Ex Parte Maissant et al

Patent Trial and Appeal Board

Nov 22, 2016

12189147 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/189,147 08/09/2008
28116 7590 11/25/2016
WestemGeco L.L.C.
10001 Richmond Avenue
IP Administration Center of Excellence
Houston, TX 77042
FIRST NAMED INVENTOR
Francis Maissant
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.
14.0338-US-NP 6414
EXAMINER
LOBO,IANJ
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
USDocketing@slb.com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS MAISSANT, DANIEL RONNOW, and
SIMON BARAKAT
Appeal2015-001477
Application 12/189, 14 7
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Francis Maissant et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 17, 20, 21, 23, and 25
under 35 U.S.C. § 103(a) as unpatentable over Scott (US 2007 /0179713 Al,
pub. Aug. 2, 2007), Ray (US 7,561,493 B2, iss. July 14, 2009), and Park, Jr.
(US 4,375,679, iss. Mar. 1, 1983) (hereafter "Park"); and rejecting claims 2-
5, 14, 15, and 26 under 35 U.S.C. § 103(a) as unpatentable over Scott, Ray,
Park, and one of Bednar (US 5,121,362, iss. June 9, 1992) and Grice (US
4,656,615, iss. Apr. 7, 1987). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2015-001477
Application 12/189, 14 7
THE CLAIMED SUBJECT MATTER
Claim 17, reproduced below, is illustrative of the claimed subject
matter.
17. A self-contained seismic sensing module having a single
housing that contains:
a seismic sensing element;
a processor; and
an interface coupled to the processor and to be coupled to
an external network,
wherein the processor is configured to:
generate an electrical test signal applied to the
seismic sensing element,
receive a response, to the electrical test signal, from
the seismic sensing element, and
determine a characteristic of the seismic sensing
module according to the response, wherein the determined
characteristic comprises a polarity of wired connections to the
seismic sensing element.
DISCUSSION
Rejection I- Obviousness based on Scott, Ray, and Park
Claims 1, 17, 20, 23, and 25
Appellants rely on the same arguments presented for patentability of
independent claim 17 in contesting the rejection of independent claims 1 and
25. See Appeal Br. 5-11. Appellants do not assert any separate arguments
for patentability of dependent claims 20 and 23. See id. We select claim 1 7
as representative, with claims 1, 20, 23, and 25 standing or falling with claim
17. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Scott discloses a seismic sensing module,
substantially as claimed, including "a seismic sensing element (G) and a
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Application 12/189, 14 7
processor (20) that generates an electrical test signal ... applied to the
seismic sensing element ... and receives a step response, to the input step
voltage, from the seismic sensing element." Final Act. 2 (citing Scott, para.
25; Fig. 2). The Examiner also finds that Scott discloses that "[t]he response
of a reference sensor to the test signal is determined and the responses of the
reference sensor and sensing element (G) are compared." Id. The Examiner
acknowledges that Scott does not disclose that the processor is configured to
determine a polarity of wired connections to the seismic sensing module, or
that the processor is contained in a single housing with the seismic sensing
element. See id. at 2-3. However, the Examiner finds that Park discloses
"that comparing the response of a sensor being tested (i.e, geophone G of
Scott ... ) to a reference sensor is done for sensor polarity determinations to
be ascertained." Id. at 3 (citing Park, col. 2, 11. 5-8). The Examiner
determines that "it would be obvious to one of ordinary skill in the art that
the processor of Scott ... would be used to determine seismic sensing
element polarity from the comparison of the responses of a test signal
applied to a reference sensor and the seismic sensing element." Id. The
Examiner also finds that Ray discloses "the advantages of placing the
seismic sensing element and processor within a single, self-contained
housing," and determines "that it would have been obvious to one of
ordinary skill in the art to have modified Scott to configure the seismic
sensing element (G) and a processor (20) within a single, self-contained
housing." Id. (citing Ray, col. 3, 1. 45 to col. 4, 1. 10).
Appellants argue that "test equipment 13 of Park cannot be the
processor in the single housing of the seismic sensing module," because "the
test equipment 13 in Fig. 1 A of Park is outside of the chamber 1." Appeal
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Application 12/189, 14 7
Br. 8; see id. at 7 (citing Park, col. 2, 11. 35-36). Appellants also argue that
"[t]he pressure produced by the loudspeaker 2 in Park cannot be the
electrical test signal generated by the processor contained in the single
housing of the seismic sensing module." Id. at 7-8. We are not persuaded
by these arguments against Park because they are not responsive to the
rejection as articulated by the Examiner. As discussed supra, the Exarniner
does not rely on Park for teaching a processor configured to generate an
electrical test signal, but instead relies on Scott for teaching this feature. See
Final Act 2. Likewise, the Examiner does not rely on Park for teaching a
single housing that contains a seismic sensing element and a processor, but
instead relies on Ray for teaching this feature. 5'ee id. at 3. Nonobviousness
cannot be established by attacking references individually when the rejection
is predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants argue that Ray discloses the "use of one geophone that
functions as an energy source and the other geophone that functions as an
energy receiver," and thus "fails to provide any teaching or hint of a single
housing that contains a seismic sensing element and a processor, where the
processor is configured according to claim 17." Appeal Br. 9 (citing Ray,
col. 7, 11. 24--26). This argument is not convincing because Ray discloses a
seismic recording unit that "is self-contained such that all of the electronics
are disposed within or on the case." Ray, col. 4, 11. 4--5. Specifically, Ray
discloses self-contained pod 10 that includes case 12 and internal
