HALLIBURTON ENERGY SERVICES, INC.

Patent Trials and Appeals Board

Jan 28, 2022

2020005994 (P.T.A.B. Jan. 28, 2022)

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. 15/534,420 06/08/2017 Quang Huy Nguyen 1560-047201 9451 112839 7590 01/28/2022 C. Tumey Law Group PLLC - HES C. Tumey Law PO Box 890226 Houston, TX 77062-9998 EXAMINER BALSECA, FRANKLIN D ART UNIT PAPER NUMBER 2685 NOTIFICATION DATE DELIVERY MODE 01/28/2022 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): bdempsey@ctumeylawgroup.com ctumey@ctumeylawgroup.com docketing@ctumeylawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte QUANG HUY NGUYEN, WEI HSUAN HUANG, ASTRID HIDAYAT, and YONG FONG LAU Appeal 2020-005994 Application 15/534,420 Technology Center 2600 Before MINN CHUNG, CHRISTA P. ZADO, and DAVID J. CUTITTA II, Administrative Patent Judges. ZADO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-4, 8-10, 12-17, 19, and 20, all the claims pending in the present application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Halliburton Energy Services, Inc. Appeal Br. 2. Appeal 2020-005994 Application 15/534,420 2 CLAIMED SUBJECT MATTER The instant application is titled “Downhole Acoustic Telemetry Module with Multiple Communication Modes.” Spec. 1:1-2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system that comprises: a downhole tool comprising a drill string and a drill bit, wherein the downhole tool is configured to transmit uplink data; a surface controller configured to receive the uplink data and to transmit downlink data to the downhole tool; at least one short hop telemetry module disposed between the downhole tool and the surface controller, wherein the at least one short hop telemetry module uses non-acoustic telemetry techniques; a plurality of acoustic telemetry modules deployed downhole, wherein each of the plurality of acoustic telemetry modules comprises isolated transducers positioned on different sides of a ring or a tubular, wherein each of the plurality of acoustic telemetry modules further comprises acoustic damping material integrated with the ring or the tubular, and positioned between and adjacent the isolated transducers, wherein each of the plurality of acoustic telemetry modules selectively operates in a first communication mode in which its transducers simultaneously convey uplink data and downlink data, and in a second communication mode in which its transducers simultaneously convey only uplink data or only downlink data; and a plurality of acoustic dampening material that forms a sleeve around each of the transducers and is also embedded between each of the transducers. Appeal Br. 16 (Claims App.). Appeal 2020-005994 Application 15/534,420 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Anderson US 5,243,566 Sept. 7, 1993 Birchak US 5,924,499 July 20, 1999 Kyle US 7,301,472 B2 Nov. 27, 2007 Tingley US 7,590,029 B2 Sept. 15, 2009 Fink US 7,595,737 B2 Sept. 29, 2009 Burleson US 2010/0133004 A1 June 3, 2010 Pabon US 7,913,806 B2 Mar. 29, 2011 Gong US 8,203,985 B2 June 19, 2012 Chen US 9,197,393 B2 Nov. 24, 2015 Haq US 2016/0092482 A1 Mar. 31, 2016 Gao US 9,822,634 B2 Nov. 21, 2017 REJECTIONS Claims 1-4, 8-10, 12-17, 19, and 20 stand rejected as follows: Claims Rejected 35 U.S.C. § References 1, 2, 4, 12, 14, 15, 19 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson 3 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Tingley 8, 9, 20 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Fink 10 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Burleson 13 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Haq 16, 17 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Gong Appeal 2020-005994 Application 15/534,420 4 OPINION Discussion Appellant seeks reversal of the Examiner’s rejections of all pending claims-i.e., claims 1-4, 8-10, 12-17, 19, and 20. Appeal Br. 7-14. Specifically, as to independent claims 1 and 14, from which the remaining pending claims depend, Appellant argues Anderson is non-analogous art, and, therefore, the Examiner’s combination of this reference with other references does not render the claims obvious. Id. at 7-10. Appellant also argues that Anderson teaches away from the claimed apparatus and method. Id. at 11-12. Finally, with regard to claims 16 and 17 only, Appellant additionally argues that the Examiner has not provided sufficient motivation to combine Gong with Gao, Chen, Birchak, or Pabon. Id. at 12-14. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). For reasons that follow, we affirm the Examiner’s rejection. 1. Whether Anderson is Non-Analogous Art A reference must be from an analogous art to be available for use in a section 103(a) rejection. “Whether a reference in the prior art is ‘analogous’ is a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). Two criteria have evolved for answering the question: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular Appeal 2020-005994 Application 15/534,420 5 problem with which the inventor is involved.” Id. at 658-59 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. To qualify as analogous art under the second criterion, a prior art reference need not “be reasonably pertinent to each and every problem with which an inventor is involved; reasonable pertinence to a single such problem suffices.” Ex parte Gaechter, 65 USPQ2d 1690, 1692 (BPAI 2002) (emphasis omitted). In determining whether Anderson is analogous art, we need not and do not decide whether Anderson is in the same field of endeavor as the claimed method and apparatus, because Anderson is reasonably pertinent to the problem with which the inventors were involved. Appellant argues the inventor is concerned with “challenges related to acoustic telemetry” and that “acoustic data streams need to be distinguished from stray noises that occur in the downhole environment, especially during drilling.” Appeal Br. 9-10 (quoting Spec. ¶ 3). Appellant continues to explain that receiver saturation is a particular problem with acoustic telemetry when acoustic signals need to be transmitted along thousands of feet of pipe in the downhole oil drilling environment. Id. at 10 (citing Spec. ¶ 3). According to Appellant, unlike the Specification, Anderson is not concerned with signal saturation in acoustic transducers. Rather, Anderson is concerned with removing signal noise induced by water flow in torpedo tubes. Id. at 10 (citing Anderson 1:15-20). Appellant’s arguments are not persuasive. As found by the Examiner, the claims do not mention receiver Appeal 2020-005994 Application 15/534,420 6 saturation. Ans. 4. Indeed, Appellant does not identify, nor do we discern, any language in the claims indicating that the apparatus and method is concerned with receiver saturation. Moreover, the Specification discusses both noise and receiver saturation as challenges in acoustic telemetry: One of the challenges related to acoustic telemetry is that acoustic data streams need to be distinguished from stray noises that occur in the downhole environment, especially during drilling. Receiver saturation (e.g., due to a nearby transmitter) is another challenge related to acoustic telemetry. When receiver saturation occurs, simultaneously conveying uplink and downlink data is not possible or is otherwise rendered ineffective. Spec. 1:20-25. The Specification further discloses that acoustic dampening material is used to reduce noise, stating “acoustic absorption material can also be positioned . . . to reduce the amount of noise from known or potential sources of interference.” Id. at 7:15-17 (emphasis added). To the extent acoustic dampening material is also used to reduce receiver saturation, the Specification explains that the material should be selected to also attenuate high frequencies at which communications take place (rather than just the lower frequencies associated with drilling noise). Id. at 7:19-24. Notably, as we discussed above, the claims do not mention receiver saturation. Nor do the claims mention attenuation frequencies of the dampening material, much less implicate saturation that occurs at high frequencies. Therefore, contrary to Appellants arguments, the inventors were concerned with noise attenuation (in addition to reducing receiver saturation). For the foregoing reasons, we are not persuaded by Appellant’s attempt to exclude noise as a problem with which the inventors were concerned. As found by the Examiner, Anderson teaches decoupling the transducers to prevent noise, wherein the decoupling is achieved by placing Appeal 2020-005994 Application 15/534,420 7 a sleeve around each transducer. Final Act. 6 (citing Anderson 3:61-4:12, 4:18-25). We are persuaded that this is reasonably pertinent to the problem of reducing noise in acoustic transducers that was faced by the inventors. Appellant has not argued otherwise, but instead has focused its arguments on the assertion that Anderson does not explicitly address receiver saturation. For the reasons discussed above, we are not persuaded by Appellant’s arguments that Anderson is not analogous art. 2. Whether Anderson Teaches Away Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, … would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001). Here, Appellant’s argument is that the Specification is concerned with reducing receiver saturation by applying acoustic dampening, whereas Anderson is concerned with preventing noise coupling caused by water flowing in the frontal face of an acoustic window. Appeal Br. 11-12. Appellant’s argument that the reason for using dampening material differs between Anderson and the Specification boils down to a repetition of the argument that Anderson is non-analogous art, and is misplaced as a teaching away argument. Notably, Appellant does not provide any argument or evidence that an ordinarily skilled artisan reading Anderson would have been led in a direction divergent from that of applicant. Appellant identifies nothing in Anderson that would have led a skilled artisan to not use acoustic dampening material around the transducers in applicant’s alleged invention. Appeal 2020-005994 Application 15/534,420 8 Nothing is identified that cautions against its use or indicates it should not be used. For the reasons discussed above, we are not persuaded by Appellant’s arguments that Anderson teaches away from the claimed apparatus and method. 3. Motivation to Combine Claim 14 recites deploying acoustic telemetry modules that support two communication modes. Appeal Br. 18 (Claims App.). In the “first communication mode” transducers simultaneously convey both uplink and downlink data. Id. In the “second communication mode” transducers convey only uplink data or downlink data. Id. Claim 16 depends from claim 14 and further recites “selecting a switching schedule for the first communication mode and the second communication mode.” Appeal Br. 18 (Claims App.). Claim 17 depends from claim 16 and further requires “adjusting the switching schedule for the first communication mode and the second communication mode.” Id. The Examiner introduces Gong for teaching the concept that a device can change between communication modes based on a schedule. Final Act. 12 (citing Gong 5:13-17, 5:33-36). The Examiner finds it would have been obvious to use Gong’s teachings in combination with Gao, Chen, Kyle, Birchak, Pabon, and Anderson in order to permit the acoustic modules to negotiate a schedule of when the communication modes are switched. Id. Appellant argues that the Examiner’s reasoning for combining Gong is insufficient to establish a prima facie case of unpatentability. Appeal Br. 12-14. Appellant premises its argument on its belief that the Examiner treats Gong’s wireless system as the functional equivalent of the claims’ Appeal 2020-005994 Application 15/534,420 9 acoustic system. Id. Based on this premise, Appellant argues that the Examiner has not shown that these two systems are equivalent, citing MPEP 2144.06. Id. at 14. We find Appellant’s argument unpersuasive because it is based on a false premise. Namely, nothing in the language of the Examiner’s rejection supports Appellant’s position that the Examiner relies on functional equivalency. See Final Act. 12. For the reasons discussed above, we are not persuaded the Examiner erred in rejecting claims 16 and 17. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 2, 4, 12, 14, 15, 19 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson 1, 2, 4, 12, 14, 15, 19 3 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Tingley 3 8, 9, 20 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Fink 8, 9, 20 10 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Burleson 10 13 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Haq 13 16, 17 103 Gao, Chen, Kyle, Birchak, Pabon, Anderson, Gong 16, 17 Overall Outcome 1-4, 8- 10, 12- 17, 19, 20 Appeal 2020-005994 Application 15/534,420 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