Ex Parte GROVES

Patent Trial and Appeal Board

Sep 26, 2016

12761969 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121761,969 04/16/2010
22828 7590 09/28/2016
EDWARD YOO C/O BENNETT JONES LLP
3200 TELUS HOUSE, SOUTH TOWER
10020 - 100 STREET
EDMONTON, ALBERTA, AB TSJ ON3
CANADA
FIRST NAMED INVENTOR
W. Emil GROVES
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.
60863.3 2370
EXAMINER
BALSECA, FRANKLIN D
ART UNIT PAPER NUMBER
2685
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):
yoot@bennettjones.com
lucase@bennettjones.com
lebiedowskak@bennettjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte W. EMIL GROVES
Appeal2014-009617
Application 12/761,969
Technology Center 2600
Before JEREMY J. CURCURI, SHARON PENICK, and
JOHN R. KENNY, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1 and 5-8. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
Claims 1 and 5-8 are rejected under 35 U.S.C. § 103(a) as obvious
over DeLaCroix (US 8,113,278 B2; Feb. 14, 2012) and Gopalan (US
7,735,579 B2; June 15, 2010). Final Act. 4--8.
We affirm.
STATEMENT OF THE CASE
Appellant's invention relates to "a pulse stimulation tool for downhole
application and their use to enhance production of oil and gas wells." Spec.
i-f 2. Claim 1 is illustrative and reproduced below:
Appeal2014-009617
Application 12/761,969
1. A downhole pulse stimulation tool for use within a production
or injection string, the tool comprising:
(a) a resonance chamber defined by a cylindrical outer tubular
member defining at least one pulse emitting opening, the outer tubular
member connecting to the tubing string; and
(b) a pulse generator rotatably disposed within the resonance
chamber, the pulse generator having a curved closed longitudinal channel
defining at least one lateral pulse generating opening, wherein the at least
one pulse generating opening periodically aligns with the pulse emitting
opening as the pulse generator rotates with the resonance chamber to provide
fluid communication from the longitudinal channel to outside the outer
tubular member.
ANALYSIS
The Examiner finds DeLaCroix and Gopalan combined teach all
limitations of claim 1. Final Act. 4--5. The Examiner finds DeLaCroix
teaches all limitations of claim 1, except for the recited curved closed
longitudinal channel. Final Act. 4--5. The Examiner finds Gopalan teaches
using a fluid to rotate a pulse generator. Final Act. 5.
The Examiner finds:
Even though Gopalan does not explicitly say that curved
longitudinal channels around the axis of rotation are used to
rotate the rotor using the fluid, it is well known in the art that
rotors in a wellbore tool use curved channels around the axis of
rotation so a rotor is rotated with the force of the fluid that passes
through it. This is shown by Walter (4,819,745) [fig. 7, col. 7 L.
14-27] which is not part of the rejection.
Gopalan' s teachings are equivalent to the claimed closed
curved longitudinal channels because they perform the same
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Application 12/761,969
function which is to rotate the rotor inside the stator using fluid
so the opening could be aligned periodically and create a pulse.
Final Act. 5.
The Examiner reasons:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to combine the inventions and apply
Gopalan's teachings in the tool taught by DeLaCroix because
using the fluid to rotate the rotor will help to save energy since a
motor is not needed to rotate the rotor.
Final Act. 5.
Appellant presents the following principal arguments:
1. The scope and content of the prior art:
DeLaCroix discloses a system for enhanced oil recovery using
an in-situ seismic energy generator for generating seismic
acoustic waves. The generator includes rotary valve 142, which
includes a rotor 145 that rotates within the cylindrical cavity of
stator 147. Motor 140 drives fluid pump 138 which acquires
ambient fluid from intake 136, and pressurizes and stores the
fluid in accumulator 144 (column 5, lines 48-51 ). Motor 140
also controls the rotation of rotor 145 (column 6, lines 34-37).
During revolution of rotor 145, ports 146 become aligned with
the shaped orifices of stator 14 7 and thereby directly release the
pressure/flow stored within accumulator 144, to generator a
pressure wave 156 (column 6, lines 38-41).
App. Br. 6 (emphasis added).
"Gopalan teaches the use of an electric motor drive mechanism
(column 17, lines 31-34), but contemplates the use of a fluid to rotate the
rotor 104 (column 24, lines 7-8)." App. Br. 7 (emphasis added).
Walter (relied on to show curved longitudinal channels are a well-
known feature) discloses:
The rotor 36 is provided with a plurality of equally spaced
radially extending helical blades 52, each of which spirals around
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Appeal2014-009617
Application 12/761,969
a central rotor hub so that, upon flow of drilling fluid, the rotor
36 rotates. The outer edges of the blades 52 are in closely spaced
relationship to the thin walled portion of the stator 34 (column
7, lines 11-27).
App. Br. 7 (emphasis added).
11. The differences between the claimed invention and the prior art:
