Ex Parte SCOTT et al

Patent Trial and Appeal BoardNov 28, 2018

13678158 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/678, 158 49431 7590 Locke Lord LLP P.O. Box 55874 Boston, MA 02205 FILING DATE FIRST NAMED INVENTOR 11/15/2012 Bruce E. SCOTT 11/30/2018 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. 2011-IP-049429 Ul US 3172 EXAMINER GRAY,GEORGESTERLING ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 11/30/2018 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): patent@lockelord.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE E. SCOTT, THOMAS W. SW AN, and JOHN J. GOIFFON Appeal2017-007047 1 Application 13/678,158 Technology Center 3600 Before: BRETT C. MARTIN, ANNETTE R. REIMERS, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a final rejection of claims 2--4, 8-11, 13, 14, 18, 19, 24, 26, 27, 29-39, and 42-53. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART. 1 Appellants identify Halliburton Energy Services, Inc. as the real party in interest. Appeal2017-007047 Application 13/678,158 CLAIMED SUBJECT MATTER The claims are directed to a mitigation of hydrates, paraffins, and waxes in well tools. Claims 2, 8, 18, 24, and 37 are independent. Claims 2 and 8, reproduced below, are illustrative of the claimed subject matter: 2. A method of mitigating formation of an undesired accumulation of a substance in a well tool through which a well fluid flows, the method comprising: heating a surrounding wall of an interior flow passage of the well tool through which the well fluid flows; and monitoring a change in wall thickness of the surrounding wall of the well tool caused by the accumulation of the substance in the flow passage, the monitoring being performed via a sensor selected from the group consisting of a resistivity sensor, a capacitive sensor and an inductive sensor, wherein the sensor monitors within the flow passage between the well tool and fluid flow therethrough. 8. A method of mitigating formation of an undesired accumulation of a substance in a well tool through which a well fluid flows, the method comprising: heating a surrounding wall of an interior flow passage of the well tool through which the well fluid flows, wherein the heating comprises incorporating a heating element in a member of the well tool which displaces relative to an outer housing of the well tool during operation of the well tool, and wherein the heating element emits heat, thereby heating the surrounding wall. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Eastlund Isted O'Malley Prescott Taherian us 4,716,960 us 6,112,808 US 7,597,148 B2 US 2005/0283276 Al US 2012/0068712 Al 2 Jan. 5, 1988 Sept. 5, 2000 Oct. 6, 2009 Dec. 22, 2005 Mar. 22, 2012 Appeal2017-007047 Application 13/678,158 REJECTIONS Claims 8-11, 13, and 14 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Eastlund. Claims 2--4, 24, 26, 27, 29, 33, 34, 37-39, and 42-51 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Prescott and Taherian. Claims 18 and 19 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Isted, Prescott, and Taherian. Claims 35, 36, 52, and 53 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Prescott, Taherian, and O'Malley. Claims 24 and 30-32 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Eastlund, Prescott, and Taherian. OPINION 35 USCÂ§ 102(b) Appellants argue that claim 8 is not anticipated by Eastlund because "Eastlund does not disclose or suggest incorporating a heating element in a member of a well tool." Appeal Br. 11. The Examiner identifies Eastlund' s pump 59 as the claimed well tool and the wheels 77 and sleeves 78, 79 as the claimed heating elements. Final Act. 3. Eastlund teaches applying electricity to tubing made of steel thereby heating the tubing. Eastlund, 1 :47-50, 3: 15-17, 4:57---60. In some embodiments, the tubing can be a sucker rod. Id. at 1 :29-34. One end of the sucker rod can be connected to a power source 68 through a wire 69, while another end can be electrically connected to tubing in the wellbore through a wheeled contact system (wheels 77 and sleeves 78, 79). Id. at 7:53-8: 12. The electrical connection between the sucker rod and the tubing 3 Appeal2017-007047 Application 13/678,158 with the wheeled contact system "define[s] the lower limit of heating of the" sucker rod. Id. at 8: 3--4. As can be seen in Eastlund Figure 5, the pump 59, which the Examiner identifies as the claimed well tool (Final Act. 3), is below the lower limit of heating of the sucker rod (i.e., it is below the wheeled contact system). Thus, the Examiner's rejection does not identify a method of "heating a surrounding wall of an interior flow passage of the well tool" as required by claim 8. Further, in Eastland the metal sucker rod is the heating element. Though the wheeled contact system provides an electric connection between the sucker rod and the tubing, Eastlund is silent on the wheels and sleeves being a heating element. Even if the wheeled contact system could be considered a heating element, the wheeled contact system of Eastlund is not "a member of the well tool" as it is both outside of the sucker rod and does not appear to have a relationship with the pump 59. The Examiner's rejection provides no evidence that the wheeled contact system would have been considered a member of the pump 59 by one of skill in the art. For these reasons, we do not sustain the rejection of claim 8. Claims 9-11, 13, and 14 depend from claim 8. We do not sustain the rejection of claims 9-11, 13, and 14 for the same reasons as claim 8. 35 US.C. Â§ 103(a) Appellants argue the rejection of claims 2--4, 24, 26, 27, 29, 33, 34, 37-39, and 42-51 together. We select independent claim 2 as representative. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellants also argue that 4 Appeal2017-007047 Application 13/678,158 claims 18, 19, 24, 30-32, 35, 36, 52, and 53 are patentable for the same reasons as claim 2. The Examiner finds that Prescott teaches most of the elements of claim 2 (Final Act. 4--5), including "a desire to monitor [the] thickness of a deposit in a wellbore" (Ans. 2 (citing Prescott ,r,r 11, 25, 35, and 40)). The Examiner finds that "Prescott does not expressly disclose the monitoring being performed via a sensor selected from the group consisting of a resistivity sensor, a capacitive sensor and an inductive sensor." Final Act. 5. The Examiner then turns to Taherian, finding that "Taherian discloses a system for using a resistivity tool in a wellbore" and that "the resistivity sensor may measure the thickness of a mud cake in a wellbore." Id. The Examiner determines that it would have been obvious to use Taherian's resistivity sensor in the method of Prescott "to achieve sensing the thickness and change in thickness of the accumulation in the wellbore ... and to have the ability to adjust the operating parameters of the method in real time to optimize the process." Id. Appellant correctly argues that, contrary to the statements of the Examiner, "in Taherian, the resistivity tool is used to survey the formation layer outside the tool, e.g., a drill pipe, to improve drilling decisions." Appeal Br. 13. Thus, the Examiner overstates the teachings of Taherian when stating, or at least implying, that Taherian discloses a system for measuring the thickness of a mud cake in a wellbore. The mud cake does not appear to be in the wellbore in Taherian. Rather, Taherian appears to teach boring through the mud cake to form the wellbore. 5 Appeal2017-007047 Application 13/678,158 However, though the Examiner does not acknowledge overstating the teachings of Taherian, this error is not reversible error. As further explained by the Examiner, it is not necessary for Taherian to teach a sensor that provides measurements within the wellbore. See Ans. 2-3. Prescott already teaches "a desire to monitor thickness of a deposit in a wellbore." Id. at 2. Thus, the Examiner merely needs to find a teaching of a sensor capable of monitoring this thickness and a reason why one of skill in the art would have looked to that sensor. The Examiner has provided both and Appellants do not identify errors in the Examiner's findings or determinations in this regard. Thus, we are not informed of error in the Examiner's rejection. DECISION The Examiner's rejection of claims 8-11, 13, and 14 is reversed. The Examiner's rejections of claims 2--4, 18, 19, 24, 26, 27, 29-39, and 42-53 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 6