GEOLOG S.r.l.Download PDFPatent Trials and Appeals BoardJan 1, 20212020000701 (P.T.A.B. Jan. 1, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/856,539 09/16/2015 Antonio CALLERI 23428-030 2839 81841 7590 01/01/2021 John Alumit 135 South Jackson Street, Suite 200 Glendale, CA 91205 EXAMINER MCKENZIE, THOMAS B ART UNIT PAPER NUMBER 1776 NOTIFICATION DATE DELIVERY MODE 01/01/2021 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): john@alumitip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTONIO CALLERI Appeal 2020-000701 Application 14/856,539 Technology Center 1700 Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and JULIA HEANEY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–12, 15, 16, and 18–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as GEOLOG S.R.L. Appeal Br. 2. Appeal 2020-000701 Application 14/856,539 2 CLAIMED SUBJECT MATTER The claims are directed to a method for the extraction of gaseous components contained in drilling mud in a managed pressure drilling system. Spec. ¶ 1. Claim 1 is the sole independent claim. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for the extraction of gases contained in a drilling mud in a managed pressure drilling system, said managed pressure drilling system comprising a closed and pressurized return piping connecting a closed and pressurized drilling well with a mud gas separator, the pressure of a bottom of said closed and pressurized drilling well being controlled by regulating automatic valves, the method comprising: - extracting, by an extraction duct, a quantity of said drilling mud from the closed and pressurized return piping, said drilling mud circulating in said closed and pressurized return piping after rising from said closed and pressurized drilling well; - sending said quantity of said drilling mud to a degasser installed on said close[d] and pressurized return piping; - extracting gases from said quantity of said drilling mud by means of said degasser in order to analyze said gases; wherein said method further comprises: - monitoring of said quantity of said drilling mud extracted by said extraction duct from the closed and pressurized return piping, and - a regulation of said quantity of said drilling mud to be extracted by said extraction duct from said closed and pressurized return piping, said regulation being performed on the basis of said monitoring in such a way that the volumetric flow rate of drilling mud which is sent to said degasser is constant. Appeal 2020-000701 Application 14/856,539 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Johnson US 4,397,189 Aug. 9, 1983 Kerherve US 2004/0265176 A1 Dec. 30, 2004 Dolson US 2006/0044207 A1 Mar. 2, 2006 Leuchtenberg US 2011/0067923 A1 Mar. 24, 2011 Guerriero US 2014/0067307 A1 Mar. 6, 2014 REJECTIONS The Examiner maintains the following rejections on appeal: 1. Claim 1 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Ans. 3–4. 2. Claim 1 under 35 U.S.C. § 112(b) as being indefinite. Id. at 4– 5. 3. Claim 1 under 35 U.S.C. § 103 as being unpatentable over Leuchtenberg or the prior art system taught in the Background section of the Specification (“prior art system”) in view of Guerriero. Id. at 5–9. 4. Claims 2–4, 18, and 19 under 35 U.S.C. § 103 as being unpatentable over Leuchtenberg or the prior art system, Guerriero, and Kerherve. Id. at 6, 9–13. 5. Claims 5–9, 11, 15, and 16 under 35 U.S.C. § 103 as being unpatentable over Leuchtenberg or the prior art system, Guerriero, Kerherve, and Johnson. Id. at 6, 10–13. 6. Claims 10, 12, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Leuchtenberg or the prior art system, Guerriero, Kerherve, Johnson, and Dolson. Id. at 6, 12–13. Appeal 2020-000701 Application 14/856,539 4 OPINION Rejection 1 In Rejection 1, the Examiner finds claim 1 lacks written description support because, although the Specification describes a managed pressure drilling system including a drilling well, the Specification does not teach that the well is “closed and pressurized,” as claim 1 requires. Ans. 4. Appellant argues “one skilled in the art would know that a managed pressure drilling system requires that the entire well must be closed and pressurized.” Appeal Br. 8 (emphasis added). Appellant cites Managed- Pressure Drilling: What it is and What it is Not, Kenneth P. Malloy et al., Society of Petroleum Engineers (2009) (“Exhibit I”) and managed pressure drilling, https://www.glossary.oilfield.slb.com/en/Terms/m/managed_ pressure_drilling.aspx (last visited May 29, 2019) (“Exhibit II”) to support this argument. Id. The test for sufficiency of a written description is whether the disclosure “‘clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (alteration in original) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). The disclosure must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. at 1351. Possession means “possession as shown in the disclosure” and “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. Appeal 2020-000701 Application 14/856,539 5 Appellant’s arguments, which focus on whether one of ordinary skill in the art would understand or know that a managed drilling system requires a well to be closed and pressurized, do not identify a reversible error in the Examiner’s rejection. The Examiner finds the extrinsic evidence provided in Exhibits I and II demonstrates that managed pressure drilling is “a broad category of drilling techniques that do not necessarily require a closed and pressurized drilling well.” Ans. 14. Specifically, the Examiner finds Exhibit II teaches that “managed pressure drilling overcomes problems associated with conventional methods by ‘managing surface pressure to maintain a downhole pressure that prevents the flow of formation fluids into the wellbore while keeping pressure well below the fracture initiation pressure’” and the techniques a managed pressure drilling process may use to accomplish this include “control of back pressure, adjusting mud density, modifying fluid rheology, adjusting annular fluid level, controlling circulating friction and incorporating hole geometry in the well construction.” Id. at 14–15. The Examiner finds that one of ordinary skill in the art would understand that techniques such as adjusting mud density, adjusting annular fluid level, controlling circulating friction, and incorporating hole geometry in the well construction “do not necessarily require the use of a closed and pressurized drilling well.” Id. at 15. Although this is not the proper standard for determining written description support, as outlined above, the Examiner makes this finding in response to Appellant’s argument that “one skilled in the art would know that a managed pressure drilling system requires that the entire well must be closed and pressurized.” Appeal Br. 8. The Examiner’s quotations from Exhibit I support the Examiner’s finding that a managed Appeal 2020-000701 Application 14/856,539 6 pressure drilling system does not require “a closed and pressurized drilling well.” The Examiner further finds that Exhibit II’s definition of managed pressure drilling being “[a]n adaptive drilling method used to precisely control the annular pressure throughout a wellbore” also does not establish that managed pressure drilling requires a closed and pressurized drilling well because Exhibit I discloses that conventional, open well techniques can control the pressure throughout a wellbore. Id. at 16; Exhibit II, 1. Appellant has not filed a Reply Brief to respond to the Examiner’s findings. Exhibit I also states that “[p]ressures cannot be adequately monitored until the well is shut-in and becomes a closed vessel.” Exhibit I, 2. The Examiner finds that this fails to establish that a managed pressure drilling system requires a closed and pressurized drilling well, especially in view of Exhibit II’s teachings that a managed pressure drilling process may use techniques (e.g., adjusting mud density) that do not require a closed and pressurized drilling well. Ans. 15–16. As noted above, Appellant has not filed a Reply Brief to respond to these findings. Appellant further argues there are several passages in the Specification to support a closed and pressurized well. Appeal Br. 8–9 (citing Spec. ¶¶ 3, 4, 18). The Examiner finds the passages do not imply that a drilling well is closed and pressurized and cites Exhibit I to demonstrate that a conventional system having an open well may control wellbore fluid pressure. Ans. 17. As noted above, Appellant has not filed a Reply Brief to respond to the Examiner’s findings and explanations. Paragraphs 3, 4, and 18 of the Specification do not expressly disclose that a managed pressure drilling system may include a closed and pressurized drilling well. Further, the Appeal 2020-000701 Application 14/856,539 7 disclosures of controlling bottom hole pressure and pressurizing mud in these paragraphs are also insufficient to infer such a requirement or to reasonably convey to those skilled in the art that Appellant had possession of the claimed subject matter (i.e., a managed pressure drilling system that includes a closed and pressurized drilling well) as of the filing date. Instead, the record, including both intrinsic and extrinsic evidence, supports the Examiner’s finding that control of bottom hole pressure may be accomplished via techniques that do not require a closed and pressurized well. For example, Exhibit I discusses conventional drilling operations having wellbores open to the atmosphere, including conventional overbalanced operations, where overbalanced is defined “as the condition where the pressure exerted in the wellbore is greater than the pore pressure in any part of the exposed formations.” Exhibit I, 1–2. Furthermore, to the extent Appellant’s arguments rely on one of ordinary skill understanding that a managed pressure drilling process is a category or genus of a process that may use a closed and pressurized drilling well (e.g., as a species or subcategory of that genus or category), the evidence in the record does not support such an understanding. For instance, as noted above, Exhibit I discloses that “[p]ressures cannot be adequately monitored until the well is shut-in and becomes a closed vessel.” Exhibit I, 2. However, it is unclear whether this statement relates to a managed pressure drilling process or generally describes an issue with conventional open well processes. This sentence concludes a section under the heading “Conventional Drilling Operations.” Id. at 1. Also, earlier sentences in the same paragraph as this sentence describe “an open-vessel environment” and Appeal 2020-000701 Application 14/856,539 8 state “[b]ecause the vessel is open, increased flow, not pressure, from the wellbore is often an indicator of an imminent well control incident.” Id. at 2. Exhibit II also discloses that “[m]anaged pressure drilling (MPD) (yellow) overcomes drilling problems by managing surface pressure to maintain a downhole pressure that prevents the flow of formation fluids into the wellbore while keeping pressure well below the fracture initiation pressure.” Exhibit II, 1. Exhibit II, however, does not define what “managing surface pressure” means or encompasses (e.g., whether this includes a closed and pressurized drilling well). Exhibit II also states that managed pressure drilling is “[a]n adaptive drilling method used to precisely control the annular pressure throughout a wellbore.” Exhibit II, 1. However, Exhibit II does not disclose that controlling “the annular pressure” can include using “a closed and pressurized drilling well,” as claim 1 recites. Instead, Exhibit II discloses a list of techniques for managed pressure drilling (e.g., “adjusting mud density”) that do not appear to use “a closed and pressurized drilling well,” as discussed above. As a result, a preponderance of the evidence supports the Examiner’s rejection. The record does not reasonably convey that one of ordinary skill in the art would have understood that managed pressure drilling includes operations using a closed and pressurized drilling well and, therefore, one of ordinary skill in the art would have understood that Appellant had possession of the claimed subject matter (e.g., due to the disclosure of a managed pressure drilling system in Appellant’s Specification). Appeal 2020-000701 Application 14/856,539 9 Accordingly, we affirm the Examiner’s rejection of claim 1 as failing to comply with the written description requirement.2 Rejection 2 The Examiner concludes claim 1 “is indefinite because it is unclear if the ‘drilling mud circulating in said closed and pressurized return piping’ is the same as the ‘quantity of said drilling mud’ previously described in the claim.” Ans. 4. The Examiner also concludes that claim 1 is indefinite because these limitations are written out of order. Id. at 24. Appellant does not respond to this rejection. See generally Appeal Br. We, therefore, summarily affirm the rejection of claim 1 as indefinite.3 2 Although the Examiner only rejected claim 1 for failing to comply with the written description requirement, claims depending from claim 1 also have the same written description issues by virtue of their dependency. 3 For purposes of Examination, the Examiner proffered an interpretation of claim 1. We add “said” prior to the first instance of “drilling mud” in the Examiner’s interpretation so the interpretation more clearly refers to prior “drilling mud” limitations: circulating [said] drilling mud in said closed and pressurized return piping after said drilling mud rises from said closed and pressurized drilling well and extracting, by an extraction duct, a quantity of said drilling mud from the closed and pressurized return piping, said drilling mud circulating in said closed and pressurized return piping after rising from said closed and pressurized drilling well. Ans. 5. Appeal 2020-000701 Application 14/856,539 10 Rejection 3 In Rejection 3, the Examiner finds Leuchtenberg discloses a method of operating a managed pressure drilling system that includes closed and pressurized return piping that connects a closed and pressurized drilling well with a mud/gas separator. Ans. 7. The