Ex Parte Mueller et al

Patent Trial and Appeal Board

Jan 17, 2019

14012459 (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/012,459 08/28/2013 Stephan Mueller
44639 7590 01/22/2019
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
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.
TEL4-55558-US
(INT0552US)
2169
EXAMINER
YANG, JAMES J
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
01/22/2019 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHAN MUELLER, INGO RODERS, and
KAI SCHOENBORN
Appeal2018-006055
Application 14/012,459
Technology Center 2600
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-11, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Baker Hughes
Incorporated. Br. 2.
Appeal2018-006055
Application 14/012,459
INVENTION
Appellants' invention relates to a wired pipe surface sub. Abstract.
Claim 1 is illustrative and reads as follows:
1. A sub for a wired pipe system, the sub comprising:
a body including an outer surface that defines an inner
bore through which a fluid passes during drilling;
a first transmission device (34) located within the outer
surface and at an end of the body and outside of the inner bore
such that the fluid passes through the first transmission device
during drilling;
a communication collar that at least partially surrounds the
outer surface and that is rotatable relative to the body;
a second transmission device in electrical communication
with the first transmission device and located on the outer surface
of the body;
a transmission line that electrically connects the first and
second transmission devices and that passes at least partially
through the body; and
a third transmission device located in the communication
collar in communication with the second transmission device;
wherein the first, second and third transmission devices
are all of the same type;
wherein, in operation, signals are received from or
provided to a surface unit from the communication collar through
a communication line.
REJECTIONS
Claims 1, 4--7, and 11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lasater et al. (US 2007/0257812 Al; published Nov. 8,
2007) ("Lasater").
Claim 2 stands rejected under 35 U.S.C. § 103 as unpatentable over
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Application 14/012,459
the combination of Lasater and Myatt (US 5,196,845; issued Mar. 23, 1993).
Claims 3 and 8-10 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Lasater and Hawthorn et al. (US
2010/0328095 Al; published Dec. 30, 2010) ("Hawthorn").
ANALYSIS
We have reviewed the rejections of claims 1-11 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
Appellants first contend the Examiner erred because the cited portions
of Lasater do not teach or suggest a first transmission device outside the
inner bore, as claim 1 requires. Br. 5.
We are not persuaded that the Examiner erred. The Examiner
concluded that the recited limitation "outer surface that defines an inner
bore" is broad enough to encompass element 14 of Lasater Figure 2 as the
recited "outer surface," and anything on the inside of element 14 is "defined
by" element 14.2 Ans. 2-3. The Examiner further concluded the recited
2 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Application 14/012,459
"inner bore" is broad enough to encompass the area inside of element 18,
which is at least partially defined by element 14 because it is located within
the boundaries of element 14. Id. at 3 (citing Lasater Fig. 2). The Examiner
also concluded the recited "inner bore" is sufficiently broad to encompass
"the portion of communications port 18 with which the male connector and
the female connector are joined inside of elements 32 and 34," where
elements 32 and 34 are outside of the inner bore. Id. (citing Lasater Fig. 2).
Appellants did not file a Reply Brief and have not persuaded us the
Examiner's claim interpretations are overly broad, unreasonable, or
inconsistent with the Specification. Nor have Appellants presented
sufficient persuasive argument or objective evidence to rebut the Examiner's
findings of fact.
Appellants next contend the cited portions of Lasater do not teach or
suggest fluid passing through the inner bore during drilling, as claim 1
requires. Br. 6. Appellants argue that, because the first transmission device
is outside the inner bore, the fluid must also pass through the first
transmission device. Id. Appellants further argue that, if fluid passed
through the region of port 18, the fluid would be pumped out of the system
and lost to the borehole. Id. at 7. Appellants also argue that the cited
portions of Lasater do not teach that fluid passes through the first
communication element, as claim 1 requires. Id.
Again, Appellants have not sufficiently rebutted the Examiner's
factual findings and legal conclusions. The Examiner found that Lasater
teaches the presence of a conductive fluid located within port 18, serving to
prevent shorting. Ans. 3. The Examiner concluded that an artisan of
ordinary skill would have recognized that such conductive fluid would not
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Application 14/012,459
be lost to the borehole because losing the fluid would create a short. Id. The
Examiner also concluded it would have been obvious to one of ordinary skill
in the art at the time of filing to modify the system in Lasater "to allow for
the conductive fluid that is present to flow through probe coil 34." Id.
Moreover, Appellants' argument that fluid would not pass through
port 18 is conclusory. It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
( attorney argument is not evidence).
For these reasons, we are not persuaded that the Examiner erred in
finding Lasater teaches or suggests the disputed limitations of claim 1.
Accordingly, we sustain the Examiner's§ 103 rejection of
independent claim 1, as well as the Examiner's§ 103 rejections of
dependent claims 2-11, not argued separately with particularity. See Br. 7.
DECISION
We affirm the Examiner's decision rejecting claims 1-11.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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