Ex Parte Chemali et al

Patent Trial and Appeal Board

Feb 28, 2017

13391419 (P.T.A.B. Feb. 28, 2017)

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.
13/391,419 02/21/2012 Roland E. Chemali 1391-796.02 7653
36177 7590 03/01/2017
Iselin Law PLLC (HAL)
P. O. BOX 1906
CYPRESS, TX 77410-1906
EXAMINER
RAHMAN, MOHAMMAD J
ART UNIT PAPER NUMBER
2487
MAIL DATE DELIVERY MODE
03/01/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROLAND E. CHEMALI and RON DIRKSEN
____________________

Appeal 2016-006377
Application 13/391,419
Technology Center 2400
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1–29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The invention relates to optical imaging in a borehole, for example, in
an oil drilling system (see Spec. ¶¶ 1, 9–12). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An optical imaging tool for downhole use, the tool
comprising:

a light source;

a camera; and
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a tool body having a sidewall with:

a first window that transmits light from the light
source to a target region in a borehole; and

a second window that passes reflected light from the
target region to the camera, wherein the target region is
downhole from the second window.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Prazdny US 4,745,562 May 17, 1988
Vannuffelen
Wraight
Almaguer
US 2007/0035736 A1
US 2009/0147907 A1
US 2009/0166035 A1
Feb. 15, 2007
June 11, 2009
July 2, 2009

REJECTIONS
The Examiner made the following rejections:
Claims 1, 4, 6, 7, 9, 16, 18, 19, 20, and 24 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Vannuffelen.
Claims 2, 3, 5, 8, 10–15, 17, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Vannuffelen and Almaguer.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vannuffelen, Almaguer, and Prazdny.
Claims 25–29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vannuffelen and Wraight.

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ANALYSIS
The Anticipation Rejection
The Examiner finds Vannuffelen discloses all the limitations of
independent claim 1, including “a tool body having a sidewall with: a first
window that transmits light from the light source to a target region in a
borehole” (Final Act. 3). Appellants contend:
Vannuffelen’s interior window 120 and/or 122 provide a view of
fluid inside an interior flow line 118 rather than a “target region
of a borehole” as is claimed. To whatever extent Vannuffelen
mentions windows and image capture, they are related to
imaging a collected sample inside of a downhole tool rather than
imaging a target region in a borehole as is recited in claim 1.
(App. Br. 9). Appellants further contend:
[W]ith Vannuffelen’s tool, the fluid trapped inside the sample
cell 116 is what is imaged rather than “a target region in a
borehole” as claimed. One of ordinary skill in the art, especially
in view of Appellant’s [sic] specification, would understand that
the claimed “target region in a borehole” refers to a borehole
region outside the tool body that is viewable from the window(s).
(Reply Br. 2). We agree with Appellants.
Vannuffelen describes “a fluid sampling apparatus 112 used to convey
a sample fluid from a borehole 114 or formation to a sample cell 116
through a flow line 118” (Vannuffelen ¶ 57) (emphases omitted). “The
sample cell 116 comprises one or more windows, for example first and
second windows 120, 122 shown in FIG. 5a” (Vannuffelen ¶ 58) (emphases
omitted). “A light source 124 and a camera 126 are arranged adjacent to one
of the first or second windows 120, 122. The light source 124 and camera
126 facilitate imaging of the fluid located inside the sample cell 116.”
(Vannuffelen ¶ 59) (emphases omitted). Vannuffelen’s Figure 5a shows
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how the apparatus 112 is located outside of borehole 114 and draws fluid
from the borehole and into the apparatus in order to image the fluid.
Accordingly, we find Vannuffelen fails to disclose “a tool body having a
sidewall with: a first window that transmits light from the light source to a
target region in a borehole” (emphasis added), as recited in claim 1. That is,
Vannuffelen’s apparatus is located outside of the borehole and, thus, does
not transmit light to a region inside of the borehole as claimed.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, independent claims 9 and 19 which
recite commensurate limitations, and dependent claims 4, 6, 7, 16, 18, 20,
and 24 for similar reasons.

The Obviousness Rejections
Claims 2, 3, 5, 8, 10–15, 17, and 21–23
The Examiner has not shown the addition of the Almaguer and
Prazdny references cures the deficiency of Vannuffelen with respect to
independent claims 1, 9, and 19. Accordingly, we find the Examiner erred
in rejecting claims 2, 3, 5, 8, 10–15, 17, and 21–23, which depend from
independent claims 1, 9, and 19, for the same reasons discussed above.

Claims 25–29
The Examiner finds the combination of Vannuffelen and Wraight
discloses all the limitations of independent claim 25. Specifically, the
Examiner finds Vannuffelen teaches “using a camera to collect
measurements indicative of borehole wall temperature,” except Vannuffelen
does not explicitly teach a borehole wall (Final Act. 9). However, the
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Examiner finds Wraight teaches imaging a borehole wall (Final Act. 9; Ans.
6). Appellants contend:
Contrary to the position expressed by the office, Vannuffelen
does not teach using a camera to measure temperature. The cited
passages only mention fluid phase profiling, which is a function
of temperature and pressure (not temperature itself). Further, the
office acknowledges that Vannuffelen does not explicitly teach
imaging a borehole wall. Instead of using a camera to measure
borehole wall temperature as is recited in claim 25, Vannuffelen
describes a downhole tool that collects a fluid sample and
illuminates/images the sample inside of the downhole tool. . . .
Further, Wraight uses an x-ray imaging tool rather than a camera.
Thus, even if Wraight’s x-ray imaging tool were somehow
combined with Vannuffelen, the combination would still lack
“using a camera to collect measurements indicative of borehole
wall temperature” as is recited in claim 25.
(App. Br. 14). We agree with Appellants.
Vannuffelen performs imaging of sample fluids to profile the phase
behavior of the fluids, which depends on pressure and temperature (see
Vannuffelen ¶¶ 3, 53). However, the Examiner has not shown Vannuffelen
teaches measuring temperature itself. Moreover, as discussed above with
respect to claim 1, Vannuffelen performs imaging of a sample in a tool that
is outside of a borehole, and, thus, does not perform imaging of a borehole
wall. Accordingly, Vannuffelen does not teach “using a camera to collect
measurements indicative of borehole wall temperature,” as recited in claim
25. Further, although Wraight describes using an x-ray device for taking an
image of a borehole wall (see Wraight ¶ 18), Wraight does not disclose
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using a camera for collecting temperature measurements. Thus, Wraight
does not cure the deficiencies of Vannuffelen.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 25, and dependent claims 26–29 for
similar reasons.

CONCLUSIONS
Under 35 U.S.C. § 102(b), the Examiner erred in rejecting claims 1, 4,
6, 7, 9, 16, 18–20, and 24.
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 2, 3,
5, 8, 10–15, 17, 21, 22, 23, and 25–29.

DECISION
For the above reasons, the Examiner’s decision rejecting claims 1–29
is reversed.

REVERSED