WEATHERFORD TECHNOLOGY HOLDINGS, LLC

Patent Trials and Appeals Board

Aug 20, 2021

2021000553 (P.T.A.B. Aug. 20, 2021)

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.
15/505,538 02/21/2017 Matthew David KNIGHT WFT-5923-PCT-US 5675
150256 7590 08/20/2021
SMITH IP SERVICES, P.C.
P.O. Box 997
Rockwall, TX 75087
EXAMINER
YAO, THEODORE N
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
08/20/2021 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):
mail@smithipservices.com
sally@smithipservices.com
scrawford@smithipservices.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATTHEW DAVID KNIGHT
____________

Appeal 2021-000553
Application 15/505,538
Technology Center 3700
____________

Before LISA M. GUIJT, MICHAEL L. WOODS, and LEE L. STEPINA,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1, 2, 6, 7, 9–11, 37, 42, 43, 46, 48, 74, 75, and 79. 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 Weatherford Technology Holdings, LLC
as the real party in interest. Appeal Br. 3.
Appeal 2021-000553
Application 15/505,538
2
THE INVENTION
Appellant’s invention generally relates to “a method of transmitting
instructions to control a downhole tool in a well.” Spec.2 1:2–3. Claims 1,
37, and 79 are the independent claims on appeal. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A downhole processing apparatus for controlling a
downhole tool in a well, the downhole processing apparatus
comprising:
a downhole processing device adapted to time a first
repeating time interval and a second repeating time interval
different than the first repeating time interval,
wherein the first repeating time interval is
associated with a first downhole sensor configured to
receive first operating instructions sent via a first
transmission mechanism,
wherein the second repeating time interval is
associated with a second downhole sensor configured to
receive second operating instructions sent via a second
transmission mechanism different that the first
transmission mechanism; and
a data storage device configured to store received first and
second operating instructions,
wherein the downhole processing device is configured to
check the data storage device following each respective first and
second time interval, for the received first and second operating
instructions, and
wherein the downhole processing device is configured to
act upon the received first and second operating instructions to
control the downhole tool.

2 As provided in the record, we refer to the International Application
Published under the Patent Cooperating Treaty (PCT): WO 2016/034876
A1; published March 10, 2016.
Appeal 2021-000553
Application 15/505,538
3
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Tubel US 2001/0013412 A1 Aug. 16, 2001
Purkis US 2011/0248566 A1 Oct. 13, 2011
Roberson US 2014/0182845 A1 July 3, 2014
The following rejections are before us for review:
I. Claims 1, 2, 6, 9–11, 37, 42, 43, 46, 48, and 79 stand
rejected under 35 U.S.C. § 103 as unpatentable over Tubel
and Roberson.
II. Claims 7, 74, and 75 stand rejected under 35 U.S.C. § 103
as unpatentable over Tubel, Roberson, and Purkis.

