Ex Parte Purkis et al

Patent Trial and Appeal BoardOct 31, 2018

14308336 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/308,336 06/18/2014 Daniel Purkis 150256 7590 11/02/2018 SMITH IP SERVICES, P.C. P.O. Box 997 Rockwall, TX 75087 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. WFT-5284-PCT-US-DIVl 8198 EXAMINER COY, NICOLE A ART UNIT PAPER NUMBER 3672 NOTIFICATION DATE DELIVERY MODE 11/02/2018 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): mail@smithipservices.com scrawford@smithipservices.com sally@smithipservices.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL PURKIS and IAIN MORRISON MACLEOD 1 Appeal 2018-001846 Application 14/308,336 Technology Center 3600 Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and ARTHUR M. PESLAK, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject under 35 U.S.C. Â§ 103(a): (1) claims 1-15, 17, and 18 as unpatentable over Thomeer (US 2001/0054969 Al, published Dec. 27, 2001) and Jabusch (US 7,063,148 B2, issued June 20, 2006); and (2) claims 16, 19, and 20 as unpatentable over Thomeer, Jabusch, and Poitzsch (US 1 Weatherford Technology Holdings, LLC, ("Appellant") is the applicant as provided under 37 C.F.R. Â§ 1.46 and is identified as the real party in interest. Appeal Brief 3 ("Appeal Br."), filed Aug. 25, 2017. Appeal 2018-001846 Application 14/308,336 6,366,089 Bl, issued Apr. 2, 2002). We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter "relates to remote actuation of a downhole tool." Spec. ,r 2, Figs. 1, 4, 5. Claims 1 and 19 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. An antenna for use in a downhole tubular, the downhole tubular having a conduit for passage of fluid through the downhole tubular, the antenna comprising: a generally cylindrical housing having a throughbore for the passage of the fluid through the housing, the throughbore of the housing being in fluid communication with the conduit in the downhole tubular; a coiled conductor located within a portion of the housing and being insulated from the housing, the portion of the housing in which the coiled conductor is located having a greater internal diameter than an external diameter of the coiled conductor; and a non-conducting liner, wherein the coiled conductor is coiled around the liner and is co-axial therewith, wherein the antenna is adapted to read data from and/ or transfer data to at least one RFID tag carried in the fluid flowing through the throughbore of the housing, and wherein the liner forms at least a portion of an inner surface of the throughbore of the housing. 2 Appeal 2018-001846 Application 14/308,336 ANALYSIS Obviousness over Thomeer and Jabusch Claims 1-15, 17, and 18 Independent claim 1 is directed to an antenna for use in a downhole tubular, the antenna including "a coiled conductor located within a portion of the housing ... , the portion of the housing in which the coiled conductor is located having a greater internal diameter than an external diameter of the coiled conductor." Appeal Br. 23, Claims App. The Examiner finds Thomeer discloses the antenna of claim 1 substantially as claimed except "Thomeer is silent as to the details of the antenna located in the collar of the production tubing." Final Act. 2. 2 The Examiner finds Jabusch discloses (1) "an antenna (46) which is a coiled conductor (94) wound around a non[-]conductive sleeve (96)"; (2) "the coiled conductor is coiled around the liner and is co-axial therewith"; and (3) "wherein the liner forms at least a portion of an inner surface of the throughbore in the housing (see figures 4A and 4B)." Id. at 2-3. The Examiner reasons "[a]s both Thomeer and Jabush disclose antennas for receiving signals emitted by transmitters, it would have been obvious to one having ordinary [ skill in the art] to have substituted one for the other for the predictable results of receiving signals." Id. at 3. In addition, the Examiner takes the position "[t]he combination of Thomeer and Jabusch disclose the portion of the housing in which the coiled conductor is located having a greater internal diameter than an external diameter of the coiled conductor, as the coiled conductor is located in the collar, as shown in figures 1 and 2." Id. 2 Final Office Action ("Final Act."), dated Apr. 26, 2017. 