Ex Parte Servaes et al

Patent Trial and Appeal Board

Sep 28, 2016

12934918 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/934,918 09/27/2010
52239 7590 09/30/2016
BAKER BOTTS L.L.P.
1500 SAN JACINTO CENTER
98 SAN JACINTO BL VD
AUSTIN, TX 78701-4039
FIRST NAMED INVENTOR
Luk Servaes
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.
074263.0626 1399
EXAMINER
GITLIN, ELIZABETH C GOTTLIEB
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
crystle. garbade@bakerbotts.com
juli.luong@BakerBotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUK SERVAES and STEFANO MANCINI
Appeal2014-009990
Application 12/934,918
Technology Center 3600
Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Luk Servaes and Stefano Mancini ("Appellants") seek review, under
35 U.S.C. § 134(a), of the Examiner's decision, as set forth in the Final
Office Action dated August 8, 2013 ("Final Act."), rejecting claims 1--4 and
6-20. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Halliburton Energy Services, Inc. as the real
party in interest. Appeal Br. 3.
Appeal2014-009990
Application 12/934,918
BACKGROUND
The disclosed subject matter "relates generally to drilling operations,
and more specifically to a system and method for one-trip hole enlargement
operations." Spec. 1, 11. 6-7. Claims 1 and 13 are independent. Claim 1 is
reproduced below, with emphasis added:
1. A drilling assembly, comprising:
a drill bit including a drilling diameter;
an adjustable diameter reamer being coupled
with, and positioned uphole from the drill bit, the
reamer being adjustable between a first diameter
and a second diameter that is greater than the first
diameter; and
a hole opener being coupled with, and
positioned uphole from the reamer;
the hole opener including one or more fixed
blades and having a cutting diameter greater than
the first diameter of the reamer and the drilling
diameter of the drill bit, and less than the second
diameter of the reamer.
REJECTIONS
1. Claims 1--4, 6, 8-16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Johnston (US 6,070,677, issued June 6, 2000)
and Neff(US 5,074,356, issued Dec. 24, 1991).2
2. Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Johnston, Neff, and Dewey (US 2007/0007043 Al,
published Jan. 11, 2007).
2 Although the statement of the Rejection addresses claim 5 (Final
Act. 2, 4), that claim was canceled (Amendment dated Sept. 27, 2012).
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Appeal2014-009990
Application 12/934,918
DISCUSSION
Rejection 1 - The rejection of claims 1--4, 6, 8-16,
and 18-20 under 35 U.S.C. § 103(a)
Independent claim 1 recites a "hole opener ... having a cutting
diameter greater than ... the drilling diameter of the drill bit" and
independent claim 13 recites a "hole opener with a diameter greater than ...
the drilling diameter of the drill bit." Appeal Br. 16, 17 (Claims App.). The
Examiner found that stabilizer 64 in Johnston satisfies each of these
limitations (Final Act. 3, 5) and that, "[i]n Figure 1 [of Johnston], the
diameter of the stabilizer ( 64) is shown to be greater than drill bit ( 66), thus
it is also greater than the drilling diameter of the drill bit (66)" (id. at 2; Ans.
3, 4 (clarifying that the rejection relies on Johnston teaching "a stabilizer
with a diameter larger than the drill bit" and not on Neff teaching "a hole
opener with a diameter larger than a drilling diameter")).
Appellants argue that Johnston is "completely silent as to the relative
sizes of the drill bit and the stabilizer." Appeal Br. 11. Appellants also
contend that the Examiner improperly relies on Figure 1 of Johnston
regarding these relative sizes because Johnston does not indicate that the
drawings are to scale. Id. at 12 (citing MPEP § 2125).
The Examiner responds that "drawings must be evaluated for what
they reasonably disclose and suggest to one of ordinary skill in the art" and
"may be relied upon for what they reasonably show." Ans. 4. The
Examiner states that Johnston's Figure 1 "clearly depict[s] a stabilizer (64)
with a diameter larger than the drill bit (66)" because Figure 1 "clearly
depicts the stabilizer (64) adjacent the wellbore and the drill bit (66) with a
space between the drill bit and the wellbore." Id.
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Appeal2014-009990
Application 12/934,918
We agree with Appellants that Johnston does not discuss the relative
sizes of the structures described and does not indicate its figures are to scale.
See In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) ("This ignores the fact
that [the prior art reference] does not disclose that [its] drawings are to scale.
Absent any written description in the specification of quantitative values,
arguments based on measurement of a drawing are of little value."). Figures
in prior art, however, may be relied on for aspects shown with "great
particularity." See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972); see also
id. (stating that, in a prior decision, the court did "not mean that things patent
drawings show clearly are to be disregarded").
Here, we agree with Appellants that the Examiner erred in relying on
the relative sizes of wellbore 11, stabilizer 64, and pilot bit 66, as depicted in
Figure 1 of Johnston, because the relative sizes are not shown with sufficient
particularity to support the Examiner's findings. See Mraz, 455 F.2d at
1072. Moreover, in the relevant findings, the Examiner compares the
diameter of stabilizer 64 to the diameter of pilot bit 66. See Final Act. 2;
Ans. 3, 4. The limitations at issue, however, each recite that the "hole
opener" has a diameter greater than "the drilling diameter of the drill bit."
Appeal Br. 16, 17 (Claims App.) (emphasis added). The Specification, in
tum, defines the "drilling diameter" of the drill bit as "the diameter of the
borehole created by the drill bit." Spec. 6, 11. 21-22. The Examiner has not
shown sufficient support for the conclusion that the diameter of pilot bit 66
is necessarily the same as the diameter of the borehole created by pilot bit
66. See Final Act. 2 ("In Figure 1, the diameter of the stabilizer (64) is
shown to be greater than drill bit (66), thus it is also greater than the drilling
diameter of the drill bit (66)." (emphasis added)).
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Appeal2014-009990
Application 12/934,918
For these reasons, we do not sustain the rejection of claims 1 and 13.
We also do not sustain the rejection of claims 2--4, 6, 8-12, 14--16, and 18-
20, which depend from one of claims 1 and 13.
Rejection 2 - The rejection of claims 7 and 17 under 35 U.S.C. § 103(a)
Claim 7 depends from claim 1, and claim 1 7 depends from claim 13.
Appeal Br. 16, 18 (Claims App.). The Examiner's reliance on Dewey does
not remedy the deficiencies in the combined teachings of Johnston and Neff,
discussed above. Thus, for the same reasons discussed above, we do not
sustain the rejection of claims 7 and 17.
DECISION
We REVERSE the decision to reject claims 1--4 and 6-20 under
35 U.S.C. § 103(a).
REVERSED
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