HALLIBURTON ENERGY SERVICES, INC.

Patent Trials and Appeals BoardMay 28, 2021

2020006709 (P.T.A.B. May. 28, 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. 14/888,818 11/03/2015 Jack Gammill Clemens 2013-071350 U1 US 9343 142050 7590 05/28/2021 HALLIBURTON ENERGY SERVICES, INC. C/O PARKER JUSTISS, P.C. 14241 DALLAS PARKWAY SUITE 620 DALLAS, TX 75254 EXAMINER QUAIM, LAMIA ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 05/28/2021 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): docket@pj-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JACK GAMMILL CLEMENS ____________ Appeal 2020-006709 Application 14/888,818 Technology Center 3600 ____________ Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and LEE L. STEPINA, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 2, and 4–10. Claim 3 is cancelled. Claims 11– 24 are withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Haliburton Energy Services, Inc. as the real party in interest. Appeal Br. 3. Appeal 2020-006709 Application 14/888,818 2 CLAIMS Claim 1, reproduced below with added emphasis, is the sole independent claim on appeal. 1. A downhole tool, comprising: a housing comprising a base and an end open to an exterior of the housing opposite the base; and a plurality of moveable members at least partially enclosed within the housing, at least a portion of the moveable members contactingly mounted in the housing against at least one adjacent moveable member substantially along a length thereof, each moveable member in the portion of moveable members configured to translate between a first position extended a first distance from the base and a second position extended a variable second distance from the base less than the first distance based on contact of the moveable member with a downhole object, wherein each moveable member in the portion of moveable members is configured to remain set in the second position extended the variable second distance from the base less than the first distance based on the frictional contact with at least one adjacent moveable member. Appeal Br. 13 (Claims App.). REJECTIONS Claims 1, 2, and 5–9 are rejected under 35 U.S.C. § 103 as being unpatentable over Lynde (US 2009/0195647 A1, published Aug. 6, 2009) and Zehnpfennig (US 5,407,185, issued Apr. 18, 1995). Claims 4 and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Lynde, Zehnpfennig, and Lund (US 2010/0212890 A1, published Aug. 26, 2010). Appeal 2020-006709 Application 14/888,818 3 ANALYSIS Claims 1, 2, and 5–9 over Lynde and Zehnpfennig As to claim 1, the Examiner finds Lynde discloses a downhole tool comprising, in part, a housing 14 comprising a base (resetting plate 50), and a plurality of moveable members (pins 22) mounted in the housing against at least one adjacent moveable member, wherein each moveable member is configured to translate between a first position and a second position 30 extended from the base based on contact of the moveable member with a downhole object (fish 12). Final Act. 3–4 (citing Lynde, Figs. 1, 2). The Examiner finds that each moveable member is configured to remain set in the second position; namely, pins 22 can be locked relative to housing 14 in the second position 30, such as by friction between pins 22 and housing 14, or by locking pins 22 to housing 14 with one or more locking members. Id. at 4. The Examiner concedes that Lynde does not disclose that “the pins [are] locked in the second position via friction between each pin.” Id. The Examiner finds Zehnpfennig discloses a locking mechanism for locking pin members in a second position by creating friction between the pin members. Final Act. 4–5 (citing Zehnpfennig, Figs. 3a, 4a, 5a; quoting Zehnpfennig, col. 4, ll. 44–52). The Examiner concludes that it would have been obvious to one of ordinary skill in the art, in view of Zehnpfennig, to modify Lynde utilizing Zehnpfennig’s locking mechanism “to provide a way of selectively locking the pins in the second position when desired.” Id. at 5. The Examiner explains “there is motivation for the combination of Lynde and Zehnpfennig as Lynde discloses an actuable locking mechanism [para 10] but does not provide any details. Zehnpfennig simply provides a way of Appeal 2020-006709 Application 14/888,818 4 how the locking can occur and also has the advantage of being selectively actuatable as desired.” Id. at 2. Appellant contends that one skilled in the art would not have included “the frictional contact idea of Zehnpfennig” in Lynde’s structure. Appeal Br. 8–9. First, Appellant contends that Lynde’s downhole tool is subjected to extreme space constraints, pressures, and temperatures, whereas Zehnpfennig teaches a table top clamp device which is not designed to be used in these conditions, but rather, is used to hold a workpiece the size of an automobile. Id. at 9. Second, Appellant contends that even if Zehnpfennig’s device would operate properly in the conditions to which Lynde’s device is subjected, it would not have been obvious to modify Lynde’s “otherwise simple and working” downhole tool “such that its pins are locked in place via frictional contact (e.g., using the expensive and complex air cylinder 36, piston 306, lever arm 308, and pivot point 310) as taught by Zehnpfennig.” Id. at 10 (boldface omitted). The Examiner responds that both Lynde and Zehnpfennig are “drawn to inventions used to contour and conform the shape of various objects utilizing pin/rod structures.” Ans. 10. The Examiner submits that “[t]here is nothing in Zehnpfennig that states that the device . . . is limited to be used in any particular working condition,” and its locking means is not limited to only air cylinder 36, piston 306, lever arm 308, and pivot point 310. Ans. 10–11. The Examiner submits that Zehnpfennig discloses that adjacent rods 30 are arranged to be in frictional contact with each other, which facilitates maintaining the rods in a second position when in contact with workpiece 50 (id. at 11 (citing Zehnpfennig, col. 3, ll. 56–65, Figs. 3c–5c)), and furthermore, Lynde relies on frictional contact between pins 20 and housing Appeal 2020-006709 Application 14/888,818 5 14 to maintain pins 20 in the second position (id. (citing Lynde ¶ 10)). Therefore, the Examiner concludes: it would have been obvious to modify Lynde with the locking means of Zehnpfennig by simply adding more pins 20 to the imaging tool 10 of Lynde so that the pins are in frictional contact with adjacent pins 20 in order to facilitate in locking the pins in the second position. Id. In reply, Appellant disagrees that Zehnpfennig is not limited to a particular working condition. Reply Br. 2. Appellant asserts, “for the device of Zehnpfennig to work it must have access to a great deal of space, controllers, air supply and clamps to create the alleged ‘friction’ between the pins,” but none of these features would be available downhole.” Id. Appellant also asserts: The cited columns [of Zehnpfennig] further indicate that this air gap is necessary to allow the pressurized gas to escape there between, and additionally allow debris to be cleaned from between the rods. Accordingly, in contrast to what the Examiner now argues, the air cylinder 36, piston 306, lever arm 308 and pivot join 310 are necessary to eliminate the .0001 inch between the rods and create the friction, and without these features no such friction would exist. Reply Br. 3. We do not find Appellant’s contentions persuasive for the following reasons. First, Appellant does not dispute the Examiner’s finding that Lynde discloses a “downhole tool.” Regarding the operation of the pins, Lynde discloses: the pins 22 can be locked relative to the housing 14 in the second position 30. . . . Such locking can be achieved through various means, such as . . . by locking the pins 22 to the housing 14 with one or more locking members (not shown) Appeal 2020-006709 Application 14/888,818 6 positioned at the housing 14 that are moved relative to the housing 14 to load each pin 22 between the one or more locking members and the housing 14, for example. See Lynde ¶ 10 (boldface omitted). Accordingly, Lynde discloses that the downhole device can include structure to maintain the pins in the extended second position by, for example, frictional contact with the pins, or by the provision of locking members that are moved relative to the housing. Such locking members would be actuated while downhole when the pins are in the second position, and thus, subject to downhole conditions such as those described by Appellant. Second, Appellant does not contend that Zehnpfennig fails to qualify as analogous art with respect to the claimed subject matter. Third, to the extent Appellant is contending that Zehnpfennig’s locking mechanism could not be physically used in Lynde’s downhole device due to the structure of the locking mechanism and the associated downhole conditions, “[i]t is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” (Citation omitted)). Moreover, Appellant does not direct us to specific evidence of record to support its contention regarding the alleged incompatibility of Zehnpfennig’s locking mechanism in the downhole conditions of Lynde. Thus, Appellant’s attorney argument lacks sufficient evidentiary support. “Unsupported attorney argument . . . is an inadequate substitute for record Appeal 2020-006709 Application 14/888,818 7 evidence.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1260 (Fed. Cir. 2010). Lynde teaches maintaining moveable members in an extended position (i.e., to “remain set”) by frictional contact, and Zehnpfennig teaches maintaining moveable members in an extended position “based on frictional contact with at least one adjacent moveable member,” as claimed. We are not persuaded by Appellant’s argument that this teaching of Zehnpfennig could not be applied to Lynde’s downhole device by one of ordinary skill in the art with a reasonable expectation of success. See In re Clinton, 527 F.2d 1226, 1228 (CCPA 1976) (“Obviousness does not require absolute predictability, but a reasonable expectation of success is necessary.”). Fourth, Appellant does not apprise us of error in the Examiner’s stated motivation for modifying Lynde utilizing Zehnpfennig’s teaching of a locking mechanism—i.e., “to provide a way of selectively locking the pins in the second position when desired.” Final Act. 5. The proposed combination would allow the pins in Lynde’s downhole device to be selectively locked in the second position by frictional contact directly between adjacent ones of the pins, as taught by Zehnpfennig. Fifth, in light of Zehnpfennig’s teaching of using frictional contact directly between adjacent moveable members to maintain them in an extended position (i.e., “to remain set”), Appellant does not apprise us of error in the Examiner’s stated position that it would have been obvious to modify Lynde with Zehnpfennig’s locking means by adding more pins to Lynde’s device so that the pins are in frictional contact with adjacent pins to facilitate their locking in the second position. Ans. 11. Appeal 2020-006709 Application 14/888,818 8 For the foregoing reasons, we sustain the rejection of claim 1, and claims 2 and 5–9 depending therefrom and not separately argued, as being unpatentable over Lynde and Zehnpfennig. Claims 4 and 10 over Lynde, Zehnpfennig, and Lund For this rejection, Appellant contends that Lund does not cure the deficiency in the rejection of parent claim 1. Appeal Br. 11. However, as Appellant does not apprise us of error in the rejection of claim 1, we sustain the rejection of claims 4 and 10 as unpatentable over Lynde, Zehnpfennig, and Lund for the same reasons as for claim 1. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5–9 103 Lynde, Zehnpfennig 1, 2, 5–9 4, 10 103 Lynde, Zehnpfennig, Lund 4, 10 Overall Outcome 1, 2, 4– 10 TIME PERIOD FOR RESPONSE 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). AFFIRMED