Ex Parte Grayson

Board of Patent Appeals and Interferences

Dec 30, 2010

10793161 (B.P.A.I. Dec. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM R. GRAYSON
____________

Appeal 2009-008814
Application 10/793,161
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-18, 21, 22, 24-28, 37-48, and 50-58, which are all the
claims remaining in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

Invention
Appellant’s invention relates to predicting statistical reliability for a
downhole device used in drilling boreholes into hydrocarbon-producing
reservoirs. See Abstract; Spec. ¶ [0002].

Representative Claims
1. A method comprising:

drilling with a drill string comprising a downhole device,
the downhole device comprising at least one selected from the
group consisting of: a logging-while-drilling tool, and a
measuring-while-drilling tool;

operating the downhole device; and

updating, contemporaneously with the operating, a model
that predicts reliability for the downhole device, the updating
using a downhole condition and an amount indicative of time
the downhole device is used downhole, the amount indicative
of time modified from an actual time of use based on the
downhole condition.

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50. A method comprising:

predicting reliability for a downhole device using
expected downhole condition or expected use time, the
downhole device being at least one selected from the group
consisting of: a logging-while-drilling tool; a measuring-while-
drilling tool; a mud pulser; a mud siren; a rotary steerable
assembly; and a mud motor;

selecting the downhole device for use in a drill string if
the predicted reliability is above a predetermined threshold; and

utilizing the selected device in the drill string during a
drilling operation.

Examiner’s Rejections
Claims 50-58 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Gunawardana (US 2004/0182573 A1).2
Claims 1-18, 21, 22, 24-28, and 37-48 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Milheim (US 4,794,534) and
Gunawardana.

FINDINGS OF FACT
Gunawardana
1. Gunawardana teaches that electronic devices may be used
downhole, when drilling a well bore, to acquire information about the
drilling device and/or earth formation. The electronic devices may be
operated at temperatures much higher than their rated operational range,

2 Although the rejection cites § 102(b), the filing date of the instant
application predates the publication date of Gunawardana.
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resulting in failure of, for example, the wire bonds of a plastic encapsulated
integrated circuit 100 (Fig. 2). ¶¶ [0001], [0002], [0006].
2. The reference teaches selecting and obtaining model variables
to predict bond strength degradation rate as a function of operating
temperature. The prediction may be computed as a time evolution of bond
strength during a lifetime of an electronic device, allowing prediction of the
time to failure of the device. Based on the predicted time to failure, a plastic
encapsulated integrated circuit can be replaced prior to actual failure. ¶¶
[0033], [0034], [0123].
3. Figure 7 depicts a bond strength estimate versus time, showing
an estimated time to failure (TTF) 604 as modified by the estimated
temperature 606, such that the device can be replaced before reaching the
minimum required bond strength. ¶ [0105], [0106].
4. The temperature profile of the electronic device may be
determined by measuring a downhole temperature over time. ¶ [0107].
5. Gunawardana further teaches that the invention has application
in downhole oil well electronics, in areas that include wire line logging
tools, measurement while drilling tools, logging while drilling tools,
perforating tools, permanent monitoring equipment, and downhole meters. ¶
[0122].

Milheim
6. Milheim teaches that drilling data is monitored on a real time
basis and compared to what is expected from the drilling plan. In the event
of variance from the expected data, testing can be accomplished through the
use of computer aided simulation packages that model different features of
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the problem or solution. The packages can also be used to simulate future
drilling plans or actions. The real-time data collection provides the best
available data for the best available simulations. Col. 4, l. 7 - col. 5, l. 15;
col. 10, ll. 6-25.

ANALYSIS
Section 102 rejection
Claim 50 recites, inter alia, selecting the downhole device for use in a
drill string if the predicted reliability of the device is above a predetermined
threshold. The rejection refers to paragraph [0123] of Gunawardana as
describing this feature. The cited reference text discloses replacing a plastic
encapsulated integrated circuit before failure, based on predicting the time to
failure.
Appellant argues that Gunawardana does not disclose, however,
“selecting the downhole device” based on the predicted reliability, where the
device is limited to one (or more) of the particular devices set out in the
claim’s Markush group. We find no response to this contention from the
Examiner in the Answer.
We agree with Appellant that Gunawardana does not disclose
selecting the “downhole device” based on the predicted reliability. The
rejection thus fails to demonstrate that Gunawardana anticipates the subject
matter of claim 50. “[A]bsence from the reference of any claimed element
negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d
1565, 1571 (Fed. Cir. 1986) (citation omitted), overruled on other grounds
by Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383
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F.3d 1337 (Fed. Cir. 2004). We therefore cannot sustain the § 102 rejection
of claim 50, nor that of claims 51 through 54, which depend from claim 50.
Appellant does not separately argue independent claim 55, but neither
has the Examiner separately rejected the claim. The claim recites predicting
reliability of a “downhole tool” based on an estimated time the tool will be
in service within a bore hole. On this record, we conclude that the rejection
has failed to show, at the least, that one of ordinary skill in the art would
consider the integrated circuit described by Gunawardana to be a “downhole
tool” within the meaning of claim 55. As the rejection of claim 55 fails to
meet the requirements for demonstrating unpatentability under § 102, we do
not sustain the rejection of claim 55, nor that of dependent claims 56 through
58.

Section 103(a) rejection
Appellant argues claims 1 and 18 as representative in the § 103(a)
rejection over Milheim and Gunawardana. We will therefore decide the
appeal with respect to the § 103(a) rejection on the basis of the two claims
selected by Appellant. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that Milheim fails to discuss models that predict
reliability of downhole devices. However, Milheim teaches that any
variation from the drilling plan is taken into account in the simulation
packages. FF 6. Although the reference does not use the literal language
“reliability of downhole devices,” we agree with the Examiner that
reliability of the downhole devices, and more, would be accounted for in the
real time data collection and simulations. Moreover, Gunawardana teaches
predicting reliability of integrated circuit packages used in a downhole oil
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well tool, such as a measurement while drilling tool (FF 2, 5), which is a
measure of reliability for the downhole device itself.
Appellant also argues that Gunawardana fails to teach an “amount
indicative of time modified from an actual time of use based on the
downhole condition” as recited in claim 1. We consider it irrelevant that
Gunawardana’s Figure 7 does not show “an actual time of use,” because the
claim recites an amount “indicative of time modified from” an actual time of
use.
As the Examiner notes, Figure 7 of Gunawardana shows what is, in
essence, an “accelerated” time that is modified from actual time of use due
to the effects of elevated temperature. The plot for bond strength 602 is not
linear with respect to time, but depends in part on the magnitude of
operating temperature. See FF 2-4. As the Examiner also indicates, the
recognition of temperature effects on the time to failure of components of
downhole devices as demonstrated by Gunawardana is consistent with the
teachings of Appellant’s Specification (e.g., ¶ [0039]), and demonstrates that
the ordinary artisan knew to account for the adverse effects of elevated
temperature.
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). In view of the broad scope of the subject matter
embraced by claim 1, we are not persuaded that the claim has been rejected
in error.
Appellant’s argument in defense of claim 18 seems based on the
premise that the claim requires an “increased time based on increased
temperature.” App. Br. 15. Claim 18, however, recites “an accelerated
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time,” which is, as we have noted, consistent with Gunawardana’s Figure 7
and Appellant’s written description. We agree with Appellant (App. Br. 15)
to the extent that Gunawardana teaches that as temperature increases, the
time to failure decreases, but note that the relationship is consistent with the
requirements of claim 18.
We have considered all of Appellant’s arguments in the briefs but find
none persuasive of error in the Examiner’s § 103(a) rejection. We thus
sustain the rejection of claims 1-18, 21, 22, 24-28, and 37-48 under § 103(a)
over Milheim and Gunawardana.

DECISION
The rejection of claims 50-58 under 35 U.S.C. § 102(e) as being
anticipated by Gunawardana is reversed.
The rejection of claims 1-18, 21, 22, 24-28, and 37-48 under 35
U.S.C. § 103(a) as being unpatentable over Milheim and Gunawardana 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART

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