Ex Parte Samuel

Patent Trial and Appeal BoardFeb 21, 2019

14412158 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/412,158 15604 7590 Baker Botts L.L.P. FILING DATE 12/30/2014 02/25/2019 910 Louisiana Street, One Shell Plaza Houston, TX 77002 FIRST NAMED INVENTOR Robello Samuel 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. 2012-IP-064782Ul US 1257 EXAMINER BUTCHER, CAROLINE N ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 02/25/2019 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): susan.stewart@bakerbotts.com debie.hernandez@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBELLO SAMUEL Appeal 2019-001119 Application 14/412,158 Technology Center 3600 Before STEP AN STAICOVICI, JEREMY M. PLENZLER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-20.2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Halliburton Energy Services, Inc. ("Appellant"), identified as the real party in interest, is the applicant pursuant to 37 C.F.R. Â§ 1.46. Appeal Br. 2. 2 Appeal is taken from the Final Office Action dated May 9, 2017. Appeal 2019-001119 Application 14/412, 158 STATEMENT OF THE CASE Claims 1, 10, and 18 are the independent claims on appeal. Claim 1, reproduced below with disputed limitations italicized for emphasis, is exemplary of the subject matter on appeal. 1. A method for estimating an axial force transfer efficiency of a drillstring in a borehole, the drillstring comprising a drill bit, the method comprising: lifting the drillstring so that the drill bit is off the bottom of the borehole; measuring a hook load; slacking off a first reference amount of the hook load; determining a first weight on bit at the bottom of the drillstring; and determining the axial force transfer efficiency based, at least in part, on the measured hook load, the first weight on bit, and the first reference amount of hook load. THE REJECTIONS I. Claims 1 and 10 stand rejected under 35 U.S.C. Â§ I02(a)(2) as anticipated by O'Donnell (US 2015/0012253 Al; published Jan. 8, 2015). II. Claims 2-9, 11-18, and 20 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over O'Donnell. III. Claim 19 stands rejected under 35 U.S.C. Â§ 103 as unpatentable over O'Donnell and Gleitman (US 2009/0260876 Al; published Oct. 22, 2009). ANALYSIS Rejection I Regarding independent claim 1, the Examiner finds that O'Donnell discloses the method for estimating an axial force transfer efficiency of a 2 Appeal 2019-001119 Application 14/412, 158 drillstring, as claimed. Final Act. 5---6 ( citing O'Donnell ,r,r 4, 63---66, 77-78, Figs. 4, 7B). In particular, the Examiner finds that O'Donnell's disclosure of conducting a simulation "with the bit off-bottom," wherein "baseline performance data for [a] drill string is measured with no weight-on bit [(WOB)], including rig hook load at the surface [(SWOB)]," corresponds to the claimed step of "measuring a hook load." Id. at 5 (citing O'Donnell ,r 63). Appellant argues that "O'Donnell does not disclose any of the physical[] acts that are required by claim 1," but instead discloses "a simulation that does not involve a physical drillstring." Appeal Br. 6. Appellant submits that claim 1 "requires the following actions on a physical, rather than a simulated, drill string: 'measuring a hook load,' 'slacking off a first reference amount of the hook load,' and determining a first weigh on bit at the bottom of the drillstring."' Id. For example, Appellant submits that the step of slacking off "refers to the adjustment of the drillstring by a physical amount." Id. at 8. Appellant contends that O'Donnell's Figure 4 is "an exemplary flow chart illustration of a method 400 for determining if a drillstring design is operational,"' which does not require that "an actual load transfer test be performed based on the requirements that an actual drill string be lifted so that the drill bit is off the bottom of the wellbore." Appeal Br. 6-7 (citing O'Donnell ,r 63). Appellant concludes that "O'Donnell cannot anticipate the claim because it is merely performing a simulation on a computer, rather than actually lifting the drill string so that the drill bit is off the bottom of the borehole, as required by the claim," including the "physical actions" of measuring a hook load, slacking off a first reference 3 Appeal 2019-001119 Application 14/412, 158 amount of the hook load, and determining a first weight on bit at the bottom of the drillstring. Id. at 7; see also id. at 7-11. The Examiner responds that O'Donnell discloses "a process for designing a drill string," as specifically disclosed in Figure 4, wherein "such process can be used while actually performing drilling operations," including the physical acts, as recited in claim 1. Ans. 15 ( citing O'Donnell ,r 12). Thus, the Examiner relies on O'Donnell's disclosure of physically lifting the drillstring, measuring a hook load, and slacking off the hook load to anticipate claim 1. See, e.g., Ans. 18 ("O'Donnell discloses physical acts as required by the claim"). Appellant replies that the Examiner has misinterpreted Paragraph 12 of O'Donnell. Reply Br. 3. Appellant argues that Paragraph 12 of 0 'Donnell discloses that "the simulation process can be performed while drilling is taking place, but it does not disclose that any action of the drilling or measurement during the drilling is used as part of the simulation process." Id. at 3--4 (citing O'Donnell ,r 14 as further support). Determining whether claims are anticipated involves a two-step analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The first step involves construction of the claims of the patent at issue. Id. "During examination, 'claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art."' Id. (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation analysis involves comparing the claims to prior art. Id. A prior