Ex Parte Uhl et al

Patent Trial and Appeal Board

Sep 27, 2016

11568056 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111568,056 0610412009
21186 7590 09/29/2016
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
James E. Uhl
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.
35296.52 8878
EXAMINER
LOBO,IANJ
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
uspto@slwip.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. UHL and NORMAN W ARPINSKI
Appeal2014-006939
Application 11/568,056
Technology Center 3600
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
r-T"I.. .6. .. .. , 1 .. .. ,..... ,_ T T r'1 I'\ l\ -1 ,..... Al r'" , "1 T"""1 • -, ine Appeuants' appeal unaer j) u.~.L. s U4 rrom me bxammer s
rejections of claims 11-18. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify the real party in interest as "Halliburton Energy
Services, Inc." (Appeal Br. 3.)
Appeal2014-006939
Application 11/568,056
STATEMENT OF THE CASE
The Appellants' invention "relates generally to microseismic events
and, more particularly, to a method for the in situ determination of the
distribution and orientation of fractures in subterranean formations."
(Spec. 1, 11. 5-7.)
Illustrative Claim
11. A method for calibration, comprising the acts of:
transmitting a trigger signal, through a wireline, to trigger a
seismic source located at a distal portion of the wireline;
detecting a first signal from the seismic source using a sensor
located at a proximal portion of the wire line;
identifying a first time value associated with the first signal;
detecting an event associated with the seismic source;
transmitting a second signal from a first receiver unit to an
analyzer, the second signal associated with the seismic
source event;
determining a micro seismic velocity of the seismic source event;
and
calibrating the microseismic velocity based on the time
difference between the first time value associated with the
first signal and a second time value associated with the
second signal.
Rejections
The Examiner rejects claims 11-14 and 18 under 35 U.S.C. § 102(a)
as anticipated by SPE 84488.2 (Final Action 2.)
The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as
unpatentable over SPE 84488 in view of Sahai. 3 (Id. at 3.)
2 SPE 84488 Improved Microseismic Fracture Mapping Using Perforation
Timing Measurements for Velocity Calibration of the SPE Annual Technical
Conference on October 5-8.
3 US 6,820,010 Bl, issued November 16, 2004.
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Application 11/568,056
The Examiner rejects claims 16 and 17 under 35 U.S.C. § 103(a) as
unpatentable over SPE 84488 in view of Sahai and further in view of the
Appellants' Admitted Prior Art. (Id. at 4.)
ANALYSIS
Claims 11 and 18 are the independent claims on appeal, with the rest
of the claims on appeal (i.e., claims 12-17) depending directly or indirectly
from independent claim 11. Independent claim 11 recites a method
comprising the steps of "detecting a first signal from [a] seismic source" and
"detecting an event associated with the seismic source." (Appeal Br.,
Claims App.) Independent claim 11 also recites the steps of "identifying a
first time value associated with the first signal," "determining a
microseismic velocity," and "calibrating the micro seismic velocity." (Id.)
Independent claim 18 recites similar detecting, identifying, determining, and
calibrating limitations. (Id.)
The claims on appeal are rejected as being unpatentable over SPE
84488 (co-authors: Warpinski, Uhl, Sullivan, Waltman, and Machovoe)
alone or in combination with other prior art. (See Final Action 2--4.) The
Appellants submitted a declaration under 37 C.F.R. § 1.131 on July 15, 2013
(hereinafter "Declaration") to remove this reference as a basis for the prior
art rejections.
According to the Appellants, the Declaration establishes "conception"
and "actual reduction to practice" of the claimed invention prior to the
effective date of SPE 84488. (Declaration 2.) To establish conception, the
Appellants must show that every limitation in the claim was known to them
at the time of the alleged conception. See Davis v. Reddy, 620 F.2d 885, 889
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Application 11/568,056
(CCP A 1980). Likewise, to establish actual reduction of practice, the
Appellants must show that each limitation was performed by them or on
their behalf. See Szekely v. Metcalf, 455 F.2d 1393, 1396(CCPA1972).
The Declaration includes a single Exhibit A, which shows
"perforation timing tests" performed prior to the effective date of SPE
84488. (Declaration 2.) According to the Appellants, Exhibit A shows a
first trace that corresponds to the step of detecting a first signal from a
seismic source and subsequent traces that correspond to the step of detecting
an event associated with the seismic source.
The Examiner determines that the Declaration "is ineffective to
overcome [SPE 84488]." (Final Action 4.) The Examiner explains "[t]here
is no mention ... anywhere in the Exhibit A of the specific recited steps
related to identifying a time value, determining a microseismic velocity[,]
and calibrating the microseismic velocity." (Answer 4.)
The Appellants argue that "[i]t was the Declaration that was meant to
provide the 'mention or suggestion'" of the identifying, determining, and
calibrating steps and that "Exhibit A was always meant to support/illustrate
the averments set forth, for example, in paragraph 4 of the Declaration."
(Reply Br. 5.) According to the Appellants, Declaration and Exhibit A,
taken together, provide the allegedly missing nexus between the evidence
and the claimed subject matter. (Id.)
We are not persuaded by this argument because the Appellants do not
state, in the Declaration, that the identifying, determining, and/or calibrating
steps were known to them at the time of the alleged conception. And the
Appellants do not state, in the Declaration, that these steps were performed
by them or on their behalf prior to the effective date of SPE 84488. Instead,
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Appeal2014-006939
Application 11/568,056
the Appellants' statements in the Declaration explain how all the steps
recited in claim 11 "can be related" to the steps used to collect the data
presented in Exhibit A. (Appeal Br. 15.) The Declaration explains, for
example, that a peak in the first trace "represents" the first time value, that
"[t]he velocity is determined" by taking a distance shown in the
Specification and "dividing it by the time gleaned from the data shown in
Exhibit A," and that "[t]he 'calibrating the microseismic velocity' step is
carried out when one obtains microseismic velocity." (Declaration 2-3.)
The Appellants argue that "Figure 13 of the SPE 84488 publication
was generated from the data in File2869, which is the same timing test data
presented in Exhibit A submitted with the Declaration." (Reply Br. 2.)
According to the Appellants, this "necessarily means that claims 11 and 18
were conceived and reduced to practice prior to the preparation of the
manuscript that ultimately published as SPE 84488." (Declaration 2.) We
are not persuaded by this argument because the Appellants do not contend
that the claimed subject matter was necessarily conceived and reduced to
practice by them prior to the preparation of the manuscript. The record does
not sufficiently establish that that the claimed identifying, determining,
and/or calibrating steps were performed by, or at the direction of, the
Appellants at any point in time, much less prior to the preparation of this
manuscript.
Accordingly, we are not persuaded that the Examiner errs in applying
SPE 84488 as prior art when rejecting the claims on appeal. As the
Appellants do not otherwise argue that the Examiner's rejections are
improper, we sustain the Examiner's rejection of claims 11-14 and 18 under
35 U.S.C. § 102(a) as anticipated by SPE 84488; we sustain the Examiner's
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Application 11/568,056
rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable over SPE
84488 in view of Sahai; and we sustain the Examiner's rejection of
claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over SPE 84488
in view of Sahai and further in view of the Appellants' Admitted Prior Art.
DECISION
We AFFIRM the Examiner's rejections of claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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