Halliburton Energy Services, Inc.

Patent Trials and Appeals Board

Nov 15, 2021

2021000976 (P.T.A.B. Nov. 15, 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.
16/075,453 08/03/2018 Ping Sui 164.2015-
IPM-099094 U1 US
8250
138627 7590 11/15/2021
Gilliam IP PLLC (Halliburton)
7200 N. Mopac
Suite 440
Austin, TX 78731
EXAMINER
COY, NICOLE A
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
11/15/2021 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):
uspto@gilliamip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte PING SUI, NANJUN LIU, VARUN GUPTA,
and YU-HSING CHARLES KUO
_______________

Appeal 2021-000976
Application 16/075,453
Technology Center 3600
_______________

Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
AMEE A. SHAH, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–23. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2020). Appellant identifies
Halliburton Energy Services, Inc. as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to a
formation tester tool. Spec., Title. As described in the Specification, a
formation tester tool may be used during (or after) the drilling of oil and gas
wells to measure and test properties of the formation into which the well is
being drilled. Spec. ¶ 1. More particularly, a formation tester tool may be
included as part of the drill string to facilitate formation testing. Spec. ¶ 23.
Appellant describes that in order to acquire a useful sample from the
formation, both the stability of the tester tool and integrity of the seal formed
when the tester tool is engaged with the borehole wall are critical to
performance. See Spec. ¶¶ 3, 19, 73.
In a disclosed embodiment, the formation tester tool comprises a
stabilizer, such as a hydraulically actuated probe piston that directly contacts
the borehole wall separately from a seal pad. Spec. ¶¶ 16–17. Additionally,
a seal pad is mounted on the probe piston (i.e., stabilizer) and, when
engaged, forms a fluid-tight seal against the borehole wall. Spec. ¶¶ 17–18.
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Figure 3 is illustrative and is reproduced below:

Figure 3 shows a cross-section view of a formation tester tool (130)
with its probe assembly (222) in a retracted position. Spec. ¶¶ 7, 39. As
shown, probe assembly (222) comprises a probe piston (206) capable of
traveling along axis (224) for a distance generally defined by cylindrical
cavity (303). Spec. ¶¶ 39–40. Hydraulic expansion or contraction of
actuation chamber (312) causes probe piston (206) to extend or retract,
respectively. Spec. ¶ 40. As also shown in Figure 3, an annular recess (210)
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is formed probe piston (206). Spec. ¶ 41. Within annular recess (210), is
seal pad (208), which is mounted on seal piston (316). Spec. ¶ 41.
Figure 6 is illustrative and is reproduced below:

Figure 6 shows a cross-section view of a formation tester tool (130)
with its probe assembly (222) in an extended position. Spec. ¶¶ 10, 54. As
shown, hydraulic expansion of actuation chamber (312) has taken place,
which results in probe assembly (222)—including probe piston (206)—
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extending from housing (202) of formation tester tool (130). Spec. ¶¶ 52,
54. More particularly, as shown in Figure 6, probe piston (206) is extended
to come into contact (see, e.g., contact points (212)) with borehole wall
(228). Spec. ¶ 54. According to the Specification: “Continued expansion of
the probe piston 206 on hydraulic actuation causes the tool housing 202 to
be pushed away from the contact engagement with the borehole wall 228,
until lateral expansion of the probe assembly 222 is sufficient to secure or
stabilize the tool 130 in the borehole 116.” Spec. ¶ 54. In other words,
continued expansion of probe piston (206) after it has contacted and engaged
with borehole wall (228) at contact points (212) will push housing (202) of
formation tester tool (130) away from contact points (212) until housing
(202) comes into contact with a position on the borehole wall diametrically
opposite to that of contact points (212). See Spec. ¶ 55, Figs. 7A, 7B.
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Figure 8 is illustrative and is reproduced below:

Figure 8 illustrates probe piston (206) in an engaged position with
borehole wall (228) and seal pad (208) in sealing contact with borehole wall
(228) at sealing surface (317). Spec. ¶¶ 14, 66–67. In a disclosed
embodiment, deployment of probe piston (206) and seal piston (316)
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comprises pumping hydraulic fluid into actuation chamber (312). Spec.
¶ 64. When the hydraulic pressure is below a threshold value, seal piston
chamber (319) is isolated from actuation chamber (312), resulting in seal
piston (316) remaining retracted in probe piston (206). Spec. ¶ 64.
However, when the hydraulic pressure exceeds a threshold value, hydraulic
fluid flows into seal piston chamber (319), actuating movement of seal
piston (316) and seal pad (208) into an engaged position. Spec. ¶ 64.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A tool assembly comprising:
a tool body defining a tool axis, the tool body configured
to be receivable in a borehole defined by a borehole wall;
a stabilizer mounted on the tool body, the stabilizer
displaceable in a direction transverse to the tool axis;
an actuating mechanism coupled to the stabilizer and
configured to move the stabilizer between: a retracted position
in which the stabilizer is spaced from the borehole wall, and a
deployed position in which a contact surface of the stabilizer
engages the borehole wall at a first location;
a seal mounted on the stabilizer and configured to
sealingly engage the borehole wall at a second location in
response to the stabilizer engaging the borehole wall, to define
a sealed isolation zone isolated from borehole fluids; wherein the
second location is spaced from the first location; and
a testing mechanism within the tool body and configured
for testing one or more formation properties in the isolation zone.

