Ex Parte Coates et al

Patent Trial and Appeal Board

Jun 27, 2016

12204298 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/204,298 09/04/2008
909 7590 06/29/2016
Pillsbury Winthrop Shaw Pittman, LLP (NV)
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
DonM. COATES
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.
091230-0371954 4739
EXAMINER
BROWN, LAMARR A
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
docket_ip@pillsburylaw.com
heather.marthers@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DON M. COATES, M. CLARK THOMPSON,
DAVID W. BECK, MANUELE. GONZALEZ,
MICHAEL A. KENDRICK, and DANIELL. NEAGLEY
Appeal2015-001166
Application 12/204,298
Technology Center 2800
Before GEORGE C. BEST, A VEL YN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-8 and 10-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF CASE
The claims are directed to a system for interrogating a downhole
environment using a passive resonating circuit that modulates the signal in
response to an environmental condition in the downhole environment. See
Appeal2015-001166
Application 12/204,298
generally Claims Appendix at Appeal Br. 18-21. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system for interrogating a downhole environment in a
casing-lined borehole beneath a surface, said system comprising:
a source of electromagnetic energy positionable at the
surface and operable for generation of an electromagnetic energy
signal;
a sensor module, the sensor module comprising a passive
resonating circuit that, during use and when positioned in the
downhole environment, modulates the electromagnetic energy
signal in response to an environmental condition in the downhole
environment; and
a coaxial transmission cable, electrically insulated from
the casing of the borehole, and in electrical communication with
the source and the sensor module.
Id. at Appeal Br. 18.
REJECTIONS
The Examiner made the following rejections:
A. Claims 1, 2, 11, 12, and 20 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Johnstad 1 in view of Gard, 2
in view of Rau,3 in view of Gao4, and in further view of Los
Alamos/Chevron Strategic Alliance.5 Final Act. 33.
1 Johnstad et al. US 2007/0040557 Al, published February 22, 2007
(hereinafter "Johnstad").
2 Gard, US 5,907 ,242, issued May 25, 1999 (hereinafter "Gard").
3 Rau, US 5,066,916, issued November 19, 1991 (hereinafter "Rau").
4 Gao et al., US 2005/0264293 Al, published December 1, 2005 (hereinafter
"Gao").
5 Los Alamos/Chevron Strategic Alliance for Advanced Energy Solutions,
Los Alamos NewsLetter (Los Alamos, New Mexico), September 11, 2006,
Vol. 7, No., 9, at p. 5 (hereinafter "Los Alamos/Chevron Strategic
Partnership" or "INFICOMM").
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Application 12/204,298
B. Claims 3, 4, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Johnstad in view of Gard, in view of
Rau, in view of Gao, in view of Los Alamos/Chevron Strategic
Alliance, and further in view of Gaudreau. 6 Id. at 4 3.
C. Claims 5 and 15 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Johnstad in view of Gard, in view of Rau, in
view of Gao, in view of Los Alamos/Chevron Strategic Alliance,
in view of Gaudreau and further in view of Stolarczyk.7 Id. at
45.
D. Claims 6 and 16 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Johnstad in view of Gard, in view of Rau, in
view of Gao, in view of Los Alamos/Chevron Strategic Alliance,
in view of Flagg, and further in view of Coates. 8 Id. at 47.
E. Claims 7 and 17 stand rejected under 35U.S.C§103(a) as being
unpatentable over Johnstad in view of Gard, in view of Rau, in
view of Gao, in view of Los Alamos/Chevron Strategic
Partnership, and further in view of Reimers. 9 Id. at 49.
F. Claims 9, 10, 18, and 19 stand rejected under 35 U.S.C §103(a)
as being unpatentable over Johnstad in vie\~1 of Gard, in vie\~1 of
Rau, in view of Gao, in view of Los Alamos/Chevron Strategic
Partnership, and further in view of Funk. 10 Id.
Appellants seek our review of Rejections A-F. Because we find the
Examiner failed to establish a prima facie case of obviousness with respect
6 Gaudreau et al., US 5,942,911, issued August 24, 1999 (hereinafter
"Gaudreau").
7 Stolarczyk et al., US 2003/0102995 Al, published June 5, 2003
(hereinafter "Stolarczyk").
8 Coates et al., US 2008/0061789 Al, published March 13, 2008 (hereinafter
"Coates").
9 Reimers et al., US 6,209,640 Bl, issued April 3, 2001 (hereinafter
"Reimers").
1° Funk et al., US 2008/0062036 Al, published March 13, 2008 (hereinafter
"Funk").
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Appeal2015-001166
Application 12/204,298
to independent claims 1, 11, and 20, we do not address Rejections B-F
(dependent claims 2-10 and 12-19) and address only Rejection A below.
And, because the issues arising for claims 1, 11, and 20 are, in relevant part,
the same, we focus our discussion on claim 1.
OPINION
The Examiner rejects claim 1under35 U.S.C. §103(a) as being
unpatentable over Johnstad in view of Gard, in view of Rau, in view of Gao,
and in further view ofINFICOMM (as evidenced by Los Alamos/Chevron
Strategic Alliance). The Examiner finds that Johnstad teaches a source of
electromagnetic energy, positionable at the surface, that generates an
electromagnetic signal. Final Act. 33. The Examiner also finds Johnstad
teaches a sensor module but acknowledges the sensor module does not
comprise a passive resonating circuit as claimed. Id. Gard, however
discloses a passive resonating circuit that modulates the electromagnetic
energy in response to an environmental condition present in the downhole
environment. Id. The Examiner reasons that one of ordinary skill in the art
at the time of the invention would have reason to combine the teachings
Johnstad and Gard to use the Gard passive resonating circuit "for the benefit
to provide a logging tool using a passive resonating circuit instead of using
an active resonating circuit for downhole sensing and communication during
drilling." Id. The Examiner finds that Rau teaches a coaxial transmission
cable that is electrically insulated from the casing of the borehole and to
provide electrical communication with the electromagnetic source and the
sensor module. Id. at 34. The Examiner similarly reasons that a person of
skill in the art would have made the recited combination to include Rau "for
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Application 12/204,298
the benefit to provide a logging tool using a passive resonating circuit
instead of using an active resonating circuit for downhole sensing and
communication during drilling." Id. The Examiner also finds that Gao
teaches a system for use in a downhole environment and that the skilled
artisan would have reason to combine Gao also "for the benefit to provide a
logging tool using a passive resonating circuit instead of using an active
resonating circuit for downhole sensing and communication during drilling."
Id. And, the Examiner further finds that INFICOMM demonstrates, among
other things, a system for interrogating a downhole environment in a casing-
lined borehole beneath a surface. Id. at 35. The Examiner explains that at
the time of the invention, a person skilled in the art would have reason to
include INFICOMM in the recited combination "for the benefit to provide a
logging tool using a passive resonating circuit instead of using an active
resonating circuit for downhole sensing and communication during drilling."
Id. at 36.
Appellants argue, inter alia, that the Examiner's rationale is
conclusory, unreasoned and is not based on factual support found in the
record. Appeal Br. 7. Appellants also complain that "the sole 'rationale' is
the same one used for the addition of every reference" which suggests
hindsight on the part of the Examiner. Id. at 12.
In response, the Examiner additionally finds (with respect to Gard and
Johnstad) that "the use of passive resonating circuits and active resonating
circuits for downhole sensing is known" and "are considered equivalent
circuits ... because they perform substantially the same function ... in
substantially the same manner ... to obtain the substantially same result."
Ans. 3. In addition, the Examiner reasons that the person of ordinary skill in
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the art would know that substituting "a passive resonating circuit would
eliminate the use of a power source required by [an] active resonating circuit
but still yield[] the same predictable result." Id.
Therefore, the issue on appeal is whether Appellants have shown a
reversible error in the Examiner's reasons to combine the recited art in
support of Rejection A. We find Appellant's arguments persuasive of
reversible error.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). While
we find that the Examiner's reasons for combining Johnstad and Gard, as
well as the inclusion of INFICOMM in the recited combination, have some
support in the record, 11 we find also that a combination including Rau and
Gao lack any such rational underpinnings. The Examiner explains the
skilled artisan would have reason to make the combination including Rau
and Gao "for the benefit to provide a logging tool using a passive resonating
circuit instead of using an active resonating circuit for downhole sensing and
communication during drilling. Also, has no power source [sic] in the
borehole." Ans. 11. The Examiner's explanation merely reiterates the
boilerplate language utilized to combine other references (i.e., Johnstad,
Gard, and INFICOMM) and fails to justify the conclusion of obvious. The
Examiner provides no citation to the record or knowledge in the art to
warrant the addition of either Rau or Gao. Because the Examiner's reasons
11 See Gard col. 2, 11. 54--58 and Spec. i-f 3 (discussing INFICOMM prior art).
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to combine fail to justify the presence of Rau and Gao, we determine the
Examiner failed to establish a prima facie showing of obviousness with
respect to claim I-and for the same reasons, claims 11 and 20.
Accordingly, we do not sustain any of the rejections before us.
CONCLUSION
The Examiner reversibly erred in rejecting claims 1-8 and 10-20.
DECISION
For the above reasons, the Examiner's rejection of claims 1-8 and 10-
20 is reversed.
REVERSED
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