3 Appeal 2018-001846 Application 14/308,336 Appellant contends (1) "[t]he only one of the Thomeer and Jabusch references having FIGS. 1 & 2 is the Thomeer reference"; and (2) Figures 1 and 2 of Thomeer "do not depict any coiled conductor or an external diameter of a coiled conductor." Appeal Br. 14; see also Reply Br. 14. 3 Appellant contends "Jabusch describes an antenna 46 comprising a coiled conductor, but the antenna 46 is not located within a portion of the housing that has a greater internal diameter than an external diameter of the coiled conductor." Appeal Br. 13-14; see also Reply Br. 13-14. Appellant concludes "neither of the Thomeer and Jabusch references discloses a coiled conductor located within a portion of the housing that has a greater internal diameter than an external diameter of the coiled conductor." Appeal Br. 14; see also Reply Br. 14. As an initial matter, we note the Examiner does not adequately address Appellant's contentions in the Examiner's Answer. See Ans. 2--4. 4 As far as we understand, the Examiner is proposing to substitute antenna 46 of Jabusch "in the place of [radio frequency identification transmitter unit] 28" of Thomeer. See id. at 3; see also Final Act. 2-3, 8; Thomeer ,r 33, Figs. 1, 2. When a reference does not disclose that the drawings are to scale and is silent as to dimensions, the drawing features are of little value in establishing measurements. See MPEP Â§ 2125; Hockerson-Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951,956 (Fed. Cir. 2000) ("[I]t is well established that patent drawings do not define the precise proportions of the 3 Reply Brief ("Reply Br."), filed Dec. 12, 2017. 4 Examiner's Answer ("Ans."), dated Oct. 1 7, 2017. 4 Appeal 2018-001846 Application 14/308,336 elements and may not be relied on to show particular sizes if the specification is completely silent on the issue."). As the Examiner does not direct us to any discussion in Thomeer about the dimensions of Thomeer's housing or to any discussion in Jabusch about the dimensions of Jabusch's coiled conductor, and such dimensions are not sufficiently clear from Thomeer's or Jabusch's drawings, and as the Examiner fails to adequately explain how such relative dimensions otherwise would be apparent to one of ordinary skill in the art, the Examiner's position that "[t]he combination of Thomeer and Jabusch disclose the portion of the housing in which the coiled conductor is located having a greater internal diameter than an external diameter of the coiled conductor" (see Final Act. 3) is based on speculation and is not supported by a preponderance of the evidence. Thus, the Examiner fails to establish the combined teachings of Thomeer and Jabusch disclose the antenna of claim 1. Accordingly, we do not sustain the Examiner's rejection of claims 1- 15, 17, and 18 as unpatentable over Thomeer and Jabusch. Obviousness over Thomeer, Jabusch, and Poitzsch Claims 16, 19, and 20 Claim 16 depends indirectly from claim 1. See Appeal Br. 25, Claims App. Similar to claim 1, independent claim 19 recites "a coiled conductor located within the recess" "the recess having an inner surface with a greater internal diameter than an external diameter of the coiled conductor." Id. at 26. Claim 20 depends from claim 19. Id. at 27. The Examiner relies on Poitzsch for "teach[ing] an insulator" (see Ans. 4; see also Final Act. 6-7) 5 Appeal 2018-001846 Application 14/308,336 and does not rely on the teachings of Poitzsch to remedy the deficiencies of Thomeer and Jabusch. See Final Act. 6-7; see also Ans. 4. Accordingly, for reasons similar to those discussed above for claim 1, we do not sustain the Examiner's rejection of claims 16, 19, and 20 as unpatentable over Thomeer, Jabusch, and Poitzsch. DECISION We REVERSE the decision of the Examiner to reject claims 1-20 under 35 U.S.C. Â§ 103(a). REVERSED 6