14655764 (P.T.A.B. Apr. 30, 2018)

Ex Parte Strachan

Patent Trial and Appeal BoardApr 30, 2018

14655764 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/655,764 15604 7590 Baker Botts L.L.P. FILING DATE 06/26/2015 05/02/2018 910 Louisiana Street, One Shell Plaza Houston, TX 77002 FIRST NAMED INVENTOR Michael John Strachan 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. 2013-IP-076706Ul US 4037 EXAMINER FULLER, ROBERT EDWARD ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 05/02/2018 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): susan.stewart@bakerbotts.com debie.hernandez@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL JOHN STRACHAN 1 Appeal 2018-003321 Application 14/655,764 Technology Center 3600 Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and ERIC C. JESCHKE, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL 1 Halliburton Energy Services, Inc. ("Appellant") is the applicant as provided for under 3 7 C.F .R. Â§ 1.46 and is identified as the real party in interest. App. Br. 2. Appeal 2018-003321 Application 14/655,764 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1- 3, 5, 6, 10, 11, 14--17, 21, and 22. Claims 8, 9, 12, and 13 are withdrawn, and claims 4 and 7 are objected to. App. Br. 2. Claims 18-20 are allowed. Final Act., Summary. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. THE INVENTION The claims are directed to systems and methods for directional subterranean drilling. Spec. 1 :5---6. Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: Hahn Chen 1. A method comprising: rotating a drill bit in a borehole by rotating an upper section of a casing string without substantially rotating a lower section of the casing string, the upper section of the casing string being operatively coupled to the drill bit; and radially diverting the drill bit from the longitudinal axis of the borehole with a rotary steerable system that is coupled to the lower section of the casing string and disposed at least partially within the lower section of the casing string. REFERENCES US 6,419,033 Bl US 2005/0236187 Al REJECTIONS July 16, 2002 Oct. 27, 2005 Claims 1, 2, 5, 10, 11, 14, 15, and 17 stand rejected under 35 U.S.C. Â§ 102(a)(l) as anticipated by Chen. Final Act. 5. Claims 3 and 6 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Chen and Hahn. Id. at 8; Ans. 3. 2 Appeal 2018-003321 Application 14/655,764 Claims 16, 21, and 22 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Chen. Final Act. 9. 2 ANALYSIS Claims 1, 2, 5, 10, 11, 14, 15, and 17-Anticipated by Chen Both independent claims 1 and 11 recite a "rotary steerable system" (RSS) that is "disposed at least partially within the lower section of the casing string." App. Br. 18, 19 (Claims App.). The Examiner finds that Chen's rotary steerable device (RSD), which is "at the lower end" of Chen's casing string, satisfies this limitation. Final Act. 3--4 (emphasis omitted). The Examiner contends that the term "within the casing string" is "much broader" than requiring the rotary steerable system to be "positioned radially inside of an actual tubular." Id. at 4. In the Answer, the Examiner alternatively contends that Chen's RSD housing 112 "is simply another element in the 'casing string."' Ans. 5. According to the Examiner, "there is no structural recitation within the claim (or even in the specification) that differentiates element 112 of Chen [the RSD housing] from the claimed 'casing string."' Id. at 4. The Examiner further asserts that the Specification specifies that a casing string may include other structures besides casing pipe, such as a swivel and centralizers, and concludes that if "the casing string 'may' include a swivel and 'may' include centralizers, then it 'may' include a rotary steerable housing." Id. Appellant disputes that Chen teaches a rotary steerable system that is at least partially within the casing 2 The Examiner withdrew a rejection of claims 1, 3, and 10 as anticipated by Hahn, and a rejection of claims 21 and 22 as unpatentable over Hahn and Chen. Ans. 3. 3 Appeal 2018-003321 Application 14/655,764 string, and, in particular, disputes that Chen's RSD housing can reasonably be considered part of the casing string. App. Br. 5-7, 9-11. We are not persuaded that Chen discloses an RSS that is disposed at least partially within the casing string, and therefore decline to sustain this rejection. Figure 8 of Chen, on which the Examiner relies (Final Act. 5), depicts a casing string 144 and RSD 110 attached below the casing string. Chen, Fig. 8. We disagree with the Examiner that the requirement that the RSS be at least partially "within" the casing string is satisfied if it is attached "at the lower end of' (i.e., below) the casing string. "Within" means "inside of." See http://www.dictionary.com/browse/within?s=t (last visited Apr. 24, 2018). It does not mean "below." Thus, Chen's RSD 110 is not at least partially within Chen's casing string 144 merely because it is "at the lower end" of Chen's casing string. Final Act. 3--4. The Examiner's alternative argument, that Chen's RSD housing 112 is part of the casing string (Ans. 5), is also not persuasive. As an initial matter, the Examiner does not explain how characterizing the RSD housing as part of the casing string means that Chen describes the limitation at issue. In any event, we are not persuaded that one of ordinary skill in the art would consider the RSD housing as part of the casing string. The Specification describes an embodiment of the invention having an RSS, describes the RSS as having an RSS housing, and describes and depicts the RSS and its housing as distinct from (and at least partially within) a casing string. See Spec., 10:3---6, Figs. 2A, 2B, 3. Likewise, Chen distinguishes the casing string from the RSD and RSD housing. Chen i-f 44, Fig. 8. The most reasonable inference from these disclosures is that the RSS housing is structurally distinct from the casing string. The fact that the Specification 4 Appeal 2018-003321 Application 14/655,764 describes the casing string as possibly containing structures other than casing pipe does not mean that the casing string also includes the RSD housing. Following this logic, anything in the vicinity of the casing pipe could be considered part of the casing string-a result that would render the term virtually meaningless. "Anticipation requires the presence in a single prior art reference disclosure of each and every element of the claimed invention, arranged as in the claim." Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984). Because we are not persuaded that Chen discloses an RSS that is disposed at least partially within a casing string, when the term "casing string" is given its broadest reasonable interpretation consistent with the Specification, we decline to sustain the rejection of claims 1 and 11, and their dependent claims 2, 5, 10, 14, 15, and 17. Remaining Rejections The Examiner's remaining rejections of claims 3, 6, 16, 21, and 22 are premised on the Examiner's erroneous finding that Chen teaches an RSS that is at least partially within the casing string. Final Act. 8-10. The Examiner does not rely on any additional reference to cure this deficiency. Thus, for the reasons stated above, we decline to sustain these rejections. DECISION For the above reasons, the Examiner's rejections of claims 1-3, 5, 6, 10, 11, 14--17, 21, and 22 are reversed. REVERSED 5