Ex Parte Prill et al

Patent Trial and Appeal Board

Jul 29, 2016

12364581 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/364,581 0210312009 Jonathan R. Prill
23505 7590 08/02/2016
CONLEY ROSE, P.C.
Jonathan M. Harris
1001 Mckinney
Suite 1800
HOUSTON, TX 77002-6417
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.
1814-30301 4327
EXAMINER
RUNYAN, RONALD R
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
L11'-~ITED STATES PATENT AND TRADE~'v1ARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN R. PRILL and MICHAEL X. TANG
Appeal2014-004417
Application 12/364,581
Technology Center 3600
Before LINDA E. HORNER, ERIC C. JESCHKE, and MARK A. GEIER,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathan R. Prill and Michael X. Tang (Appellants)1 seek our review
under 35 U.S.C. § 134 of the Examiner's decision2 rejecting claims 12-30.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as National Oilwell Varco,
L.P. Appeal Br. 3.
2 Appeal is taken from the Examiner's adverse decision as set forth in the
Final Office Action, dated June 5, 2013 ("Final Act."), as further explained
in the Advisory Action, dated August 13, 2013 ("Adv. Act.").
Appeal2014-004417
Application 12/364,581
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to a "SYSTEM OF
MONITORING ROTATIONAL TIME OF ROTATABLE EQUIPMENT." Spec. 1 (title).
Claims 12 and 24 are the independent claims on appeal. Claim 12 is
reproduced below.
12. A downhole tool comprising:
a sensor comprising a solid-state silicon-based gyroscope
configured to sense rotation of the downhole tool; and
an electronic system electrically coupled to the sensor,
said electronic system configured to power the sensor to
determine rotational time of the downhole tool;
said downhole tool configured to threadingly couple to a
drill string;
wherein the rotational time comprises a measurement of
total accumulated rotating usage time while drilling.
EVIDENCE
The Examiner relied upon the following evidence:
McCracken
MacDonald
Al ft
Baron
Nakayama
US Re. 31,222
US 6,206, 108 B 1
US 2003/0111268 Al
US 2005/0001737 Al
US 2007/0094055 Al
REJECTIONS
Apr. 26, 1983
Mar. 27, 2001
June 19, 2003
Jan. 6,2005
Apr. 26, 2007
The Final Office Action from which this appeal is taken contains the
following rejections:
1. Claims 12-16, 18, 23, 24, and 26-28 under 35 U.S.C. § 103(a) as
unpatentable over Baron and Alft.
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Appeal2014-004417
Application 12/364,581
2. Claims 22 and 30 under 35 U.S.C. § 103(a) as unpatentable over
Baron, Alft, and MacDonald.
3. Claims 17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Baron, Alft, and McCracken.
4. Claims 21, 25, and 29 under 35 U.S.C. § 103(a) as unpatentable
over Baron, Alft, McCracken, and Nakayama.
ANALYSIS
First Ground of Rejection
Independent claim 12 is directed to a downhole tool and recites that
the tool comprises "a sensor ... to sense rotation of the downhole tool" and
"an electronic system electrically coupled to the sensor, said electronic
system configured to power the sensor to determine rotational time of the
downhole tool ... wherein the rotational time comprises a measurement of
total accumulated rotating usage time while drilling." Appeal Br. 20
(Claims App.). Independent claim 24 is directed to a system comprising
rotatable equipment and includes substantially similar claim recitations as
discussed above for claim 12. Id. at 22-23.
The Examiner found that Baron discloses the claimed sensor and
further discloses an electronic system configured to power the sensor to
determine rotational time of the tool. Final Act. 5, 7 (citing Baron, para. 28).
The Examiner further determined that although Baron does not disclose
measuring total accumulated rotating usage time while drilling, "it would be
a simple matter of summing all of the recorded rotating usage data only
when the formation and/or borehole properties were within predefined
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Appeal2014-004417
Application 12/364,581
ranges" and that "[i]t would have been obvious ... to sum these intervals as
well as keep track of the number of sensing periods that the rotation sensor
was powered up to determine a metric for rotating usage." Id. at 5, 8. 3 The
Examiner further explained that "Baron's system is capable of determining
