Halliburton Energy Servcies, Inc.

Patent Trials and Appeals BoardNov 4, 2021

2021002174 (P.T.A.B. Nov. 4, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/126,517 09/15/2016 W. V. Andrew Graves 2012-IP-056143U1 US 1025 15604 7590 11/04/2021 Baker Botts L.L.P. 910 Louisiana Street, One Shell Plaza Houston, TX 77002 EXAMINER PATEL, NEEL G ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 11/04/2021 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): debie.hernandez@bakerbotts.com susan.stewart@bakerbotts.com PTOL-90A (Rev. 04/07) Appeal 2021-002174 Application 15/126,517 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte W. V. Andrew Graves and Mathew D. Rowe ____________ Appeal 2021-002174 Application 15/126,517 Technology Center 3600 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and MICHAEL L. WOODS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated May 15, 2020, hereinafter “Final Act.”) rejecting claims 1–20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE and enter a NEW GROUND OF REJECTION of claims 1 and 11 pursuant to our authority under 37 C.F.R. § 41.50(b). INVENTION Appellant’s invention is directed to a system and method for Appeal 2021-002174 Application 15/126,517 2 determining “downhole conditions using circulated non-formation gasses.” Spec. 2, l. 6. Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method determining downhole conditions in a subterranean formation during a drilling operation, comprising: introducing a non-formation gas into a downhole flow of a drilling fluid as the drilling fluid is pumped by a first pump located at a surface into a drill string disposed in a borehole, wherein the non-formation gas is introduced between first pump and the borehole where the drilling fluid enters the borehole; pumping, by a second pump located below the surface, the drilling fluid that has exited the drill string into an annulus between the drill string and the borehole to a fluid conduit located at the surface, wherein the fluid conduit is in fluid communication with the annulus at the surface; receiving, at the fluid conduit, the non-formation gas extracted from the flow of the drilling fluid returned from downhole; and determining a downhole condition with respect to the borehole based, at least in part, on the received non- formation gas, wherein the downhole condition comprises at least a percentage of the drilling fluid that is lost to the subterranean formation. Appeal Br. 13, Claims App. REJECTIONS I. The Examiner rejects claims 1–10 under 35 U.S.C. § 103 as being unpatentable over Brumboiu, Stave, and Hanson. II. The Examiner rejects claims 11–20 under 35 U.S.C. § 103 as being unpatentable over Brumboiu, Stave, Hanson, and Johnson. Appeal 2021-002174 Application 15/126,517 3 ANALYSIS Rejection I The Examiner finds that Brumboiu discloses a method for determining downhole conditions in a well during drilling operations including, inter alia, introducing a non-formation gas from gas tank 197 into line 183, through which pump 185 pumps a drilling fluid from tank 180 to downhole 135. Final Act. 4 (citing Brumboiu, Abstract, paras. 17–20, Figs. 1, 3). Appellant argues that “Brumboiu fails to teach or suggest ‘wherein the non-formation gas is introduced between first pump and the borehole’ as required by claim 1.” Appeal Br. 9. According to Appellant, “[t]he mud pump 185 in Brumboiu is disposed such that the marker gas is injected via a line that is between a [gas] tank 197 and the mud pump 185.” Id. at 8 (citing Brumboiu, Fig. 1). In response, the Examiner takes the position that independent claim 1 “is broad in nature and that there are no steps, nor language to discuss the chronological order comprising of the introduction of the non-formation gas (e.g. after the pump, before the borehole, etc.).” Examiner’s Answer (dated Dec. 28, 2020, hereinafter “Ans.”) 3. The Examiner notes that the recited “first pump” in claim 1 is “not require[d] to be a tangible component, as it can be defined as ‘to force liquid or gas to move somewhere.’” Id. (citing https://dictionary.combridge.org/us/dictionary/english/pump). Thus, according to the Examiner, a skilled artisan “could analyze the end of one fluid flow cycle in conjunction with the beginning of a second fluid flow cycle and still be able to read on the current limitations.” Id. at 4–5. For a better understanding of the Examiner’s position, we reproduce below the Board’s and the Examiner’s annotated Figure 1 of Brumboiu: Appeal 2021-002174 Application 15/126,517 4 of Brumboiu: The Board’s and the Examiner’s annotated Figure 1 of Brumboiu illustrates the location “A” of the first pump, the location “B” of the borehole, and the location “C” where non-formation gas is introduced. In particular, the Examiner explains that when the drilling fluid exits from downhole 135 at location “B” to cycle back into mud tank 180 and be re-introduced into line 183, the non-formation gas from gas tank 197 is introduced at location “C” between location “B” of downhole 135 and location “A” of first pump 185. Ans. 4. Therefore, according to the Examiner, although “Brumboiu doesn’t disclose the non-formation gas therein to be introduced between the ‘first pump’ and ‘the borehole where the drilling fluid enters the borehole’ from a structural position