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The Examiner’s Rejections
1. Claims 1–5, 8–13, 15, and 17–23 stand rejected under
35 U.S.C. § 102(a)(1) as being anticipated by van Zuilekom et al. (US
7,584,655 B2; Sept. 8, 2009) (“van Zuilekom”).2 Final Act. 3–8.
2. Claims 6, 7, 14, and 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over van Zuilekom. Final Act. 9.

ANALYSIS3
In rejecting independent claim 1, inter alia, the Examiner finds van
Zuilekom discloses each of the limitations. See Final Act. 3–4. We begin
our analysis with a brief review of van Zuilekom.
Van Zuilekom generally relates to a formation tester tool seal pad.
See van Zuilekom, Title. More particularly, van Zuilekom describes a
formation tester tool that comprises a probe and a seal pad that contacts the
wall of a borehole to isolate the borehole and to seal out mud flowing in the

2 Although in the statement of the rejection the Examiner only identifies
claims 1–5, 8–13, 15, and 17–20, we note that the body of the rejection
further includes claims 21–23. See Final Act. 3–8. Appellant does not
allege to have been prejudiced by the incorrect identification of claims in the
rejection statement and provides a substantive argument regarding claim 21
(see Appeal Br. 14–15). Accordingly, we treat the Examiner’s failure to
include claims 21–23 in the statement of rejection as a harmless
typographical error.
3 Throughout this Decision, we have considered the Appeal Brief, filed
September 8, 2020 (“Appeal Br.”); the Reply Brief, filed November 23,
2020 (“Reply Br.”); the Examiner’s Answer, mailed October 2, 2020
(“Ans.”); and the Final Office Action, mailed March 31, 2020 (“Final Act.”),
from which this Appeal is taken.
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bore. Van Zuilekom, col. 4, ll. 31–34; see also van Zuilekom, col. 5,
ll. 11–13.
Figure 4 of van Zuilekom is illustrative and is reproduced below:

Figure 4 of van Zuilekom illustrates a cross-section view of probe
assembly (50) in an extended position. Van Zuilekom, col. 4, ll. 40–44. As
shown in Figure 4, probe assembly (50) comprises piston (96), piston
chamber (94), and seal pad (180) located at an end of the piston. Van
Zuilekom, col. 4, ll. 56–60. In the example shown in Figure 4, piston (96) is
in an extended position such that seal pad (180) is pressed against wall (112)
of borehole (8) through mud cake (24). Van Zuilekom, col. 4, ll. 40–48.
Van Zuilekom also contemplates different seal pads and
configurations. See generally, van Zuilekom, col. 5, l. 26–col. 9, l. 42,
Figs. 5–23. In particular, van Zuilekom describes replacing seal pad (180)
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shown in Figure 4, with seal pad (260), as shown in Figure 11. Van
Zuilekom, col. 7, ll. 26–29. Figure 11 of van Zuilekom is illustrative and is
reproduced below:

