Ex Parte Yang

Patent Trials and Appeals BoardJan 11, 2019

14061566 - (D) (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/061,566 10/23/2013 7590 01/11/2019 Oliden Technology, L.L.C./ Jian Yang 10450 Corporate Drive Sugar Land, TX 77478 FIRST NAMED INVENTOR Jian Yang 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. Oliden 001 3780 EXAMINER LEDYNH, BOT L ART UNIT PAPER NUMBER 2858 MAIL DATE DELIVERY MODE 01/11/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIAN YANG Appeal 2018-002488 Application 14/061,5 66 Technology Center 2800 Before CATHERINE Q. TIMM, A VEL YN M. ROSS, and JANEE. INGLESE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellant2 appeals from the Examiner's decision to reject claims 1, 2, 5, 9-12, 16-21, and 25-39. We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 In explaining our Decision, we cite to the Specification of October 23, 2013 ("Spec."), Final Office Action of February 22, 2017 ("Final"), Appeal Brief of July 28, 2017 ("Appeal Br."), and Examiner's Answer of November 8, 2017 ("Ans."). We have also considered the Reply Brief of January 6, 2018. 2 Appellant is the applicant, Oliden Technology, L.L.C., which, according to the Brief, is the real party in interest. Appeal Br. 1. Appeal2018-002488 Application 14/061,566 We AFFIRM-IN-PART. The claims are directed to an antenna assembly (see, e.g., claim 1), a downhole measurement tool including an antenna assembly (see, e.g., claim 10), and a method of obtaining a measurement in a borehole using an antenna assembly (see, e.g., claim 19). All of the claims require the antenna assembly include a plurality of grooves with a first groove of the plurality being oriented at a first direction and a second groove of the plurality being oriented at a second direction. See claims 1, 10, 19. The grooves of different direction are denoted as grooves 342 and 346 in the Specification. See, e.g., Spec. ,r 45, Fig. 3A (showing grooves 342 oriented in a non-axial direction and grooves 346 oriented in axial direction 341 ). All of the claims require each of the grooves comprise two sides, a top, a bottom, and a depth. Together with a coil, the grooves produce magnetic dipole moments. Claim 1, with the language at issue highlighted, is illustrative: 1. An antenna assembly, comprising: a tool body section (12-1) having a longitudinal axis (341), an external surface (12-2), and an internal surface; and a plurality of grooves (342) [sic, (342, 346)]3 spaced around and embedded in the tool body section (12-1 ), wherein 3 Claim 1 requires a first groove of the plurality be oriented in a first direction and a second groove of the plurality be oriented in a second direction different from the first direction. Because the Specification denotes grooves 342 as all having the same direction and denotes grooves 346 as having a different direction than the first direction, reference numeral 346 must be included when setting forth the reference numerals for the "plurality of grooves." There is no written descriptive support for grooves 2 Appeal2018-002488 Application 14/061,566 each of the grooves (342) [sic, (342, 346)] comprises two sides, a top, a bottom, and a depth, the depth being of reduced radial dimension relative to the external surface (12-2) but does not penetrate the internal surface, a first groove [(342)] of the plurality of grooves (342) [sic, (342, 346)] being oriented at a first direction, and a second groove [ (346)] of the plurality of grooves (342) [sic, (342, 346)] being oriented at a second direction, wherein the first direction is not the same as the second direction, and wherein the first groove, in combination with a particular coil selected from a set of one or more coils (340), produces a first magnetic dipole moment, and the second groove, in combination with the same particular coil, produces a second magnetic dipole moment, wherein the direction of the first magnetic dipole moment is different from the direction of the second magnetic dipole moment. Appeal Br. 27 (claims appendix) (emphasis added). The Examiner maintains the following rejections: A. The rejection of claims 1, 2, 5, 10-12, 17, 31, and 32 under 35 U.S.C. Â§ I02(a)(l) as anticipated by Wisler4; B. The rejection of claims 17 and 18 under 35 U.S.C. Â§ 103 as obvious over Wisler in view of Bittar5; C. The rejection of claims 9, 16, and 34--37 under 35 U.S.C. Â§ I02(a)(l) as anticipated by, or in the alternative, under 35 342 oriented in two different directions. Note that the statement "[i]n each embodiment described below, at least one of the grooves 342 is oriented at a non-axial direction" (Spec., 43) does not provide written description for grooves 342 oriented in different directions from each other. It remains that none of the referenced embodiments depict grooves 342 in different directions. 4 Wisler et al., US 2011/0187373 Al, published Aug. 4, 2011; hereinafter "Wisler". 