Ex Parte Jahangir et al

Patent Trial and Appeal Board

Aug 21, 2018

13260010 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/260,010 12/09/2011
127226 7590 08/23/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Mohammad Jahangir
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.
3912-0138PUS1 7810
EXAMINER
GRAY,GEORGESTERLING
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMAD JAHANGIR and TORE WELTZIN
Appeal2017-010138 1
Application 13/260,0102
Technology Center 3600
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1, 3-8, 10, 11, 14, 16, 17, 19, and 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references the Appeal Brief ("Br.," filed Mar. 3, 2017), the
Examiner's Answer ("Ans.," mailed Apr. 20, 2017) and the Final Office
Action ("Final Act.," mailed Aug. 25, 2016).
2 According to Appellants, the real party in interest is "STATOIL
PETROLEUM AS." Br. 1.
Appeal 2017-010138
Application 13/260,010
BACKGROUND
According to Appellants, "[ t ]he invention relates to an apparatus and a
method for evaluating a wellbore while drilling, and in particular for
evaluating a casing and/or cement in an annulus behind the casing of the
wellbore." Spec. 1, 11. 8-10.
CLAIMS
Claims 1 and 8 are on the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. An apparatus for evaluating a wellbore while drilling, the
apparatus comprising:
a drill string including a downhole drilling tool;
a logging tool configured to evaluate either or both of a
casing and cement in an annulus behind the casing along the
wellbore, the logging tool being directly attached to a drill pipe
and above a bottom hole assembly while circulating a drilling
fluid through the drilling tool, wherein the logging tool is
configured to obtain data from the wellbore while moving the
drill string including the logging tool uphole and out of the
wellbore and wherein the logging tool includes a memory for
storing obtained data and an on-board power supply battery; and
a computer positioned at a surface level of the well bore
and configured to obtain the data from the memory when the
logging tool also is positioned at the surface level,
wherein the logging tool is configured to perform a sleep
mode which reduces power consumption by disabling a data
obtaining and storing function and the computer is configured to
transmit a wake-up signal downhole to enable the data obtaining
and storing function of the logging tool,
wherein the logging tool has a through channel directly
connected to the drill pipe to guide the drilling fluid from the drill
pipe through the through channel of the logging tool to the
drilling tool, and wherein the logging tool mechanically connects
the drill pipe to the bottom hole assembly.
2
Appeal 2017-010138
Application 13/260,010
Br., Claims App. 1.
REJECTIONS
1. The Examiner rejects claims 1, 4--6, 8, 11, 17, and 20 under 35 U.S.C.
§ I03(a) as unpatentable over Dowla3 in view ofTubel4 and Pomerleau. 5
2. The Examiner rejects claims 3, 10, 14, 16, and 19 under 35 U.S.C.
§ I03(a) as unpatentable over Dowla in view of Tubel, Pomerleau, and
Fordham. 6
3. The Examiner rejects claim 7 under 35 U.S.C. § I03(a) as unpatentable
over Dowla in view of Tubel, Pomerleau, and Wallace. 7
DISCUSSION
Rejection 1
Independent claim 1 requires a logging tool that "has a through
channel directly connected to the drill pipe to guide the drilling fluid from
the drill pipe through the through channel .... " Br., Claims App. 1.
Similarly, independent claim 8 is a method claim that requires "mounting a
logging tool to a drill string ... wherein the logging tool is directly attached
to a drill pipe ... by directly connecting a through channel of the logging
tool to the drill pipe to guide the drilling fluid from the drill pipe through the
through channel." Id. at 2-3. We are persuaded by Appellants' arguments
that the Examiner erred in finding that Dowla discloses a logging tool with a
through channel as required by these claims.
3 Dowla et al., US 2011/0290011 Al, pub. Dec. 1, 2011.
4 Tubel et al., US 5,960,883, iss. Oct. 5, 1999.
5 Pomerleau, US 5,589,825, iss. Dec. 31, 1996.
6 Fordham, US 5,358,039, iss. Oct. 25, 1994.
7 Wallace, US 2005/0016769 Al, pub. Jan. 27, 2005.
3
Appeal 2017-010138
Application 13/260,010
With respect to both claims 1 and 8, the Examiner finds that Dowla
discloses an apparatus including a drill string, a logging tool, and a
computer. See Final Act. 2-3. More specifically, the Examiner finds that
Dowla discloses a logging tool 36:
wherein the logging tool has a through channel directly
connected to the drill pipe to guide the drilling fluid from the drill
