Ex Parte Patel

Patent Trial and Appeal Board

Aug 10, 2017

12986637 (P.T.A.B. Aug. 10, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/986,637 01/07/2011 Dinesh R. Patel 68.1007US-NP 6828
35204 7590 08/14/2017
SCHLUMBERGER ROSHARON CAMPUS
10001 Richmond
IP - Center of Excellence
Houston, TX 77042
EXAMINER
GRAY, GEORGE STERLING
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
08/14/2017 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):
u sdocke ting @ sib .com
jalverson@slb.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DINESH R. PATEL1
Appeal 2016-004082
Application 12/986,637
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 3—26, which constitute all the claims
pending in this application. App. Br. I.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Schlumberger Technology Corporation is listed as the real party in interest.
App. Br. 2.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the following documents for their respective
details: the Final Action mailed April 17, 2014 (“Final Act.”); the Corrected
Appeal Brief filed July 28, 2015 (“App. Br.”); and the Examiner’s Answer
mailed November 27, 2015 (“Ans.”).
Appeal 2016-004082
Application 12/986,637
STATEMENT OF THE CASE
Appellant describes the present invention as follows:
A hydrostatic set module configured with a wireless
trigger mechanism to allow wireless activation thereof from an
oilfield surface. The trigger mechanism includes a charge for
exposing the module to wellbore pressures and allowing it to
behave as an intensifier for actuation of a downhole device such
as a production packer. The mechanism also includes a sensor
for detection of the wireless communications along with a
processor for analysis thereof and to direct spending of the
charge. Pressure pulse or other wireless communication forms
that are suitable for the downhole environment may be
transmitted from surface in a variety of different signature
patterns for responsive analysis by the trigger mechanism.
Abstract.
Claims 1, 3—22, and 24—26 stand rejected under 35 U.S.C. § 103(a) as
obvious over Cho (US 7,562,712 B2; issued July 21, 2009) and
Schwendemann (US 6,450,263 Bl; issued Sept. 17, 2002). Final Act. 3—9.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as obvious over
Cho, Schwendemann, andLembcke (US 5,893,413; issued April 13, 1999).
Final Act. 9—10.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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Application 12/986,637
CLAIMS 1 AND 3-16
Independent claim 1, reproduced below, is illustrative of the appealed
claims:
1. A downhole system for disposal in a well, the system
comprising:
a hydraulically actuated downhole device;
a hydrostatic set module hydraulically coupled to said
device for actuation thereof;
a wirelessly responsive trigger mechanism coupled to said
module and having a charge for activating said module for the
actuation of said device; and
a pressure chamber adjacent the charge for exposure to
wellbore pressure upon spending of the charge as directed by a
processor of the mechanism, the exposure to provide
hydraulically intensified activating of the module.
Findings and Contentions
The Examiner finds Cho teaches all of the limitations of independent
1 except for “(a) a detonatable charge for use in activation or (b) that
spending of the charge causes exposure of the chamber 31 to wellbore
pressure, the spending being directed by a mechanism processor.” Final
Act. 4. The Examiner further finds that Schwendemann teaches a generic
rupture disc 100 that is ruptured by a charge 112 in response to a wireless
signal, and that the charge is spent as directed by a mechanism processor
136. Id. The Examiner concludes that it would have been obvious to have
included Schwendemann’s charge-activated rupture disc in conjunction with
Cho’s setting tool to
achieve[] the predictable result that wireless signals would be
interpreted by the Schwendemann processor in such a manner as
to trigger the spending of the charge to cause the disk rupture and
the resulting exposure of the chamber 31 to wellbore pressure to
intensify the pressure in the chamber 35 for the hydraulic
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Application 12/986,637
activation of the downhole tool, the wireless signal for charge
detonation not requiring surface activation pressure.
Id.
Appellant argues claim 1 was amended “to add the element of a
particularly oriented ‘pressure chamber’ relative [to] other claimed elements
of claim 1 [, but] the Examiner appears to have disregarded this particular
element as claimed due to the focus of the functional sounding
‘hydraulically intensified activating’ which accompanies the added
element.” App. Br. 9. Appellant contends “the claimed pressure chamber is
provided adjacent a charge such that a resultant exposure may directly
impact a hydrostatic set module of the system (i.e., in terms of the indicated
hydraulic intensification).” Id. at 9—10. In Appellant’s view, Cho fails to
teach the claimed limitation because “Cho also teaches the use of two
separately distinguishable chambers 31, 35 in order to affect the module.”
Id. at 10 (citing Final Act. 3^4; Cho Figs. 9—11).
Analysis
Appellant’s arguments are unpersuasive. We understand the
Examiner’s position to be that it would have been obvious to substitute
Schwendemann’s wirelessly initiated charge-activated rupture disk for Cho’s
pressure activated rupture disk. Final Act. 4. We agree with the Examiner
that such a substitution at least would have constituted the substitution of an
art recognized functionally equivalent rupture disk that would have produced
predictable results. Id. Furthermore, Schwendemann’s charge-activated
rupture disk provides an additional benefit over pressure-activation disks of
improved control. Schwendemann col. 1,11. 31—43, col. 1, 66-col. 2,1. 4.
Moreover, Appellant fails to explain persuasively why, within a
device according to the combined prior art, Cho’s chamber 31 does not
