HALLIBURTON ENERGY SERVICES, INC.

Patent Trials and Appeals Board

May 1, 2020

14759519 - (D) (P.T.A.B. May. 1, 2020)

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.
14/759,519 07/07/2015 Burkay Donderici 2012-061436 U1 US 6289
142050 7590 05/01/2020
HALLIBURTON ENERGY SERVICES, INC.
C/O PARKER JUSTISS, P.C.
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
EXAMINER
YOHA, CONNIE C
ART UNIT PAPER NUMBER
2825
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BURKAY DONDERICI
____________

Appeal 2019-003945
Application 14/759,519
Technology Center 2800
____________

Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1–12 and 19.3 We have jurisdiction under
35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed July 7, 2015 (“Spec.”);
Final Office Action dated Apr. 26, 2018 (“Final Act.”); Advisory Action
dated July 12, 2018 (“Advisory Act.”); Appeal Brief filed Sept. 20, 2018
(“Appeal Br.”); Examiner’s Answer dated Feb. 8, 2019 (“Ans.”); and Reply
Brief filed Apr. 1, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Halliburton Energy Services, Inc.
as the real party in interest. Appeal Br. 3.
3 According to the Appeal Brief, claims 13–18 are objected to as being
allowable but dependent upon a rejected base claim, claims 20–33, 36, and
37 are withdrawn, and claims 34 and 35 are allowed. Appeal Br. 5.
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We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to software, computer systems, and
computer-implemented media used in forming wellbores in subsurface
formations containing hydrocarbons, including a system for downhole
ranging from multiple wellbores using compensated electromagnetic
measurements. Spec. ¶¶ 1, 11; Abstract.
Claim 1 illustrates the subject matter on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A system for ranging in wellbores, the system
comprising:
a plurality of transmitters disposed in a plurality of
wellbores, each transmitter to transmit electromagnetic signals;
a plurality of receivers disposed in the plurality of
wellbores, each receiver to receive the electromagnetic signals
transmitted by the plurality of transmitters; and
a processor connected to the plurality of transmitters and
the plurality of receivers, the processor configured to:
receive a plurality of signals from the plurality of
receivers as sent by the plurality of transmitters,
from the plurality of signals, determine a plurality
of compensated signals, at least one compensated signal
determined from a first signal received from a first
wellbore of the plurality of wellbores and a second signal
received from a second wellbore of the plurality of
wellbores,
process the plurality of compensated signals to
determine a position of the first wellbore of the plurality
of wellbores relative to the second wellbore of the plurality
of wellbores, and
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provide the position of the first wellbore relative to
the second wellbore;
wherein, to determine the plurality of compensated
signals, the processor is configured to determine products of
values of the plurality of signals.
Appeal Br. 13 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
MacDonald US 2009/0194333 A1 Aug. 6, 2009
Bittar US 2011/0006773 A1 Jan. 13, 2011
REJECTION
On appeal, the Examiner maintains (Ans. 3) the following rejection:
Claims 1–12 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bittar in view of MacDonald. Final Act. 6.
OPINION
The Examiner determines the combination of Bittar and MacDonald
suggests a system for ranging in wellbores satisfying the limitations of claim
1 and concludes the combination would have rendered the claim obvious.
Final Act. 4, 6–7 (citing Bittar, Figs. 1, 5, ¶¶ 22, 43, 44; MacDonald,
Fig. 23).
Regarding the “wherein, to determine the plurality of compensated
signals, the processor is configured to determine products of values of the
plurality of signals” recitation of claim 1, the Examiner relies on paragraph
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43 of Bittar for disclosing that limitation of the claim. Id. at 4, 6. In
particular, the Examiner finds
Bittar discloses that the antennas detect[] multiple signals
(corresponding to the claimed “plurality of signals”), and that
“array processing techniques may be used to triangulate the
direction of the transmitter” if multiple antennas detect the
signals. . . . In order to triangulate the direction of the transmitter,
one skilled in the art might employ the widely used Pythagorean
Theorem. The Pythagorean Theorem, governed by the equation
a2 + b2 = c2, is one method widely used to triangulate a location.
In other words, one skilled in the art would find it apparent that
in triangulating the direction of the transmitter in Bittar, a
"product of values" is calculated because the Theorem dictates
the variables “a”, “b”, and “c” are squared.
Id. at 4 (citing Bittar ¶ 43).
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because the cited art does not teach or suggest that “to determine
the plurality of compensated signals, the processor is configured to
determine products of values of the plurality of signals,” as recited in the
claim. Appeal Br. 8–9; see also Reply Br. 8 (“[T]he applied combination of
Bittar and MacDonald do not teach or suggest that “to determine the
plurality of compensated signal[s], the processor is configured to determine
products of values of the plurality of signals” as recited in Claim 1.”).
The weight of the evidence supports Appellant’s argument. On the
