Ex Parte Betancourt et al

Patent Trial and Appeal Board

Apr 18, 2014

11388274 (P.T.A.B. Apr. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SORAYA S. BETANCOURT, ANTHONY GOODWIN, GO
FUJISAWA, OLIVER C. MULLINS, HANI ELSHAHAWI, JULIAN POP,
TERIZHANDUR S. RAMAKRISHNAN, and LI JIANG
____________________

Appeal 2013-0106481
Application 11/388,274
Technology Center 2800
____________________

Before JOSEPH F. RUGGIERO, ERIC S. FRAHM, and
JASON V. MORGAN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL2

1 A related appeal, Appeal No. 2010-000429, was decided by the Patent Trial
and Appeal Board (hereinafter, “the Board”) in Application 11/388,274 on
May 1, 2012.
2 An Oral Hearing for this appeal scheduled for February 18, 2014, was
waived.
Appeal 2013-010648
Application 11/388,274

2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 30-54. Claims 1-29 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). This appeal is related to Appeal No. 2010-000429 based
on the same Application No. 11/388,274, where Appellants presented claims
30-54 which are very similar to claims 30-54 presented in the instant appeal
(e.g., in previous claim 30 presented in Appeal No. 2010-000429), paragraph
“b” of claim 30 contained additional language, “conducting a compositional
analysis of the fluid sample located in the sampling tool while said sampling
tool is in the borehole” (the additional language is italicized). In other
words, claim 30 presented in the instant appeal is the same as claim 30
previously presented in Appeal No. 2010-000429, except that the bracketed
language (see infra, claim 30) has been deleted (the terms located and while
said sampling tool is have now been deleted).3
We affirm.
Exemplary Claims
Exemplary independent claims 30 and 45 under appeal read as
follows, with emphases added to disputed portions of the claims, and

3 In view of the similarity of the claims presented in the instant appeal as
compared to the claims presented in the previous appeal, Appeal No. 2010-
000429, we do not agree with Appellants’ statement in the Appeal Brief in
the instant case that “No related appeal or interferences exist” (App. Br. 3).
Notably, all Briefs in both the instant appeal and the previous appeal have
been signed by the same attorney. The same attorney requested an Oral
Hearing in the instant case on August 28, 2013, confirmed attendance for the
hearing on November 8, 2013, and then waived said hearing by telephone
prior to the hearing date of February 18, 2014.
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Application 11/388,274

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bracketing added to deleted portions of the claims (as compared to claim 30
presented in previous related Appeal No. 2010-000429):

30. A method of investigating a hydrocarbon bearing
geological formation traversed by a borehole, comprising:

a) acquiring a sample of fluid in the formation with a formation
fluid sampling tool located in the borehole;

b) conducting a compositional analysis of the fluid sample
[located] in the sampling tool [while said sampling tool is] in the
borehole, wherein said compositional analysis includes an
identification of methane, and an identification of at least one
additional hydrocarbon or group of hydrocarbons;

c) relating the compositional analysis to a model of the
thermodynamic behavior of the fluid in order to make determinations
regarding fluid sampling, well completion, or production procedures.

45. An apparatus for investigating a hydrocarbon bearing
geological formation traversed by a borehole, comprising:

a) a borehole tool including means for acquiring a sample of
fluid in the formation and means for conducting a compositional
analysis of the sample of fluid in the borehole, wherein said
compositional analysis includes an identification of methane, and an
identification of at least one additional hydrocarbon or group of
hydrocarbons; and

b) means for relating the compositional analysis to a model of
the thermodynamic behavior of the fluid in order to make
determinations regarding fluid sampling, well completion, or
production procedures.
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Application 11/388,274