5 Bittar et al., US 2012/0249149 Al, published Oct. 4, 2012; hereinafter "Bi ttar". 3 Appeal2018-002488 Application 14/061,566 U.S.C. Â§ I03(a) as obvious over Wisler; D. The rejection of claims 19--21, 25, 26, 28, 29, 33, 38, and 39 under 35 U.S.C. Â§ I02(a)(l) as anticipated by Wisler or, in the alternative, under 35 U.S.C. Â§ 103 as obvious over Wisler in view ofWang6; E. The rejection of claim 27 under 35 U.S.C. Â§ 103 as obvious over Wisler and Wang in view of Meyer 7; and F. The rejection of claims 29 and 30 under 35 U.S.C. Â§ 103 as obvious over Wisler and Wang in view of Bittar. OPINION In arguing against the rejections, Appellant focuses on the rejection of independent claims 1, 10, and 19 as a group, focusing particularly on the Examiner's use of Wisler to support the rejections, and argues claims 3 5, 3 7, and 39 as a separate group, again focusing on the Examiner's application of Wisler. Appeal Br. 2-25. As succinctly put by Appellant, "[t]his case turns on whether Wisler ... in fact discloses certain of Appellant's claim elements as contended by the Examiner." Appeal Br. 2. Appellant contends that when the claim elements "are properly construed in accordance with the law, it does not." Id. As the issues are the same across the rejections, it will suffice for us to select claims 1 and 35 as representative for discussing the issues arising in the appeal. 6 Wang, US 2010/0286913 Al, published Nov. 11, 2010. 7 Meyer et al., US 2009/0157367 Al, published Jun. 18, 2009; hereinafter "Meyer". 4 Appeal2018-002488 Application 14/061,566 Claim 1 Turning first to the rejection of claim 1, which the Examiner rejects as anticipated by Wisler, Appellant disputes the Examiner's finding that Wisler' s slots 110 alone, or in combination with hole antenna elements 31, are grooves with two sides, a top, a bottom, and a depth as required by the claim. Appeal Br. 12-19. Appellant contends the Examiner reversibly erred in these findings because the Examiner interpreted "groove" too broadly. Id. We determine that a preponderance of the evidence supports the Examiner's finding that Wisler's slits and hole/slit combinations are grooves that meet the requirements of claim 1. The key to answering the question is using the proper standard to interpret the claim language. Appellant's Appeal Brief reproduces quotes from a broad range of cases discussing issues of claim interpretation. Appeal Br. 2-12. First, we note that much of the case law Appellant reproduces in the Appeal Brief is directed to instances in which a court was interpreting claim terms in an issued patent. Although much of that case law is useful in understanding how to interpret claims generally, one must keep in mind that the claims of issued patents are presumed valid and, thus, are interpreted in a different manner than claims in patent applications still undergoing examination at the Patent Office. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) ("It would be inconsistent with the role assigned to the PTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid."). During prosecution, there is a shifting of burdens between the examiner and applicant that serves to develop the record and provides the 5 Appeal2018-002488 Application 14/061,566 requisite written notice to the public as to what the applicant claims as the invention. Morris, 127 F.3d at 1054. Public notice is an important objective of patent prosecution before the PTO. Id. It is the duty of the PTO to ensure that the claims allowed cover only subject matter that is properly patentable in a proffered patent application. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33-34 (1997). For this reason, "[t]he PTO broadly interprets claims during examination of a patent application since the applicant may 'amend his claims to obtain protection commensurate with his actual contribution to the art."' In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) (quoting In re Prater, 415 F.2d 1393, 1404---05, 162 USPQ 541, 550, 56 CCPA 1381, 1395 (1969)). Thus, as an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). One of the most important differences between the claim interpretation standard applied to claims undergoing prosecution versus the claim interpretation standard applied to issued claims, is the use of the prosecution history. When interpreting the claims of an issued patent, "[t]he prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution." Southwall Techs., Inc. v. Cardinal JG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). But 6 Appeal2018-002488 Application 14/061,566 prosecution history cannot be used in this manner before issuance. As stated in Yamamoto: An applicant's ability to amend his claims to avoid cited prior art distinguishes proceedings before the PTO from proceedings in federal district courts on issued patents. When an application is pending in the PTO, the applicant has the ability to correct errors in claim language and adjust the scope of claim protection as needed. This opportunity is not available in an infringement action in district court. District courts may find it necessary to interpret claims to protect only that which constitutes patentable subject matter to do justice between the parties. In re Yamamoto, 740 F.2d 1569, 1572 (Fed. Cir. 1984); see also In re Zietz, 893 F.2d 319, 321-22 (Fed.Cir.1989) (stating that the broadest reasonable construction of claims is used to identify ambiguities in claims during prosecution when the claims can be amended); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1286-87 (Fed. Cir. 2015), ajfd sub nom. Cuozzo Speed Techs., LLCv. Lee, 136 S. Ct. 2131, 195 L. Ed. 2d423 (2016) (Newman dissent) ("The 'broadest' protocol aids the applicant and the examiner in defining claim scope during prosecution."). Because of the important role of claims in defining an invention and in providing public notice as well as the ability of an applicant to amend the claims, it is important to refrain from overly relying on an applicant's proffered interpretation of terms when interpreting claims during prosecution. First and foremost, we rely on the words of the claims themselves read in a manner consistent with the specification as it would be read by the ordinary artisan. Only in so far as an applicant's proffered interpretation is the same as that reached by applying the broadest 7 Appeal2018-002488 Application 14/061,566 reasonable interpretation protocol, do we adopt it. The fact that an applicant's argued interpretation might be used after a patent issues as a prosecution history disclaimer is not a deciding factor. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) ("This court also observes that the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer ... "); In re Lockwood, 679 F. App'x 1021, 1027 (Fed. Cir. 2017) ("But the Board is not obligated to treat a patent owner's claim construction arguments on appeal as prosecution history disclaimer."). In applying the broadest reasonable interpretation protocol, we consult the specification to determine the meaning of the claim term, but we take care to not limit the claim to the specific embodiments disclosed in the specification when the term appears to have a broader meaning. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ("[L]imitations are not to be read into the claims from the specification."). In ascertaining how a person of ordinary skill in the art would understand the claim terms, it is appropriate to consult dictionaries, and in the absence of any definitions in the specification, and in cases where the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay people, general purpose dictionaries may be helpful. See Phillips, 415 F.3d at 1314. Claim 1 requires "a plurality of grooves (342) [sic, 342, 346] ... wherein each of the grooves (342) [sic, 342, 346] comprises two sides, a top, a bottom, and a depth." Wisler discloses drilled holes and a thin saw cut or "slit" along the hole length, i.e., along the cylindrical extent of the hole. 8 Appeal2018-002488 Application 14/061,566 Wisler ,r 64, Figs. 4A, 4B (110 and 31). The groove formed by the thin saw cut or slit and the groove formed by the hole and slit combination are open at their ends, i.e., where the ends of the slit and the holes reach the surface as shown at or near 31 in Figure 4B. Appellant faults the Examiner for relying on dictionary definitions for "groove" that allow for open-ended, non-closed structures. Appeal Br. 13. According to the definitions cited by the Examiner, a groove is "a long narrow cut in the surface of something hard" or "a long, narrow, hollow space cut into a surface." Final 28, citing oxfordleamersdictionaries.com and dictionary.cambridge.org. Such grooves can have closed ends, such as Wisler' s grooves 23 as shown in Figure 1 B. But grooves may have open ends like the grooves in tongue-and-groove wood flooring. Appellant contends that the Specification defines "groove" in a manner that requires a closed structure bounded on five sides rather than an open-ended structure. Appeal Br. 14. Specifically, Appellant urges that "[f]rom the specification, it is manifest that Appellant defined a groove by specifying five structural elements that bound it: 'two sides', a 'top', a 'bottom', and a 'depth"'. Id. Appellant then argues that one must consult the figures and corresponding text, say Figure 3B and its corresponding text, paragraph 49, to understand what structural elements are the sides, top, bottom, and depth. Id. Figure 3B is reproduced below: 9 Appeal2018-002488 Application 14/061,566 ' : -~,__ 341 i i ! Figure 3B is a side view of an embodiment of Appellant's antenna assembly Appellant urges that: The "two sides" refer to the two longer sides of the rectangle. The "top" refers to one of the shorter sides of the rectangle and the "bottom" refers to the opposite shorter side. The terms "top" and "bottom" derive from the historical axial (i.e., longitudinal) orientation of grooves in the prior art. Appellant used "top" to refer to the uphole shorter side and "bottom" to refer to the downhole shorter side. The relative orientation aspect of the "top" and "bottom" lose meaning with respect to transverse grooves, but that is of no consequence. The "top" and "bottom" are both integral with the "two sides" and together the two sides, the top, and the bottom form a continuous closed loop or geometric shape. That is, the top and bottom are the ends that 10 Appeal2018-002488 Application 14/061,566 Id. close the two open long sides to form the continuous closed geometric shape. First, Appellant does not provide any evidentiary support for the statement that "[t]he terms 'top' and 'bottom' derive from the historical axial (i.e., longitudinal) orientation of grooves in the prior art." Id. Attorney argument in the briefs cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Second, the Specification does not describe the sides, top, and bottom in the manner urged by Appellant. The Specification merely discloses that Figure 3B shows a second antenna assembly 300B that has six grooves 342 and two grooves 346 "shown here as rectangular, but may be of any geometrical shape such as quadrilateral or otherwise elongated in shape" with each being "defined by two sides, a top and a bottom, which may be optionally rounded off' and each having "a depth, which may be a portion of the thickness of the tool body section 12-1" that "may be, for example, uniform, graduated, or rounded." Spec. ,r 49. Unfortunately, the figures do not identify which of the depicted portions of the groove are the sides, top, and bottom. Nor is it clear that the depth is a separate structure. The ordinary meaning of depth in mathematics 1s: 2 rnat.hen7oti(s a : the r)erpendicuia:r (see P.r.r;_p_[l\~1:)J(;J)_t./\.F .. ~~rxrr\/ __ J __ ;;:~\.tÂ°J~~J~ ... 1t~) rnea:surement dc~\i\ln:../'Ja(d fronÂ·1 a: surface b : the direct linear rneasureiTH:'nt frorn front to back 11 Appeal2018-002488 Application 14/061,566 Merriam-webster.com/dictionary/depth (accessed Jan. 04, 2019). In its ordinary meaning, "depth" is a measurement, not a structure in and of itself. Appellant's Specification refers to the depth as "a portion of the thickness of the tool body section 12-1" that may be "uniform, graduated, or rounded." A portion of the thickness would seem to equate to the perpendicular measurement through the tool body section 12-1 from the external surface 12-2 towards axis 341. The Specification does not further define or discuss the locations of the "two sides, a top and a bottom" of the groove in a way that supports Appellant's argument. In light of the lack of evidence of a special meaning and given that the depth equates to a portion of the thickness of the tool body, it would be consistent with the disclosure in the Specification to interpret the "top" as the external surface 12-2 of the tool body 12-1, the "bottom" as the surface at the depth of the groove, and the "sides" as the groove surfaces between the top and the bottom of the groove. This is what the Examiner has done. This can best be seen from the Examiner's annotated Figure 13A of Wisler found on page 45 of the Answer, which we reproduce below: 12 Appeal2018-002488 Application 14/061,566 .ANNOTA TEO Ff~ JlA Ans. 45. Appellant has not persuaded us that the Examiner's interpretation is unduly broad or inconsistent with the Specification. The dispute in meaning in this case is exactly the kind of ambiguity that the broadest reasonable construction of claims standard is designed to weed out during the prosecution of a patent application. See In re Zietz, 893 F .2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.Cir.1989) (stating that the broadest reasonable construction of claims is used to identify ambiguities in claims during prosecution when the claims can be amended). It is simply not enough for an applicant to declare that the claim limitation has a narrower meaning; an applicant seeking a narrower construction must either show why the broader construction is unreasonable or amend the claim to expressly state the scope intended. Morris, at 1057. 13 Appeal2018-002488 Application 14/061,566 Appellant advances a second argument against the Examiner's rejection. This argument focuses on the magnetic dipole limitations recited in claim 1 . Claim 1 contains the following limitation regarding magnetic dipole moments produced by the grooves: wherein the first groove, in combination with a particular coil selected from a set of one or more coils (340), produces a first magnetic dipole moment, and the second groove, in combination with the same particular coil, produces a second magnetic dipole moment, wherein the direction of the first magnetic dipole moment is different from the direction of the second magnetic dipole moment. Appeal Br. 27 ( claims appendix). Appellant contends that the Examiner improperly correlated a