Ex Parte Mogilatov

Patent Trial and Appeal Board

Dec 17, 2015

12577424 (P.T.A.B. Dec. 17, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/577,424 10/12/2009 Vladimir S. Mogilatov
44639 7590 12/21/2015
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
20 Church Street
22nd Floor
Hartford, CT 06103
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.
RES4-43521-US
(BAT0093US)
4244
EXAMINER
PARK,HYUND
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
12/21/2015 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR S. MOGILATOV
Appeal2013-010999
Application 12/577 ,424
Technology Center 2800
Before HUNG H. BUI, NABEEL U. KHAN, and AMBER L. HAGY,
Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6-9, and 11-19, which constitute all the
claims pending in this application. Claim 5 was previously canceled. Claim
10 was conditionally allowed if rewritten in independent form. App. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellant, the real party in interest is Baker Hughes
Incorporated. App. Br. 1.
Appeal2013-010999
Application 12/577 ,424
THE INVENTION
Appellant's invention relates to performing transient electromagnetic
sounding in a borehole to determine a property of an earth formation. Spec.
i-f 1. The Specification explains that the exploration and production of
hydrocarbons requires knowledge of subsurface earth formations that may
contain reservoirs of the hydrocarbons. Spec. i-f 2. Transient
electromagnetic (TEM) sounding at the surface of the earth has been one
way of gathering this knowledge. Spec. i-f 2. According to the Specification,
traditional TEM sounding at the earth's surface may not be able to reach
reservoirs of hydrocarbon located deep inside the earth, and may not be able
to discriminate between different distances into the formation. Spec. i-f 4.
Appellant's invention seeks to address these drawbacks by employing
techniques designed to measure a property of an earth formation deep inside
the earth using TEM that can discriminate between different distances into
the earth formation. Spec. i-f 5. These techniques call for emitting an
electromagnetic pulse with a certain shape that is optimized to induce
current in a zone of investigation and to minimize induced current in other
zones. Spec. i-f 20.
Independent claim 1 is illustrative and is reproduced below:
1. A method for estimating a property of an earth formation
in a zone of investigation, the earth formation comprising the
zone of investigation and another zone, the method comprising:
applying a compound pulse of electromagnetic energy to
the earth formation using a transmitter disposed in a borehole
penetrating the earth formation, the compound pulse
comprising a shape to induce a predominately greater amount
of current in the zone of investigation than in the another zone,
wherein the compound pulse comprises a first pulse and a
second pulse, the first pulse comprising an amplitude whose
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Application 12/577 ,424
absolute value is different from an absolute value of the
amplitude of the second pulse and a duration of the first pulse
being greater than a duration of the second pulse when a
polarity of the first pulse is different from a polarity of the
second pulse;
receiving a response of electromagnetic energy from the
current induced by the compound pulse; and
estimating the property from the response of
electromagnetic energy.
REFERENCES and REJECTIONS
1. Claims 1--4, 6-9, and 12-19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Payton (US 5,955,884; Sept. 21, 1999) and
Rocroi (US 4,417,210; Nov. 22, 1983).
2. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Payton, Rocroi, Ekstrom (US 5,675,147; Oct. 7, 1997),
and Tabanou (US 2005/0083061; Apr. 21, 2005).
ANALYSIS
I. Claim 1
Appellant argues the Examiner errs in finding the combination of
Payton and Rocroi teaches or suggests the following limitation of claim 1:
the compound pulse comprising a shape to induce a
predominantly greater amount of current in the zone of
investigation than in the another zone comprises a first pulse
and a second pulse, the first pulse comprising an amplitude
whose absolute value is different from an absolute value of the
amplitude of the second pulse and a duration of the first pulse
being greater than a duration of the second pulse when a
polarity of the first pulse is different from a polarity of the
second pulse.
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Application 12/577 ,424
See App. Br. 5.
Specifically, Appellant argues:
Payton does not discuss and is not directed to focusing the
electrical energy to a zone of investigation to "to [sic] induce a
predominately greater amount of current in the zone of
investigation than in the another zone," as recited by Claim 1.
In fact, the transmission is in three orthogonal directions in
Payton.
App. Br. 6.
Regarding Rocroi, Appellant argues that because Rocroi teaches
compound pulses that have a linear average of zero, "the compound pulse
cannot also have 'a shape to induce a predominantly greater amount of
current in the zone of investigation than in the another zone."' App. Br. 8.
Appellant reasons that:
if the first pulse has a positive polarity, the negative polarity
pulse (second pulse) would be required by Rocroi to have a
greater amplitude (in order to provide a linear average of zero).
The negative polarity pulse (of greater amplitude) is likely to
adversely affect the current induced in the zone of investigation