record before us, we are not persuaded the Examiner has established by a
preponderance of the evidence that the combination of Bittar and
MacDonald teaches or suggests “wherein, to determine the plurality of
compensated signals, the processor is configured to determine products of
values of the plurality of signals,” as required by the claim. In re Oetiker,
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977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding the examiner bears the initial
burden of establishing a prima facie case of obviousness).
The portions of Bittar the Examiner cites and relies upon in the
rejection do not teach or suggest that “to determine the plurality of
compensated signals, the processor is configured to determine products of
values of the plurality of signals.” See Bittar, Figs. 1, 5, ¶¶ 22, 43, 44. In
particular, although paragraph 43 of Bittar mentions that “if multiple receive
antennas detect the signal, array processing techniques may be used to
triangulate the direction of the transmitter relative to the receiver array,” the
Examiner does not identify or direct us to any specific disclosure or
suggestion in the reference that a “processor is configured to determine
products of values of the plurality of signals” in the manner claimed.
Indeed, other than the brief mention at paragraph 43 that array processing
techniques may be used to triangulate the direction of the transmitter, the
cited portion of Bittar the Examiner relies upon does not further describe or
provide any details regarding what triangulating the direction of the
transmitter relative to the receiver array actually means or entails, nor does it
further describe or specify what array processing techniques may be used.
For example, the Bittar reference does not describe or provide any details as
to how triangulating the direction of the transmitter is performed and
whether it involves or relates at all to determining the plurality of
compensated signals, including determining products of values of the
plurality of signals in the context of claim 1.
The Examiner also does not identify sufficient evidence or
persuasively explain how or why one of ordinary skill in the art would have
been led to a processor “configured to determine products of values of the
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plurality of signals” based on the disclosure at paragraph 43 of Bittar. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring
“reasoning with some rational underpinning to support the legal conclusion
of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In particular, at page 6 of the Answer and pages 4 and 6 of the Final
Office Action, the Examiner does not identify evidence or provide reasoning
sufficient to support a finding that one of ordinary skill would have been
motivated to use the Pythagorean Theorem “to determine the plurality of
compensated signals,” as recited in the claim. As Appellant points out
(Appeal Br. 8–9), the squared variables a2, b2, and c2 of the Pythagorean
Equation are not values of a plurality of signals, but rather are variables
which represent the sides of a right triangle. The Examiner, however, does
not identify persuasive evidence or provide an adequate technical reason to
explain how or why the Pythagorean Theorem, which is used to calculate the
lengths of the sides of a right triangle, would be relevant to determining the
plurality of compensated signals in the manner claimed or why one of
ordinary skill in the art would have used the Pythagorean Theorem to
determine products of values of the plurality of signals in the context of the
claimed invention.
The Examiner’s assertion that “one skilled in the art would find it
apparent that in triangulating the direction of the transmitter in Bittar, a
‘product of values’ is calculated” (Final Act. 4) is conclusory and, without
more, insufficient to sustain the Examiner’s rejection. Kahn, 441 F.3d at
988 (holding “rejections on obviousness grounds cannot be sustained by
mere conclusory statements”).
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The Examiner’s assertions that “one skilled in the art might employ
the widely used Pythagorean Theorem” and the “Pythagorean Theorem . . .
is one method widely used to triangulate a location” (Final Act. 4) are
equally unpersuasive because they, too, are conclusory and do not
meaningfully address Appellant’s principal argument that the Examiner does
not identify sufficient evidence or persuasively explain why one of ordinary
skill in the art, based on Bittar’s disclosure at paragraph 43, would have used
the Pythagorean Theorem to arrive at a processor “configured to determine
products of values of the plurality of signals,” as recited in the claim.
Contrary to what the Examiner’s rejection seems to imply, the fact
that it may have been technically possible to configure a processor to operate
in such a manner, without more, does not necessarily mean or suggest it
would have been obvious to one of ordinary skill in the art to do so. See
Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”).
We, therefore, do not sustain the Examiner’s rejection of claim 1.
Because claims 2–12 and 19 depend from claim 1, we also do not sustain the
Examiner’s rejection of those claims.
Accordingly, we reverse the Examiner’s rejection of claims 1–12 and
19 under 35 U.S.C. § 103(a) as obvious over the combination of Bittar and
MacDonald.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12, 19 103(a) Bittar, MacDonald 1–12, 19

REVERSED