Ex parte Schultz

Board of Patent Appeals and Interferences

Feb 25, 2000

08395698 (B.P.A.I. Feb. 25, 2000)

Application for patent filed February 28, 1995,1
entitled "In-Ground Vapor Monitoring Device And Method."
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
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Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte A.K. (TONY) SCHULTZ

Appeal No. 1997-4397
Application 08/395,6981

HEARD: February 8, 2000

Before BARRETT, FLEMING, and BARRY, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-4397
Application 08/395,698
Appellant may wish to change the word "unto" in the2
"inlet port" limitation to "onto" to be consistent. The
amendment filed July 6, 1996, (Paper No. 5) changed the first
occurrence of "unto" to "onto," but not the second.
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1-13.
We reverse.
BACKGROUND
The invention is directed to an in-ground vapor
monitoring device and method.
Claim 1 is reproduced below.2
1. An in-ground vapor monitoring device for use
with a drilling rig including a hollow stem auger and
drill rod, said vapor monitoring device including:
a swivel assembly including:
a swivel body having a central passageway formed
therethrough;
an outlet port formed in said swivel body and
opening onto the surface thereof for connection to a
vapor analyzer; and
a first outlet channel formed in said swivel
body and connecting said outlet port and said central
swivel passage for fluid communication therebetween; and
an auger plug insertable into an end of said auger
and including:
an auger plug body having a central auger
passage formed therethrough;
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an inlet port formed in an operational end of
said auger plug body and opening unto the surface
thereof;
an inlet channel formed in said auger plug body
for connecting said inlet port and said central auger
passage for fluid communication therebetween; and
a vapor filter disposed in said inlet channel
proximate said inlet port, wherein the in-ground vapors
may be continuously drawn up through said inlet port and
into said vapor monitoring device.
The Examiner relies on the following prior art
references:
Johnston et al. (Johnston) 2,153,254 April 4, 1939
Sorensen 5,337,838 August 16, 1994
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sorensen and Johnston.
We refer to the Final Rejection (Paper No. 6) (pages
referred to as "FR__") and the Examiner's Answer (Paper
No. 12) (pages referred to as "EA__") for a statement of the
Examiner's position and to the Appeal Brief (Paper No. 11)
(pages referred to as "Br__") for Appellant's arguments
thereagainst.
OPINION
The obviousness issue is whether the combination of
Sorensen and Johnston suggests continuously monitoring
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in-ground vapors while the drill is rotating. The claimed
subject matter permits continuously extracting vapor samples
and sending them to the surface while the drill is rotating
due to (1) the continuous passage between the end of the auger
plug body and the outlet port of the swivel assembly, and (2)
the swivel assembly which allows fluid communication between
the rotating drill string and the stationary vapor analyzer.
It is noted that claim 1 recites two pieces of a vapor
monitoring device: (1) a swivel assembly; and (2) an auger
plug. These two pieces are recited to be "for use with a
drilling rig including a hollow stem auger and drill rod"
(emphasis added) (claim 1 preamble) and the auger and drill
rod are not positively recited in the claim body. Thus,
claim 1 is not directed to the entire apparatus shown in
Figure 1; compare this to claim 8 which recites an auger
connected to the drill rod. Neither claim 1 nor claim 8
recites that the swivel assembly and auger plug are connected
to a hollow drill rod 8 as shown in Figure 1.
We first look at the Examiner's interpretation of the
term "continuously." The Examiner states that "Sorensen
prefers 'continuous' drawing of fluid to the surface in the
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sense that the taking up of fluid step is part of a
continuously repeated series of steps" (FR3, emphasis omitted)
and that "clearly, the steadily repeated pumping action of the
Sorensen device is 'continuous', even if it is not steady"
(EA5). We disagree. "Continuous" means "uninterrupted," not
periodic.
It is clear that Sorensen does not operate continuously.
Sorensen discloses a two-step process of analyzing samples.
First, a sample is drawn into and analyzed in a sample chamber
18 which is detachably mounted in the drill string during
drilling, and which contains a plurality of electrical probes
28 for in situ analysis and transmission of the results to an