OPINION
Rejection I
The Examiner finds that Tubel’s electronics control system 50
corresponds to the claimed downhole processing device and that Tubel’s
“downhole acoustic or electromagnetic transceiver that receives
communication information” corresponds to the claimed first downhole
sensor configured to receive first operating instructions received via a first
transmission mechanism, as claimed. Final Act. 5 (citing Tubel ¶¶ 40, 107)
(emphasis omitted); see also Ans. 29–30 (relying on Tubel for disclosing
that a surface operator sends control instructions to transceiver system 52)
(citing Tubel ¶ 107). The Examiner also relies on Tubel for disclosing that
operating instructions sent to transceiver 52 are sent to memory. Final Act.
5 (citing Tubel ¶ 123); see also Tubel, Fig. 6 (recorder 66A). The Examiner
Appeal 2021-000553
Application 15/505,538
4
further finds that Tubel’s electronics control system 50 is configured to
check a data storage device for operating instructions received from the
associated downhole sensor (i.e., transmission mechanism 52), as claimed.
Id. (citing Tubel ¶ 107).
The Examiner determines that although Tubel discloses “the use of
any suitable transmission mechanism,” Tubel fails to disclose “a plurality of
transmission mechanisms,” as claimed. Final Act. 5 (citing Tubel ¶ 42)
(emphasis added); Tubel ¶ 42 (“[c]ommunication and/or transmission of
power along the laterals can be accomplished, by way of, a hardwire,
acoustic transmission, electromagnetic transmission or any other suitable
method”); cf. claim 1 (requiring a second transmission mechanism different
than the first transmission mechanism”).
The Examiner finds that Roberson discloses “two distinct sensing
mechanisms”: “RIFD sensor assembly 1610,” which “measures RFID tags
1650,” and “additional sensor assembly 1620,” which “measures
temperature.” Ans. 32–33. Indeed, Roberson discloses that
a valve or tool may be operably associated with a data
interrogator tool [(i.e., for gathering data from sensors by sending
out an RF signal to RFID tags, for example) (see Roberson ¶¶ 2,
34)] at the far end of the casing. . . . Upon detection of a
determinative presence or absence of sensors in close proximity
. . . the data interrogator tool sends a signal to actuate the tool
(e.g., valve).
Id. ¶ 89. In other words, the Examiner relies on Roberson’s RIFD sensor
assembly (or data interrogator tool) as a second downhole sensor configured
to receive second operating instructions (i.e., actuate the tool, or valve) sent
via a second transmission mechanism (i.e., RFID transmission from RFID
tags), which is different from the transmission mechanisms (i.e., acoustic or
Appeal 2021-000553
Application 15/505,538
5
electromagnetic) of Tubel’s first downhole sensor (i.e., transceiver 52). The
Examiner notes that Appellant’s Specification also uses data (i.e., pressure
changes”) to communicate operating instructions, in a similar way as
Roberson’s RFID tags. Ans. 31.
The Examiner reasons that it would have been obvious to have
modified Tubel’s downhole production well control system to have a “a
plurality of sensing/transmission mechanisms . . . for redundancy in the
event that one communication means becomes inoperable.” Final Act. 7; see
also Ans. 33–35 (providing evidence that it is well known and desirable to
have “redundant and duplicative transmission mechanisms in subterranean
wellbore tools”).3
First, Appellant argues that Roberson fails to disclose “transmitting
any operating instructions to [the] downhole module via RFID tags,” but
rather, “Roberson discloses counting a number of tags sensed within a given
time interval,” such that the Examiner’s proposed modification of Tubel
does not result in a second transmission mechanism different than a first
transmission mechanism as required by claim 1. Appeal Br. 12 (citing
Roberson ¶¶ 89, 149); see also Reply Br. 12–14.

3 The Examiner also relies on Roberson for disclosing claim limitations
relative to first and second repeating time intervals, reasoning that it would
have been obvious to have modified Tubel’s downhole production well
control system to conduct “[p]eriodic checking,” as taught in Roberson, “for
the conservation of battery power of the processor.” Final Act. 5–7 (citing
Roberson ¶ 2). Because Appellant does not present arguments addressing
these findings or reasoning by the Examiner, we omit them here. Appeal Br.
11–23; see In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (stating “the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”).
Appeal 2021-000553
Application 15/505,538
6
We are not persuaded by Appellant’s argument. Roberson discloses
that the tags intentionally convey information to the data interrogation tool,
wherein “a determinative presence or absence of sensors in close proximity
indicat[es] the termination of the cement slurry,” such that “the data
interrogator tool sends a signal to actuate the tool (e.g., valve).” Roberson ¶
89. Thus, we agree with the Examiner that Roberson’s data interrogator tool
receives operating instructions (i.e., instructions to actuate the valve) via the
signals received by the tags.4
Second, Appellant argues that Roberson fails to disclose “a data
storage device configured to store received first and second operating
instructions.” Appeal Br. 12. Appellant submits that, in Roberson,
“operating instructions for the operating mode module 1630 are pre-loaded
before the downhole assembly 1600 [(including the RFID sensor assembly
1610, or tool interrogator, and additional sensor assembly 1620)] is
positioned in the well.” Id. (citing Roberson ¶¶ 155, 160).
The Examiner responds correctly that, as set forth supra, Tubel, not
Roberson, is relied on for disclosing a data storage device (i.e., recorder
66A), and Appellant’s argument does not apprise us of error in the
Examiner’s finding. Ans. 33. Regarding Appellant’s contention that “Tubel
cannot be relied upon to teach ‘storing operating instructions received from
an RFID tag,’” the Examiner is relying on Tubel’s data storage device
configuration, which receives stores the second operating instructions (i.e.,

4 See also Spec. 1:10–19 (referencing, as admitted prior art, “International
PCT Publication No WO2009/050517,” published April 23, 2009, which
discloses at page 14, lines 23–26 that “an RFID tag detector 62 in the form
of an antenna 62 . . . provides a first means to detect signals sent from the
surface (which are coded on to RFID tags at that surface by the operator and
then dropped into the well).”).
Appeal 2021-000553
Application 15/505,538
7
actuate tool) sent via RFID tags to Roberson’s tool interrogator. In other
words, Appellant is not addressing the rejection as articulated by the
Examiner. Reply Br. 14; see, e.g., Roberson ¶ 89.
Third, Appellant argues that “neither Tubel nor Roberson discloses or
suggests a downhole processing device that is configured to act upon the
received first and second operating instructions to control the downhole
tool.” Appeal Br. 13; Reply Br. 14. However, as discussed supra, we are
not persuaded by Appellant’s argument, because the Examiner relies on
Tubel’s electronics control system 50, which acts on the operating
instructions received by transceiver 52, and also received by an interrogator
tool, as Tubel is modified by Roberson, to control the downhole tool.
Fourth, Appellant argues that “[n]o convincing reasoning has been
presented as to why a person skilled in the art would have been motivated to
make the invention recited in claim 1, based on the Tubel and Roberson
disclosure.” Appeal Br 14; Reply Br. 15. In particular, Appellant submits
that “redundancy . . . does not explain why a person skilled in the art would
have used different transmission mechanisms in the Tubel control system.”
Appeal Br. 14; Reply Br. 16. Appellant explains that, in Tubel, “[i]t would
make no sense to operate a particular downhole tool in response to a
different downhole parameter sensed by a different type of sensor.” Appeal
Br. 14.
We do not find Appellant’s argument persuasive because Roberson
discloses that it is known to use alternative transmission mechanisms for
communicating information to sensors.5 In other words, Appellant does not

5 Notably, claim 1 does not recite the source of the operating instructions,
which must be received by the sensors.
Appeal 2021-000553
Application 15/505,538
8
provide sufficient argument or any evidence as to why a person of ordinary
skill in the art must opt for a duplicate transceiver system to receive
operating instructions via acoustic or electromagnetic signals, which are then
stored in a data storage device, rather than use Roberson’s tool interrogator
to receive operating instructions via RFID tags, which are then stored in a
data storage device.
Appellant further argues that
[c]learly, the different time intervals would be completely
unnecessary (and a person of ordinary skill in the art would not
be motivated to provide the different time intervals) if
redundancy were the motivation to provide multiple
transmission mechanism. If one transmission mechanism is
inoperable, there simply is no reason to use a different time
interval for a redundant transmission mechanism.
Reply Br. 17. However, this argument does not address the Examiner’s
reasoning for modifying Tubel’s downhole production well control system
to incorporate the repeating time intervals, as required by claim 1 and as
disclosed in Roberson: “Periodic checking would allow for the conservation
of battery power of the processor.” Final Act. 7 (citing Roberson ¶ 2).
Accordingly, we sustain the Examiner’s rejection of claim 1. The
Examiner relies on similar findings and reasoning in the rejection of
independent claims 37 and 79 as relied on for independent claim 1 supra
(Final Act. 9–10), and Appellant presents similar arguments for the
patentability of independent claim 37 and 79 as presented for independent
claim 1 supra (Appeal Br. 16–23). Thus, for essentially the same reasons
stated supra, we also sustain the Examiner’s rejection of independent claims
37 and 79. Appellant also chose not to present arguments for the
patentability of dependent claims 2, 6, 9–11, 42, 43, 46, and 48, and thus, for
Appeal 2021-000553
Application 15/505,538
9
essentially the same reasons stated supra, we also sustain the Examiner’s
rejection of dependent claims 2, 6, 9–11, 42, 43, 46, and 48. Id.
Rejection II
Appellant chose to rely only on the arguments presented for
independent claims 1 and 37 for the patentability of dependent claims 7, 74,
and 75 depending therefrom. Appeal Br. 24. Thus, for essentially the same
reasons stated supra, we also sustain the Examiner’s rejection of dependent
claims 7, 74, and 75.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 6, 9–11, 37,
42, 43, 46, 48, 79
103 Tubel, Roberson 1, 2, 6, 9–
11, 37, 42,
43, 46, 48,
79

7, 74, 75 103 Tubel, Roberson,
Purkis
7, 74, 75
Overall
Outcome
1, 2, 6, 7,
9–11, 37,
42, 43, 46,
48, 74, 75,
79

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