Ex Parte Moyes

Patent Trial and Appeal Board

Nov 28, 2012

11430364 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PETER BARNES MOYES
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Appeal 2010-010339
Application 11/430,364
Technology Center 3600
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Before: MICHAEL C. ASTORINO, MICHAEL L. HOELTER,
and SCOTT A. DANIELS, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010339
Application 11/430,364
2
STATEMENT OF CASE
Peter Barnes Moyes (Appellant) appeals under 35 U.S.C. § 134 from a
rejection of claims 11, 13-15, 17-25, and 37-39. Claims 1-10, 12, and 26-36
have been withdrawn from consideration and claim 16 is objected to as
being dependent upon a rejected base claim. Claims 40 and 41 have not
been entered. Ans. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
INVENTION
The claims are directed to a downhole tool used in cutting or drilling
operations to remove for example a blockage in a borehole, or as a setting
tool for applying force to a plug or packing tool in the borehole. Claims 11
and 37, reproduced below, are representative of the claimed subject matter:
11. A downhole drive force generating tool comprising:
a reactant chamber;
a catalyst in selective operable communication with the
reactant chamber;
an isolator having a physical barrier selectively
configurable to facilitate or prevent fluid communication
between the reactant chamber and the catalyst.

37. A downhole drive force generating tool comprising:
a reactant chamber; and
a catalyst movable from a position physically isolated
from the reactant chamber to a position in fluidic
communication with the reactant chamber.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rowley
Acheson
Fletcher
US 3,083,779
US 4,202,168
US 5,267,622
Apr. 2, 1963
May 13, 1980
Dec. 7, 1993
Appeal 2010-010339
Application 11/430,364
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REJECTIONS
The Examiner made the following rejections:
Claims 11, 13, 14, 17, 19-21, 23-25, and 37-39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Rowley and Acheson. Ans.
3.
Claims 11, 13-15, 17-22, and 37-39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fletcher and Acheson. Ans. 5.

ANALYSIS
Claims 11, 13, 14, 17, 19-21, 23-25, and 37-39 as being unpatentable
over Rowley, and Acheson.
The Examiner found that all of the features of Appellant’s
independent claims 11 and 37 are taught by Rowley with the exception of a
catalyst in selective operable communication with the reactant chamber.
Ans. 4. The Examiner found that Acheson, citing a background reference
Pfefferle at column 2, lines 51-68, teaches “making the combustion process
of Rowley into the catalytic combustion process of Acheson et al by adding
the catalyst to one and/or both of the bottles 62/64.” Final Off. Act. 3
(mailed Sept. 21, 2009). See Ans. 4, 6. The Examiner reasoned
that the catalyst may comprise a bed of pellets. It would be
obvious to those of ordinary skill in the art that if a bed of
catalyst pellets were to be in the bottles/chambers of Rowley or
Fletcher, then the opening of the isolators in either Rowley or
Fletcher would allow the communication of the catalyst pellets
into the reactant chamber. These pellets will essentially act as a
fluid and flow through the isolators into the reactant chambers
once the isolators are opened.
Adv. Act. (mailed Dec. 3, 2009). The Examiner determined that by adding
the catalyst to the bottles 62/64 “[t]his will achieve the predictable result of
Appeal 2010-010339
Application 11/430,364
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combustion that is not of a high enough temperature to cause substantial
nitrogen oxide formation, and there will not be wide variations in the
temperature of the combustion products.” Ans. 4.
Appellant argues that a review of the reference cited in Acheson,
including the description concerning Pfefferle, does not “teach[] or even
suggest[] that a catalyst in the form of a ‘packed bed of pellets’ could be
fluidized.” App. Br. 4.1 In fact, Acheson’s description of Pfefferle describes
in detail that the catalyst is a solid and is fixedly attached within a catalyst
chamber thereof receptive of gas passing through the catalyst chamber.” Id.
We are persuaded by these arguments and agree with Appellant that neither
Acheson, including Acheson’s description concerning Pfefferle for that
matter, suggest fluidizing a catalyst so that the catalyst can be subject to
movement. Furthermore, we also agree with Appellant that “structured
catalysts would be substantially impossible to maintain if the catalyst were
allowed to flow with the fluids through the channels as suggested by the
examiner.” Reply Br. 3.
Although we appreciate the Examiner’s response, at pages 6-7 of the
Answer, that none of the structural aspects argued by Appellant from
Pfefferle were relied upon by the Examiner, we are equally unable to discern
what teachings in the prior art the Examiner relied upon to fluidize a
monolithic catalyst as disclosed in Acheson such that “a bed of pellets,
although each individual pellet is a solid, will act as a fluid and flow when
together in a bed (or mass) and subject to a movement force, such as the
high pressure in the bottles 62 and 64 of Rowley.” Ans. 6. Moreover, the
Examiner explains in the Answer at pages 6-7 that fluidizing the catalyst is
only a “possibility” and that “this was not the rejection made by the

1 Refers to Appeal Brief filed March 18, 2010.
Appeal 2010-010339
Application 11/430,364
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Examiner.” This provides even less assurance that the Examiner’s reasoning
contains the requisite rational underpinnings necessary to support the
contention that Rowley and Acheson disclose the presently claimed
invention. Without a persuasive articulated reasoning with some rational
underpinning for modifying the reference as proposed, we cannot support
the Examiner’s rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR, 550 U.S. at 418. Without an explanation
or teachings in the prior art beyond Acheson’s disclosure of the use of a
catalyst to facilitate complete combustion in a downhole tool, we cannot
sustain the Examiner’s rejection of claims 11, 13, 14, 17, 19-21, 23-25, and
37-39 over Rowley in view of Acheson.
Claims 11, 13-15, 17-22, and 37-39 as being unpatentable over
Fletcher and Acheson.
The Examiner found that like Rowley, Fletcher teaches a downhole
drive force generating tool disclosing all the features of both claims 11 and
37 except a catalyst in selective operable communication with the reactant
chamber. Ans. 5. The Examiner again turned to Acheson to provide a
catalytic combustion that can be combined with Fletcher and determines
“that all of the arguments presented above in support of Rowley in view of
Acheson are equally applicable to the combination of Fletcher et al in view
of Acheson and will not be repeated.” Ans. 8. The substitution of Fletcher
as a base reference does not remedy the deficiencies with respect to the lack
of rational underpinnings as discussed supra in regards to the Examiner’s
application of Acheson’s teachings, and therefore we also reverse the
Examiner’s rejection of claims 11, 13-15, 17-22 and 37-39 as being
unpatentable over Fletcher and Acheson.

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Application 11/430,364
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DECISION
For the above reasons, the Examiner’s rejections of claims 11, 13-15,
17-25, and 37-39 is reversed.

REVERSED

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