Examiner finds the prior art system described in the Background section of the Specification also discloses a method of operating a prior art managed pressure drilling system that comprises a closed and pressurized piping connected to a mud/gas separator. Id. The Examiner concludes it would have been obvious for the drilling well to be closed and pressurized because it is part of a managed pressure drilling system. Id. at 7–8.4 The Examiner finds Leuchtenberg and the prior art system do not disclose a degasser for analyzing the gases in drilling mud. Id. at 8. The Examiner finds Guerriero discloses an analysis assembly for analyzing gases contained in drilling mud. Id. The Examiner concludes it would have been obvious to modify Leuchtenberg or the prior art system to connect Guerriero’s analysis assembly to Leuchtenberg’s return line or to the prior 4 To the extent the Examiner’s conclusion (i.e., that a closed and pressurized drilling well is an obvious variant of a managed pressure drilling system) appears to be inconsistent with the rejection under § 112(a), we note it is well established that, to provide written description support, the original disclosure “must do more than merely disclose that which would render the claimed invention obvious.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009); Ariad, 598 F.3d at 1352 (“[A] description that merely renders the invention obvious does not satisfy the [written description] requirement.”). Appellant does not dispute this conclusion. See generally Appeal Br. Appeal 2020-000701 Application 14/856,539 11 art system’s piping so a user could analyze gases in the drilling mud and determine the geological nature of a well, as Guerriero teaches. Id. Appellant contends that Guerriero’s system is not a managed pressure drilling system because its return piping is open, not closed and pressurized. Appeal Br. 7, 9–10. Appellant asserts it would not be possible to control the pressure of the drilling well’s bottom by regulating automatic valves and it would not have been obvious to combine Guerriero’s system with other managed pressure drilling systems. Id. at 7. Appellant argues that Guerriero, therefore, teaches away from the claimed invention and modifying a system of any of the other references in view of Guerriero would render those systems inoperable because they would no longer function as closed and pressurized drilling well systems. Id. at 9. Appellant’s arguments are unpersuasive because they do not address the Examiner’s rejection. As noted above, the Examiner finds Leuchtenberg describes a managed pressure drilling system that includes closed and pressurized return piping that connects a closed and pressurized drilling well with a mud/gas separator. Ans. 7. The Examiner also finds the prior art system described in Appellant’s Specification discloses a prior art managed pressure drilling system that comprises a closed and pressurized piping connected to a mud/gas separator and concludes it would have been obvious for the drilling well to be closed and pressurized. Id. at 7–8. Appellant does not dispute these findings or conclusion. The Examiner further finds that Guerriero discloses an analysis assembly for analyzing gases contained in drilling mud and concludes it would have been obvious to modify Leuchtenberg or the prior art system to use Guerriero’s analysis assembly. Id. at 8. Thus, the Examiner relies on Appeal 2020-000701 Application 14/856,539 12 Guerriero for the claimed extracting operation, not for a closed and pressurized drilling well. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Further, to the extent Appellant argues Guerriero’s system must be bodily incorporated into Leuchtenberg’s system or the prior art system, this is not the proper test for obviousness. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d at 425. Accordingly, we affirm the Examiner’s rejection of claim 1 as unpatentable over Leuchtenberg or the prior art system and Guerriero. Rejections 4–6 Appellant does not present arguments for Rejections 4–6. See generally Appeal Brief. Therefore, we also affirm Rejections 4–6. CONCLUSION The rejections are affirmed. Appeal 2020-000701 Application 14/856,539 13 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1 112(a) Written Description 1 1 112(b) Indefiniteness 1 1 103 Leuchtenberg, prior art system, Guerriero 1 2–4, 18, 19 103 Leuchtenberg, prior art system, Guerriero, Kerherve 2–4, 18, 19 5–9, 11, 15, 16 103 Leuchtenberg, prior art system, Guerriero, Kerherve, Johnson 5–9, 11, 15, 16 10, 12, 20 103 Leuchtenberg, prior art system, Guerriero, Kerherve, Johnson, Dolson 10, 12, 20 Overall Outcome 1–12, 15, 16, 18–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation