Ex Parte Revellat et alDownload PDFPatent Trial and Appeal BoardOct 31, 201210710103 (P.T.A.B. Oct. 31, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GUILLAUME REVELLAT, CHRISTIAN STOLLER, ROBERT A. ADOLPH, LARRY J. BERNARD, FENG ZHOU, STEPHEN D. BONNER, JEAN-MICHEL HACHE, and RUVINDA GUNAWARDANA ____________________ Appeal 2010-009826 Application 10/710,103 Technology Center 3700 ____________________ Before: STEFAN STAICOVICI, JAMES P. CALVE, and MITCHELL G. WEATHERLY, Administrative Patent Judges. WEATHERLY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009826 Application 10/710,103 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from rejections of claims 1- 24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to cooling systems for downhole tools, downhole tools with a cooling system, and methods of cooling a component of a downhole tool and constructing a downhole tool. Claims 1-3, reproduced below, are illustrative of the claimed subject matter: 1. A cooling system for a downhole tool, comprising: an insulating chamber disposed in the downhole tool configured for use on a drill string or a wireline, wherein the insulating chamber is adapted to house an object to be cooled; a Stirling cooler disposed in the downhole tool, wherein the Stirling cooler has a cold end configured to remove heat from the insulating chamber and a hot end configured to dissipate heat; and an energy source to power the Stirling cooler. 2. The cooling system of claim 1, wherein the Stirling cooler is a free-piston Stirling cooler. 3. The cooling system of claim 2, wherein the free-piston Stirling cooler comprises a permanent magnet. App. Br., Claims Appx. Appeal 2010-009826 Application 10/710,103 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Penswick Ross DiFoggio Yamamoto US 5,647,217 US 6,070,414 US 6,341,498 B1 US 6,843,057 B1 Jul. 15, 1997 Jun. 6, 2000 Jan. 29, 2002 Jan. 18, 2005 REJECTIONS The Examiner rejected claims as follows: 1. Claims 1, 2, 4-9, 11-16, and 18-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over DiFoggio, Penswick, and Ross. Ans. 3. 2. Claims 3, 10, 17, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over DiFoggio, Penswick, Ross, and Yamamoto. Ans. 4. OPINION Obviousness of claims 1, 2, 4-9, 11-16, and 18-22 Appellants assert that claims 1, 2, 4-9, 11-16, and 18-22 stand or fall together in connection with this appeal and argue these claims as a group. App. Br. 10. We select claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(vii). Independent claim 1 recites a cooling system for a downhole tool comprising an insulating chamber, a Stirling cooler, and an energy source to power the Stirling cooler. See App. Br., Claims Appx. (independent claim 1). Appeal 2010-009826 Application 10/710,103 4 The Examiner found that DiFoggio teaches all elements of the claimed system except using a Stirling cooler as the device to cool an insulating chamber. Ans. 3-4; App. Br. 12-14. To cure the deficiency in DiFoggio’s teachings, the Examiner cited Penswick and Ross, which both teach in detail the use of a Stirling cooler to cool sensors and associated electronics. Ans. 4. 1. DiFoggio teaches away from using Stirling coolers in a downhole tool Appellants argue that DiFoggio teaches away from using Stirling coolers with a downhole tool. Appellants assert that DiFoggio rejects using “known cooling systems because of the constraints in the wellbore” in favor of using an evaporative cooling system that does not rely on any seal or mechanical parts (App. Br. 13), which Appellants characterize as having no “moving parts” (App. Br. 14). Appellants continually equate DiFoggio’s criticism of known coolers with moving parts to criticism of Stirling coolers. E.g., App. Br. 13-14 (citing col. 3, ll. 44-55) and 16-17. However, the “known” cooling systems that Appellants identify in DiFoggio as being criticized are “thermoelectric and compressor cooling systems,” not Stirling coolers. DiFoggio, col. 3, ll. 29-51. Therefore, because Appellants have not identified any passage in DiFoggio that “criticize[s], discredit[s] or otherwise discourage[s]” the use of a Stirling cooler, Appellants have not established that DiFoggio teaches away from the claimed use of Stirling coolers on drill strings. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (If a prior art reference discloses a different solution to a similar problem, it does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits or otherwise discourages the solution claimed.). Appeal 2010-009826 Application 10/710,103 5 2. Penswick and Ross are “nonanalogous” art Appellants argue that Penswick and Ross are “nonanalogous” art because both references relate to Stirling coolers used in cryogenic cooling applications. App. Br. 14-15. Appellants contend that Penswick and Ross are from a different field of endeavor because the references relate to cooling electronics to cryogenic temperatures rather than cooling electronics at the temperatures in which the claimed subject matter operates (> 150 °C). Id. Because of this temperature difference and the environments in which Penswick and Ross cool electronics, Appellants also contend that the references are not reasonably pertinent to the problem addressed by the claimed subject matter. Id. The Examiner contends that both Penswick and Ross are from the same field of endeavor because they describe Stirling coolers specifically adapted to cool electronics that are subjected to harsh thermal environments. Ans. 9-12. The Examiner further contends that Penswick and Ross are reasonably pertinent to the problem with which Appellants’ application is concerned for similar reasons. Id. To determine what is analogous prior art for the purpose of analyzing the obviousness of the subject matter at issue, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent or application at issue can provide a reason for combining the elements in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, a reference in a field different from that of applicant’s endeavor may be reasonably pertinent if it is one that, because of the matter with which it deals, would have logically commended itself to an inventor’s Appeal 2010-009826 Application 10/710,103 6 attention in considering his or her invention as a whole. