Ex Parte Chalifoux

Patent Trial and Appeal Board

Sep 26, 2016

12722444 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121722,444 03/11/2010 Gerald Chalifoux
26389 7590 09/28/2016
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 THIRD A VENUE
SUITE 3600
SEATTLE, WA 98101-3029
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
THAS134561 3132
EXAMINER
DALBO, MICHAEL J
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD CHALIFOUX
Appeal2014-007109
Application 12/722,444
Technology Center 2800
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
MONTE T. SQUIRE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision finally rejecting claims under 35 U.S.C. § 103(a) as
unpatentable over 1, 3-5, 7, and 8. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
1 Our decision refers to the Specification (Spec.) filed March 11, 2010, the
Examiner's Final Office Action (Final Act.) delivered March 20, 2013,
Appellants' Appeal Brief (Appeal Br.) filed January 27, 2014, the
Examiner's Answer (Ans.) delivered April 10, 2014, and Appellants' Reply
Brief (Reply Br.) filed June 10, 2014.
2 According to Appellants, the real party in interest is Petrospec Engineering
Ltd. Appeal Br. 1.
Appeal2014-007109
Application 12/722,444
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to mineral insulated cables (MI Cs) for
measuring downhole temperature and pressure. Spec. ,-r 2. Claim 1,
reproduced below from the Claims Appendix to the Appeal Brief, is
illustrative of the subject matter on appeal.
1. An apparatus for measuring downhole temperature and
pressure, compnsmg:
a mineral insulated cable comprising a structural sheath
enclosing at least four conductors;
a pressure sensor secured to the structural sheath of the
mineral insulated cable and electrically connected to at least
two of the conductors, the at least two conductors extending out
of the mineral insulated cable to connect to the pressure sensor,
the pressure sensor generating a single signal that is dependent
upon pressure and temperature;
a thermocouple embedded in the mineral insulated cable
and isolated and spaced within the mineral insulated cable from
the pressure sensor, the thermocouple comprising another two
of the conductors and generating a signal that is dependent
upon temperature, the mineral insulated cable, the pressure
sensor and the thermocouple being rated to operate at
temperatures greater than 150°C.
Independent claim 5 recites a method for measuring downhole
temperature and pressure using a MIC similar to that of claim 1.
Rejections
The Examiner maintains the following grounds of rejection under 35
U.S.C. § 103(a):
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Application 12/722,444
A. Claims 1 and 5 as unpatentable over Burley in view of Hafele,
Kurtz, and Toyoda;
B. Claims 3 and 7 as unpatentable over Burley, Hafele, Kurtz, and
Toyoda, further in view of Shumacher; and
C. Claims 4 and 8 as unpatentable over Burley, Hafele, Kurtz, and
Toyoda, and further in view of Chalifoux.
ANALYSIS
Appellant argues claims 1 and 5 together as a group. Appeal Br. 5-8.
Although additional references are applied in rejecting dependent claims 3,
4, 7, and 8, Appellant does not separately argue those claims. Id. at 8. We,
therefore, select claim 1 to address Appellant's arguments. Claims 3-5, 7,
and 8 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)(2013).
After review of the opposing positions articulated by Appellant and
the Examiner, the applied prior art, and Appellant's claims and
Specification, we determine that the Appellant's arguments are insufficient
to identify reversible error in the Examiner's obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the
stated obviousness rejections for substantially the fact findings and the
reasons set forth by the Examiner in the Examiner's Answer and the Final
Office Action. We offer the following for emphasis only.
The Examiner finds Burley discloses a MIC comprising a structural
sheath enclosing two conductors and a thermocouple rated to operate at
temperatures greater than 150°C. Final Act. 2. Because Burley does not
teach that the MIC includes four conductors, of which two are connected to
a pressure sensor secured to the sheath that generates a temperature
dependent pressure signal, the Examiner turns to Hafele, Kurtz, and Toyoda.
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Application 12/722,444
Id. at 3. The Examiner finds Hafele discloses a MIC enclosing at least four
conductors, each insulated from each other. Id. The Examiner finds Kurtz
discloses an ultra-high temperature pressure sensor secured to the structural
sheath of a MIC and electrically connected to two conductors extending
from the MIC. Id. at 4. In addition, the Examiner finds Toyoda discloses
providing a pressure sensor that generates a temperature dependent pressure
signal to account for sensing error caused by changes in ambient
temperature. Id. at 5. In view of the teachings of Hafele, Kurtz, and
Toyoda, the Examiner concludes it would have been obvious to modify
Burley's MIC to include two additional conductors that extend from the
sheath which are electrically connected to a pressure sensor, generating a
temperature dependent pressure signal, secured to the sheath for the added
benefit of using the MIC to accurately measure pressure as well as
temperature. Id. at 3-5.
Appellant contends the Examiner erred in failing to properly
determine the scope and content of the prior art, and to ascertain the
differences between the claims and prior art. Appeal Br. 5. In particular,
Appellant submits that none of the cited references teaches two conductors
of a thermocouple embedded within a MIC with two other conductors
extending out from the MIC. Id. at 6. Appellant asserts that Burley only
teaches the two conductors making the thermocouple, whereas Hafele
teaches multiple conductors, all of which extend from the sheath. Id. As
such, Appellant urges that it would not have been obvious to provide a
thermocouple pair with other conductors in a single MIC. Id.
Appellant further contends that Chalifoux teaches away from
combining conductors as recited in claim 1. Id. Appellant asserts that
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Chalifoux' piezometer is not functional at high temperatures unless it is
packaged with a separate thermocouple cable. Appellant argues that this
disclosure of separate cables for the thermocouple and the pressure sensor
teaches away from claim 1. Id.
We do not find Appellant's arguments persuasive of reversible error.
Jung supra. One cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references. In
re Keller, 642 F .2d 413, 425 (CCP A 1981 ). Each reference cited by the
Examiner must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