Figure 11 illustrates a top cross-section view of seal pad (260). Van
Zuilekom, col. 2, ll. 50–51, col. 7, ll. 25–26. As described in van Zuilekom,
seal pad (260) comprises a piston pad that includes a plate or fixture that
allows seal pad (260) to be attached to the testing tool. Van Zuilekom,
col. 7, ll. 26–29. Additionally, van Zuilekom describes seal pad (260)
further comprises sealing element (264) that is attached to movable piston
(267), the sealing element situated within space (265) between two pad
edges. Van Zuilekom, col. 7, ll. 29–40. Van Zuilekom further describes the
pad edges also act as sealing elements. Van Zuilekom, col. 7, ll. 29–31.
Throughout the description of Figure 11, however, van Zuilekom
refers to element (263) as either a plate, which allows seal pad (260) to be
mounted on the tester tool, or as a pad edge (similar to pad edge (262)). See
van Zuilekom, col. 7, l. 25–col. 8, l. 9. We note that, as originally filed,
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Figure 11 of van Zuilekom identified the structure between space (265) and
port (240) as pad edge (263). See van Zuilekom, Fig. 11 (as originally filed
on May 31, 2007). Such an identification is consistent with the description
that “[m]ovable sealing element 264 is located in the space 265 between
edges 263 and 262.” Van Zuilekom, col. 7, ll. 39–40.
In addition, van Zuilekom describes the pad edges may be coated or
shaped “to promote a seal between the formation wall 112 and the borehole
fluid.” Van Zuilekom, col. 7, ll. 49–51. Thus, van Zuilekom discloses pad
edges may be used “to form a seal.” Van Zuilekom, col. 7, ll. 52–53. Van
Zuilekom describes that after the pad edges form a seal with the formation
wall, formation fluid may be drawn into a flowline through port (240). Van
Zuilekom, col. 7, ll. 54–55. Van Zuilekom further discloses that, during
drawdown, a differential pressure across piston (267) may cause piston (267)
to extend and exert a greater force on sealing element (264) against the
borehole wall. Van Zuilekom, col. 7, l. 62–col. 8, l. 9.
Appellant disputes the Examiner’s findings that van Zuilekom
discloses the claimed stabilizer. Appeal Br. 11–13; Reply Br. 8. In
particular, Appellant asserts van Zuilekom’s pad edges do not read on the
claimed stabilizer at least because there is no seal mounted on the pad edges
in van Zuilekom. Appeal Br. 12. Moreover, Appellant argues that van
Zuilekom’s sealing element does not engage the borehole wall in response to
the pad edges (i.e., the alleged stabilizer) engaging the borehole wall.
Appeal Br. 9–11; Reply Br. 5–6.
Based on our review of van Zuilekom, we disagree with the Examiner
that the pad edges on either side of sealing element (264) disclose the
claimed stabilizer. As recited in claim 1, the stabilizer: (i) is mounted on the
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tool body; (ii) is coupled to an actuating mechanism to move the stabilizer
between a retracted position and an extended position; and (iii) has a seal
mounted on it. The pad edges in van Zuilekom are attached to the plate,
which allows sealing element (264) to be mounted to the tool body. See van
Zuilekom, col. 7, ll. 26–29. When mounted to the tool body, the pad edges
are coupled to an actuating mechanism (i.e., van Zuilekom’s piston (96) and
piston chamber (94)) that may move the pad edges between a retracted and
extended position. See van Zuilekom, col. 4, ll. 61–63. However, van
Zuilekom does not disclose that sealing element (264) is mounted on the pad
edges. Rather, van Zuilekom describes “sealing element 264 is located in
the space 265 between edges 263 and 262.” Van Zuilekom, col. 7, ll. 39–40
(emphasis added).
Additionally, the Examiner has not provided persuasive evidence or
technical reasoning that van Zuilekom’s sealing element engages with the
borehole wall in response to the pad edges (identified as the claimed
stabilizer) engaging with the borehole wall, as recited in claim 1. Rather,
van Zuilekom describes that in response to a pressure differential across
piston (267), piston (267) may move to an extended position to exert greater
force on sealing element (264) against borehole wall (112). See van
Zuilekom, col. 7, l. 62–col. 8, l. 9. Although van Zuilekom describes that
seal pad (260) is set against the borehole wall so that the pad edges come in
contact with the borehole wall (see van Zuilekom, col. 7, ll. 41–44), it is not
clear that sealing element (264) necessarily engages borehole wall (112) in
response to the pad edges engaging with the borehole wall. That is, sealing
element (264) may first engage with borehole wall (112) and then the pad
edges engage with the borehole wall. See In re Robertson, 169 F.3d 743,
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745 (Fed. Cir. 1999) (that a feature in the prior art reference “could” operate
as claimed does not establish inherency).
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that van Zuilekom discloses a seal, mounted on a
stabilizer (as identified by the Examiner), that sealingly engages with the
borehole wall in response to the stabilizer engaging the borehole wall, we do
not address other issues raised by Appellant’s arguments. See Beloit Corp.
v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection of independent
claim 1. For similar reasons, we do not sustain the Examiner’s rejection of
independent claims 15 and 19, which recite commensurate limitations.
Additionally, we do not sustain the Examiner’s rejections of claims 2–14,
16–18, and 20–23, which depend directly or indirectly therefrom.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–5, 8–13, 15,
and 17–23 under 35 U.S.C. § 102(a)(1).
We reverse the Examiner’s decision rejecting claims 6, 7, 14, and 16
under 35 U.S.C. § 103.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 8–13,
15, 17–23
102 van Zuilekom 1–5, 8–
13, 15,
17–23
6, 7, 14, 16 103 van Zuilekom 6, 7, 14,
16
Overall
Outcome
1–23

REVERSED