stand point, it does teach it from a fluid flow standpoint.” Id. at 3–4 (emphasis added). At the outset, we do not agree with the Examiner’s construction of the term “pump” in the limitation “drilling fluid is pumped at a first pump” as a verb. See Ans. 3. Such a construction would result in Appeal 2021-002174 Application 15/126,517 5 two verbs with the same meaning, i.e., “pumped” and “pump.” As “[a] claim must be read in accordance with the precepts of English grammar,” a skilled artisan would reasonably construe the terms “pumped” and “pump,” in the limitation “drilling fluid is pumped at a first pump,” as a verb and a noun, respectively. See In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). Accordingly, Appellant is correct that a plain, ordinary meaning of the limitation “drilling fluid is pumped at a first pump” describes the physical location where drilling fluid is being pumped, namely, “at a first pump.” See Reply Brief (filed Feb. 9, 2021, hereinafter “Reply Br.”) 2. As such, we agree with Appellant that the limitation “first pump” constitutes a tangible component. Id. Such a construction is also consistent with Appellant’s Specification, which describes that “drilling mud, may be pumped by a mud pump 134.” Spec. 5, ll. 6–7, Fig. 1; see also In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) (“[C]laims under examination before the PTO are given their broadest reasonable interpretation consistent with the specification.”). Accordingly, a skilled artisan would reasonably construe the limitation “wherein the non-formation gas is introduced between [the] first pump and the borehole where the drilling fluid enters the borehole” to mean a structural location (location “C”) between the first pump (location “A”) and the borehole where the drilling fluid enters the borehole (location “B”), that is, a location downstream of the first pump. In contrast, in Brumboiu, location “C” where gas is introduced is not between location “A” of mud pump 185 (first pump) and location “B” where drilling fluid enters borehole 135 as recited; rather, location “C” is between location “A” of mud pump 185 (first pump) and gas tank 197, that is, a location upstream of pump 185. See supra, the Board’s and the Examiner’s annotated Figure 1 of Brumboiu. As such, in a first instance, that is, from a “structural position stand point” Appeal 2021-002174 Application 15/126,517 6 (see Ans. 3–4), Brumboiu fails to disclose that the non-formation gas is introduced “between [the] first pump and the borehole where the drilling fluid enters the borehole,” as called for by independent claim 1. In a second instance, that is, from the “fluid flow standpoint” (see Ans. 3–4), Brumboiu likewise fails to disclose that the non- formation gas is introduced “between [the] first pump and the borehole where the drilling fluid enters the borehole,” as called for by independent claim 1. See Appeal Br. 13 (Claims App.) (emphasis added). We appreciate the Examiner’s position that when drilling fluid is re-circulated from borehole 135 through line 183 and mud pump 180 to begin a new pumping cycle, location “C” where non- formation gas is introduced is between location “B” of borehole 135 and location “A” of mud pump 185 (first pump). See Ans. 4. However, in such a situation, location “C” where “the non-formation gas is introduced” is between location “B” of borehole 135 where the drilling fluid exits the borehole and location “A” of first pump 185, rather than “between [the] first pump and the borehole where the drilling fluid enters the borehole,” as recited in claim 1. See supra, the Board’s and the Examiner’s annotated Figure 1 of Brumboiu. Accordingly, even from a “fluid flow standpoint” (see Ans. 3–4), Brumboiu fails to disclose that the non-formation gas is introduced “between [the] first pump and the borehole where the drilling fluid enters the borehole,” as called for by independent claim 1. In conclusion, for the foregoing reasons, and because the Examiner’s use of the Stave and Hanson disclosures does not remedy the deficiencies of Brumboiu discussed supra (see Final Act. 5–6), we do not sustain the rejection under 35 U.S.C. § 103 of independent claim 1, and its dependent claims 2–10, as unpatentable over Brumboiu, Stave, and Hanson. Appeal 2021-002174 Application 15/126,517 7 Rejection II Independent claim 11 requires, inter alia, “wherein the gas injector is between the first pump and the borehole.” See Appeal Br. 14–15 (Clams App.). The Examiner makes similar findings as discussed supra. See Final Act. 11. In particular, the Examiner finds that Brumboiu’s gas injector at location “C” is between location “A” of pump 185 and location “B” of borehole 135. See id. (citing Brumboiu, Abstract, paras. 17–20, Figs. 1, 3); see also supra, the Board’s and the Examiner’s annotated Figure 1 of Brumboiu. Appellant argues “that Brumboiu fails to teach or suggest ‘wherein the gas injector is between the first pump and the borehole’ as required by claim 11.” Appeal Br. 10. According to Appellant, “mud pump 185 in Brumboiu is disposed such that the marker gas is injected via a line that is between a [gas] tank 197 and the mud pump 185.” Id. (citing Brumboiu, Fig. 1) In response, the Examiner relies on the same unpersuasive position discussed supra. See Ans. 3–6. Accordingly, as the Examiner’s use of the Stave, Hanson, and Johnson disclosures does not remedy the deficiencies of Brumboiu discussed supra (see Final Act. 12–15), for the reasons discussed above in Rejection I, we likewise do not sustain the rejection under 35 U.S.C. § 103 of independent claim 11, and its dependent claims 12–20, as unpatentable over Brumboiu, Stave, Hanson, and Johnson. NEW GROUND OF REJECTION I. Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over Brumboiu, Stave, and Hanson. Brumboiu discloses a method for determining downhole Appeal 2021-002174 Application 15/126,517 8 conditions in a subterranean formation during a drilling operation including (1) introducing a non-formation gas (marker gas) into a downhole flow of a drilling fluid as the drilling fluid is pumped by first pump 185, located at a surface, into drill string 140, which is disposed in borehole 135; (2) receiving at fluid conduit 175 the non-formation gas extracted from the flow of the drilling fluid returning from borehole 135; and (3) using gas extraction probe 195 and gas analyzer 190 to determine a downhole condition with respect to borehole 135, such as non-formation gas loss, based, at least in part, on the received non-formation gas. Brumboiu, paras. 17–20, 29, Fig. 1. Furthermore, Brumboiu discloses introducing non-formation gas either into mud line 183 between mud tank 180 and mud pump 185, as illustrated in Figure 1, or “in the area around the bell nipple [130]” located between pump 185 and borehole 135, as described in paragraph 15. As such, modifying Brumboiu’s arrangement illustrated in Figure 1 to inject the non-formation gas “in the area around the bell nipple [130]” between pump 185 and borehole 135 would have been obvious for a skilled artisan as a matter of design choice because the injection location “solves no stated problem” and “presents no novel or unexpected result.” In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). Simply selecting one of a plurality of a finite number of identified predictable solutions, i.e., injection location of non-formation gas at a location upstream or downstream of pump 185, might not be the product of innovation but something that occurs in the ordinary course of using a known device. See, e.g., ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (where the prior art consistently located two sensors in a shredder’s feed, a skilled artisan faced two design choices of placing the thickness sensor above or below the presence sensor and each design choice was an obvious combination of prior art elements). Appeal 2021-002174 Application 15/126,517 9 Brumboiu fails to disclose “pumping, by a second pump located below the surface, the drilling fluid that has exited the drill string into an annulus between the drill string and the borehole to a fluid conduit located at the surface, wherein the fluid conduit is in fluid communication with the annulus at the surface.” Nonetheless, Stave discloses an additional pump 18 located below the surface for diverting circulated drilling fluid exiting the borehole upstream to a fluid conduit at the surface. Stave, Abstract, paras. 23–32, Fig. 1. Thus, it would have been obvious for a person of ordinary skill in the art to further modify the drilling operation of Brumboiu to include Stave’s additional pump 18 in order to divert circulated drilling fluid uphole to a fluid conduit at the surface. Furthermore, the combined teachings of Brumboiu and Stave fail to disclose that the downhole condition includes “at least a percentage of the drilling fluid that is lost to the subterranean formation.” However, Hanson discloses detecting changes in concentration of a tracer gas in order to detect a downhole condition, specifically, kick or drilling fluid loss. Hanson, Abstract, paras. 1, 62, Fig. 2. Thus, it would have been obvious for a person of ordinary skill in the art to detect changes in the concentration of the non-formation gas, as taught by Hanson, in the drilling operation of Brumboiu, as modified by Stave, in order to provide an early indication of kick or fluid loss. Although we decline to reject every claim under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean the remaining claims are patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. See MPEP §1213.02. Appeal 2021-002174 Application 15/126,517 10 II. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Brumboiu, Stave, Hanson, and Johnson. Brumboiu discloses a system for determining downhole conditions in a subterranean formation during a drilling operation including (1) gas injector 199 containing a non-formation gas (marker gas) in fluid communication with a first flow of drilling fluid, which injects the non-formation gas in the first flow of drilling fluid; (2) pump 185 located at a surface for pumping the first flow of drilling fluid into drill string 140 located at borehole 135; (3) and extraction probe 195 and gas analyzer 190 with software for determining a downhole condition with respect to borehole 135, such as non-formation gas loss, based, at least in part, on the received non-formation gas. Brumboiu, paras. 