Ex Parte McGlothen et al

Patent Trial and Appeal Board

Dec 19, 2012

11458173 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JODY R. MCGLOTHEN and JEFFERY R. ACKER
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Appeal 2010-010678
Application 11/458,173
Technology Center 3600
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Before: WILLIAM V. SAINDON, LYNNE H. BROWNE, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/458,173

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A window cutting system, comprising:
a cutting assembly including multiple cutting faces for
cutting the window; and
a diverter for guiding displacement of the cutting
assembly relative to the window, the diverter including multiple
separate guide paths for the respective multiple cutting faces, at
least one guide path being laterally offset from another guide
path at a same longitudinal position along the diverter.

References
The Examiner relies upon the following prior art references:
Brunet US 6,186,233 B1 Feb. 13, 2001
Neff GB 2 420 359 A May 24, 2006

Rejections
Appellants seek review of the following rejections (App. Br. 1, 9)1:
Claims 15-17 and 19, rejected under 35 U.S.C. §112, second
paragraph; and

1 The rejection of claim 2 under 35 U.S.C. §112, first paragraph, has been
withdrawn by the Examiner. Ans. 3.
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Claims 1-20, rejected under 35 U.S.C. §103(a) as being unpatentable
over Brunet in view of Neff.

ANALYSIS
Claims 15-17 and 19 Rejected Under 35 U.S.C. §112
Independent claim 14, reproduced below, is a method claim.
14. A method of cutting a window through a tubular string
in a subterranean well, the method comprising the steps of:
positioning a diverter in the tubular string, the diverter
including multiple separate guide paths in at least one lateral
cross-sectional plane through the diverter for respective
multiple cutting faces of a cutting assembly, each of the guide
paths providing a separate wear surface for the respective
cutting face; and
cutting the window.
In relevant part, claim 14 calls for two steps – “positioning a diverter”
and “cutting the window.”
Claim 15, dependent on claim 14, is reproduced below.
15. The method of claim 14, further comprising the step of
contacting the guide paths with the cutting faces to thereby form the
window, after the positioning step.
Claim 15 calls for an additional step (“further comprising the step
…”). The additional step is “contacting the guide paths with the cutting
faces to thereby form the window, after the positioning step.” (emphasis
added).
Relevant to the issue raised by Appellants, the Examiner found that
claim 14 positively recites the step of “cutting the window.” Ans. 3.
Appellants do not dispute this conclusion regarding claim 14. App. Br. 19;
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Application 11/458,173

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Reply Br. 16. 2 The Examiner also found that it is “unclear whether the
‘forming’ of the window recited in claim 15 is the same as the ‘cutting’ of
the window from claim 14.” Ans. 3. The Examiner found that the phrase
“to thereby form” in claim 15 implies that contacting the guide paths by the
cutting faces actually forms the window, resulting in claim 15 reciting a step
of forming the window, which is in addition to the step of “cutting the
window” in claim 14. Ans. 7. The Examiner concluded, therefore, that
claim 15 “is confusing and indefinite” and thus fails to satisfy the
requirements of 35 U.S.C. §112, second paragraph. Id.
Appellants argue that claim 15 does not recite any step of “forming”
the window; and that the “contacting step” of claim 15 need not be, and is
not necessarily, part of “the window cutting step of claim 14.” Reply Br. 16.
They also argue that the “qualifier, ‘to thereby form the window’ is a
statement of the reason for contacting the guide paths with the cutting
faces,” and that the “contacting step” is “so that the window will be formed.”
Reply Br. 17-18.
The Patent and Trademark Office determines the scope of claims in
patent applications giving claims their broadest reasonable construction “in
light of the specification as it would be interpreted by one of ordinary skill in
the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,1364 (Fed. Cir.
2004). An essential purpose of the examination process is to determine
whether or not the claims are precise, clear, correct, and unambiguous. Only
in this way can uncertainties of claim scope be removed, as much as

2 The Appeal Brief and the Reply Brief are nearly identical. The Reply Brief
repeats the same arguments Appellants made in the Appeal Brief, with very
minor deviation. Citation will be made to the Reply Brief unless citation to
the Appeal Brief is necessary.
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possible, during the administrative process. In re Zletz, 893 F.2d 319, 322
(Fed. Cir. 1989). During examination, after applying the broadest
reasonable interpretation to the claim, if the metes and bounds of the claimed
invention are not clear, the claim is indefinite and should be rejected. Id.
Contrary to Appellants’ arguments that the “contacting step” is “so
that the window will be formed” (Reply Br. 18, emphasis added), claim 15
does not state a future intended step. As found by the Examiner, claim 15
states that the additional step added in claim 15 is for the purpose of
“thereby” forming the window. Ans. 7. The Specification uses the phrase
“to thereby form” to mean the result of cutting through the casing (e.g.,
Spec. 1, l. 23 – 2, l. 1 – “lateral deflection causes the mills to cut through the
casing string to thereby form a window in the casing sidewall” (emphasis
added)). Thus, in light of the Specification, “cutting the window” in claim
14 and contacting the guide paths “to thereby form” the window in claim 15
both result in a window being formed and thus are redundant.
Appellants’ argument concerning the meaning of the preposition “to”
is not persuasive of error. Reply Br. 18-19. The focus on the word “to” is
misplaced and fails to consider the entire infinitive phrase3 at issue, which is
“to thereby form the window,” in the context of the entire claim. Claim
terms are not interpreted in a vacuum, devoid of the context of the claim as a
whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369,
1374 (Fed. Cir. 1999) (“proper claim construction ... demands interpretation
of the entire claim in context, not a single element in isolation.”).

3 More precisely, this is a split infinitive phrase, where the adverb “thereby”
is placed between the two parts of the infinitive verb “to form”, thus splitting
the word “to” from the word “form”.
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Appellants ignore the word “thereby.” The word “thereby” is an
adverb that means “by that means; because of that.”4 Thus, claim 15 states
that because of contacting the guide paths after the diverter has been
positioned the cutting faces form the window. However, the claim already
includes a step of cutting a window.
Appellants also admit that the “step recited in claim 15 (contacting the
guide paths with the cutting faces) can occur while cutting the window, it
can also occur while the window is not actually being cut.” Reply Br. 18
(emphasis added). This admission confirms that it is unclear whether the
“forming” of the window recited in claim 15 is the same as the “cutting” of
the window from claim 14, as found by the Examiner.
In reviewing a claim for compliance with 35 U.S.C. § 112, second
paragraph, the examiner must consider the claim as a whole to determine
whether the claim apprises one of ordinary skill in the art of its scope and,
therefore, serves the notice function required by 35 U.S.C. § 112, second
paragraph, by providing clear warning to others as to what constitutes
infringement of the patent. MPEP 2173.02 (II); see also, e.g., Solomon v.
Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000). Here, as
found by the Examiner, claim 15 is “confusing and indefinite” (Ans. 7) and
thus does not provide the clarity, particularity, and precision required by
Section 112, second paragraph.
Appellants have not pointed to any evidence or stated any persuasive
reasoning to apprise us that the Examiner erred in his findings and
conclusions regarding the rejection of claims 15-17 and 19 under §112,