as well as in another zone. And, if the first pulse has a negative
polarity, the positive polarity pulse (second pulse) would be
required by Claim 1 to have a smaller duration. A negative
polarity pulse that precedes the positive polarity pulse would
not eliminate the currents induced (by the positive polarity
pulse) in the another zone (outside the zone of investigation).
Id. Further, in response to the Examiner's findings that Figure 13 of Rocroi
teaches a compound pulse as recited in claim 1, Appellant argues the labels
"first" and "second" convey an order and that Examiner's assignment of the
first and second to the pulses of Figure 13 is not consistent with this order.
Reply Br. 2.
We are unpersuaded by Appellant's arguments regarding Payton
because they are not commensurate with the scope of the claim. The claim
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Application 12/577 ,424
does not preclude a transm1ss10n of the compound pulse in three orthogonal
directions, so long as the pulse has a shape that induces a predominantly
greater amount of current in the zone of investigation. The Examiner finds
"Payton specifically teaches applying electromagnetic energy to the
formation at selected frequencies and waveforms that will maximize the
radial depth of penetration of the magnetic and electric energy into the
target formation (Col. 3, lines 40-46)." Ans. 7. The Examiner's findings
are supported by evidence and we therefore agree that the pulse taught in
Payton induces a "predominantly greater amount of current in the zone of
investigation than in the another zone," as recited in claim 1.
Likewise, Appellant's arguments regarding Rocroi are also not
commensurate with the scope of claim 1. The claim does not preclude a
compound pulse where the amplitude of the negative polarity pulse is greater
than that of the positive polarity pulse. Similarly, the claim does not
preclude a negative polarity pulse from preceding a positive polarity pulse.
Appellant's argument that the recitation of "first" and "second" in claim 1
conveys an order is unpersuasive in light of dependent claim 4, which
requires the first pulse to be applied before the second pulse. See Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004) ("[T]he
presence of a dependent claim that adds a particular limitation raises a
presumption that the limitation in question is not found in the independent
claim.") The Examiner finds, and we agree, Figure 13 of Rocroi teaches a
compound pulse that comprises a first pulse (134) and a second pulse (133)
where the absolute value of the amplitude of the first pulse is different than
that of the second pulse and the duration of the first pulse is greater than that
of the second pulse. Ans. 5.
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Application 12/577 ,424
Accordingly, we sustain the Examiner's rejection of claim 1.
II. Claims 2, 3, 6-9, and 11-19
We also sustain the Examiner's rejection of claims 11, 13, and 14--19
for which Appellant does not present separate arguments for patentability.
See App. Br. 9-10. Regarding claims 2--4, 6-9, and 12, although Appellant
contends that these claims "recite additional features that are not taught by
the combination of Payton and Rocroi," other than for claim 4, Appellant
does not present any arguments or reasoning to support such a contention.
For this reason, we also sustain the Examiner's rejection of claims 2, 3, 6-9,
and 12. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(attorney arguments or conclusory statements are insufficient to rebut a
prima facie case).
III. Claim 4
Dependent claim 4 recites "the first pulse is applied before the second
pulse and the amplitude of the first pulse is greater than the amplitude of the
second pulse." App. Br. 12 (Claims App'x). Appellant argues Rocroi does
not teach this limitation "because a compound pulse in which a first pulse is
greater in amplitude than the second pulse and has a greater duration (as
required by Claim 1, from which Claim 4 depends) could not provide a
linear average of zero as required by Rocroi." App. Br. 9.
We agree. Figure 13 of Rocroi shows that a pulse with greater
duration (134) is applied second in time, not first, and thus does not satisfy
the limitations of claim 4. We note that the Examiner acknowledges this
deficiency but concludes that "it would have been obvious ... to use the
teachings of Rocroi ... and try the compound pulse" as recited in claim 4.
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Application 12/577 ,424
The Examiner's conclusion is not supported by the evidence and therefore
we do not sustain the rejection of claim 4.
IV. Other Issues
Although the independent claims are drafted in a variety of forms,
including a method, an apparatus, and a computer program, we note that the
inventive concept encompassed by the independent claims is directed to the
shape of the electromagnetic pulse of energy applied by a transmitter. Such
a pulse is per se patent ineligible. In re Nuijten, 500 F.3d at 1351-57. Thus,
should there be further prosecution of this application (including any review
for allowance), the Examiner may wish to review the claims for compliance
under 35 U.S.C. § 101 in light of the Federal Circuit's decision in In re
Nuijten, 500 F.3d 1346 (Fed. Cir. 2007).
DECISION
The Examiner's rejection of claims 1-3, 6-9, and 11-19 is affirmed.
The Examiner's rejection of claim 4 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
kme
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