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). A skilled artisan looking for apparatus to cool electronics in harsh thermal environments would consider teachings relating to Stirling coolers to be of particular interest. Appellants describe the problem they confront as protecting and cooling sensitive components such as electronics packages from the extreme temperatures to which downhole tools are exposed (Spec. para [0008]) and the need to provide a cooling system capable of providing sufficient cooling capacity in the limited space within the tool (Spec. paras. [0009, 0010]). Penswick discloses the advantages of small Stirling coolers that provide cooling in relatively small spaces for electronics in harsh thermal environments. Col. 2, ll. 12-15; Ans. 9-10. Similarly, Ross discloses the use of Stirling coolers for cooling electronic components where space is limited and the components are subjected to harsh thermal environments. Col. 1, ll. 12-22; Ans. 11. We agree with the Examiner that Penswick and Ross would logically have commended themselves to an inventor considering the problem of cooling sensitive electronics components in the limited space and harsh thermal environment of a downhole tool. Consequently, we agree with the Examiner’s finding that the teachings of both Penswick and Ross constitute analogous art. 3. No motivation to combine DiFoggio, Penswick, and Ross Appellants argue that a skilled artisan would not be motivated to combine the teachings of DiFoggio, Penswick and Ross for two reasons. First, Appellants contend that DiFoggio teaches away from using Stirling coolers in a downhole tool. This argument is not persuasive for the reasons discussed supra in Section 1 of the Opinion. Appeal 2010-009826 Application 10/710,103 7 Second, Appellants contend that Penswick and Ross teach the use of Stirling coolers for cryogenic applications, not downhole environments. App. Br. 15-16. This argument is not persuasive because the test for obviousness is what the combined teachings of the references would have suggested to a skilled artisan and not whether the features of a secondary reference may be bodily incorporated into, or physically combined with, a primary reference. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); see also KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Moreover, the Examiner has provided a reason for combining the teachings of Penswick and Ross with DiFoggio that is supported by a rational underpinning and Appellants’ arguments do not persuade us of error in the Examiner’s stated reasons for combining these references. The Examiner found that DiFoggio teaches the need to cool electronics in a downhole environment and Penswick and Ross teach how to use compact Stirling coolers in harsh temperature environments and limited spaces to cool electronics. Ans. 13. The Examiner reasoned that because the problem identified by DiFoggio of cooling various electronic components in an adverse environment of extreme temperature and limited space is addressed by the Stirling coolers described by Penswick and Ross, a skilled artisan would have been motivated to use the teachings of Penswick and Ross to achieve an efficient cooling device in DiFoggio for improved and powerful cooling of electronic components in a downhole tool. Id. at 14. Appellants’ arguments do not persuade us of error in the Examiner’s findings or determination of obviousness in this regard. Appeal 2010-009826 Application 10/710,103 8 4. Alleged defects in the operability of a device as suggested by DiFoggio, Penswick, and Ross Appellants argue that a skilled artisan would not expect that DiFoggio’s downhole tool modified to use Penswick’s or Ross’s Stirling coolers would work in a downhole environment. App. Br. 16. Appellants also argue that modifying DiFoggio to use Penswick’s and/or Ross’s Stirling coolers would render DiFoggio unsatisfactory for its intended purpose, precluding use of the combination to establish obviousness. Id. Appellants state without support that the higher temperatures and pressures in a downhole environment would prevent Penswick’s and Ross’s Stirling coolers from working effectively because those coolers have moving parts. Id. Once more, Appellants equate DiFoggio’s criticism of known coolers with moving parts to criticism of Stirling coolers. E.g., App. Br. 13-14 (citing col. 3, ll. 44-55) and 16-17. However, as noted above, the “known” cooling systems that Appellants identify in DiFoggio as being criticized are “thermoelectric and compressor cooling systems,” not Stirling coolers. DiFoggio, col. 3:29–51. We thus agree with the Examiner that a skilled artisan wishing to cool electronics in a harsh environment would: (1) seek out cooling solutions such as those taught by Penswick and Ross and (2) have a reasonable expectation that Penswick’s and Ross’s Stirling coolers would work in a downhole environment because Penswick and Ross disclose the use of Stirling coolers in harsh thermal environments