatible with both the arcuate and straight ahead depicted in Figs. 2 and 3, respectively. Id. Figure 4 of Camp is reproduced below: 4 Appeal 2015-007151 Application 13/053,415 Camp discloses that “FIG. 4 is a side elevational schematic, in partial section, of the orienter of the present invention.” Camp, col. 4,11. 66—67. Although patent drawings not designated as drawn to scale should not generally be relied on for measurements or to define precise proportions of depicted elements if the specification is silent on the issue, see Hockerson- Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000), that does not mean “that things patent drawings show clearly are to be disregarded,'1'’ In reMraz, 455 F.2d 1069, 1072 (CCPA 1972). Here, we are not apprised of error in the Examiner’s finding (Ans. 2) that Figure 4 discloses clearance between, for example, element 27 (the identified “second component”) and the inside of element 34, 36 (the identified “sleeve”). See Mraz, 455 F.2d at 1072; see also In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“[A] drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference patent.”). Further, we agree with the Examiner that universal joint 26 in Camp would allow at least some pivoting motion of element 24 with respect to element 27 absent external structure forcing an unchanging angle between the longitudinal axes of elements 24 and 27. For these reasons, we see no error in the Examiner’s determination that the identified “sleeve”—elements 34, 36—are “of sufficient size to allow pivoting motion of the second component with respect to the first component within the sleeve, the sleeve comprising a mechanism to limit the relative pivoting motion to a maximum offset angle,” as required by claim 1. We turn now to Appellants’ argument that “one of ordinary skill in the art would understand the nature of a fixed bend to be that of a device which 5 Appeal 2015-007151 Application 13/053,415 holds the internal shaft sections at a fixed angle to enable controlled, deviated drilling along a desired trajectory” and “[otherwise, the fixed bend would not work because there would effectively be no control over the drilling direction.” Br. 7; id. (“[T]he Camp structure uses the fixed bend 36 to establish the drilling direction and thus it must hold the drive shaft 24 and the orienter drive shaft 27 at a fixed angle with respect to each other. Otherwise, the Camp structure would not function and certainly would not be capable of drilling in a controlled direction.”); id. at 6 (“The shaft sections within the fixed bend are specifically held against pivoting with respect to each other so as to avoid uncontrolled drilling.”). As an initial matter, we agree with the Examiner (Ans. 3) that Appellants have not identified record evidence supporting the asserted views of one of ordinary skill in the art at the time of the invention. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Moreover, Appellants have not shown that the amount of pivoting motion of element 27 with respect to element 24 permitted by the clearance identified (Ans. 2; Camp, Fig. 4) would necessarily cause, for example, “uncontrolled drilling.” Br. 6. For the reasons set forth above, we sustain the rejection of claim 1 as unpatentable over the combined teachings relied upon by the Examiner. Claims 3, 4, and 7 fall with claim 1. Rejection 2 — The rejection of claims 5 and 6 Appellants do not separately argue claims 5 and 6 (Br. 8—9), which depend from claim 1. Thus, for the reasons discussed above (see supra Rejection 1), we sustain the rejection of claims 5 and 6. 6 Appeal 2015-007151 Application 13/053,415 Rejection 3 — The rejection of claims 16—20 Appellants argue the patentability of claim 16 and do not separately argue claims 17—20, which depend from claim 16. Br. 9-11. Thus, we address claim 16, with claims 17—20 standing or falling with claim 16. Claim 16 recites “locating the joint within a sleeve sized to allow pivotable motion of the first component with respect to the second component within the sleeve.” Based on this language, Appellants first rely on the same arguments set forth above for Rejection 1. See Br. 9—10, 7. For the same reasons set forth above, we are not apprised of error based on these arguments. See also Ans. 2 (“The following points are relevant to this claim [1] and the analogous argument of the Appellants] re claim 16.”). Second, Appellants note that, in this rejection, the Examiner relies on Watkins “as disclosing sensors 694 which sense motion of a first component relative to a second component such as the components 24 and 27 discussed in the Camp reference.” Br. 10 (citing Final Act. 10). Appellants argue, “[a]s discussed above, however, the Camp reference employs a fixed bend housing 36, and the universal joint or flexed coupling 26 enables rotation of shaft sections 24, 27 therein” and “[t]hus, the combined references fail to disclose, teach or suggest the monitoring and control of first and second components which can pivot with respect to each other within a sleeve as set forth in the subject claims.” Id. at 10—11. As noted by the Examiner, Appellants do not show error in the findings regarding Watkins, but rather, argue that the modified method cannot include, for example, “sensing relative motion between the first and second component via a sensor” because—for the reasons Appellants argue regarding Camp—the recited “relative motion” is not present in the modified 7 Appeal 2015-007151 Application 13/053,415 method. See Ans. 4 (“[C]laim 16 is argued by the Appellants] on the same basis as claim 1, without further argument as to the inclusion of Watkins in the Examiner’s current rejection of these claims.”). Thus, for the reasons discussed above regarding Camp, we are not apprised of error by Appellants’ second argument. For the reasons set forth above, we sustain the rejection of claim 16 as unpatentable over the combined teachings relied upon by the Examiner. Claims 17—20 fall with claim 16. DECISION We AFFIRM the decision to reject claims 1, 3—7, and 16—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8