Ex Parte Ohmer

Board of Patent Appeals and Interferences

Jun 28, 2010

10904910 (B.P.A.I. Jun. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HERVE OHMER
____________

Appeal 2009-007138
Application 10/904,910
Technology Center 3600
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Decided: June 29, 2010
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Before: LINDA E. HORNER, JENNIFER D. BAHR, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007138
Application 10/904,910

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STATEMENT OF THE CASE
Herve Ohmer (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner's decision rejecting claims 1-42. We have jurisdiction over
this appeal under 35 U.S.C. § 6 (2002).

The Invention
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A method usable with a well, comprising:
actuating a downhole tool; and
applying a stimulus selected from a group
consisting of an impulse stimulus and a vibration
stimulus to the tool during the actuating to enhance
operation of the tool.

The Rejections
The Examiner relies on the following references:
Grossman US 4,418,766 Dec. 6, 1983
Traver US 4,624,306 Nov. 25, 1986
Enston WO 03/019057 A1 Mar. 6, 2003
Couet US 6,886,406 B1 May 3, 2005

Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 1-3, 6-24, and 27-42 as unpatentable over Couet and
Enston. Appellant does not contest the Examiner's rejections of claims 4
and 25 as unpatentable over Couet, Enston, and Grossman, or of claims 5
and 26 as unpatentable over Couet, Enston, and Traver.

SUMMARY OF DECISION
We AFFIRM-IN-PART.
Appeal 2009-007138
Application 10/904,910

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ISSUES
The Examiner rejected independent claims 1, 11, 22, and 32 as
unpatentable over the combined teachings of Couet and Enston. Ans. 3-5.
The Examiner found that Couet describes a method usable in a well with the
steps of actuating a downhole tool (actuator 714 opening sliding sleeve 712,
which acts as a valve) and applying a vibration stimulus to enhance its
operation (ultrasonic transducer [acoustic scale sensor 715]). Ans. 3-4. In
particular, the Examiner found that the energy generated from the ultrasonic
transducer would clean the sleeve valve. Ans. 7. The Examiner found that
Couet does not describe, but Enston describes, applying a stimulus during
the actuating of the downhole tool to enhance the operation of the tool. Ans.
5, 6. The Examiner concluded that it would have been obvious to apply the
stimulus at the same time as operating the tool, as taught in Enston, in the
method of Couet for enhancing the operation of the tool by maximizing the
stimulation for movement in overcoming resistive forces. Ans. 5.
Appellant raises the following determinative issues:
(1) Whether Couet's teaching of an acoustic sensor that can acoustically
remove scale from itself and other components renders obvious the
use of the sensor to remove scale from the valve, even though Couet
teaches other methods to clean the valve.
(2) Whether Couet's teaching of measuring a scale quantity describes or
renders obvious a step of or sensor for measuring a force associated
with actuating the tool.

Appeal 2009-007138
Application 10/904,910

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FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 Couet describes an acoustic deposit (scale) sensor 715 located close to
a valve (sliding sleeve 712) in a wellbore 70. Col. 13, ll. 11-27, 36-
39. The sensor quantitatively determines an amount of scale
accumulation. Col. 13, ll. 36-39. The acoustic scale sensor 715 is
both self-cleaning and can clean "other components, which are either
in close proximity to the tip of the horn or incorporated into it." Col.
12, ll. 15-19, col. 13, ll. 54-59, col. 9, ll. 38-43. One component to
which the sensor 715 is located "in close proximity" is the sliding
sleeve 712 of the valve. Col. 13, ll. 36-37. The valve operates by
electric motor 714 sliding the sliding sleeve 712 up or down along
holes 702 in casing 701 of the wellbore 70. Col. 13, ll. 14-27.
FF2 Couet describes removing scale from the valve (sliding sleeve 712) by
using a powerful motor that can scrape off the scale or by using an
external scale removal process such as a scale dissolver solution. Col.
13, ll. 28-45.
FF3 We find that that scale build-up is a well-known problem in the
present field of endeavor. See, e.g., Spec., para. 3; Couet, col. 1, ll. 4-
6; see also FF2.
FF4 Enston describes the freeing of seized valves, particularly from the
accumulation of scale. p. 1. The valve can be freed by repeatedly
applying an impact force to induce vibration and dislodge scale. pp.
1-2. In particular, the force is applied simultaneously with the
application of torque to the valve. p. 2.

Appeal 2009-007138
Application 10/904,910

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ANALYSIS
Claims 1, 2, 6, 7, and 10
Appellant argues claims 1, 2, 6, 7, and 10 as a group. Appeal Br. 10.
We select claim 1 as representative of the group, with claims 2, 6, 7, and 10
standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appellant argues that Couet does not contemplate using acoustic
energy to clean the valve. Appeal Br. 11. In particular, Appellant argues
that because Couet describes ways to clean the valve that do not include
using the acoustic sensor, the acoustic sensor is not capable of cleaning the
valve. Id.
Couet describes an acoustic scale sensor that can remove scale from
itself and surrounding components, i.e., components "which are either in
close proximity to the tip of the horn or incorporated into it." FF1. Couet's
sliding sleeve is in close proximity to the acoustic scale sensor. Id. Thus,
the sliding sleeve is in close proximity to the horn. Accordingly, Couet
provides sufficient basis to reasonably support the Examiner's finding that
the energy generated from the ultrasonic transducer would clean the sleeve
valve.
Appellant's arguments appear to confuse obviousness with
anticipation. While Couet does not explicitly describe using the acoustic
sensor to clean the valve, this does not preclude the Examiner's position that
the sensor could be used to clean the valve. See, e.g., KSR Int’l v. Teleflex,
Inc., 550 U.S. 398, 420 (2007) ("Common sense teaches . . . that familiar
items may have obvious uses beyond their primary purposes"). Appellant
merely points out that Couet does not explicitly describe such a use of the
acoustic sensor, but does not provide evidence or proffer arguments that
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would tend to show that the acoustic sensor is not capable of cleaning the
valve as found by the Examiner. See In re Dillon, 919 F.2d 688, 692 (Fed.
Cir. 1990) (if a prima facie case of obviousness is established, the burden
shifts to the applicant to come forward with arguments and/or evidence to
rebut the prima facie case); In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(once the PTO establishes a prima facie case of obviousness based on
inherency, the burden shifts to the applicant to prove that the prior art does
not possess the characteristic at issue).
Although Couet describes alternative methods for cleaning the valve
(FF2), it is not clear that these methods must be the only way to clean the
valve. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not
teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed). Given Couet's teaching that the
acoustic scale sensor will remove scale from components which are in close
proximity to the tip of the horn of the sensor and that the sliding sleeve is in
close proximity to the acoustic scale sensor (FF1), one of ordinary skill in
the art at the time of the present invention, trying to address the problem of
scale buildup on a valve (see FF3), would appreciate that Couet teaches that
acoustics can be used to remove scale from components such as the sliding
sleeve, and would, at a minimum, be apprised of a potential solution using
Couet's acoustic sensor to clean a valve. In re Preda, 401 F.2d 825, 826
(CCPA 1968) (it is proper to take into account not only the specific
teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom); KSR, 550 U.S. at 417
("if a technique has been used to improve one device, and a person of
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ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill"). Thus, we are not persuaded that the
Examiner erred in concluding that the proposed combination of Couet and
Enston renders obvious a method of using an acoustic sensor, useable to
remove scale from components in a well, to remove scale from a valve in a
well.
Appellant also argues that the Examiner has not identified a reason
why one of ordinary skill in the art would have combined Couet and Enston
as recited in claim 1. Appeal Br. 10. In particular, Appellant argues that
Enston's valve and powered hammer do not have the proper configuration to
work in the confining environment of a well. Appeal Br. 11. In response,
the Examiner notes that Enston's valve and powered hammer are not part of
the proposed combination of Couet and Enston. Ans. 6. Appellant does not
address the Examiner's particular combination or reason for combination.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures). As we note above, the Examiner's proposed combination
appears to be nothing more than using a known technique for freeing a valve
(Enston's simultaneous stimuli) to improve Couet's device in a similar way.
KSR, 550 U.S. at 417.

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Application 10/904,910

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Claims 11-19
Appellant argues claims 11-19 as a group. Appeal Br. 12. We select
claim 11 as representative of the group, with claims 12-19 standing or falling
with claim 11. 37 C.F.R. § 41.37(c)(1)(vii) (2009). Appellant argues that
the Examiner has not explained why one of skill in the art would have
applied a stimulus to a valve assembly "to change a flow path through the
valve assembly." Appeal Br. 12-13. Claim 11, however, has no such
limitation. Claim 11 requires applying the stimulus "in response to the
operation of the actuator," not to "change a flow path." The step in Claim 11
of applying a force, as distinguished from the impulse or vibration stimulus,
to a valve assembly to change the size of the flow path through the valve
assembly is met by Couet's electric motor 714 sliding the sliding sleeve 712
up or down along holes 702 in casing 701 of the wellbore 70. See FF1.
Appellant further argues that there is "no reasonable expectation of success
that Enston's jack hammer-type device could be modified to work in … a
well." Appeal Br. 13. As we note above, the Examiner proposes no such
modification.
Lastly, Appellant argues that Enston's apparatus is directed "outside of
the well environment" and that one of ordinary skill in the art "would not
have taken from Enston the general proposition that a … stimulus may be
applied to a valve assembly of a well." Id. Appellant does not provide any
reasoning or evidence to support this argument, but apparently is arguing
that Enston is not analogous prior art because it describes applying stimuli to
valves but not explicitly valves located in a well. The Examiner responds
that Enston is analogous art because it explicitly addresses a problem similar
to that found in Couet (and addressed by the present invention): "ensuring
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the proper operation of a valve located in a dirty environment where the
moving parts may acquire deposits (scale)." Ans. 6, 8.
"Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed." KSR, 550 U.S.
at 420. Scale build-up is a well-known problem in the present field of
endeavor and is addressed by both Couet and the present invention. FF3.
Enston addresses this known problem by providing a particular solution of
applying an impact or vibration stimulus while actuating the valve. FF4. As
such, we are not persuaded that Enston is non-analogous prior art.

