Well Innovation ASDownload PDFPatent Trials and Appeals BoardSep 24, 20212021000181 (P.T.A.B. Sep. 24, 2021) Copy Citation 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. 15/235,547 08/12/2016 Rutger SUERMONDT 2016-1117A 7671 513 7590 09/24/2021 WENDEROTH, LIND & PONACK, L.L.P. 1025 Connecticut Avenue, NW Suite 500 Washington, DC 20036 EXAMINER FITZGERALD, JOHN P ART UNIT PAPER NUMBER 2861 NOTIFICATION DATE DELIVERY MODE 09/24/2021 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): eoa@wenderoth.com kmiller@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RUTGER SUERMONDT, STIAN SLOTTERØY, PRZEMYSLAW TOMASZ PALUCH, JOHN MACKAY, KIM RØED, TROND KJERLAND, TROND ARILD TVEIT, and KRISTER BERVEN HANSSEN ____________ Appeal 2021-000181 Application 15/235,547 Technology Center 2800 ____________ Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, 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, 3, 5, 7–33, and 35. 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. Appellant identifies Well Innovation AS as the real party in interest. Appeal Br. 2. Appeal 2021-000181 Application 15/235,547 2 CLAIMED SUBJECT MATTER The invention relates to “at least one monitoring device that is adapted to be arranged in-line with a sucker rod string.” Spec. ¶ 1. Claim 1 reads as follows: 1. A downhole monitoring device arranged in-line with a sucker rod string, the sucker rod string being arranged in a well, the monitoring device comprising: a housing arranged in-line with the sucker rod string; a plurality of sensors arranged within the housing and configured for sensing a sucker rod string condition and a sucker rod string surrounding condition; a data acquisition, storage and control electronic circuitry arranged within the housing; a power supply arranged within the housing or externally connected to the monitoring device so as to provide electrical power; and a real time clock arranged within the housing and configured for time stamping of collected downhole data and for being synchronized with a top-side system clock, wherein the plurality of sensors, the data acquisition, storage and control electronic circuitry and the power supply are interconnected, and wherein the plurality of sensors comprises an accelerometer, a strain gauge, a pressure sensor and a temperature sensor, and the plurality of sensors are configured for measuring tension, compression, torque, position and acceleration of the sucker rod string and for measuring pressure and temperature downhole in the well. Appeal Br. 17 (Claims Appendix). Each of claims 15 and 16 similarly recites a monitoring device having a plurality of sensors in a housing arranged in-line with a sucker rod string. Each remaining claim on appeal depends from claim 1 or 16. Appeal 2021-000181 Application 15/235,547 3 REJECTION Claims 1, 3, 5, 7–33, and 35 stand rejected under 35 U.S.C. § 103 as unpatentable over Konshin,2 McCoy,3 Boughner,4 and Watson.5 OPINION Appellant argues the rejected claims as a group, focusing on recitations found in claim 1. See Appeal Br. 7–15. We select claim 1 as representative of the claims subject to rejection. Each of claims 3, 5, 7–33, and 35 stands or falls with claim 1. In rejecting claim 1, the Examiner finds Konshin discloses a sensor (a dynamometer) arranged in-line with a downhole sucker rod string for measuring force. Final Act. 5. The Examiner relies on McCoy, Boughner, and Watson as evidence that the use of the additional sensors recited in claim 1 were known in the same field of endeavor and would have been obvious additions to Konshin’s system to permit comprehensive monitoring of a downhole production operation. Id. at 6, 9–13. Appellant argues “there is no reason to combine the prior art references listed by the Examiner.” Appeal Br. 9. However, Appellant does not refute the Examiner’s finding that one of ordinary skill would have recognized it to be advantageous to permit a more comprehensive monitoring of a downhole production operation through the provision of additional sensors known to be useful in monitoring various conditions relevant to a production operation. 2 SU 1276926 A, published December 15, 1986, as translated. 3 US 5,589,633, issued December 31, 1996. 4 US 5,182,946, issued February 2, 1993. 5 US 2015/0148919 A1, published May 28, 2015. Appeal 2021-000181 Application 15/235,547 4 Appellant also argues McCoy teaches locating an accelerometer at the surface, and not downhole in a well. Id. at 10. Appellant similarly argues Boughner and Watson teach locating downhole sensor components at the surface rather than in a well. Id. at 12–13. Appellant’s arguments are not persuasive. Appellant does not point to language recited in claim 1 that would restrict the location of the recited sensors to downhole in a well. Although claim 1 recites a sucker rod string which is arranged in a well, the location of the recited monitoring device is characterized only as being arranged “in-line” with the sucker rod string. As such, claim 1 as presently written encompasses a surface-mounted monitoring device which is arranged in-line with a sucker rod string which extends into a well. Appellant further argues Konshin’s housing is part of the disclosed dynamometer, and “there would be no place to include any of the components from McCoy in the housing of Konshin.” Id. at 10. The Examiner responds that one skilled in the art would have had a reason to modify Konshin’s housing to accommodate the additional sensors. Ans. 5. Appellant does not directly address the Examiner’s finding. Moreover, Appellant does not persuasively show why one of ordinary skill would not have readily recognized a need to enclose each sensor used in connection with a downhole operation to protect the sensors and associated electronics from harsh environmental conditions. The selection of separate housings or a single common housing for the provided sensors is neither argued nor seen as a patentable distinction. For the foregoing reasons, Appellant does not persuade us of reversible error in the Examiner’s rejection of claim 1. The rejection of claims 1, 3, 5, 7–33, and 35 is sustained. Appeal 2021-000181 Application 15/235,547 5 CONCLUSION The Examiner’s decision rejecting claims 1, 3, 5, 7–33, and 35 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 7– 33, 35 103 Konshin, McCoy, Boughner, Watson 1, 3, 5, 7– 33, 35 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation