Ex Parte Garvey et al

Patent Trial and Appeal Board

Sep 19, 2016

12539965 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/539,965 08/12/2009 Dustin Garvey
44639 7590 09/21/2016
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
20 Church Street
22nd Floor
Hartford, CT 06103
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.
DDE4-47150-US(INT0057US2) 1329
EXAMINER
BLOSS, STEPHANIE E
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte
DUSTIN GARVEY, JOERG BAUMANN, JOERG LEHR, and
OLOF HUMMES 1
Appeal2015-003766
Application 12/539,965
Technology Center 2800
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
AVEL YN M. ROSS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-8 and 10-19. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
1 Baker Hughes Incorporated is identified as the real party in interest. App.
Br. 1.
Appeal2015-003766
Application 12/539,965
Appellants claim a method, system, and computer readable media for
configuring a bottom hole assembly from a plurality of formation evaluation
tools comprising a ranking of tool health histories wherein the health of a
particular tool is based on a comparison of operating conditions experienced
by the particular tool while in use to operating conditions experienced "by
other active formation evaluation tools while in use" (independent claims 1,
8, and 17).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A method for configuring a bottom hole assembly from
a plurality of formation evaluation tools, the method
compnsmg:
creating on a computing device a health history for each
tool of the plurality of formation evaluation tools;
ranking on the computing device the resulting plurality of
health histories according to health, wherein the health of a
particular formation evaluation tool is based on a comparison of
a plurality of operating conditions experienced by the particular
formation evaluation tool while in use to a plurality of
operating conditions experienced by other active formation
evaluation tools while in use; and
selecting at least one tool for the bottom hole assembly
according to a ranking for the at least one tool.
App. Br. 6 (Claims Appendix).
The Examiner rejects all claims under 35 U.S.C. § 112, 1st paragraph,
as failing to comply with the enablement requirement (Final Action 2-3).
We summarily sustain this rejection because it has not been contested
in the Appeal Brief as correctly noted by the Examiner (Ans. 2) and not
disputed by Appellants (see Reply Br., generally).
2
Appeal2015-003766
Application 12/539,965
The Examiner also rejects all claims under 35 U.S.C. § 103(a) as
unpatentable over Savage (US 5,202,680, issued Apr. 13, 1993) in view of
Talbott (US 6,411,908 Bl, issued June 25, 2002) (Final Action 3-9).2
We sustain the § 103 rejection for the reasons given by the Examiner
with the following comments added for emphasis.
The Examiner finds that Savage does not determine the health of a
particular tool by comparison with other tools (Final Action 3) but that
Talbott discloses determining tool health by such a comparison (id. at 4).
The Examiner concludes that it would have been obvious to provide Savage
with the health determination technique of Talbott wherein a particular tool
is compared to other tools (id.).
Appellants state that "[independent] claims 1, 8 and 17 were last
amended to require that the operating conditions that are compared are for
ACTIVE tools" (App. Br. 4) and argue that "[i]n Talbott all of the
comparisons are with failed (e.g., not active) tools" (id.).
In response, the Examiner explains "[ t ]he comparison in Talbot[ t] is
to a machine that was active when the measurements were taken and
therefore Appellant[ s '] argument[] that the comparison in Talbott is to a
failed machine is not persuasive because comparison to a machine that has
not failed is not claimed" (Ans. 3).
We agree with the Examiner. Representative claim 1 recites a ranking
step wherein the health of a particular tool is based on a comparison of
operating conditions experienced by the particular tool while in use to
2 Because Appellants do not present arguments specifically directed to the
dependent claims (App. Br. 3--4), these claims will stand or fall with their
parent independent claims of which claim 1 is representative.
3
Appeal2015-003766
Application 12/539,965
operating conditions experienced by other active tools while in use.
However, the claim does not require that the other tools must be active
during the ranking step and therefore does not exclude Talbott's comparison
to operating conditions experienced by other tools which were active while
in use and while their operating conditions were being measured/recorded.
Appellants acknowledge the Examiner's explanation that the comparison of
Talbott involves operating-condition measurements of other tools during
their life (i.e., while active) (Reply Br. 2) but fail to challenge with any
reasonable specificity the Examiner's determination that the claims do not
exclude a comparison to other tools which have not failed.
The decision of the Examiner is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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