Ex Parte Itskovich et al

Patent Trial and Appeal Board

Aug 16, 2016

13071724 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/071,724 03/25/2011 Gregory B. Itskovich
87884 7590 08/18/2016
Mossman, Kumar and Tyler, PC
P.O. Box 421239
Houston, TX 77242
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.
RES4-50033-US 4581
EXAMINER
LEE,PAULD
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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@mktlaw.us.com
tthigpen@mktlaw.us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY B. ITSKOVICH and ARCADY REIDERMAN
Appeal2015-002046
Application 13/071, 724
Technology Center 2800
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MONTE T. SQUIRE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-17. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1 is illustrative of the appealed subject matter:
1. An apparatus for evaluating an earth formation, the apparatus
compnsmg:
a carrier including at least one transmitting antenna and at least two
spaced-apart receiving antennas configured to be conveyed in a borehole, the
carrier including a conductive tubular and a non-conductive insert in the
1 The Real Party in Interest is stated to be Baker Hughes Incorporated (Br. 1 ).
Appeal2015-002046
Application 13/071, 724
conductive tubular encompassing at least one of (i) the at least one
transmitter antenna, and (ii) the at least two spaced-apart receiver antennas;
and
at least one processor configured to:
estimate a value of a resistivity property of the earth formation
using first and second transient signals produced by a first one
and a second one of the at least two spaced-apart receiver
antennas respectively responsive to a transient activation of the
at least one transmitter antenna.
Br. 12 (emphasis added to identify disputed limitation).
Independent claim 9 is drawn to a method corresponding to claim 1,
that is, the method includes "conveying a carrier" that includes a conductive
tubular and "a non-conductive insert in the conductive tubular."
Independent claim 16 is drawn to a computer-readable medium having
instructions thereon.
The Examiner maintains the following grounds of rejection:
a) Claims 1-7, and 9-17 under 35 U.S.C. § 102(b) as being
anticipated by Itskovich et ai. (U.S. 2009/0237084 Al, pubiished Sept. 24,
2009) ("Itskovich");
b) Claim 8 under 35 U.S.C. § 103(a) as being unpatentable over
Itskovich.
PRINCIPLES OF LAW
[U]nless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
"[D]uring examination proceedings, claims are given their broadest
2
Appeal2015-002046
Application 13/071, 724
reasonable interpretation consistent with the specification." In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.) (citations omitted); Phillips v. AWHCorp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) ("[T]he specification 'is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term."' (Citation omitted)).
ANALYSIS
Appellants argue that the Examiner has not shown how Itskovich
identically discloses "a non-conductive insert in the conductive tubular" as
required by the disputed claims. A preponderance of the evidence supports
Appellants' position with respect to claims 1-15 which require this element.
However, the computer-readable medium of claims 16 and 17 is not limited
by this element and thus, we affirm the Examiner's rejection as applied to
claims 16 and 1 7.
Appellants urge that one of ordinary skill in the art would not consider
the non-conductive ferrite coating of Itskovich "a non-conductive insert in
the conductive tubular" as required by the claims (Br. 8-10). Appellants
state that in light of the Specification, one of ordinary skill in the art would
understand that an insert is a solid that replaces a portion of the drill pipe
(conductive tubular) (id. at 9).
3
Appeal2015-002046
Application 13/071, 724
As explained in the Specification, "a short (less than l m) part of the
conductive drill pipe 203 is replaced with the nonconductive inserts 205
near the transmitters and the receivers" (Spec. i-f 20; emphasis in original).
The Specification also describes that "[b ]y utilizing short nonconductive
inserts ... eddy currents in the portion of the metal drill replaced with the
inserts are substantially reduced" (id.).
Contrary to the Examiner's position that an insert does not necessarily
have to replace a part of the conductive drill pipe, that is, "the conductive
tubular" as recited in claim 1 (Ans. 16), we conclude that the meaning of "a
non-conductive insert in the conductive tubular" requires that a part of the
conductive tubular be replaced with the non-conductive insert as defined and
described in the Specification. Thus, Itskovich's non-conductive coating
falls short of being a non-conductive insert as required by the claims when
properly interpreted in light of the Specification. Therefore, we agree with
Appellants that the Examiner has taken an unreasonably broad interpretation
of the aforementioned claim limitation when considered in light of the
Specification for the reasons explained in the Brief and, in doing so, erred in
finding Itskovich discloses the claimed subject matter of "a non-conductive
insert in the conductive tubular." As such, we cannot sustain the
anticipation rejection based on as applied to independent claims 1 and 9.
Accordingly, the Examiner's 35 U.S.C. § 102 rejection of claims 1-7
and 9-15 is reversed.
The Examiner fails to direct us to any evidence that the applied prior
art teaches or suggests the use of "a non-conductive insert in the conductive
tubular" as claimed. Thus, the Examiner's 35 U.S.C. § 103 rejection of
claim 8 is also reversed.
4
Appeal2015-002046
Application 13/071, 724
On the other hand, with respect to claims 16 and l 7, these claims are
directed to a "computer-readable medium product having thereon
instructions" to perform a method on a carrier that has the disputed "non-
conductive insert." Neither the carrier nor the "non-conductive insert"
appear to limit these instructions or the computer-readable medium in any
way. There is no dispute that Itskovich has a computer-readable medium
with instructions thereon (Ans. 9, 10; Itskovich i-fi-f 15, 58; see also Spec. 21
(which states that the method (instructions) disclosed in Itskovich is
followed in this invention)).
Accordingly, we affirm the Examiner's § 102 rejection of claims 16
and 1 7 based on Itskovich.
DECISION
The Examiner's decision is reversed as to claims 1-15, and affirmed
with respect to claims 16 and 17.
ORDER
AFFIRMED-IN-PART
5