Ex Parte Brockman et al

Board of Patent Appeals and Interferences

Apr 28, 2006

10701325 (B.P.A.I. Apr. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK W. BROCKMAN, HERVE OHMER and DAVID L. MALONE
__________

Appeal No. 2006-1500
Application No. 10/701,325
___________

ON BRIEF
___________

Before OWENS, CRAWFORD and NAPPI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1-21 and 25.
Claims 22-24 stand objected to by the examiner.1 Claims 26
and 27 have been allowed.
THE INVENTION

The appellants claim an apparatus and method wherein
inductive couplers are used in communication between main bore

1 The objection is a petitionable matter, not an appealable
matter and, therefore, is not before us.
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Application No. 10/701,325

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equipment and lateral branch equipment in a well. Claim 1 is
illustrative:
1. An apparatus for use in a well having a main bore and
a lateral branch, the lateral branch comprising an electrical
device, the apparatus comprising:

an inductive coupler mechanism to electrically communicate
electrical signaling in the main bore with the electrical device
in the lateral branch.

THE REFERENCES
More et al. (More) 5,008,664 Apr. 16, 1991
Pringle et al. (Pringle) 5,542,472 Aug. 6, 1996
Tubel et al. (Tubel) 5,959,547 Sep. 28, 1999
THE REJECTIONS

The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1-21 and 25 over Tubel in view of More, and claims 18
and 19 over Tubel in view of More and Pringle.
OPINION

We affirm the aforementioned rejections.
The appellants argue the claims in three groups: 1) claims 1
and 20, 2) claims 2-7, and 3) claims 8-19 (brief, pages 5-10).
Although an additional reference is applied to claims 18 and 19,
the appellants do not separately argue those claims (brief, page
10). Accordingly, we limit our discussion to one claim in each

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Application No. 10/701,325

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of the argued groups, i.e., claims 1, 2 and 8. See 37 CFR
§ 41.37(c)(1)(vii)(2004).
Claim 1

Tubel discloses downhole control systems that can
communicate with downhole control systems in other zones in the
same or different wells (col. 5, lines 16-19). The control
systems have multiple downhole electronically controlled
electromechanical devices and multiple computer based surface
systems operated from multiple locations (col. 6, lines 9-13).
Information obtained by transmitters and receivers is forwarded
to a downhole module and transmitted to the surface by hardwired
or wireless communication techniques, such as transmission using
an inductive coupler and a tubular encased conductor (col. 18,
lines 42-49).
More discloses that inductively coupling a first downhole
coil and an adjacent second downhole coil “desirably eliminates
the need to mechanically connect the elements on which the coils
are mounted, and thus greatly simplifies the handling of downhole
equipment in preparation for (and during) drilling, logging, and
producing operations” (col. 1, lines 23-28).

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Application No. 10/701,325

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The appellants argue that there is no motivation to combine
the teachings of Tubel and More such that More’s inductive
coupler is used to communicate electrical signaling in Tubel’s
main bore with an electrical device in one of Tubel’s lateral
branches (brief, pages 5-7). That motivation is to provide the
aforementioned benefit of inductive coupling disclosed by More.
The appellants, therefore, have not convinced us of
reversible error in the rejection of claim 1. Consequently, we
affirm the rejection of that claim and claim 20 that stands or
falls therewith.
Claim 2

Claim 2 requires that a first inductive coupler portion is
attached to a connector mechanism adapted to connect equipment in
a main bore to equipment in a lateral branch.
The appellants argue “although Appellant agrees with the
Examiner that an inductive coupler portion would typically be
attached to some structure in a well, there is no teaching or
suggestion in either Tubel or More of attaching an inductive
coupler portion to a connector mechanism adapted to connect
equipment in the main bore to equipment in the lateral branch”
(brief, page 9).

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The appellants’ claim 2 does not require that the first
inductive coupler portion is attached directly to the connector
mechanism. Hence, an inductive coupler portion, as suggested by
More, that is in Tubel’s main bore or lateral branch and is
indirectly connected to Tubel’s connector mechanism meets the
requirements of the appellants’ claim 2. We therefore affirm the
rejection of claim 2 and claims 3-7 that stand or fall therewith.
Claim 8

Claim 8 requires an electrical cable connecting a first
inductive coupler assembly proximal equipment in a main bore to a
second inductive coupler assembly proximal equipment in a lateral
branch.
The appellants argue that “Tubel fails to teach or suggest
the first and second inductive coupler assemblies, and More fails
to teach or suggest the second inductive coupler assembly
proximal equipment in the lateral branch” (brief, page 9). The
appellants improperly are attacking the references individually
when the rejection is based on a combination of references. See
In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882 (CCPA 1981);
In re Young, 403 F.2d 754, 757-58, 159 USPQ 725, 728 (CCPA 1968).
Using More’s inductive coupler in Tubel’s lateral branch would
have been fairly suggested to one of ordinary skill in the art by

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those references as discussed above. Accordingly, we affirm the
rejection of claim 8 and claims 9-19 that stand or fall
therewith.
DECISION

The rejections under 35 U.S.C. § 103 of claims 1-21 and 25
over Tubel in view of More, and claims 18 and 19 over Tubel in
view of More and Pringle, are affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

TERRY J. OWENS )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS
) AND
MURRIEL E. CRAWFORD ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

Schlumberger Reservoir Completions
Appeal No. 2006-1500
Application No. 10/701,325

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