Ex Parte Loretz et al

Patent Trial and Appeal Board

Feb 27, 2013

11559554 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte IVES LORETZ, ALOK DWIVEDI and
PIERRE HOSATTE
____________________

Appeal 2010-009480
Application 11/559,554
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD and
BRADFORD E. KILE, Administrative Patent Judges.

KILE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ives Loretz et al. (Appellants1) appeal under 35 U.S.C. § 134(a) from
a final rejection of claims 1-6, 8-11, 13-16 and 19-23. Claims 7, 12, 17 and
18 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify the real party in interest as Schlumberger Technology
Corporation.
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Application 11/559,554

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THE CLAIMED INVENTION
The claimed invention is directed to a method for assembling a well
tool using selected arrangements of different types of functional modules.
Spec., para. [001]. Claims 1 and 11 are the independent claims on appeal.
Independent claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A method of assembling a well tool, comprising:

maintaining, at an assembly location, an inventory
of plural different types of functional modules prior to
receiving a purchase order;

receiving, from a customer at an order processing
system associated with the assembly location, the
purchase order for a well tool having a specified first
application; and

assembling, at the assembly location and in
response to the purchase order, the well tool by adding
one or more of the plural types of functional modules
from the inventory to a base configuration to form the
well tool.

THE REJECTIONS
1. Claims 1-6, 8-11, 13, 16 and 19-21 stand rejected as unpatentable
under 35 U.S.C. § 103(a) over Rytlewski (US 2005/0189115 A1, pub. Sep.
1, 2005) and Huber-Buschbeck (US 2007/0106411 A1, pub. May 10, 2007).
2. Claims 14 and 15 stand rejected as unpatentable under 35 U.S.C. §
103(a) over Rytlewski, Huber-Buschbeck and Nuth (US 2002/0170711 A1,
pub. Nov. 21, 2002).
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3. Claims 22 and 23 stand rejected under 35 U.S.C. § 112, first
paragraph.

OPINION
A. Claims 1-6, 8-11, 13, 16, and 19-21.
1. Claims 1-5, and 92
The Examiner found that Rytlewski discloses a method of assembling
a well tool, comprising intervention equipment 150, that may be assembled
and tested before being introduced into a well bore located on the sea floor.
Ans. 4. The Examiner further found the Rytlewski intervention tool modules
can include valves (controlled electrically or hydraulically) or sensors and
monitors that can be selectively included depending on the needs present at a
well. Ans. 4; Rytlewski, para. [0066]. The Examiner concluded that
Rytlewski discloses all of the limitations of claim 1 “with the exception of
receiving a customer order with a system associated with an assembly
location.” Ans. 5. With respect to the concept of a purchase order, the
Examiner found that Huber-Buschbeck discloses a system associated with an
inventory location where a purchase order is received and then an ordered
item is delivered.
The Examiner concluded that
[i]t would have been obvious to a person having ordinary skill
in the art at the time of the invention to receive a customer