instrument and control unit 9 on the surface. Second, the
samples themselves are pumped up to the ground surface for a
second analysis. Sorensen discloses that this process may
take place at short intervals (col. 2, lines 49-50; col. 7,
line 21), indicating that there is not a continuous flow of
sample.
However, the Examiner makes the argument that "the use of
the word 'may' [in the "wherein" clause of claim 1] allows the
claimed limitation to be met by any device which IS CAPABLE OF
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continuous operation, whether or not the preferred use of that
device is in fact continuous" (EA4). We agree that if the
structure of Sorensen has a continuous passage structure that
inherently (i.e., without modification) would permit
continuous operation, the "wherein" clause of apparatus
claims 1 and 8 would be met. On the other hand, if Sorensen
requires modification to provide continuous operation, it
would be necessary to provide some motivation. See
In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed.
Cir. 1990) ("While Mathis' apparatus may be capable of being
modified to run the way Mills' apparatus is claimed, there
must be a suggestion or motivation in the reference to do
so."). Method claim 13 requires a step of "continuous"
operation which is not disclosed in Sorensen and, so, is not
met. Sorensen discloses that when the pressure in air line 31
is relieved, a new pore gas/liquid sample penetrates into the
chamber 18 and its extension 20, following which the next
working cycle is repeated (col. 7, lines 18-28). Since there
appears to be free flow from the chamber 18 into extension 20,
it appears the downhole end of the apparatus in Sorensen
permits continuous operation.
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The real question is whether Sorensen teaches or suggests
a swivel joint that permits continuous monitoring while the
drill is rotating. The Examiner finds that "Sorensen also
either inherently uses or at least suggests the use of a
swivel connection" (EA5). The Examiner relies on column 7,
lines 20+, for the suggestion that the device extracts samples
while the drill bit is rotating and sends them to the
instrument and control unit while the drill bit is rotating.
Column 7, lines 18-23, state: "When the pressure in air line
31 is relieved, a new pore gas/liquid sample penetrates into
the sample chamber 18 and its extension 20, following which
the working cycle described above is repeated, and, as will be
appreciated, this may take place at short intervals and
without interrupting the drilling process . . . ." The
Examiner also states (FR5-6) that Sorensen strongly suggests a
swivel connection at column 6, lines 17-19 and 61-65.
Column 6, lines 17-21, discloses: "The sample chamber
extension 20 is connected with the surface of the ground via
an air line 31 and a liquid line 32, respectively, which are
connected via the water/air sluice 7 and the pipe or hose
connections 10 with the instrument and control unit 9."
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Column 6, lines 61-65, states: "whereby its content of water
is displaced up through the liquid line 32 and further on from
this via the water/air sluice 7 to the instrument and control
unit 9 . . . ."
Appellant argues that "a structure capable of making a
fluid connection between a rotating drill and a stationary
analyzer is not disclosed in [Sorensen] because it would be
unnecessary to the operation of Sorensen's device" (Br6-7).
For example, because Sorensen discloses sending samples to the
surface in cycles at short intervals (col. 7, lines 18-23), it
does not teach or suggest the need for continuous monitoring.
Appellant argues that there is no evidence that the samples
are (or are capable of being) pumped up while the drill is
rotating (Br7): "While Sorensen does say that this sampling
may be done 'without interrupting the drilling process,' it is
clear from this statement that he means the drill string does
not need to be disassembled or removed from the well."
Appellant argues (Br8) that the Examiner erred in finding that
Sorensen disclosed continuous drawing up of vapor while the
rig is rotating and compounded the error by the circular
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reasoning that a swivel joint must be there to provide
continuous monitoring while the rig is rotating.
We are not persuaded that Sorensen fairly discloses or
suggests a swivel-type joint that permits continuous
withdrawal of vapors while the drill rig is rotating. It is
difficult to discern the extent of the teachings of Sorensen
after reading Appellant's disclosure without the use of
hindsight. However, since the swivel assembly is said to be
Appellant's invention, more than mere speculation about what