4
The Examiner’s Rejections4
(1) The Examiner rejected claims 30, 31, 41, 44-47, and 53 under
35 U.S.C. § 102(e) as being anticipated by DiFoggio (US 6,683,681 B2).
Final Rej. 9-12.
(2) The Examiner rejected dependent claims 32-35 and 48-51 as being
unpatentable under 35 U.S.C. § 103(a) over DiFoggio and Goodwin (GB
2,345,137 A). Final Rej. 13-14.
(3) The Examiner rejected dependent claims 36 and 40 as being
unpatentable under 35 U.S.C. § 103(a) over DiFoggio and Schroer (US
6,274,865 B1). Final Rej. 14-15.
(4) The Examiner rejected dependent claims 37-39 as being
unpatentable under 35 U.S.C. § 103(a) over DiFoggio, Schroer, and Vasquez
(US 5,622,223). Final Rej. 15-17.
(5) The Examiner rejected dependent claims 42 and 54 as being
unpatentable under 35 U.S.C. § 103(a) over DiFoggio. Final Rej. 17.
(6) The Examiner rejected dependent claim 43 as being unpatentable
under 35 U.S.C. § 103(a) over DiFoggio and DeLaune (US 5,780,850).
Final Rej. 17-18.
(7) The Examiner rejected dependent claim 52 as being unpatentable
under 35 U.S.C. § 103(a) over DiFoggio and Vasquez. Final Rej. 18-19.

4 Separate patentability is not argued for claims 32-40, 42, 43, and 48-52,
and 54 (rejections 2-7 listed infra), other than to assert that (i) the additional
references applied fail to cure the deficiencies of DiFoggio, and (ii) these
claims are therefore patentable for the same reasons as provided as to claims
30 and 45. In addition, separate patentability is not argued for claims 31, 41,
44, 46, 47, and 53. In view of the foregoing, we will address independent
claims 30 and 45 in our analysis, and the remaining claims will stand/fall
with their respective independent claim.
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Application 11/388,274

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Appellants’ Contentions
(1) Appellants contend (App. Br. 9; Reply Br. 4) that the Examiner
erred in rejecting claims 30, 31, 41, 44-47, and 53 under 35 U.S.C. § 102(e),
for numerous reasons, including:
(a) DiFoggio fails to “describe performing its processes
downhole,” and column 1, lines 31-58 of DiFoggio does not support
the rejection (App. Br. 9);
(b) The Examiner’s analysis in the Final Rejection and the
Advisory Action mailed February 7, 2013, fail to encompass claims
30 and 45 as “amended to emphasize that sample collection and
analysis is conducted while the fluid is downhole” (App. Br. 9);
(c) independent claims 30 and 45 “are amended to reflect
conducting a compositional analysis of the fluid sample in the
sampling tool in the borehole and relating the compositional analysis
to a model of the thermodynamic behavior of the fluid” (emphasis
added (Reply Br. 4));
(d) nothing in DiFoggio, including column 1, lines 31-58
describes or implies the method limitations of claim 30 (Reply Br. 4);
and
(e) DiFoggio’s column 3, lines 48-55 and column 9, lines 1-6
describe analyzing drilling fluid contamination and sample clean up,
and not compositional analysis (Reply Br. 4).
(2) Appellants contend that the Examiner erred in rejecting claims 32-
40, 42, 43, 48-52, and 54 under § 103(a) as being unpatentable over
DiFoggio and/or various secondary/tertiary references for the same reasons
provided with regard to the anticipation rejection of claims 30 and 45, and
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because the various secondary/tertiary references fail to cure the deficiencies
of DiFoggio as argued with respect to claims 30 and 45 (App. Br. 9),
namely, that DiFoggio “does not describe or imply downhole fluid analysis”
as recited in the amended claims (App. Br. 9).
Principal Issue on Appeal
Did the Examiner err in rejecting (i) claims 30, 31, 41, 44-47, and 53
as being anticipated, and (ii) claims 32-40, 42, 43, 48-52, and 54 as being
obvious, because DiFoggio fails to teach or suggest conducting fluid
analysis in a borehole as set forth in limitation (b) of independent claim 30,
and/or limitation (a) of independent claim 45?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (App. Br. 9) and Reply Brief (Reply Br. 4)
that the Examiner has erred, as well as the Examiner’s response to
Appellants’ arguments in the Appeal Brief (see Ans. 3-4).
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Rej. 1-19), and (2) the reasons set forth by
the Examiner in the Examiner’s Answer (Ans. 3-4) in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner.
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
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Application 11/388,274