2 Appellants argue claims 1-5 and 9 as a group. App. Br. 5-8. We select
independent claim 1 as a representative claim. See 37 C.F.R. §
41.37(c)(1)(vii)(2011). Appellants assert that “[t]he claims do not stand or
fall together. Instead, Appellant presents separate arguments for various
independent and dependent claims.” App. Br. 4. Where claims have been
argued separately those claims will be addressed seriatim.
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order on the vessel of Rytlewski in view of Huber-Buschbeck
so that the vessel can assemble tool assemblies enroute to a well
location after a customer order is made.
Ans. 5.
Appellants respond by noting that Rytlewski fails to disclose
receiving a purchase order at an order processing system associated with an
assembly location. App. Br. 6. With respect to order processing, Appellants
note that Huber-Buschbeck discloses “receiving a customer order,”
“checking availability of ordered products,” and “delivering the ordered
products,” however, Appellants assert that Huber-Buschbeck does not
disclose receiving a purchase order for a well tool having a specified first
application, and assembling, at the assembly location and in response to the
purchase order, the well tool by adding one or more of the plural types of
functional modules from inventory to a base configuration to form a well
tool. Id.
We are not persuaded by Appellants’ arguments. We agree with the
Examiner that Rytlewski discloses assembling well tools by assembling
modules to a base configuration. “[T]he intervention tool 150 includes
sensors or monitors used for collecting measurements regarding various well
attributes (e.g., temperature, pressure, etc.).” Rytlewski, para. [0066].
Appellants argument amounts to an attack on an individual reference when
the rejection is predicated upon a combination of prior art disclosures, and is
therefore unavailing. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). We affirm the Examiner’s rejection of claims 1-5 and 9.
2. Claims 6, 8, and 21
The claims in this group have been argued with respect to claim 6.
App. Br. 9-10. Claim 6 depends from claim 1 and adds the provision of a
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second purchase order for a second well tool having a specified second
application and assembling the second well tool by adding together a
different combination of functional modules. Claim 6; App. Br. 9.
The Examiner found that all of the limitations of claim 6 are disclosed
in the combination of Rytlewski and Huber-Buschbeck except for “explicitly
disclosing assembling a second tool to be used at a second or third location
with a different combination of functional modules.” Ans. 5. The Examiner
concluded, however, that duplication of essential steps at a second location
would have been obvious to a person of ordinary skill in the art, since “mere
duplication of essential steps of a method involves only routine skill in the
art.” Id. at 5-6.
Appellants respond by asserting that this constitutes application of a
per se rule that is legally incorrect. App. Br. 9. The Examiner replies that
repetition of process steps would be obvious to one of skill in the art. Ans.
5-6. Appellants do not assert that the claimed subject matter produced a new
or unexpected result or otherwise would not have been obvious, and for that
reason we agree with the Examiner. See, e.g., In re Vogel, 427 F.2d 790,
793 (CCPA 1970); In re Citron, 326 F.2d 418, 420 (CCPA 1964); In re
Harza, 274 F.2d 669, 671 (CCPA 1960). We affirm the Examiner’s
rejection of claims 6, 8, and 21.
3. Claim 10
Claim 10, depends from claim 1, and recites,
wherein receiving the purchase order and assembling the well
tool are performed using a build-to-order approach in which
purchase orders for different well tools are fulfilled by
providing the base configuration and adding the plural types of
functional modules as options to the base configuration to
provide the different well tools.
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Appellants contend that Huber-Buschbeck contains no hint of multiple
purchase orders for different well tools that are fulfilled by providing the
base configuration and adding the plural types of functional modules as
options to the base configuration as called for in claim 10. App. Br. 10.
The Examiner responds that “any method used to receive the order for
assembling the intervention assembly . . . is essentially a system for
processing that order” and that “[a]s the assembly is built for each specific
well operation, the described apparatus is built to order.” Ans. 5. The
Rytlewski patent discloses at [0066] that a variety of intervention tool
configurations and functions are contemplated. One of ordinary skill in the
art would appreciate that performing customer functions with various
intervention tools will necessarily involve processing customer orders.
Appellants have failed to convince us that Examiner’s reasoned rejection of
claim 10 is in error.
4. Claims 11, 13, 16, 19 and 20
Claim 11 is an independent claim, however, Appellants merely assert
that claim 11, and this group of claims, are allowable for the reasons
expressed with respect to claims 1 and 10. Our analysis and conclusions
with respect to claims 1 and 10 are repeated by reference. We affirm the
Examiner’s rejection of claims 11, 13, 16, 19 and 20 for the reasons stated
above.

B. Claims 14 and 15
Claims 14 and 15 directly or ultimately depend from claim
independent claim 11. Appellants merely refer to claim 11 and assert that
claims 14 and 15 are allowable because in Appellants’ view the rejection of
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claim 11 has been overcome. As we held above, the Examiner’s rejection of
claim 11 has not been overcome and claims 14 and 15 fall along with our
decision with respect to claim 11.

C. Claims 22 and 23
Claims 22 and 23 stand rejected under the provisions of 35 U.S.C.
§ 112, first paragraph. The Examiner found that claims 22 and 23 fail to
comply with the written description requirement of section 112.
Claim 22 reads as follows:
22. The method of claim 1, wherein receiving the
purchase order comprises receiving the purchase order
that does not identify the plural types of functional
modules.
The Examiner found that the Specification does not contain a written
description of the claimed subject matter in such a way as to reasonably
convey that Appellants had possession of the claimed invention at the time
of filing the application. The Examiner noted that “[t]he specification
describes receiving application specific orders but does not describe
receiving a purchase order that does not identify the plural types of
functional modules.” Ans. 3.
Appellants respond by explaining that “[d]ifferent orders from
different customers can specify different applications.” App. Br. 4-5; Spec.
[0025]. “The Specification thus implicitly teaches that the order does not
identify the plural types of functional modules . . . .” Id. at 5.
Claim 22 contains the negative limitation that the purchase order not
identify the plural types of functional modules. The portion of the
Specification cited by Appellants states that, “[d]ifferent orders from
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different customers can specify different applications that correspond to well
tools according to different configurations.” Spec. [0025]. This disclosure
does not describe a reason to exclude the relevant limitation. See e.g.,
Santarus v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)
(“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”). For
that reason, we find Appellants’ argument unpersuasive.

DECISION
The decision of the Examiner to reject claims 1-6, 8-11, 13-16 and 19-
23 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.
§ 1.136(a)(1)(iv)(2011).
AFFIRMED

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