Ex Parte Miller et alDownload PDFPatent Trial and Appeal BoardOct 30, 201411691071 (P.T.A.B. Oct. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DOUGLAS E. MILLER, PHILIP SULLIVAN, RICHARD TIMOTHY COATES, FRANCOIS AUZERAIS, TAREK M. HABASHY, DOMINIQUE GUILLOT, and ROD SHAMPINE ____________ Appeal 2013-001416 Application 11/691,071 Technology Center 2800 ____________ Before CHUNG K. PAK, CHARLES F. WARREN, and PETER F. KRATZ, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 3, 4, 6, 21, 22, 31, 33–36, 51, 52, 61, and 62.1 We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants’ claimed invention is directed to a method and apparatus of estimating the value of a property of a liquid-filled wellbore system. Claims 1 and 31 are illustrative and reproduced below: 1. A method for estimating a value of a property of a liquid-filled 1 Cancelled claims 2, 5, and 32 were inadvertently included in the listing of the pending and appealed claims by Appellants (App. Br. 4). Appeal 2013-001416 Application 11/691,071 2 wellbore system, comprising the steps of: providing a receiver element for recording data including at least one of pressure and rate of flow at one or more locations in the liquid-filled wellbore system; interpreting said recorded data, wherein said recorded data includes at least one acoustic disturbance in the liquid-filled wellbore system, to predict at least one attribute of the recorded data wherein said predicted attribute is a least one of amplitude, frequency, attenuation, dispersion, differential travel time, absolute travel time, and time, and estimating the value of a property of the liquid filled wellbore system, where the property includes one of pressure, pH, temperature, background radiation, location, fluid viscosity, density, velocity, electrical resistance or conductivity, compressive strength, shear strength attenuation and acoustic transmitivity. 31. Apparatus operable to estimate a value of a property of a liquid- filled wellbore system, comprising: at least one sensor associated with a receiver element operable to record data including at least one of pressure and rate of flow at one or more locations in the liquid-filled wellbore system such that said recoded data is interpreted to predict at least one attribute of the recorded data wherein said predicted attribute is a least one of amplitude, frequency, attenuation, dispersion, differential travel time, absolute travel time, and time, and an analyzer operable to estimate the value of the property of the liquid filled wellbore system, where the property includes one of pressure, pH, temperature, background radiation, location, fluid viscosity, density, velocity, electrical resistance or conductivity, compressive strength, shear strength attenuation and acoustic transmitivity. The Examiner does not rely on a prior art reference as evidence in rejecting the appealed claims. The Examiner maintains the following grounds of rejection: Appeal 2013-001416 Application 11/691,071 3 Claims 1, 3, 4, 6, 21, 22, 31, 33–36, 51, 52, 61, and 62 stand rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the enablement requirement.2 We reverse the stated rejection. Our reasons follow. The Specification is presumed to be in “compliance with the enabling requirement of [35 U.S.C. § 112, first paragraph,] unless there is reason to doubt the objective truth of the statements contained therein.” In re Marzocchi, 439 F.2d 220, 223 (CCPA 1971). In this regard, it is well settled that the Examiner has the “burden of giving reasons, supported by the record as a whole, why the specification is not enabling . . . [and s]howing that the disclosure entails undue experimentation is part of the PTO’s initial burden . . .” In re Angstadt, 537 F.2d 498, 504 (CCPA 1976); see also In re Marzocchi, 439 F.2d at 223. In determining whether any given disclosure requires undue experimentation to practice the claimed subject matter, the Examiner must consider, inter alia, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of one of ordinary skill in the art, the quantity of experimentation necessary, and the predictability or unpredictability of the art. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Under circumstances where Appellants disclose evidence indicating that the claimed invention is not operable without a particular feature, the Examiner can meet the burden of presenting a prima facie case of non- enablement as to the claimed subject matter by establishing the existence of 2 This is the sole ground of rejection before us for review. Cancelled claims 2, 5, and 32 were inadvertently included in the statement of rejection by the Examiner. Appeal 2013-001416 Application 11/691,071 4 such an indication of inoperability having been made by Appellants where the rejected claims fail to require the necessary feature for operability as disclosed by Appellants. See In re Mayhew, 527 F.2d 1229, 1232 (CCPA 1976) (affirming examiner’s 35 U.S.C. § 112 [first paragraph] rejection of claims lacking a cooling zone for a steel strip at the exit end of a molten galvanizing (spelter) bath wherein the specification description indicated that the higher temperatures employed for the strip entering the bath in the inventive process would not be operable without such a cooling zone). After all, determining enablement is a question of law based on factual underpinnings. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). Here, the Examiner maintains a lack of enablement rejection based on the asserted lack of a description of a model argued to be “critical or essential to the practice of the invention, but not included in the claims” and the Examiner cites In re Mayhew, in support of such position (Final Act. 4). However, the Examiner has not established that Appellants point to or disclose a model, which model is unclaimed, but which model is described by Appellants as being necessary or critical for the operability of the claimed subject matter. While the subject Specification discloses that a model can be employed, the disclosure indicates that a model may be employed rather than requiring the use of a [particular] model as being critical or necessary for the operability of the claimed subject matter (Spec. ¶¶ 7, 26, 27, 35). Thus, as argued by Appellants, the Examiner’s reliance on In re Mayhew is misplaced (App. Br. 7; Reply Br. 2). To the extent that the Examiner is asserting that the disclosure is non- enabling for the claimed subject matter because the disclosure lacks sufficient detailed description of the specifics of a particular model, Appeal 2013-001416 Application 11/691,071 5 equations, algorithms, and/or a general (or specific) representation of the well-bore system that may be employed in the claimed process or apparatus, the Examiner fails to appropriately take into account and address factual considerations of, inter alia, the amount of direction or guidance presented, the nature of the invention, the state of the prior art, the relative skill of one of ordinary skill in the art, the quantity of experimentation necessary, and the predictability or unpredictability of the art (Ans. 3–6; Final Act. 4–5). As argued by Appellants, the Specification must be considered as a whole (Reply Br. 2; App. Br. 7–8). In this regard, the Examiner has not carried the burden and articulated how the relative skill of one of ordinary skill in the art, the state of the prior art, and the nature of the invention have been taken into account and are such that one of ordinary skill in the art would not have been enabled to practice the claimed method or engender the claimed apparatus without undue experimentation based on the guidance provided in Appellants’ Specification as a whole. On this record, we reverse the Examiner’s decision rejecting the appealed claims under the enablement requirement of 35 U.S.C. § 112, first paragraph. CONCLUSION The Examiner’s decision to reject the appealed claims is reversed. REVERSED cdc Copy with citationCopy as parenthetical citation