4 THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th
ed. 2000).
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second paragraph. Accordingly, we affirm the rejection of claim 15 and
claims 16, 17, and 19 dependent on claim 15.
Claims 1-20 Rejected Under 35 U.S.C. § 103(a)
Claims 1-6, 8-12, 14-18 and 20
Claim 1 calls for a cutting assembly including multiple cutting faces
for cutting the window. Claim 1 also calls for a diverter for guiding the
cutting assembly relative to the window, with the diverter including multiple
separate guide paths for the respective multiple cutting faces. Also, as called
for in claim 1, at least one of the guide paths is laterally offset from another
guide path at a same longitudinal position along the diverter.
With regard to claim 1, the Examiner found Brunet discloses a
window cutting system, comprising multiple cutting faces (16, 35) for
cutting the window; and a diverter for guiding displacement of the cutting
assembly relative to the window. Ans. 4. The Examiner also found that the
diverter included multiple separate guide paths for the respective multiple
cutting faces. Id. However, the Examiner noted that since Brunet discloses
that the cutting faces are provided on separate drill strings, it therefore fails
to disclose the multiple cutting faces being supported on a single cutting
assembly. Id.
The Examiner found that Neff discloses a window cutting system
having a cutting assembly with multiple cutting faces (8, 9) supported on a
single drill string. Ans. 4. The Examiner concluded that it would have been
obvious to a person of ordinary skill in the art, at the time the invention was
made, to have modified Brunet's window cutting system to have both cutting
faces on a single assembly as shown by Neff. Ans. 4.
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The rationale for the modification proposed by the Examiner based on
the applied references was that the modified structure would increase the
rate of penetration, “thereby leading to faster sidetracking” by eliminating
the need to run multiple drill strings. Ans. 4.
Appellants admit that Brunet describes a cutting assembly with
multiple guide surfaces 18, 33. Reply Br. 20. Appellants also admit that
Brunet describes that a second bit 21 could be combined with the first drill
bit 16. Reply Br. 21.5 Appellants argue, however, that Brunet’s guide
surfaces 18, 33 do not together guide any cutting assembly that includes
multiple cutting faces. Reply Br. 20. According to Appellants, Brunet
discloses that a first drill bit16 is used to cut a window 20 and then, in a
separate milling operation, a second drill bit 35 is used to cut a keyway 51.
Id. Appellants argue that the first drill bit 16 is guided by the first guide
surface 18 and, in a separate operation, the second drill bit 35 is guided by
the second guide surface 33. Id. According to Appellants, Brunet does not
suggest that the first and second drill bits are included in an overall cutting
assembly. Reply Br. 21.
Appellants argue that, if Brunet’s window cutting system were to be
modified so that both of the drill bits 16, 35 were incorporated into a single
cutting assembly (as proposed in the Office Action), Brunet’s window
cutting system would not function as intended and the window 20 and
keyways 50, 51 would not be properly formed. Furthermore, Appellants
argue that Brunet teaches away from conveying the second drill bit 35 with
the first drill bit 16. Reply Br. 26.

5 We also note that Appellants state in their patent application that a window
milling system having a lead mill and a follow mill on a single drill string
was known in the prior art. Spec. 6, ll. 3-9; see also fig. 1.
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We agree with Appellants. The Examiner reasoned that one of
ordinary skill could have combined the two milling bits (16, 35) of Brunet
onto a single string as advised by Neff-with the smaller bit 35 ahead of
larger bit 16-simply to achieve faster formation of the initial window 20,
before the keyway was formed. Ans. 8. However, the claimed invention is
more than two milling bits on a single drill string. Such an arrangement is
admitted as prior art (see fig. 1 of the application showing lead mill 20 and
follow mill 22 on a single drill string). The combination of Brunet and Neff
proposed by the Examiner would result in a structure which seemingly
renders Brunet unsatisfactory for its intended purpose, and thus there
appears to be no rational underpinning for making the proposed modification
in the manner suggested by the Examiner. In re Gordon, 733 F.2d 900 (Fed.
Cir. 1984). In effect, the Examiner’s proposed combination would frustrate
the operation of Brunet. One purpose of Brunet is providing an assembly for
down hole milling of at least one longitudinal window and at least one
orientation key-way in communication with the longitudinal window. Col.
8, ll. 25-28. The second drill bit 35 in Brunet, to which the Examiner cited,
is for the specific purpose of drilling the down hole key-way 51. Col. 12, ll.
16-20. Putting the multiple cutting faces (16, 35) of Brunet on a single
assembly would result in the single assembly being guided by one of the
multiple guide surfaces (18, 33), but not both. Thus, either the window or
the key-way would be cut, but not both. Cutting both a window and a key-
way is the fundamental objective of Brunet, and this objective would appear
to be frustrated by the combination proposed by the Examiner.
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The Examiner’s rejection of claims 1-6, 8-12, 14-18, and 20 are all
premised on this deficiency. Accordingly, we reverse the rejection of claims
1-6, 8-12, 14-18 and 20 under 35 U.S.C. § 103(a).
Claims 7, 13 and 19 Rejected Under 35 U.S.C. § 103(a)
Claim 7 calls for the cutting face to oscillate as it traverses the guide
path.
Appellants argue that a prima facie case of obviousness has not been
made out for these claims because Neff does not describe that a guide path
causes a cutting face to oscillate. Reply Br. 28.
Because the rejections of the claims on which claims 7, 13, and 19
depend have been reversed, we similarly reverse the rejections of claims 7,
13, and 19 because the Examiner’s rejection of these claims does not cure
the deficiency identified above.

DECISION
The rejection of claims 15-17 and 19 under 35 U.S.C. §112, second
paragraph, is affirmed.
The rejection of claims 1-20 under 35 U.S.C. §103(a) is reversed.

AFFIRMED-IN PART

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