Ex Parte Alberty

Patent Trial and Appeal Board

Feb 21, 2014

12004175 (P.T.A.B. Feb. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK WILLIAM ALBERTY
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Appeal 2012-003776
Application 12/004,175
Technology Center 3600
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Before STEFAN STAICOVICI, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Mark William Alberty appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-20. Appellant’s representative
presented oral argument on February 6, 2014. We have jurisdiction under
35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1, 14, and 18 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A method for sensing an amount of gas in drilling fluid in
a wellbore during drilling from an earth surface and penetrating
a plurality of subterranean formations, the method comprising:
a) pumping drilling fluid through a drill pipe
extending into a wellbore to provide pressure on the drilling
fluid in the drill pipe and discharging drilling fluid from a
bottom end of the drill pipe into a drill bit and an annulus
between an outside of the drill pipe and an inside of the
wellbore to drill the wellbore to a greater depth;
b) supporting at least one gas sensor by the drill
pipe near the bottom of the drill pipe and positioned and
adapted to sense the amount of gas in the drilling fluid in the
annulus at a depth of the at least one sensor
c) sensing information indicating the amount of
gas in the drilling fluid in the annulus at the level of the at least
one sensor during a period when pumping has been stopped
while in one or more relatively low permeation formations; and,
d) comparing the amount of gas in the drilling
fluid in the annulus at the level of the at least one sensor during
said period to a previous amount of gas sensed during a
previous period when pumping had been stopped in order to
avoid drilling into a relatively high permeability formation
before adjustments can be made to prevent a kick or blow out.
Br. 35, Claims App’x.
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References
The Examiner relies upon the following prior art references:
Pruet US 6,119,772 Sep. 19, 2000
Crary US 6,237,404 B1 May 29, 2001
Sullivan US 6,598,457 B2 Jul. 29, 2003
Masak US 6,675,914 B2 Jan. 13, 2004
Paulk US 2004/0065477 A1 Apr. 8, 2004
Coenen US 2005/0241382 A1 Nov. 3, 2005
Rejections
Appellant seeks review of the following rejections:
I. Claims 1, 6, 9-11, and 13 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Coenen and Paulk;
II. Claims 2-4, 7, and 12 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Coenen, Paulk, and Masak;
III. Claim 5 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Coenen, Paulk, and Pruet;
IV. Claim 8 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Coenen, Paulk, and Sullivan;
V. Claims 9, 14-16, 18, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Coenen, Paulk, and Crary;
and
VI. Claims 17 and 20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Coenen, Paulk, Crary, and Pruet.
SUMMARY OF DECISION
We REVERSE.
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OPINION
In each rejection, the Examiner relied upon at least the combination of
Coenen and Paulk in concluding that the claimed invention would have been
obvious to one of ordinary skill in the art at the time of invention. See
Ans. 5-10. In particular, the Examiner found that Coenen discloses the steps
of the claimed methods, but “fails to disclose sensing information indicating
the amount of gas in the drilling fluid in the annulus at the level of the at
least one sensor during a period when pumping has been stopped while in
one or more relatively low permeability formations.” Id. at 5. The
Examiner further found that Paulk:
discloses a system for taking pressure measurements near the
bottom of the hole while the pumping has stopped in order to
detect if an influx of formation fluid (i.e.[,] gas), also known as
a kick, has occurred (pgph 24 lines 7-8, pgph 25 lines 3-4, pgph
23 final 3 lines), these measurements are taken regardless of the
permeability level of the formation.
Id. at 5-6. The Examiner concluded that it would have been obvious to one
of ordinary skill in the art at the time of invention “to modify the method of
using the system of Coenen to take measurements while pumping has
stopped.” Id. at 6.
Appellant raises several arguments in response to each rejection,
including that modifying Coenen’s method to “measure gas influx while
pumps are off would destroy the primary function and purpose of Coenen’s
methods, to measure properties of flowing streams.” Br. 23.
Coenen’s system is generally similar to the claimed invention.
Coenen is directed to the problem of “detect[ing] the presence of earth
formation gases during wellbore drilling in a timely and accurate manner.”
Coenen, para. [0003]. Coenen’s entire object of invention, however, is “to
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provide a reliable and accurate system for detecting the presence of
formation gas in a stream of drilling fluid flowing through a wellbore during
drilling of the wellbore.” Id. at para. [0004] (emphasis added); see also id.
at Abstract. In keeping with Coenen’s stated object, Coenen’s entire
disclosure is directed to a method in which the pumping of drilling fluid has
not stopped. See generally id.; see also id. at claim 1 (“A system for
detecting the presence of formation gas in a stream of drilling fluid flowing
through a wellbore during drilling of the wellbore . . . .”). In keeping with
this focus, Coenen specifically employs sensors that operate optimally with
flowing fluid. See, e.g., id. at para. [0008] (describing the membrane wall of
the sensors and the stream of drilling fluid).
In light of Coenen’s sole object and purpose—to detect formation gas
in a flowing stream of drilling fluid—it would not have been obvious to one
of ordinary skill to modify Coenen to perform the disclosed method while
pumping of drilling fluid has stopped because such modification would
destroy Coenen’s mode of operation and thus would not have maintained
Coenen’s purpose. See DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (noting that the “predictable
result” discussed in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), also
means “that the combination would have worked for its intended purpose”);
see also Tec Air Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360
(Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
Because the Examiner relied upon the modification of Coenen based
on Paulk for each rejection before us, each rejection suffers from the same
deficiency noted above. Accordingly, we do not sustain the rejections.
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1-20.

REVERSED

mls