17–20, 29, Fig. 1. As Brumboiu discloses the use of software, Brumboiu inherently includes a processor and a memory device with a set of instructions to perform the disclosed function of determining a downhole condition with respect to borehole 135. See id. at para. 20. Furthermore, Brumboiu discloses introducing the non-formation gas either into mud line 183 using gas injector 199 located upstream of pump 185 and borehole 135, as illustrated in Figure 1, or “in the area around the bell nipple [130]” located between pump 185 and borehole 135, as described in paragraph 15. As such, modifying Brumboiu’s arrangement illustrated in Figure 1 to relocate gas injector 195 between pump 185 and borehole 135 to inject the non-formation gas “in the area around the bell nipple [130]” where the drilling fluid enters borehole 135, would have been obvious for a skilled artisan as a matter of design choice because the injection location “solves no stated problem” and “presents no novel or unexpected result.” Kuhle, 526 F.2d at 555. Simply selecting one of a plurality of a finite number of identified predictable solutions, i.e., injector location of non- Appeal 2021-002174 Application 15/126,517 11 formation gas at a location upstream or downstream of pump 185, might not be the product of innovation but something that occurs in the ordinary course of using a known device. See, e.g., ACCO, 813 F.3d at 1367 (where the prior art consistently located two sensors in a shredder’s feed, a skilled artisan faced two design choices of placing the thickness sensor above or below the presence sensor and each design choice was an obvious combination of prior art elements). Brumboiu fails to disclose a second pump located below the surface for pumping the drilling fluid that has exited the drill string into an annulus between the drill string and the borehole to a fluid conduit located at the surface, wherein the fluid conduit is in fluid communication with the annulus at the surface. Nonetheless, Stave discloses an additional pump 18 located below the surface for diverting circulated drilling fluid exiting the borehole upstream to a fluid conduit at the surface. Stave, Abstract, paras. 23–32, Fig. 1. Thus, it would have been obvious for a person of ordinary skill in the art to further modify the drilling system of Brumboiu to include Stave’s additional pump 18 in order to divert circulated drilling fluid uphole to a fluid conduit at the surface. Furthermore, the combined teachings of Brumboiu and Stave fail to disclose that the downhole condition includes “at least a percentage of the drilling fluid that is lost to the subterranean formation.” However, Hanson discloses detecting changes in concentration of a tracer gas in order to detect a downhole condition, specifically, kick or drilling fluid loss. Hanson, Abstract, paras. 1, 62, Fig. 2. Thus, it would have been obvious for a person of ordinary skill in the art to detect changes in the concentration of the non-formation gas, as taught by Hanson, in the drilling operation of Brumboiu, as modified by Stave, in order to provide an early indication of kick or fluid loss. Appeal 2021-002174 Application 15/126,517 12 Finally, Brumboiu discloses an analyst controlling injector device 199 and the timings of the injection process. See Brumboiu, para. 19. However, the combined teachings of Brumboiu, Stave, and Hanson fail to disclose an information handling system connected to the injector device and having a processor and a memory device containing a set of instructions, which when executed, cause the injector device to inject the non-formation gas into the first flow of the drilling fluid at the gas injector device. Nonetheless, Johnson discloses a processor and a memory device containing a set of instructions, which when executed, cause the processor to introduce the non-formation gas into a first flow of drilling fluid at a gas injector. Johnson, paras. 19–21, 47. Therefore, it would have been obvious for a person of ordinary skill in the art to employ Johnson’s processor and memory device with a set of instructions to introduce the non- formation gas into the first flow of drilling fluid at the gas injector in the system of Brumboiu, Stave, and Hanson, in order to automate the non-formation gas injection into the drilling fluid, and, thus, increase speed and/or efficiency. Although we decline to reject every claim under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean the remaining claims are patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. See MPEP §1213.02. Appeal 2021-002174 Application 15/126,517 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference( s)/Basis Affirme d Reverse d New Ground 1–10 103 Brumboiu, Stave, Hanson 1–10 1 11–20 103 Brumboiu, Stave, Hanson, Johnson 11–20 11 Overall Outcom e 1–20 1, 11 This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the [E]xaminer, in which event the prosecution will be remanded to the [E]xaminer. The new ground of rejection is binding upon the [E]xaminer unless an amendment or new Evidence not previously of Record is made which, in the opinion of the [E]xaminer, overcomes the new ground of rejection designated in the decision. Should the [E]xaminer reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the Appeal 2021-002174 Application 15/126,517 14 proceeding be reheard under §41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure. MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)