Stephan Mueller et al.

Patent Trials and Appeals BoardDec 21, 2021

2020006737 (P.T.A.B. Dec. 21, 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. 16/361,784 03/22/2019 Stephan Mueller TEL4-55558- USC/INT0552USC 8757 44639 7590 12/21/2021 CANTOR COLBURN LLP-BAKER HUGHES OILFIELD OPERATIONS LLC 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER YANG, JAMES J ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 12/21/2021 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHAN MUELLER, INGO RODERS, and KAI SCHOENBORN Appeal 2020-006737 Application 16/361,784 Technology Center 2600 Before JEAN R. HOMERE, JEREMY J. CURCURI, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection of claims 1–11. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as BAKER HUGHES, A GE COMPANY, LLC. Appeal Br. 2. Appeal 2020-006737 Application 16/361,784 2 STATEMENT OF THE CASE Introduction The claimed subject matter is directed to “subterranean drilling and completion operations” in which “[a] surface communication interface (referred to as surface communication sub herein) may be used to take a signal from or put a signal into the wired pipe.” Spec. ¶ 2, 6; see also Spec. 7. Claims 1–11 are pending. Appeal Br. 7–9. Claim 1, the sole independent claim, is reproduced below for reference (emphases added): 1. A surface sub for connecting to a surface located end of a wired pipe system and having a wired pipe coupler located therein, the sub comprising: a body including an outer surface that defines an inner bore through which a fluid passes during drilling, the body configured to physically connect to the surface located end of the wired pipe system and rotates with the wired pipe surface located end of the wired pipe system; a first transmission device located at an end of the body that communicates with a the surface located end of the wired pipe system, the first transmission device being outside of the inner bore such that the fluid passes through the first transmission device during drilling; a communication collar located at a surface location that at least partially surrounds the outer surface and that is rotatable relative to the body; a second transmission device in electrical communication with the first transmission device and located on the outer surface of the body; a transmission line that electrically connects the first and second transmission devices and that passes at least partially through the body; and a third transmission device located in the communication collar in communication with the second transmission device; wherein the first, second and third transmission devices are all of the same type. Appeal 2020-006737 Application 16/361,784 3 References and Rejections Claims 1, 4–7, and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Lasater (US 2007/0257812 A1; Nov. 8, 2007). Non-Final Act. 3. Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Lasater in view of Myatt (US 5,196,845; Mar. 23, 1993). Non-Final Act. 7. Claims 3 and 8–10 are rejected under 35 U.S.C. § 103 as being unpatentable over Lasater in view of Hawthorn (US 2010/0328095 A1; Dec. 30, 2010). Non-Final Act. 7. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments. Arguments Appellant could have made but chose not to make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant does not separately argue the claims. See Appeal Br. 5. We select claim 1 as representative. See 37 C.F.R. §41.37(c)(1)(iv). We disagree with Appellant that the Examiner erred and adopt as our own the findings and reasons set forth by the Examiner to the extent consistent with our analysis below. We add the following primarily for emphasis. Appellant argues the Examiner’s rejection is in error, because “the Examiner has failed to show a surface sub that connects to an end [of] a wired pipe system as claimed.” Appeal Br. 5. In particular, Appellant contends that, in the Office Action, “mandrel 14 of Lasater is equated to the claimed surface sub” and “also the upper portion of the wired pipe system.” Appeal 2020-006737 Application 16/361,784 4 Id. at 4. Appellant contends this mapping “ignores a limitation of the claim” because “the mandrel is connected to itself.” Id. We are not persuaded the Examiner errs. Lasater teaches a mandrel that can be a portion of a drill string. Lasater ¶ 22. We agree with the Examiner that the “side walls, i.e. the body, of mandr[e]l 14” of Lasater teach the claimed “body” of the surface sub, and Lasater’s “top portion of the mandr[e]l 14 represents a surface located end” of the wired pipe system, as claimed. Non-Final Act 3; Lasater Fig. 2. Appellant argues the Examiner’s construction improperly “would have to be both the upper end of the wired pipe system and the body of the mandrel,” but does not provide technical reasoning or evidence (such as citing a limiting definition in the Specification) that persuasively shows the claimed body and wired pipe system cannot comprise different portions of the cited mandrel. Reply Br. 2; see also Ans. 3. For at least this reason, Appellant does not persuade us the Examiner’s mapping is in error. In any event, the Examiner’s rejection does not require the mandrel is a single unit connected to itself, as Lasater explicitly teaches “mandrel 14 [can] comprise more than one pipe section.” Lasater ¶ 30; Non-Final Act. 3. Accordingly, we are not persuaded the Examiner errs in finding Lasater’s mandrel 14 teaches or suggests the body of the surface sub configured to connect to the surface located end of the wired pipe system, as claimed. Separately, we note Appellant’s argument is not commensurate with the scope of claim 1. Appellant argues that “[t]he claim requires that the body is connected to the end of the wired pipe system” (Appeal Br. 4); but the claim is directed to the surface sub (having the body), not a system comprising both the surface sub and the wired pipe system. The claim merely requires the surface sub body is “configured to” connect to the wired Appeal 2020-006737 Application 16/361,784 5 pipe system. We agree with the Examiner that the mandrel of Lasater teaches such a configuration, because Lasater’s mandrel is configured to connect to a drilling pipe system. See Lasater ¶ 22 (“[T]he mandrel 14 is in the form of a portion of a drill string used in a wellbore.”); Final Act. 4 (“It is noted that the mandrel 14 of Fig. 2 may be implemented as the rotatable mandrel of the RST[2] system of Fig.1.”). For this additional reason, we are not persuaded the Examiner’s rejection is in error. Because we are not persuaded of error in the Examiner’s mapping, we do not address Appellant’s proffered alternative mapping to Lasater: “[t]o meet the claim, outer housing 12 must be the claimed ‘surface end of the wired pipe system’” Appeal Br. 4. The Examiner relies on outer housing 12 for teaching the claimed communication collar, not the surface end. See Final Act. 4; Lasater ¶ 25 (“The outer housing 12 is rotatable relative to the inner sleeve 22 and thus also the mandrel 14.”). We see no error in the Examiner’s findings with respect to the recited communication collar. We sustain the Examiner’s obviousness rejection of independent claim 1. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–7, 11 103 Lasater 1, 4–7, 11 2 103 Lasater, Myatt 2 3, 8–10 103 Lasater, Hawthorn 3, 8–10 2 Lasater explains “[o]ne type of drilling tool system is a rotary steerable tool (RST) that selectively controls the direction of a well bore.” Lasater ¶ 8. Appeal 2020-006737 Application 16/361,784 6 Overall Outcome 1–11 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