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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)); see also In re Morris, 127 F.3d 1048, 1053-54
(Fed. Cir. 1997).
In our view, claims 30 and 45 still encompass the disclosure of
DiFoggio, even with the recent amendment.
Specifically, the change in claim 30 (presented for appeal in Appeal
No. 2010-000429) from “conducting a compositional analysis of the fluid
sample located in the sampling tool while said sampling tool is in the
borehole” to the current form on appeal in the instant case of “conducting a
compositional analysis of the fluid sample in the sampling tool in the
borehole” removes the requirement that the fluid sample actually be located
in the sampling tool while the sampling tool is in the borehole, thus making
claim 30 in the instant appeal broader than claim 30 of the previous appeal.
In addition, the change in claim 45 (presented for appeal in Appeal
No. 2010-000429) from “means for conducting a compositional analysis of
the sample of fluid” to “means for conducting a compositional analysis of
the sample of fluid in the borehole” (claim 45 on appeal in the instant case)
only adds a recitation that the borehole tool include a means for conducting a
compositional analysis of the sample of fluid in the borehole. This subject
matter was already encompassed by the language “conducting a
compositional analysis of the fluid sample located in the sampling tool while
said sampling tool is in the borehole” found in claim 30 previously on
appeal, which was rejected by the Examiner and affirmed by the Board in
the previous appeal. Further, a broadest reasonable interpretation of the new
language found in claim 45 on appeal is that either that (i) the means for
conducting a compositional analysis of the sample of fluid be physically
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Application 11/388,274

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located in the borehole, or (ii) the means for conducting a compositional
analysis conducts a compositional analysis of a sample of fluid that was
previously in the borehole, but not currently in the borehole – i.e., the
borehole tool includes a means for conducting a compositional analysis of a
fluid sample, after the fluid sample has been removed from the borehole
(note that no “sampling tool” is recited in claim 45, as is recited in claim 30).
In this light, a broad but reasonable interpretation of claim 30 reveals
the language of claim 30 on appeal simply to require (i) “conducting a
compositional analysis of the fluid sample” that is or was located in the
sampling tool in the borehole at some point in time (i.e., downhole) and not
necessarily currently in the borehole, and (ii) “relating the compositional
analysis to a model of the thermodynamic behavior of the fluid” (not
necessarily while the fluid or the sampling tool are still downhole).
As stated by the Board in the Decision of prior Appeal No. 2010-
000429 (Dec. 5-6):
DiFoggio discloses “[t]he estimation of formation fluid
properties” such as “[t]hermodynamic and physical properties
of petroleum fractions and products” that “are important in the
appropriate design and operation of equipment in petroleum
production, processing and transportation” (col. 10, ll. 62-66).
“Petroleum fractions and products are mixtures of many
hydrocarbon compounds from different groups” (col. 11, ll. 26-
27). DiFoggio performs downhole refractometry and
spectrometry to obtain parameters of the fluid sampled
downhole (see col. 3, ll. 23-52; col. 4, ll. 61-65; col. 8, ll. 57-
65; col. 9, ll. 9-30; col. 10, l. 22 to col. 11, ll. 52 discussing
refractometer assembly 205 and spectrometers 209 and 321).
DiFoggio also discloses that “to estimate various
thermodynamic and physical properties” (col. 11, l. 25),
measured parameters (i.e., based on a compositional analysis)
are used to estimate “many physical properties such as critical
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properties, equations of state parameters, viscosity, thermal
conductivity, diffusivity, heat capacity and heat of
vaporization” (col. 11, ll. 35-39).

