Ex Parte OhmerDownload PDFBoard of Patent Appeals and InterferencesJun 28, 201010904910 (B.P.A.I. Jun. 28, 2010) Copy Citation 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 ____________ Decided: June 29, 2010 ____________ 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 2 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 3 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 4 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 5 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 Appeal 2009-007138 Application 10/904,910 6 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 Appeal 2009-007138 Application 10/904,910 7 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. Appeal 2009-007138 Application 10/904,910 8 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 Appeal 2009-007138 Application 10/904,910 9 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. Appeal 2009-007138 Application 10/904,910 10 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 Appeal 2009-007138 Application 10/904,910 11 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. Appeal 2009-007138 Application 10/904,910 12 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 13 hh SCHLUMBERGER RESERVOIR COMPLETIONS 14910 AIRLINE ROAD ROSHARON, TX 77583 Copy with citationCopy as parenthetical citation