rpm (data) because Baron has a receiver system comprising a memory
device for storing the counted pulses ... and a means for tracking time,
e.g.[, a] real-time clock." Ans. 3 (citing Baron, para. 28).
Appellants argue that the Examiner erred in rejecting claims 12 and
24 as unpatentable over Baron and Alft because Baron "is silent with regard
to powering the sensor" and because the Examiner's reason for modifying
Baron's electronic system to measure total accumulated rotating usage time
while drilling is based on impermissible hindsight. Appeal Br. 13.
We are persuaded by Appellants' arguments that the rejection
presented cannot be sustained. Baron discloses a directional drilling tool
200 having a rotation sensor 218 located in a non-rotating housing 202 and a
marker 220 located on a drive shaft 204. Baron, para. 26. A receiver system
214 is communicatively coupled to rotation sensor 218 through a path 216.
Id. Baron discloses that "[r]eceiver system 214 selectively measures the
rotation rate of the drive shaft 204 to receive rotation-encoded data from the
surface." Id. Baron further discloses that receiver system 214 includes a
3 The Examiner determined that it would have been obvious to replace
Baron's gyroscope with a solid state sensor, based on the teaching of Alft.
Final Act. 5, 8. Appellants do not contest this proposed modification of
Baron with the teaching of Alft.
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Appeal2014-004417
Application 12/364,581
processor 230, a timer device 232 "for tracking time such as, for example, an
incrementing counter, a decrementing time-out counter, or a real-time
clock." Id. at para. 28. Baron states that "the processor 230 receives a pulse
via path 216 each time the sensor 218 ... detects the marker 220" and that
"[p ]rocessor 230 may selectively measure the rotation rate of the drive shaft
204 by counting the pulses and consulting the timer 232" or "based on a
time interval between sequential pulses." Id.
Baron makes no mention of the electronic system being "configured
to power the sensor" as recited in claim 12. Rather, the cited portion of
Baron on which the Examiner relies describes that the processor 230 of
receiver system 214 receives pulses from sensor 218. Id. Baron is silent as
to how or when power is supplied to sensor 218. As such, the Examiner's
finding that Baron discloses an electronic system configured to power the
sensor to determine rotational time of the tool is not supported by a
preponderance of the evidence.
Further, we agree with Appellants that the Examiner's articulated
reason for modifying Baron's electronic system to measure total
accumulated rotating usage time while drilling is conclusory and lacks
rational underpinnings. In particular, the Examiner's proffered reasoning,
i.e., "to determine a metric for rotating usage," states the result of the
proposed modification but fails to provide an apparent reason explaining
why a person having ordinary skill in the art would have been led to use
Baron's electronic system to track rotating usage. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that the analysis leading to
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Appeal2014-004417
Application 12/364,581
a determination of an apparent reason to combine the known elements in the
fashion claimed should be made explicit).
For these reasons, Appellants have demonstrated error in the rejection
of claims 12 and 24, and their dependent claims 13-16, 18, 23, and 26-28
under 35 U.S.C. § 103(a) as unpatentable over Baron and Alft. As such, we
do not sustain the first ground of rejection.
Second Through Fourth Grounds of Re} ection
In the remaining grounds of rejection, the Examiner does not rely on
MacDonald, McCracken, or Nakayama to cure the deficiencies noted supra
in the findings and reasoning as it relates to Baron and the obviousness of
the subject matter of independent claims 12 and 24. As such, for the same
reasons discussed above, we do not sustain the rejections under 35 U.S.C.
§ 103(a) of: (1) claims 22 and 30 over Baron, Alft, and MacDonald,
(2) claims 17, 19, and 20 over Baron, Alft, and l\1cCracken, and (3) claims
21, 25, and 29 over Baron, Alft, McCracken, and Nakayama.
DECISION
The decision of the Examiner to reject claims 12-30 is REVERSED.
REVERSED
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