to cool electronics in limited spaces. It is well settled that absolute predictability that the substitution of elements from one reference into another will be successful is not required to establish obviousness, all that is required is a Appeal 2010-009826 Application 10/710,103 9 reasonable expectation of success. See In re O’Farrell, 853 F.2d 894, 903- 04 (Fed. Cir. 1988). Additionally, obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Appellants’ attorney arguments and mischaracterization of DiFoggio as teaching that a cooling system with moving parts or seals would not be satisfactory under the harsh downhole environment (e.g., App. Br. 13 and 16) does not persuade us of error in the Examiner’s findings or determination of obviousness. Moreover, Appellants admit that: 1. using Stirling engines in a downhole environment was already known at the time they filed their application (see Spec. para. [0030] (citing Buchanan, US 4,805,407, iss. Feb. 21. 1989)) and 2. a Stirling cooler is fundamentally the same machine as a Stirling engine, but operated in reverse (Spec. para. [0028]; see also Ross, col. 1, l. 63 to col. 2, l. 2). Appellants thus attempt to claim the use of known devices for their intended purposes to achieve merely expected results. The Supreme Court admonished that such claims are likely obvious. KSR Int’l Co., 550 U.S. at 416. Therefore, we reject Appellants’ arguments regarding inoperability of a downhole tool suggested by DiFoggio, Penswick, and Ross. 5. Other arguments Appellants proffer two additional arguments labeled “Graham factors” and “Objective Evidence” that we find unpersuasive. App. Br. 17. The “Graham factors” argument is merely a variation of Appellants’ argument Appeal 2010-009826 Application 10/710,103 10 that DiFoggio teaches away from the claimed invention, and we reject the “Graham factors” argument for the same reasons. Appellants’ “Objective Evidence” argument rests upon the notion that because Stirling coolers have been known for a long time and no one has ever used one in a downhole tool, the use of Stirling coolers in downhole tools must be non-obvious. Initially, we note that the Specification recognizes that others have successfully deployed Stirling machines in a downhole tool. See Spec. para. [0030] (citing to Buchanan). Moreover, the age of Stirling machine technology alone does not establish non-obviousness of the claimed subject matter. [O]ur precedent requires that the applicant submit actual evidence of long-felt need, as opposed to argument. This is because “[a]bsent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness.” In re Kahn, 441 F.3d 977, 990-91 (Fed. Cir. 2006) (citing Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed.Cir.2004)). We find that Appellants’ “Objective Evidence” argument is unsupported by evidence and therefore unpersuasive. We therefore affirm the Examiner’s rejection of claims 1, 2, 4-9, 11-16, and 18-22. Appeal 2010-009826 Application 10/710,103 11 Obviousness of claims 3, 10, 17, 23, and 24 Appellants argue claims 3, 10, 17, 23, and 241 as a group. App. Br. 17. We select claim 3 as representative. In rejecting claim 3, the Examiner supplements the teachings of DiFoggio, Penswick, and Ross with those of Yamamoto to teach the use of a permanent magnet in a Stirling cooler as called for in claim 3. Ans. 4-5. Appellants do not dispute the Examiner’s finding regarding Yamamoto’s teachings. Instead, Appellants first argue that Yamamoto does not provide any motivation to combine its teachings with those of DiFaggio, Penswick, and Ross. App. Br. 18. This argument is not persuasive because a specific teaching, suggestion, or motivation to combine known elements is not a requirement to establish obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (characterizing the TSM test as a helpful insight, but rejecting the rigid requirement of a TSM). This argument does not persuade us of error in the Examiner’s stated reason for combining Yamamoto’s permanent magnet with the system of DiFoggio, Penswick, and Ross to more efficiently operate the Stirling cooling system. See Ans. 5. Appellants further argue that Yamamoto is “not concerned with putting a Stirling cooler in a downhole tool for use on a drill string or wireline and, therefore, does not provide any teaching that would encourage 1 We reject Appellants’ argument that the Examiner waived the rejection of claims 3, 10, 17, 23, and 24 by failing to respond to Appellants’ arguments in the Appeal Brief. Reply Br. 12. The Examiner established prima facie obviousness of these claims in the Final Office Action. Final Action at 3-5. The Examiner reiterated the grounds for the rejection in the Examiner’s Answer. Ans. 4-5. Therefore, Appellants have the burden to overcome the rejection. For the reasons explained in this section, we conclude that Appellants have not done so. Appeal 2010-009826 Application 10/710,103 12 a skilled artisan to ignore the teaching away of DiFoggio.” Id. This argument is likewise not persuasive because the Examiner did not rely on Yamamoto for this feature but instead relied on Yamamoto to teach the use of a permanent magnet in a Stirling machine drive mechanism. See Ans. 5. Moreover, we do not view DiFoggio as teaching away from a combination with Stirling coolers of Penswick and Ross for the reasons discussed supra. We therefore affirm the Examiner’s rejection of claims 3, 10, 17, 23, and 24. DECISION For the reasons expressed above, we affirm the Examiner’s rejections of claims 1-24. 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). AFFIRMED mls Copy with citationCopy as parenthetical citation