Claims 22-24, 27, 28, and 31
Appellant argues claims 22-24, 27, and 28 as a group. Appeal Br. 13.
We select claim 22 as representative of the group, with claims 23, 24, 27,
and 28 standing or falling with claim 22. 37 C.F.R. § 41.37(c)(1)(vii)
(2009). The outcome with respect to clam 22 will likewise be determinative
for dependent claim 31, for which Appellant does not present additional
arguments. Appellant argues that Couet does not teach or suggest "such an
operation" as recited in claim 22. Appeal Br. 13. Claim 22 merely recites
an actuator and a generator along with some intended use language; it is not
a method claim. The Examiner has clearly found that Couet teaches these
structural limitations. Ans. 3-4; see also FF1 (noting actuator 714 and
generator 715). Appellant does not provide any convincing arguments or
evidence to the contrary. Appellant also presents an argument regarding
"Enston's jack hammer" but, as we have addressed above, the Examiner has
not proposed a combination incorporating a jack hammer. See Ans. 3-5, 6.
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Claims 32-40
Appellant argues claims 32-40 as a group. Appeal Br. 14. We select
claim 32 as representative of the group, with claims 33-40 standing or falling
with claim 32. 37 C.F.R. § 41.37(c)(1)(vii) (2009). Similar to the argument
presented for claim 22, Appellant argues "neither Couet nor Enston …
teaches or suggests the application of energy to a valve assembly in response
to an actuator in the downhole environment." Appeal Br. 14. Claim 32
merely recites an apparatus having an actuator for applying a force to a valve
assembly to change the size of a flow path through the valve assembly and a
generator for applying energy to the valve assembly in response to the
operation of the actuator. Appellant has presented no convincing argument
or evidence that the Examiner's proposed combination is incapable of
performing the functions recited, nor would it logically follow that Couet's
actuator and generator would be incapable of performing those functions.
See FF1 (noting actuator 714 and generator 715).

Claim 3
Appellant presents arguments for claim 3 (Appeal Br. 14) that are
essentially the same as the arguments presented for claim 1 and are
unpersuasive for the same reasons.

Claims 8, 20, 29, and 41
In contesting the rejections of claims 8, 20, 29, and 41, Appellant
argues that the "claims specifically recite that the impulse/vibration stimulus
is applied in response to a measurement of a force." Reply Br. 7. The
Examiner explains that the buildup of scale affects the actuation of the
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valve: "the force necessary to actuate the valve increases directly as scale
deposits increase." Ans. 10-11. Thus, the Examiner reasons, the measured
scale buildup and the force required to overcome it are "directly
proportional." Ans. 4. The Examiner rejects claims 8, 20, 29, and 41 as a
group, using the same findings and analysis. Ans. 4-5.
While the Examiner may have established that there could be a
relationship between scale buildup and the force required to operate the
valve, each of claims 8, 20, 29, and 41 requires either a step of measuring
force or a sensor to measure force, not a step of or sensor for measuring a
parameter that is in some manner related to the force. The Examiner's
rejection is not supported by any finding that Couet describes either a sensor
for measuring force or a step of measuring force, or any articulation of an
apparent reason why a person of ordinary skill in the art would have been
prompted to modify Couet to provide a sensor for measuring force. The
Examiner's findings, therefore, do not fulfill the initial burden of establishing
a prima facie case of obviousness by establishing a factual basis to support
the legal conclusion of obviousness. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).

Claims 4, 5, 25, and 26
Appellant does not present arguments with respect to the Examiner's
rejection of claims 4 and 25 as unpatentable over Couet, Enston, and
Grossman, or of claims 5 and 26 as unpatentable over Couet, Enston, and
Traver. See Appeal Br. 9. Therefore, we summarily sustain these rejections.
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CONCLUSIONS
(1) For the reasons discussed above, Appellant's arguments do not
persuade us that the Examiner erred in concluding that Couet's
teaching of an acoustic sensor that acoustically removes scale from
itself and other components renders obvious the use of the sensor to
remove scale from the valve. As such, we are not persuaded that the
Examiner erred in rejecting claims 1, 11, 22, 32, or 3, or the claims
that stand or fall therewith. Appellant does not argue the Examiner's
rejection of claims 4, 5, 25, or 26. Therefore, we sustain the
Examiner's rejection of claims 1-7, 10-19, 22-28, and 31-40.
(2) We are persuaded that the Examiner erred in concluding that Couet's
teaching of measuring a scale quantity renders obvious a step of or
sensor for measuring a force associated with actuating the tool. As
such, we are persuaded that the Examiner erred in rejecting claims 8,
20, 29, and 41, as well as claims 9, 21, 30, and 42, which depend from
these claims.

DECISION
We affirm the Examiner's decision as to claims 1-7, 10-19, 22-28, and
31-40, and reverse the Examiner's decision as to claims 8, 9, 20, 21, 29, 30,
41, and 42.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART
Appeal 2009-007138
Application 10/904,910

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