pipe through the through channel of the logging tool to the
drilling tool, and wherein the logging tool mechanically connects
the drill pipe to the bottom hole assembly [at least the lower
position of 36 on Dowla Fig. 1 shows the logging tool 36 as a
drill pipe section through which drilling fluid must flow to power
the mud motor and pass through the drilling tool 22; additionally
at least the lower position of 36 on Dowla Fig. 1 shows the
logging tool 36 directly attached to the drill pipe 13 and
mechanically connecting the drill pipe to the bottom hole
assembly 32 such that a through channel of the logging tool
guides the drilling fluid from the drill pipe through the logging
tool to the drilling tool 22]. It should be noted that the interior
details of the logging tool and the surrounding equipment in the
drill string need not be displayed in the Dowla reference, when
what is shown mandates the through channel, etc. by indicating
that drilling fluid flows through the entire assembly to the bit.
Final Act. 3 (bracketed material in original). Further, in response to
Appellants' arguments the Examiner asserts that "the downhole component
36 (that includes the logging tool) of the [bottom hole assembly ("BHA")]
32 is interposed in the drill pipe 13 such that drilling fluid must pass through
the BHA to reach the mud motor 20 and the bit 22." Ans. 11 (relying on
Dowla's incorporation ofMadhavan8 at col. 7, 1. 51- col. 8, 1. 3). The
Examiner also indicates that "obviousness is not involved" with respect to
these findings because "the claims' elements are specifically disclosed" in
8 Madhavan et al., US 7,413,021, iss. Aug. 19, 2008.
4
Appeal 2017-010138
Application 13/260,010
Dowla. Ans. 12. Thus, the Examiner makes clear that "[n]o obviousness
position has been advanced by the [E]xaminer with respect to the 'through
channel"' required by the claims. Id.
We agree with Appellants that the Examiner erred in finding that a
through channel as claimed is "mandated" by Dowla's Figure 1. First, we
note that the Examiner has not pointed us to any express disclosure that
Dowla's component 36 includes a through channel as claimed. Further, we
agree with Appellants that Dowla's Figure 1 does not show the details of
component 36 or how component 36 is connected to the drill pipe. See
Br. 9. Rather, Dowla discloses that Figure 1 "is simplified for purposes of
illustrating certain aspects of the drill pipe 13 related to the well casing 26,
the WDP 30 and/or the one or more downhole components 36." Dowla
,r 34. Although, the depicted arrangement in Figure 1 may show that a
through channel in element 36 is possible or even probable, Dowla lacks the
requisite detail regarding the specific internal components of element 36 or
the internal arrangement of components in the drill pipe that would be
required to show that Dowla's component 36 necessarily includes, or
mandates the inclusion of, a through channel as claimed. For example, we
see no disclosure in Dowla that element 36 as depicted in the lower portion
of Figure 1 must necessarily encompass the entirety of the drill pipe such
that drill fluid must be guided through element 36 to reach the drilling tool.
We also see no disclosure in the cited portions of Madhavan that supports
the Examiner's finding that a through channel is mandated based on the
arrangement of components depicted in Dowla's Figure 1.
5
Appeal 2017-010138
Application 13/260,010
Thus, we find that Dowla's depiction in Figure 1 fails to show that a
through channel is inherently9 located in component 36, as required by the
claims. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
("Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.").
Based on the foregoing, and because the Examiner has not provided a
showing that a through channel as claimed would have been obvious in view
of the art of record, we are persuaded of error in the rejection of independent
claims 1 and 8. Accordingly, we do not sustain the rejection of claims 1 and
8. For the same reasons, we do not sustain the rejection of dependent claims
4---6, 11, 17, and 20.
Re} ections 2 and 3
With respect to the rejections of claims 3, 7, 10, 14, 16, and 19, the
Examiner does not rely on the art of record in a manner that would cure the
deficiency in the rejection of independent claims 1 and 8, as discussed
above. Accordingly, we also do not sustain the rejections of claims 3, 7, 10,
14, 16, and 19.
CONCLUSION
We REVERSE the rejections of claims 1, 3-8, 10, 11, 14, 16, 17, 19,
and 20.
REVERSED
9 We consider the Examiner's position that a through channel is "mandated"
to be a finding based on inherency.
6