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Application 12/986,637
structurally correspond to the pressure chamber recited in claim 1. See App.
Br. 9—10 (merely arguing that “the claimed pressure chamber is provided
adjacent a charge such that a resultant exposure may directly impact a
hydrostatic set module of the system (i.e., in terms of the indicated hydraulic
intensification)”).
That is, we understand the Examiner to be reading the claimed
chamber on Cho’s chamber 31 (Final Act. 4), and Appellant does not
explain why it matters that Cho additionally includes a distinguishable “third
chamber 35” within Cho’s set module/intensifier 22. It is well settled that
the term “comprising” in claim l’s preamble “means that the named
elements are essential, but other elements may be added and still form a
construct within the scope of the claim.” Genentech, Inc. v. Chiron Corp.,
112 F.3d 495, 501 (Fed. Cir. 1997).
Accordingly, we will sustain the obviousness rejection of independent
claim 1, as well as dependent claims 3—5, which are not argued separately.
App. Br. 10. Regarding claims 6—16, Appellant raises arguments in relation
to independent claim 6 that are substantially the same as those raised in
relation to independent claim 1 (id. at 10-12), and Appellant does not
separately argue dependent claims 7—16 (id. at 12). We therefore sustain the
obviousness rejection of those claims for the reasons explained above.
CFAIMS 20-26
Independent claim 20, which is illustrative of method claims 20—26,
reads as follows:
20. A method of wirelessly actuating a downhole device from
an oilfield surface, the method comprising:
deploying a downhole system into a well at the oilfield;
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Application 12/986,637
sending wireless communications down hole into the well
from the oilfield surface;
detecting the communication with a sensor of a trigger
mechanism of the system;
hydraulically intensifying a hydrostatic set module of the
system by exposure thereof to well bore pressure based on
analysis of the detected communication with a processor of the
trigger mechanism; and
actuating the device with the hydrostatic set module.
Contentions and Analysis
To the extent Appellant’s arguments duplicate those discussed in the
preceding section, we refer to our prior analysis. We address Appellant’s
additional arguments seriatim.
Appellant argues the Examiner rejected the method claims “by
analogy” instead of by an element-by-element analysis. App. Br. 4 (citing
Final Act. 2 (wherein the Response to Arguments section, the Examiner
explained that “[cjlaim 1, and by analogy all amended independent claims,
now require [a function occur under a specified condition]”)). Appellant
further argues “the rejection^ of claim 20 [has] been based on references
[that] the Examiner feels might plausibly, in combination, disclose a
structure capable of performing the claimed method.” App. Br. 6.
Appellant’s argument is unpersuasive. We do not interpret the
Examiner’s position to be that the cited art discloses a structure that merely
is capable of satisfying the recited method. We, instead, understand the
Examiner’s position to be that apparatus claim 1 recites certain structures
that, as arranged and used, cause a function to occur under a specified
condition. We understand the Examiner’s position further to be that method
claim 20 sets forth steps that the structures of the cited combination actually
performs when those structures are used in the manner disclosed. Appellant
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Application 12/986,637
does not provide persuasive arguments for why those findings of the
Examiner were wrong. See generally App. Br.
Appellant argues the rejection of claim 20 was improper because
“Cho does not disclose wirelessly signaling for [the] sake of detonating”
(App. Br. 6) and “Schwendemann does no more than regulate whether a
burst disk is to be weakened so that some other series of events unrelated to
anything claimed by the Applicant might take place” {id. at 7). These
arguments are unpersuasive because the Examiner relied upon
Schwendemann—not Cho—for the former teaching and relied upon Cho—
not Schwendemann—for the latter teachings.
Appellant argues that “the processors of the references relied upon by
the Examiner do not teach the method [that] has been claimed by the
Applicant in claim 20.” App. Br. 8. This argument is unpersuasive. We
understand the Examiner’s position to be that the combination possesses a
processor and other components that, when combined, operate in the manner
recited by method steps. Appellant does not argue with sufficient specificity
which method step(s) the cited art, as combined, allegedly fails to teach. See
37 C.F.R. § 41.37(c)(1) (“The arguments [of an Appeal Brief] shall explain
why the examiner erred as to each, ground of rejection contested by
appellant. ... A statement [that] merely points out what a claim recites will
not be considered an argument for separate patentability of the claim.”).
Accordingly, we sustain the obviousness rejection of independent
claim 20, as well as claims 21, 22, and 24—26, which depend from claim 20.
We likewise sustain the additional obviousness rejection of claim 23, which
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depends from claim 20 and which Appellant presents no separate arguments.
App. Br. 8.
CLAIMS 17-19
Appellant presents no arguments in relation to claims 17—19. See
generally App. Br.; see also id. at 2 (wherein Appellant asserts “[c]laims 1
and 3—26 have been finally rejected. The rejection of claims 1, 3—16 and
20-26[, but not claims 17—19,] are the subject of this Appeal”).
Accordingly, we summarily affirm the obviousness rejection of these claims.
See MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”).
DECISION
The Examiner’s decision rejecting claims 1 and 3—26 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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