compartment 16 containing at least one geophone 18, clock 20, power
source 22, control mechanism 23, and seismic data recorder 24. See id., col.
6, 11. 13-20. Appellants do not specifically address the Examiner's
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Application 12/189, 14 7
determination that, based on the teachings of Ray, it would have been
obvious to modify Scott's system such that the processor and seismic
sensing element are contained in a single housing. See Final Act. 3.
Furthermore, we are not persuaded by Appellants' argument that Ray fails to
disclose a processor configured according to claim 17 because the Examiner
does not rely on Ray for teaching this feature. Instead, the Examiner relies
on the teachings of Scott and Park, and determines that the combination of
teachings renders obvious a processor configured as claimed. See id. at 2-3;
see also Merck, 800 F .2d at 1097.
Appellants argue that one of ordinary skill in the art would have had
no reason to combine the cited references as proposed by the Examiner. See
Appeal Br. 9-10. In particular, Appellants assert that Park and Ray test
seismic sensors "by producing either pressure (from a loudspeaker in Park)
or vibration (from a geophone in Ray)." Id. at 9. According to Appellants,
"[a] person of ordinary skill in the art would clearly not have found any
reason to incorporate the loudspeaker 2 of Park or the energy source
geophone of Ray into the arrangement shown in Fig. 2 of Scott, as doing so
would render Scott inoperative for its intended purpose." Id. at 9-10; see id.
at 10 (Appellants asserting that Scott's "arrangement is incompatible with
the use of a loudspeaker or energy source geophone").
Appellants' argument is not convincing because it is not directed to
the modification proposed by the Examiner in the rejection. The Examiner
does not propose incorporating Park's loudspeaker 2 or Ray's geophone 18
into the system of Scott. As discussed supra, the Examiner's rejection relies
on Park as providing evidence that it was known in the seismic sensing art at
the time of the invention to compare the response of a tested sensor to the
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Application 12/189, 14 7
response of a reference sensor in order to make polarity determinations, and
relies on Ray for teaching advantages of containing a seismic sensing unit
and a processor in a single housing. See Final Act. 3. Appellants do not
specifically address the Examiner's reasoning articulated in support of the
proposed modifications of Scott based on the specific teachings of Ray and
Park. See id. Moreover, Appellants' argument appears to rely on bodily
incorporation of specific structural details of the overall inventions disclosed
by Park and Ray (i.e., loudspeaker and geophone) into Scott, which is not
the standard for an obviousness rejection. See In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Appellants present new arguments in the Reply Brief: namely, ( 1)
"that the Examiner is ignoring specific teachings of the cited references that
would have indicated that a person of ordinary skill in the art would not have
been prompted to combine the cited references," and (2) that "the Examiner
has used impermissible hindsight to piece together disparate elements of the
cited references to perform a piecemeal combination in making the
obviousness rejection." Reply Br. 3. These arguments are untimely, and
Appellants do not present any evidence or explanation to show good cause
why these argmnents should be considered by the Board at this time.
See 37 C.F.R. § 41.41(b)(2).
For the above reasons, Appellants' arguments do not apprise us of
error in the Examiner's determination that the subject matter of claim 17
would have been obvious. Accordingly, we sustain the rejection of claim
17, and of claims 1, 20, 23, and 25 falling therewith, under 35 U.S.C.
§ 103(a) as unpatentable over Scott, Ray, and Park.
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Claim 21
Claim 21, which depends from claim 1 7, recites, "a temperature
sensor in the housing." Appeal Br., Claims App. Appellants argue that "the
Examiner cited generally to Ray, without pointing to any specific passage of
Ray." Appeal Br. 10; see Final Act 3 (the Examiner stating, "[p]er claim 21,
see Ray"). Appellants assert that they have "thoroughly reviewed Ray, and
can find no teaching or hint whatsoever that the pod shown in Ray includes a
temperature sensor." Appeal Br. 10. In this regard, we agree that "there is
no mention whatsoever of a temperature sensor in Ray, much less a
temperature sensor that is in the same housing as a seismic sensing element
and a processor." Id. Notably, the Examiner does not respond to this
argument in the Answer. See Ans. 3-5. Thus, the Examiner fails to
establish by a preponderance of the evidence that Ray discloses "a
temperature sensor in the housing," as called for in claim 21. Moreover, the
Examiner does not articulate any additional findings or reasoning, or rely on
any teaching of the remaining references, that would remedy the
aforementioned deficiency in the Examiner's findings with respect to Ray.
Accordingly, we do not sustain the rejection of claim 21 under 35 U.S.C.
§ 103(a) as unpatentable over Scott, Ray, and Park.
Rejection II- Obviousness based on Scott, Ray, Park, and one of Bednar
and Grice
In contesting the rejection of dependent claims 2-5, 14, 15, and 26,
Appellants rely on the arguments presented for patentability of claims 1, 1 7,
20, 23, and 25. Appeal Br. 12. For the reasons discussed supra, Appellants'
arguments fail to apprise us of error in the rejection of claims 1, 17, 20, 23,
and 25 as unpatentable over Scott, Ray, and Park. Accordingly, we likewise
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Application 12/189, 14 7
sustain the rejection of claims 2-5, 14, 15, and 26 as unpatentable over
Scott, Ray, Park, and one of Bednar and Grice.
DECISION
The Examiner's decision rejecting claims 1-5, 14, 15, 17, 20, 23, 25,
and 26 is affirmed.
The Examiner's decision rejecting claim 21 is reversed.
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)(l )(iv).
AFFIRMED-IN-PART
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