(Dec. 5-6).
Appellants’ contentions (1)(a) and (b) supra, that (i) DiFoggio fails to
perform sample collection and analysis and/or processing downhole, and (ii)
column 1, lines 31-58 of DiFoggio does not support the rejection (App. Br.
9), are not persuasive for at least three reasons. First, the Examiner relies
upon column 4, lines 61-65 (“downhole fluid-characterization tool, which
can perform in situ analysis of formation and wellbore fluids”), Figure 2
(showing the downhole tool), and the description at column 10, line 22
through column 11, line 52 (describing operations of the “downhole
refractometer”) as disclosing the downhole processing and fluid analysis as
set forth in claims 30 and 45 on appeal, not column 1, lines 31-58. Second,
column 1, lines 31-58 pertains to DiFoggio’s background statement defining
the prior art, and in any event, discloses not simply that “fluids can be
collected downhole in tanks for subsequent analysis in a laboratory at the
surface” (col. 1, ll. 51-52), but that “samples can be analyzed downhole in
real time” (col. 1, ll. 54-55) and that the invention relates to “performing
downhole analysis of samples at reservoir conditions of temperature and
pressure” (col. 1, ll. 56-58). Third, we note that Appellants’ own disclosure,
shown in Figure 4 and described from page 15, line 14 through page 16, line
8 of the originally filed Specification, reveals at least some processing
occurring in element 18 labeled “electronics and processing” (shown in
Figure 4 as located outside of the borehole) which is “on the formation
surface” (Spec. 15:17) and not downhole.
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Appellants’ contentions (1)(c)-(e) listed supra and relating to
compositional analysis, are not timely (i.e., presented in the Appeal Brief)
and are therefore waived. Specifically, Appellants’ new line of argument in
the Reply Brief that DiFoggio fails to disclose a compositional analysis of
the fluid in the sampling tool in the borehole, where the compositional
analysis relates to a model of the thermodynamic behavior of the fluid, could
have been presented in the Appeal Brief in the first instance, and were not.
Therefore, Appellants’ contentions (1)(c)-(e) are untimely and not
considered.5
In any event, we further take note of the Board’s findings in the
previous Decision mailed May 1, 2012, in Appeal No. 2010-000429. These
findings included determinations with regard to DiFoggio’s disclosure of
compositional analysis including analyzing the thermodynamic and physical
properties of fluids in the sampling tool (Dec. 5-6 restated supra).

5 “Any bases for asserting error, whether factual or legal, that are not raised
in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion Beam
Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by
an appellant in its opening brief . . . is waived.”) (citations and quotation
marks omitted).
Appellants could have made the “compositional analysis” arguments
in the original brief. The term “Reply Brief” is exactly that, a brief in reply
to new rejections or new arguments set forth in an Examiner's Answer.
Appellants may not present their arguments in a piecemeal fashion, holding
back arguments until an examiner answers their original brief. Therefore,
this basis for asserting error (e.g., based on DiFoggio’s asserted failure to
disclose “compositional analysis”) is waived. See 37 C.F.R.
§ 41.37(c)(1)(vii). Of course, Appellants may present new arguments
directly to the Examiner for consideration as part of a continuing application.

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11
Claims 30 and 45 do not require compositional analysis using a model
of thermodynamic behavior of the fluid while the fluid is downhole as
argued by Appellants (Reply Br. 4). Instead, claims 30 and 45 on appeal
merely recite “relating the compositional analysis to a model of the
thermodynamic behavior of the fluid” (claim 30) and a means for doing so
(claim 45). Therefore, the compositional analysis of the fluid only need be
related to a model of the thermodynamic behavior of the fluid, and could be
done at a later time (e.g., when the fluid was outside of the borehole, as
shown in Appellants’ Fig. 4 and Spec. 15:14-16:8).
In view of the foregoing, Appellants’ arguments regarding claims 30
and 45, that DiFoggio does not perform sample collection, analysis, and/or
processing downhole (see App. Br. 9), are not convincing. In light of the
Examiner’s findings and reasoning, as set forth in the Answer, Appellants’
remaining arguments regarding claims 31-44 and 46-54 are no more
persuasive than the arguments addressed above with respect to claims 30 and
45.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 30, 31, 41, 44-47, and
53 as being anticipated under 35 U.S.C. § 102(e).
(2) The Examiner did not err in rejecting claims 32-40, 42, 43, 48-52,
and 54 as being unpatentable under 35 U.S.C. § 103(a).

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Application 11/388,274

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DECISION
The Examiner’s rejections of claims 30-54 are affirmed.
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

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