Ex parte Hong et al.

Board of Patent Appeals and Interferences

Apr 18, 2000

08448134 (B.P.A.I. Apr. 18, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HARRY T. HONG and KEITH W. KATAHARA
_____________
Appeal No. 1997-0594
Application 08/448,134
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING, and RUGGIERO, Administrative
Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1, 11 through 14 and 17. Claims 2-10, 15 and 16 have
Appeal No. 1997-0594
Application No. 08/448,134
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been canceled.
The invention relates to a method of measuring earth
formation properties using a sensor disposed in a drill bit.
Appellants identify on page 4 of the specification that the
method makes use of a drill stem which has two instrument
carrying sections with a drill bit on the distal end. On page
5 of the specification, Appellants state that the drill bit
body contains a sensor which transmits microwave electro-
magnetic wave energy into the formation directly in front of
the bit. Further, on page 7 of the specification, Appellants
identify that the sensor receives the microwave energy
reflected off of the formation ahead of the drill bit. This
reflected signal can be indicative of the water content of the
formation and is either analyzed or stored for later analysis.
Independent claim 11 is illustrative of the invention.
A method for determining the presence of hydrocarbons in
a relatively thin layer of an earth formation comprising the
steps of:
drilling into said earth formation using a rotatable
Appeal No. 1997-0594
Application No. 08/448,134
It is noted that the briefs and answer address an1
obviousness type double patenting rejection. However,
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drill stem having a bit positioned on its lower end and in
contact with said earth formation, said bit including a bit
body having a transverse face adjacent a zone of said earth
formation which is substantially uninvaded by drilling fluid
and including a sensor mounted thereon and adjacent to said
transverse face of said bit to emit electromagnetic wave
energy into said substantially uninvaded zone of said earth
formation ahead of said bit during the drilling thereof;
generating electromagnetic wave energy for emission from
said sensor into said uninvaded zone during said drilling;
receiving reflected electromagnetic wave energy from said
uninvaded zone at said sensor during said drilling;
measuring the alteration of at least one characteristic
of said electromagnetic wave energy emitted by said sensor and
received at said sensor and caused by said uninvaded zone; and
comparing said measurement of said electromagnetic wave
energy with said measurement of one of density and porosity
measurements to detect the presence of hydrocarbons in said
uninvaded zone.
The Examiner relies upon the following references:
Blondeau 2,310,611 Feb. 9, 1943
Piety 3,293,542 Dec. 20, 1966
Unterberger et al. 3,412,321 Nov. 19, 1968
(Unterberger)
Rau 4,893,084 Jan. 9, 1990
Bartel et al. (Bartel) 4,940,943 Jul. 10, 1990

The following rejections are appealed.1
Appeal No. 1997-0594
Application No. 08/448,134
Appellants submitted a terminal disclaimer on October 15, 1996
which was accepted by the Examiner in the communication dated
April 9, 1999. Accordingly, the rejection based upon
obviousness type double patenting is not before us.
Appellants filed an appeal brief on July 18, 1996. 2
Appellants filed a reply brief on October 11, 1996. On
November 5, 1996 the Examiner mailed a communication stating
that the reply brief has been entered and considered. On
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Claims 1, 11, 13 and 17 are rejected under 35 U.S.C. §
103 as being unpatentable over Unterberger et al. and Bartel
et al.
Claims 12 and 14 are rejected under 35 U.S.C. § 103 as
being unpatentable over Unterberger et al., Bartel et al. and
Rau.
Claims 1, 11, 13 and 17 are rejected under 35 U.S.C. §
103 as being unpatentable over Unterberger et al., Bartel et
al., Blondeau and Piety.
Claims 12 and 14 are rejected under 35 U.S.C. § 103 as
being unpatentable over Unterberger et al., Bartel et al.,
Blondeau, Piety and Rau.
Rather than reiterate the arguments of the Appellants and
the Examiner, reference is made to the Briefs and Answer for2
Appeal No. 1997-0594
Application No. 08/448,134
September 8, 1998 the Board of Appeals and Interferences
remanded the case to: have a terminal disclaimer considered,
amend the brief to identify the real party of interest and
have an appendix which properly refers to the claims. On
September 22, 1998 Appellants filed a revised appeal brief.
On April 9, 1999 the Examiner identified that the September
22, 1998 brief was defective as only 1 copy was submitted. On
May 3, 1999 Appellants refiled the September 22, 1998 brief in
triplicate.
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the respective details thereof.
Opinion
We will not sustain any of the rejections of claims 1, 11
through 14 and 17 under 35 U.S.C. § 103.
The Examiner has not set forth a prima facie case. It is
the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art or by the implication contained in such teachings or
suggestions.
In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir.
1983). "Additionally, when determining obviousness, the
claimed invention should be considered as a whole; there is no
legally recognizable "heart" of the invention." Para-Ordnance
Mfg.,
Appeal No. 1997-0594
Application No. 08/448,134
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Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37
USPQ2d 1237, 1239 (Fed. Cir. 1995) (citing W. L. Gore &
Assocs., Inc. v. Garlock Inc., 721 F.2d 1540, 1548, 220 USPQ
303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)).
On page 5 of the answer, the Examiner identifies all of
the claimed elements that Unterberger teaches. Further, the
Examiner states “Unterberger et al. fail to disclose mounting
the sensor on the transverse face of a drill bit.” In this
same passage the Examiner cites Bartel et al. as evidence that
it is “well-known to provide logging devices having both wire
line and MWD (Monitoring While Drilling) embodiments” (meaning
of abbreviation added). From this the Examiner concluded that
it would have been obvious to mount Unterberger’s sensor on
the face of a drill bit. On pages 8 and 9 of the answer, in
an alternative rejection the Examiner adds Piety and Blondeau
as evidence that "it is well-known to propagate signals from
the head of a drill string."
Appellants argue on page 7 of the September 22, 1998
appeal brief (brief), that Unterberger does not suggest that
sensors should be used on freshly exposed surfaces during
Appeal No. 1997-0594
Application No. 08/448,134
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drilling. Further, on page 8 of the brief, Appellants assert
that Bartel teaches that the sensors should be mounted above
the drill bit and does not suggest that the sensors be placed
on the transverse face of a drill bit. Finally, Appellants
assert on page 10 of the brief, that neither Blondeau nor
Piety teach or suggest a sensor on the bit face which causes
emission and reception of signals with respect to a zone
uninvaded by drilling fluids.
Before turning to the references applied, we must analyze
the claims. In analyzing the scope of the claims, office
personnel must rely on the Appellant's disclosure to properly
determine the meaning of terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321,
1330 (Fed. Cir.) (en banc), aff'd, 116 S. Ct. 1384 (1996). We
find that the scope of claims 1 and 11 includes a sensor
mounted on the face of the drill bit which emits
electromagnetic signals into the earth formation ahead of the
drill bit and receives the signals which are reflected off of
the formation. Claim 1 contains the limitation “a sensor
mounted in said bit body and adjacent said transverse face in
Appeal No. 1997-0594
Application No. 08/448,134
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a position to be in close proximity to a zone of said
formation ahead of said bit and which is substantially
uninvaded by drilling fluid during drilling” where “an
instrument is operably connected to said sensor for causing
the emission and receipt of signals with respect to said
zone." Similarly, method claim 11 contains the limitations
“generating electromagnetic wave energy for emission from said
sensor into said uninvaded zone during said drilling” and
receiving reflected electromagnetic wave energy from said
uninvaded zone at said sensor during said drilling” where the
drilling limitation identifies that the sensor is mounted on
the face of the drill bit and the uninvaded zone is an earth
formation ahead of the drill bit.
Turning to the rejection, we find that the combination of
Unterberger et al., Bartel et al., Blondeau and Piety do not
teach or suggest the mounting of a sensor on the drill bit
which emits signals into and receives signals from the
formation ahead of the drill bit. The Examiner’s conclusion
on page 5 of the answer that "it would have been obvious to
one of ordinary skill in relevant art to modify the sensor of
Appeal No. 1997-0594
Application No. 08/448,134
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Unterberger et al. for use in a MWD apparatus and thereby
locate the sensor on the transverse face of the drill bit . .
." is unsupported by evidence. We are not inclined to
dispense with proof by evidence when the proposition at issue
is not supported by a teaching in a prior art reference or
shown to be common knowledge of unquestionable demonstration.
Our reviewing court requires this evidence in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468,
1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984); In re Knapp-
Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In
re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
Furthermore, our reviewing court states in In re Piasecki, 745
F.2d 1468, 223 USPQ 785, 788 (Fed. Cir. 1984) the following:
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1 (1966), focused on the procedural and
evidentiary processes in reaching a conclusion under
Section 103. As adapted to ex parte procedure,
Graham is interpreted as continuing to place the
"burden of proof on the Patent Office which requires
it to produce the factual basis for its rejection of
an application under sections 102 and 103". Citing
In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177
(CCPA 1967).
We find that Bartel teaches electromagnetic logging while
Appeal No. 1997-0594
Application No. 08/448,134
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drilling. However, Bartel teaches that the sensors are
mounted on the drill mandrel, see column 2, lines 33 to 37,
and not in the drill bit as is claimed. Further, we find that
both Blondeau and Piety teach that electromagnetic energy is
emitted from the drill bit, i.e. Blondeau, column 3 lines 54
to 59 and Piety figure 1, column 2, lines 26 to 31. Both
Blondeau and Piety teach that the drill bit itself is the
electrode. However, we find that neither of these references
teach a separate sensor on the drill bit to emit the energy.
Further, we find that neither Blondeau nor Piety teach
receiving the reflected signal at a sensor on the drill bit,
for example, Blondeau teaches that the returned signal is
received by electrodes 15 and 16 on the surface and Piety
teaches that the return signal is received by electrodes 23,
24, and 25 in the drill string.
For the foregoing reasons we will not sustain the
rejection of claims 1, 11, 13 and 17 under 35 U.S.C. § 103.
Claims 12 and 14 are dependent upon claim 11, accordingly, the
rejection of these claims will not be sustained. Therefore
the decision of
Appeal No. 1997-0594
Application No. 08/448,134
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the Examiner rejecting claims 1, 11 through 14 and 17 under
35 U.S.C. § 103 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
MRF:lmb
Appeal No. 1997-0594
Application No. 08/448,134
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F. LINDSEY SCOTT
ROSS., CLAPP, KORN & MONTGOMERY
14651 DALLAS PARKWAY, SUITE 102
DALLAS, TX 75240-7477