theoretically possible, but insignificant and irrelevant magnetic dipole moment produced by Wisler' s slit 110 ( or slit/tunnel combination 110/3 1) to one of Appellant's claimed magnetic dipole moments. Appeal Br. 20-23. However, Appellant does not dispute that, however small, such dipole moments may theoretically be produced by Wisler's grooves. Appeal Br. 21. Moreover, we agree with the Examiner that Wisler specifically discloses producing the different magnetic dipole moments required by claim 1. Ans. 58---61. See, in particular, Wisler's Figure 19, which shows dipole moment 222 in a different direction than dipoles moments 220 and 224. Appellant has not identified a reversible error in the Examiner's finding of anticipation by Wisler. 14 Appeal2018-002488 Application 14/061,566 Claim 35 Claim 3 5 depends from claim 9, which depends from claim 31. Claim 31 further limits claim 1 to an antenna assembly with a plurality of lands (344) spaced around the tool body section (12-1) separating adjacent grooves. Further, claim 31 requires "an antenna pathway (347) traversing the plurality of grooves (342) and the plurality of lands (344) around the tool body section (12-1 ), wherein the particular coil (340) is disposed in the antenna pathway (347)." Appeal Br. 30 ( claims appendix) (emphasis added). Claim 9 requires that the antenna pathway (34 7) be "formed by machining out at least one portion of each land of the plurality of lands (344)." Claim 35 requires that "the machined-out portion of each land of the plurality of lands (344) [be] cut at some non-radial angle." This non-radial angle of the machined out antenna pathway 347 is depicted in Appellant's Figure 3G, which we reproduce below: 15 Appeal2018-002488 Application 14/061,566 Figure 3G is a sectional view through a land 344 along the orientation of a neighboring groove 342 The Examiner finds Wisler describes lands cut at the required non- radial angle. Final 14. We agree with Appellant that the Examiner reversibly erred. This error becomes apparent when one considers the Examiner's annotated Figures 4C of Wisler, which we reproduce below: 16 Appeal2018-002488 Application 14/061,566 ANNOTATED FIG. 4C B I Slits (grooves} 110 running from A to B notpara!te! to a radfus Wisler's Figure 4C annotated to show that slits 110 do not run parallel to a radius First, we agree with Appellant the "intended meaning [of non-radial] can be readily understood by reference to Applicant's Figure 3G, coupled with the knowledge of one skilled in the art." Appeal Br. 23-24. According to Appellant, The cylindrical geometry of most well logging tools leads those skilled in the art to use cylindrical coordinates since the cylindrical symmetry simplifies the mathematical formulas and provides a standard nomenclature for directional references. For example, the directions are usually referred to as "longitudinal", meaning along the tool axis, "azimuthal", meaning around the circular periphery and corresponding to a polar angle, and "radial", meaning directed directly in or out from and perpendicular to the longitudinal (tool) axis (i.e., along a normal to the surface of the cylindrical tool housing). Id. Wisler' s use of "tool axis", "azimuthal" and "radial" to set forth the positions and orientations of various structures within Wisler's antenna supports Appellant's explanation. See, e.g., Wisler Fig. 7 A (labeling 17 Appeal2018-002488 Application 14/061,566 portions of wires as axially directed and other portions of wires azimuthally directed); ,r 59 ("Grooves 23 are disposed azimuthally around the outer surface of the tool housing 20."); ,r 62 ("the radial depth 26 of a groove is made greater than the azimuthal width 28 of the grooves."). Second, the true problem with the Examiner's rejection is that claim 35 requires the antenna pathway be "cut at some non-radial angle." The Examiner provides no convincing evidence that Wisler' s antenna pathway is cut at the necessary angle. The fact that Wisler orients the slits 110 at an angle is irrelevant to the question. The antenna pathway does not run along the slits 110: it traverses through the slits as shown at 105 in Wisler's Figure 13A. Thus, we do not sustain the Examiner's rejections of claims 35, 37, and 39, which contain the non-radial limitation. CONCLUSION In summary: 1, 2, 5, IO- Â§ Wisler 1, 2, 5, IO- 12,17,31 I02(a)(l) 12,17,3132 32 17, 18 Â§ 103 Wisler in view of 17, 18 Bittar 9, 16,34-- Â§ Wisler 9, 16,34,36 35,37 37 I02(a)(l) or 103 10-21, 25, Â§ Wisler alone or 10-21, 25, 39 26, 28, 29, I02(a)(l) Wisler in view of 26, 28, 29, 33,38,39 or 103 Wan 33,38 18 Appeal2018-002488 Application 14/061,566 27 Â§ 103 29,30 Â§ 103 Summary Wisler and 27 Wang in view of Me er Wisler and 29,30 Wang in view of Bittar 1, 2, 5, 9, 10-12, 16- 21, 25-34, 36,38 DECISION The Examiner's decision is affirmed-in-part. TIME PERIOD FOR RESPONSE 35,37,39 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED-IN-PART 19