"DeLaCroix does not disclose that the rotor has curved closed
longitudinal channels." App. Br. 8. "Gopalan does not disclose that the
rotor has curved closed longitudinal channels." App. Br. 8. "Walter does
not disclose that the rotor has curved closed longitudinal channels. Walter
teaches that the outer edges of the blades 52 of rotor 36 are in closely spaced
relationship to the thin walled portion of the stator 34." App. Br. 8.
111. The level of ordinary skill in the art and obviousness:
Examiner has not shown that the prior art includes a pulse
generator with a closed curved longitudinal channel, including
the limitation that such channel be closed. Further, the
combination of pulse generators with rotors having open curved
longitudinal channels in the prior art would not perform the same
function as the pulse generator with a closed curved longitudinal
channel, as claimed in the present application.
App. Br. 10 (emphasis added).
"It is only with the benefit of hindsight of the present application, that
one can equate Gopalan's teachings to the solution of providing a pulse
generator with closed curved longitudinal channels." App. Br. 11. "Walter
teaches a rotor having open channels." App. Br. 11; see also App. Br. 11-
12.
We do not see any error in the Examiner's findings. Nor do we see
any error in the Examiner's legal conclusion of obviousness.
Regarding (i) and (ii), the scope and content of the prior art and the
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Application 12/761,969
differences between the claimed invention and the prior art are not disputed.
Regarding (iii),
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
We agree with and adopt as our own the Examiner's findings and
reasons set forth above and in the Final Action. Final Act. 4--5.
We also agree with and adopt as our own the Examiner's further
explanation in the Examiner's Answer:
[O]ne of ordinary skill in the art, when applying the well-known
method of using channels to rotate the rotor with fluid as
suggested by Gopalan, would have placed the curved
longitudinal channels inside the rotor (closed longitudinal
channels) where the fluid is flowing, and not outside (opened
longitudinal channels) as argued by the appellant because the
channels will be useless if they are placed in a place where fluid
is not flowing. For this reason, one of ordinary skill in the art
would recognize that the channels must be closed in order to use
fluid to rotate the rotor.
Ans. 3.
Gopalan' s teachings (col. 24, 11. 7-8) of using a fluid to rotate a rotor
suggest to a skilled artisan to use a fluid to rotate the rotor in DeLaCroix
(Figure 6). Using curved longitudinal channels is well-known to a skilled
artisan. See Walter col. 7, 11. 14--27. When Gopalan's teaching of using a
fluid to drive a rotor is incorporated into DeLaCroix, implemented utilizing
the well-known technique of curved longitudinal channels to utilize the fluid
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Application 12/761,969
in driving the rotor, the channels are closed because they are placed inside
the rotor where the fluid is flowing. See Ans. 3. Put another way, given
DeLaCroix (Figure 6) teaches a rotor and given Gopalan teaches using a
fluid to drive a rotor, using the well-known technique of curved longitudinal
channels to utilize the fluid, and more particularly, closed channels inside
the rotor where DeLaCroix's fluid flows would have been a predictable use
of prior art elements according to their established functions - an obvious
improvement. As the U.S. Supreme Court has explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, if a technique has been used
to improve one device, and a person of 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. Sakraida [ v. Ag Pro, Inc.,
425 U.S. 273 (1976)] and Anderson's-Black Rock[, Inc. v.
Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative-a
court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
In the Reply Brief, Appellant further argues that Gopalan only
suggests using energy from a moving fluid. Reply Br. 2. Further, in the
Reply Brief, Appellant argues that a person of ordinary skill in the art would,
when modifying DeLaCroix, only provide open channels. See Reply Br. 3
("The rotor 142 does not have openings at an opposite end to allow for
outflow of fluid at the other end channel as is needed to provide the desired
rotational effect as fluid flows through the channels"). These further
arguments in the Reply Brief do not change our reasoning explained above.
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Application 12/761,969
In addition, claim 1 's language requires "the pulse generator rotates with the
resonance chamber to provide fluid communication from the longitudinal
channel to outside the outer tubular member"; however, the claim does not
recite requirements for any other outflow.
We, therefore, sustain the Examiner's rejection of claim 1, as well as
claims 5-8, which are not separately argued with particularity.
ORDER
The Examiner's decision rejecting claims 1 and 5-8 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 )(iv).
AFFIRMED
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