is disclosed is required to establish a prima facie case. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967) (it is improper to resort to speculation or unfounded
assumptions to supply deficiencies in the factual basis for a
rejection).
Because Sorensen states that the working cycle is
repeated, the statement that monitoring may take place at
short intervals and "without interrupting the drilling
process" does not unambiguously imply (as the Examiner
assumes, FR6) that fluid is continuously conveyed through line
32 to the unit 9 through a swivel-type connection. Appellant
has a valid point that "without interrupting the drilling
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process" can mean without the drill string needing to be
disassembled or removed from the well. This interpretation
has support in the background of the invention which describes
that prior art U.S. Patent 4,669,554 required pulling the ram
with the sample out of the formation.
The fact that the air line 31 and liquid line 32 are
connected via the sluice 7 to the instrument and control unit
9 does not say anything about the nature of the sluice
connection. The Examiner states that "[g]iven the ubiquitous
presence of such connections in oilfield equipment, the
Examiner suspects that this omission stems not from the
novelty of the connection, but instead from its universal
familiarity" (EA5; see also EA13 referring to the "ubiquitous
swivel-type joint"). This appears to be nothing more than
speculation because the Examiner has not provided any evidence
that swivel-type fluid joints were well known in drilling
equipment; such evidence would have been highly relevant to
the rejection. As far as we are aware, the term "sluice" does
not have any known meaning that would suggest a swivel
connection that permits continuous fluid flow and the Examiner
has not attempted to establish one. We attach a copy of the
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definition of sluice from Knight's American Mechanical
Dictionary (Hurd and Houghton 1876) and a copy of U.S. Patent
5,341,966 to Blankmeiser et al. which shows a cellular rotary
sluice. Neither shows a continuous rotary to stationary
connection. Since the drilling machine in Sorensen transmits
its rotary motion to the auger bit 1 via power transmission
shaft 5 which extends down through the water/air sluice 7 and
is connected to bit 1, it is not apparent how lines inside the
auger can be connected to a stationary box outside the auger.
Lastly, we come to Johnston. The Examiner finds that
"Johnston et al. exemplify prior art means for connecting
passages inside a rotating drill string to stationary outside
equipment . . ." (FR2-3) and considers "Johnston et al. merely
to illustrate an example of the ubiquitous swivel-type joint"
(EA13). Appellant argues (Br12-13):
The combination of dome 37 and vent pipe 40 of Johnston
appears to be capable of passing vented gas into the
atmosphere while the drill is rotating. Thus, Johnston
et al. does disclose a primitive form of a swivel
connection. However, Johnston et al. contains no
disclosure, teaching or suggestion of actually doing
anything with this vented gas, and it simply escapes into
the atmosphere.
No one of skill in the art would even think of
combining the "swivel body" taught by Johnston et al.
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with the Sorensen device without the hindsight benefit of
having read Appellant's specification.
We have read Johnston and find no teaching that the drill
string is intended to rotate while the dome 37 of the sound
pickup unit 31 is over the open end of the drill string. The
sound pickup unit 31 is placed over the end of a stationary
drill string during a test to measure fluid flow by the noise
produced. Since the sound pickup unit is mounted to drill
string the dome 37 cannot rotate relative to the drill string.
If this is the best evidence that can be produced to show a
swivel-type joint, then we must question the Examiner's
finding that swivel-type joints were "ubiquitous" in the
drilling art and that this is the reason no details are
provided in Sorensen.
In summary, the Examiner has failed to establish that the
combination would have made obvious a swivel-type assembly for
permitting continuous vapor monitoring while the drill is
rotating and has failed to establish a prima facie case of
obviousness. The rejection of claims 1-13 is reversed.
REVERSED
Appeal No. 1997-4397
Application 08/395,698
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LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1997-4397
Application 08/395,698
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Judith M. Riley
GIFFORD, KRASS, GROH, SPRINKLE,
PATMORE, ANDERSON & CITKOWSKI, P.C.
280 N. Woodward Avenue, Suite 400
Birmingham, MI 48009-5394