As to Appellant's argument that Chalifoux teaches away from
combining the thermocouple conductor pair embedded within the same MIC
as the conductors for a pressure sensor, we note Chalifoux was only applied
in the rejection of claims 4 and 8 which, as we indicate above, is not
separately argued by Appellant. Therefore, it is unclear why Chalifoux can
be said to teach away from the combination proposed in the rejection of
claim 1 when Chalifoux is not applied in the rejection. Nevertheless,
Appellant does not direct our attention to any particular teaching in
Chalifoux that would lead the ordinary artisan in a direction divergent from
that followed by Appellant, nor do we find any. 3 "A reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
3 To the contrary, Chalifoux discloses "there are several different methods of
installing Temp-Tubes which may or may not include pressure monitoring
sensors." Chalifoux 4, Data acquisition placement.
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Application 12/722,444
would be led in a direction divergent from the path that was taken by the
applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Nor has
Appellant asserted that such a combination would be inoperative. In re
Sponnoble, 405 F.2d 578, 587 (CCPA 1969) (references in a combination
may be said to teach away where their combined teachings would produce a
"seemingly inoperative device".) Indeed, Appellant's argument that
Chalifoux teaches separate cables for the thermocouple and pressure sensor
merely shows that Chalifoux teaches an alternative approach to providing
both a thermocouple and a pressure sensor to a downhole. Teaching an
alternative or equivalent design, however, does not teach away from the use
of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
Appellant next argues that conventional methods of attaching a MIC
to end devices, such as a pressure sensor, require all conductors to be cut to
even lengths and insulated from one another outside the sheath, as shown by
Hafele and Kurtz. Appeal Br. 7. In contrast, Appellant asserts that a process
of preparing a MIC with a thermocouple requires that the conductor pair are
electrically isolated except for the thermocouple connection which is sealed
within the sheath. Id. Appellant asserts that none of the references teaches
or suggests the different connections that would be required to provide a
MIC having both a thermocouple and a pressure sensor. Reply Br. 2.
Because of the different manufacturing techniques and challenges associated
with preparing MICs for pressure sensors and thermocouples, Appellant
submits that it would not have been obvious based on the cited references to
combine these two types of cables to achieve a MIC that would not short and
would be protected from the harsh environment in which it is used. Id. at 7-
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8. Instead, Appellant suggests the ordinary artisan would have provided two
separate MICs, one for temperature, the other for pressure. Id. at 8.
Appellant's arguments are not persuasive of reversible error. Jung
supra. As the Examiner finds, the design difficulties associated with
insulating conductors both within and extending from a MIC sheath have
been addressed in the prior art. Ans. 3. For example, Burley also
contemplates more than two conductors may be provided in a single MIC
sheath, each electrically isolated from the others. Burley 1 :60-64. In
addition, Burley teaches "simple fabrication" of the thermocouple by cutting
the cable and exposing the ends of the conductors, thereby permitting the
ends of two conductors to be joined to form a thermo junction. Id. at 65---68
and 2: 19. Burley then teaches that the thermocouple may be protected by
capping the sheath over the thermojunction, with or without insulant. Id. at
2: 4---6. Kurtz teaches a MIC having conductors protruding from a sealed
end of the sheath for electrical connection to a pressure sensor secured to the
sheath. Kurtz 2:52-57.
Since the ends of the conductors are exposed and the ends of the
sheath are sealed to form both the thermocouple of Burley and the pressure
sensor of Kurtz, we do not find the processes for forming each to be so
divergent as to present different manufacturing difficulties. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.") Appellant has not argued or
directed us to any evidence that combining both thermocouple and pressure
sensor into a single MIC is beyond the ordinary skill in the art. Id. at 401
("[I]f a technique has been used to improve one device, and a person of
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Application 12/722,444
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.").
In the Reply Brief, Appellant contends that there is no motivation to
combine the prior art references as the Examiner proposes except through
improper hindsight. Reply Br. 2. Appellant disagrees with the Examiner's
stated motivation for the combination, "for the advantageous benefit of using
the mineral insulated cable to measure a pressure value, in addition to
temperature," because the prior art already suggests an alternative solution
using two separate MICs. Id. at 2-3. Given this alternative solution and the
alleged inherent uncertainties associated with modifying MICs for harsh
downhole environs, Appellant argues that the ordinary artisan would not
have combined the references as the Examiner proposes. Id. at 3.
"Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper."
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). See also
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness") (cited with approval in KSR, 550 U.S. at 419).
Here, we note that, in addition to stating the advantage of using the
MIC to measure both pressure and temperature, the Examiner's findings
themselves suggest that at least four conductors may be provided in the same
MIC sheath (Burley and Hafele), each insulated from each other (Burley and
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Hafele), where the exposed ends of two of the conductors being joined to
form a thermocouple (Burley) and the exposed ends of the other two
conductors being connected to a pressure sensor (Kurtz) after the end of the
sheath is sealed (Burley, Hafele, and Kurtz). As such, Appellant fails to
persuasively explain why the Examiner's articulated reasoning with rational
underpinning is ineffective to support the conclusion of obviousness. Kahn
supra.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1, 3-5, 7, and 8
under 35 U.S.C. § 103(a) as unpatentable over the combination of Burley,
Hafele, Kurtz, and Toyoda, alone or further in view of Shumacher or
Chalifoux, is 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)(l).
AFFIRMED
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