art reference 4 Appeal 2019-001119 Application 14/412, 158 anticipates a patent claim under 35 U.S.C. Â§ 102(b) ifit discloses every claim limitation. Id. We construe claim 1, in light of the Specification, to require the physical acts of lifting a drillstring so that the drill bit is off the bottom of the borehole, measuring an actual hook load, and slacking off ( or physically decreasing) the hook load by a first reference amount. See Spec. 9:3-5 ("after having altered the hook load by either slacking off or increasing the hook load, the processor 180 measures the weight on bit at the bottom of the borehole 165"); cf Ans. 16 ("the recitation of 'A method of estimating' in the preamble of claim 1 would not require the actions [ recited in the claim limitations] to be performed on an actual drill string"). The remaining steps of claim 1 recite determining a first weight on bit and also axial force transfer efficiency, which steps are not limited to physical actions. We agree with Appellant that O'Donnell's disclosure in paragraph 12 of conducting the process for designing a drillstring while actually performing drilling operations does not specifically disclose that any parameters are physically measured, as compared to being known or estimated parameters during a real-time simulation conducted while drilling-including the parameter of hook load when the drillstring is off the bottom of the borehole, as recited in claim 1. For example, with reference to the flowchart depicted in Figure 4, O'Donnell merely discloses that "method 400 for determining if a drillstring design is operational ... begins at block 402 with entering design parameters" (i.e., the size of the drillstring) and "operational parameters" (i.e., surface weight-on-bit), followed by conducting the simulation (at block 406). O'Donnell ,r,r 62, 63 (emphasis added). O'Donnell also presents an "Example," with reference to Figure 5, 5 Appeal 2019-001119 Application 14/412, 158 as "a test of the design process" of method 400 as illustrated in Figure 4, wherein O'Donnell discloses that "[ w ]hen the measured depth 502 is equal to zero (as shown at arrow 510), this indicates the hookload at the rig or surface;" however, again, 0 'Donnell stops short of expressly disclosing that such a hookload is measured, as opposed to being known or estimated. O'Donnell merely states that "the hookload is about 36,000 kg and the [downhole weight-on-bit (DWOB)] is zero kg since the bit is off-bottom." Id. ,I 69. O'Donnell also discloses, with reference to Figure 4, that "at block 408, surface weight-on-bit (SWOB) and friction factors are selected and applied to the drillstring tension profile that was compiled at block 406, ... [wherein] [s]urface [weight-on-bit (WOB)] is selected by presuming a lowering of the drillstring in the hole until the bit touches bottom and begins taking weight thereon, thus reflecting a reduction in tension on the hookload observed at the rig." O'Donnell ,r 64 (emphasis added). Again, however, 0 'Donnell does not expressly disclose that the hookload "observed at the rig" refers to a measurement, rather than simply to the hookload at depth zero, nor does O'Donnell propose physically measuring parameters rather than selecting and presuming parameter values, as is disclosed. In sum, a preponderance of evidence fails to support the Examiner's finding that O'Donnell expressly discloses physically lifting a drill string and measuring a hook load, as claimed, or physically slacking off the hook load, for example, rather than estimating parameters or selecting slacking off values in the context of a simulation. Notably, a determination that it would have been obvious to physically perform the claimed steps, in view of the simulation disclosed in O'Donnell, is not in the record before us. 6 Appeal 2019-001119 Application 14/412, 158 Accordingly, we do not sustain the Examiner's rejection of claim 1 as anticipated by O'Donnell. The Examiner relies on the same findings with respect to O'Donnell for the disclosure of a processor that measures a hook load, as required by claim 10. Final Act. 5; Appeal Br. 39 (Claims App.). Therefore, for essentially the same reasons as stated supra, we also do not sustain the Examiner's rejection of claim 10 as anticipated by O'Donnell. Re} ection II Regarding independent claim 18, the Examiner finds that O'Donnell discloses measuring first and second weights on bit at the bottom of the drill string, as claimed. Final Act. 18 ( citing O'Donnell ,r 64 ). For essentially the same reasons stated supra with respect to independent claim 1, we do not sustain the Examiner's rejection of claim 18 as unpatentable over O'Donnell, and claim 20 depending therefrom. The Examiner's further modification of O'Donnell in Rejection II does not cure the deficiencies in the Examiner's reliance on O'Donnell with respect to independent claims 1 and 10 in Rejection I. Final Act. 8-18. Therefore, for essentially the same reasons as stated supra in Rejection I, we also do not sustain the Examiner's rejection of claims 2-9 and 11-17, which depend from independent claims 1 and 10. Rejection III The Examiner's further reliance on Gleitman in Rejection III for disclosing "a drill string and a processor for detecting at least one downhole condition," wherein "[t]he processor may generate one or more expected- value set sets for pick-up or slack-off," does not cure the deficiencies in the Examiner's reliance on O'Donnell with respect to independent claim 18 in Rejection II. Final Act. 21. Therefore, for essentially the same reasons as 7 Appeal 2019-001119 Application 14/412, 158 stated supra in Rejection II, we also do not sustain the Examiner's rejection of claim 19, which depends from independent claim 18. DECISION The Examiner's decision rejecting claims 1-20 is REVERSED. REVERSED 8