Ex Parte Veeningen et al

Patent Trial and Appeal BoardOct 12, 2016

12751331 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 121751,331 92297 7590 Conley Rose P.C P.O.Box 3267 Houston, TX 77253 FILING DATE FIRST NAMED INVENTOR 03/31/2010 Daniel M. Veeningen 10/14/2016 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. 2841-03600 1442 EXAMINER MICHENER, BLAKE E ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 10/14/2016 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): pathou@conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL M. VEENINGEN, FRANK BENJAMIN SPRINGETT, and DEAN BENNETT Appeal2014-009037 Application 12/7 51,3 31 Technology Center 3600 Before LYNNE H. BROWNE, LISA M. GUIJT, and MARK A. GEIER, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Daniel M. Veeningen et al. (Appellants) appeal under 35 U.S.C. Â§ 134 from the rejection of claims 1-24. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Appeal2014-009037 Application 12/7 51,3 31 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for communicating about a wellsite having a surface system and a downhole system, the surface system comprising a rig with a handling system, the downhole system comprising a downhole tool advanced into the earth on a drill string, the drill string comprising a plurality of wired drill pipe, an uppermost drill pipe of the plurality of wired drill pipe being supported by the handling system, the apparatus comprising: a coupler operatively connectable to the surface system and the downhole system for communication therewith; a frame for supporting the coupler, the frame operatively connectable to the handling system; and an actuator for moving the frame with the coupler thereon between an engaged position operatively connected to the uppermost drill pipe of the downhole system and a disengaged position a distance from the uppermost drill pipe whereby the coupler selectively establishes a communication link between the surface system and the downhole system; wherein, when in the engaged position, a portion of the coupler is stabbed into an end of the uppermost drill pipe. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Schultz Hall ' 118 (Hall 1) Hall '811 (Hall 2) US 2002/0139581 Al US 7,198,118 B2 US 2007/0257811 Al REJECTIONS Oct. 3, 2002 Apr. 3, 2007 Nov. 8, 2007 I. Claims 1-22 and 24 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Hall 1 and Hall 2. 2 Appeal2014-009037 Application 12/7 51,3 31 II. Claim 23 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Hall 1, Hall 2, and Schultz. DISCUSSION Rejection I Claims 1-7 Appellants argue claims 1-7 together. Appeal Br. 20. We select independent claim 1 as the representative claim, and claims 2-7 stand or fall with claim 1. The Examiner finds that Hall 1 discloses all of the limitations of claim 1 except for an actuator. Final Act. 9. The Examiner notes that Hall 1 "discloses manual installation." Id. The Examiner further finds that Hall 2 "teaches a coupler that uses an actuator (i-f [i-f] 46 & 4 7) for moving the frame." Id. (emphasis omitted). Based on these findings, the Examiner determines that it would have been obvious "to use the actuator and frame taught by Hall 2 with the apparatus taught by Hall 1." Id. In support of this determination, the Examiner explains that: Hall 1 teaches manual installation, which Hall 2 teaches to be an obvious variation of using an actuator (Hall 2: i1 46). Second, using automation as opposed to manual, generally improves safety, speed, and accuracy of operation, as is well known in the art. Third, the actuator taught by Hall 2 in i-f [i-f] 46 & 4 7 that the actuator may move the coupler radially as well as up and down [sic]. Id. at 9-10 (emphasis omitted). Appellants contend that "the combination of the teachings of Hall I and Hall II as proposed by the Examiner would render the modified prior art invention unsatisfactory for its intended purpose of communicating with a downhole tool," and that "the combination proposed by the Examiner would 3 Appeal2014-009037 Application 12/7 51,3 31 also modify the principles of the prior art, such as the principle of communicating with a downhole network wirelessly by emitting electromagnetic radiation." Appeal Br. 14. In support of these contentions, Appellants argue that "substituting the receiving antenna 3 8 of Hall II with the adapter 3 7 of Hall I would render Hall II unsatisfactory for its intended purpose of communicating with a downhole network due to the different operating characteristics of antenna 3 8 of Hall II and adapter 3 7 of Hall I." Id. at 15. Appellants further argue that "the combination proposed by the Examiner would also modify the principles of operation of Hall II, such as the ability to communicate with data transmission coupler 24 of downhole tool 12 wirelessly by emitting electromagnetic radiation using receiving antenna 38." Id. at 17. Appellants' arguments are not responsive to the rejection as articulated by the Examiner. As discussed supra, the rejection proposed modification of Hall 1 in view of the teachings of Hall 2. The rejection as articulated by the Examiner does not propose modifying Hall 2. Appellants do not explain why the proposed modification would render Hall 1 unsatisfactory for its intended purpose or explain how the proposed modification would change the principle of operation of Hall 1. Accordingly, Appellants do not apprise us of error. Furthermore, in accordance with 37 C.F.R. Â§ 41.41(b)(2), lacking a showing of good cause, we do not consider the arguments raised in the Reply Brief which are not responsive to an argument raised in the Answer. 1 1 To the extent that the new arguments in the Reply Brief pertain to claims 8-24 as well, we do not consider them in accordance with 37 C.F.R. Â§ 41.41 (b )(2). 4 Appeal2014-009037 Application 12/7 51,3 31 We sustain the Examiner's decision rejecting claim 1, and claims 2-7, which fall therewith. Claims 8-13 Appellants argue claims 8-13 together. Appeal Br. 22. We select independent claim 8 as the representative claim, and claims 9-13 stand or fall with claim 8. Appellants again argue that the proposed rejection "would both render Hall II unsatisfactory for its intended purpose of communicating with a downhole tool and modify the principles of operation of Hall II." Id. at 21. In support of this argument, Appellants refer to the arguments pertaining to claim 1. Id. These arguments are inapposite for the reasons discussed supra, as they are not directed to the rejection as articulated by the Examiner. Accordingly, Appellants do not apprise us of error. We sustain the Examiner's decision rejecting claim 8, and claims 9- 13, which fall therewith. Claims 14--22 Appellants argue claims 14--22 together. Appeal Br. 24. We select independent claim 14 as the representative claim, and claims 15-22 stand or fall with claim 14. Appellants again argue that the proposed rejection "would both render Hall II unsatisfactory for its intended purpose of communicating with a downhole tool and modify the principles of operation of Hall II." Id. at 24. In support of this argument, Appellants refer to the arguments pertaining to claim 1. Id. These arguments are not directed to the rejection as articulated by the Examiner. Accordingly, Appellants do not apprise us of error. We sustain the Examiner's decision rejecting claim 14, and claims 15-22, which fall therewith. 5 Appeal2014-009037 Application 12/7 51,3 31 Claim 24 Once more, Appellants argue that the proposed modification "would both render Hall II unsatisfactory for its intended purpose of communicating with a downhole tool and modify the principles of operation of Hall II" and refers to the arguments in favor of the patentability of claim 1. Appeal Br. 25. As discussed supra, these arguments are not responsive to the rejection as articulated by the Examiner, and thus, do no apprise us of error. We sustain the Examiner's decision rejecting claim 24. Rejection II Claim 23 depends from claim 14. Appellants do not present separate arguments for the patentability of claim 23. See Appeal Br. 24. We sustain the Examiner's decision rejecting claim 23. DECISION The Examiner's rejections of claims 1-24 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 6