Well Innovation AS

Patent Trials and Appeals Board

Sep 24, 2021

2021000181 (P.T.A.B. Sep. 24, 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.
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