Ex Parte Betancourt et alDownload PDFPatent Trial and Appeal BoardApr 18, 201411388274 (P.T.A.B. Apr. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SORAYA S. BETANCOURT, ANTHONY GOODWIN, GO FUJISAWA, OLIVER C. MULLINS, HANI ELSHAHAWI, JULIAN POP, TERIZHANDUR S. RAMAKRISHNAN, and LI JIANG ____________________ Appeal 2013-0106481 Application 11/388,274 Technology Center 2800 ____________________ Before JOSEPH F. RUGGIERO, ERIC S. FRAHM, and JASON V. MORGAN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL2 1 A related appeal, Appeal No. 2010-000429, was decided by the Patent Trial and Appeal Board (hereinafter, “the Board”) in Application 11/388,274 on May 1, 2012. 2 An Oral Hearing for this appeal scheduled for February 18, 2014, was waived. Appeal 2013-010648 Application 11/388,274 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 30-54. Claims 1-29 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). This appeal is related to Appeal No. 2010-000429 based on the same Application No. 11/388,274, where Appellants presented claims 30-54 which are very similar to claims 30-54 presented in the instant appeal (e.g., in previous claim 30 presented in Appeal No. 2010-000429), paragraph “b” of claim 30 contained additional language, “conducting a compositional analysis of the fluid sample located in the sampling tool while said sampling tool is in the borehole” (the additional language is italicized). In other words, claim 30 presented in the instant appeal is the same as claim 30 previously presented in Appeal No. 2010-000429, except that the bracketed language (see infra, claim 30) has been deleted (the terms located and while said sampling tool is have now been deleted).3 We affirm. Exemplary Claims Exemplary independent claims 30 and 45 under appeal read as follows, with emphases added to disputed portions of the claims, and 3 In view of the similarity of the claims presented in the instant appeal as compared to the claims presented in the previous appeal, Appeal No. 2010- 000429, we do not agree with Appellants’ statement in the Appeal Brief in the instant case that “No related appeal or interferences exist” (App. Br. 3). Notably, all Briefs in both the instant appeal and the previous appeal have been signed by the same attorney. The same attorney requested an Oral Hearing in the instant case on August 28, 2013, confirmed attendance for the hearing on November 8, 2013, and then waived said hearing by telephone prior to the hearing date of February 18, 2014. Appeal 2013-010648 Application 11/388,274 3 bracketing added to deleted portions of the claims (as compared to claim 30 presented in previous related Appeal No. 2010-000429): 30. A method of investigating a hydrocarbon bearing geological formation traversed by a borehole, comprising: a) acquiring a sample of fluid in the formation with a formation fluid sampling tool located in the borehole; b) conducting a compositional analysis of the fluid sample [located] in the sampling tool [while said sampling tool is] in the borehole, wherein said compositional analysis includes an identification of methane, and an identification of at least one additional hydrocarbon or group of hydrocarbons; c) relating the compositional analysis to a model of the thermodynamic behavior of the fluid in order to make determinations regarding fluid sampling, well completion, or production procedures. 45. An apparatus for investigating a hydrocarbon bearing geological formation traversed by a borehole, comprising: a) a borehole tool including means for acquiring a sample of fluid in the formation and means for conducting a compositional analysis of the sample of fluid in the borehole, wherein said compositional analysis includes an identification of methane, and an identification of at least one additional hydrocarbon or group of hydrocarbons; and b) means for relating the compositional analysis to a model of the thermodynamic behavior of the fluid in order to make determinations regarding fluid sampling, well completion, or production procedures. Appeal 2013-010648 Application 11/388,274 4 The Examiner’s Rejections4 (1) The Examiner rejected claims 30, 31, 41, 44-47, and 53 under 35 U.S.C. § 102(e) as being anticipated by DiFoggio (US 6,683,681 B2). Final Rej. 9-12. (2) The Examiner rejected dependent claims 32-35 and 48-51 as being unpatentable under 35 U.S.C. § 103(a) over DiFoggio and Goodwin (GB 2,345,137 A). Final Rej. 13-14. (3) The Examiner rejected dependent claims 36 and 40 as being unpatentable under 35 U.S.C. § 103(a) over DiFoggio and Schroer (US 6,274,865 B1). Final Rej. 14-15. (4) The Examiner rejected dependent claims 37-39 as being unpatentable under 35 U.S.C. § 103(a) over DiFoggio, Schroer, and Vasquez (US 5,622,223). Final Rej. 15-17. (5) The Examiner rejected dependent claims 42 and 54 as being unpatentable under 35 U.S.C. § 103(a) over DiFoggio. Final Rej. 17. (6) The Examiner rejected dependent claim 43 as being unpatentable under 35 U.S.C. § 103(a) over DiFoggio and DeLaune (US 5,780,850). Final Rej. 17-18. (7) The Examiner rejected dependent claim 52 as being unpatentable under 35 U.S.C. § 103(a) over DiFoggio and Vasquez. Final Rej. 18-19. 4 Separate patentability is not argued for claims 32-40, 42, 43, and 48-52, and 54 (rejections 2-7 listed infra), other than to assert that (i) the additional references applied fail to cure the deficiencies of DiFoggio, and (ii) these claims are therefore patentable for the same reasons as provided as to claims 30 and 45. In addition, separate patentability is not argued for claims 31, 41, 44, 46, 47, and 53. In view of the foregoing, we will address independent claims 30 and 45 in our analysis, and the remaining claims will stand/fall with their respective independent claim. Appeal 2013-010648 Application 11/388,274 5 Appellants’ Contentions (1) Appellants contend (App. Br. 9; Reply Br. 4) that the Examiner erred in rejecting claims 30, 31, 41, 44-47, and 53 under 35 U.S.C. § 102(e), for numerous reasons, including: (a) DiFoggio fails to “describe performing its processes downhole,” and column 1, lines 31-58 of DiFoggio does not support the rejection (App. Br. 9); (b) The Examiner’s analysis in the Final Rejection and the Advisory Action mailed February 7, 2013, fail to encompass claims 30 and 45 as “amended to emphasize that sample collection and analysis is conducted while the fluid is downhole” (App. Br. 9); (c) independent claims 30 and 45 “are amended to reflect conducting a compositional analysis of the fluid sample in the sampling tool in the borehole and relating the compositional analysis to a model of the thermodynamic behavior of the fluid” (emphasis added (Reply Br. 4)); (d) nothing in DiFoggio, including column 1, lines 31-58 describes or implies the method limitations of claim 30 (Reply Br. 4); and (e) DiFoggio’s column 3, lines 48-55 and column 9, lines 1-6 describe analyzing drilling fluid contamination and sample clean up, and not compositional analysis (Reply Br. 4). (2) Appellants contend that the Examiner erred in rejecting claims 32- 40, 42, 43, 48-52, and 54 under § 103(a) as being unpatentable over DiFoggio and/or various secondary/tertiary references for the same reasons provided with regard to the anticipation rejection of claims 30 and 45, and Appeal 2013-010648 Application 11/388,274 6 because the various secondary/tertiary references fail to cure the deficiencies of DiFoggio as argued with respect to claims 30 and 45 (App. Br. 9), namely, that DiFoggio “does not describe or imply downhole fluid analysis” as recited in the amended claims (App. Br. 9). Principal Issue on Appeal Did the Examiner err in rejecting (i) claims 30, 31, 41, 44-47, and 53 as being anticipated, and (ii) claims 32-40, 42, 43, 48-52, and 54 as being obvious, because DiFoggio fails to teach or suggest conducting fluid analysis in a borehole as set forth in limitation (b) of independent claim 30, and/or limitation (a) of independent claim 45? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Appeal Brief (App. Br. 9) and Reply Brief (Reply Br. 4) that the Examiner has erred, as well as the Examiner’s response to Appellants’ arguments in the Appeal Brief (see Ans. 3-4). We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Rej. 1-19), and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 3-4) in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. “During examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Appeal 2013-010648 Application 11/388,274 7 Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)); see also In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997). In our view, claims 30 and 45 still encompass the disclosure of DiFoggio, even with the recent amendment. Specifically, the change in claim 30 (presented for appeal in Appeal No. 2010-000429) from “conducting a compositional analysis of the fluid sample located in the sampling tool while said sampling tool is in the borehole” to the current form on appeal in the instant case of “conducting a compositional analysis of the fluid sample in the sampling tool in the borehole” removes the requirement that the fluid sample actually be located in the sampling tool while the sampling tool is in the borehole, thus making claim 30 in the instant appeal broader than claim 30 of the previous appeal. In addition, the change in claim 45 (presented for appeal in Appeal No. 2010-000429) from “means for conducting a compositional analysis of the sample of fluid” to “means for conducting a compositional analysis of the sample of fluid in the borehole” (claim 45 on appeal in the instant case) only adds a recitation that the borehole tool include a means for conducting a compositional analysis of the sample of fluid in the borehole. This subject matter was already encompassed by the language “conducting a compositional analysis of the fluid sample located in the sampling tool while said sampling tool is in the borehole” found in claim 30 previously on appeal, which was rejected by the Examiner and affirmed by the Board in the previous appeal. Further, a broadest reasonable interpretation of the new language found in claim 45 on appeal is that either that (i) the means for conducting a compositional analysis of the sample of fluid be physically Appeal 2013-010648 Application 11/388,274 8 located in the borehole, or (ii) the means for conducting a compositional analysis conducts a compositional analysis of a sample of fluid that was previously in the borehole, but not currently in the borehole – i.e., the borehole tool includes a means for conducting a compositional analysis of a fluid sample, after the fluid sample has been removed from the borehole (note that no “sampling tool” is recited in claim 45, as is recited in claim 30). In this light, a broad but reasonable interpretation of claim 30 reveals the language of claim 30 on appeal simply to require (i) “conducting a compositional analysis of the fluid sample” that is or was located in the sampling tool in the borehole at some point in time (i.e., downhole) and not necessarily currently in the borehole, and (ii) “relating the compositional analysis to a model of the thermodynamic behavior of the fluid” (not necessarily while the fluid or the sampling tool are still downhole). As stated by the Board in the Decision of prior Appeal No. 2010- 000429 (Dec. 5-6): DiFoggio discloses “[t]he estimation of formation fluid properties” such as “[t]hermodynamic and physical properties of petroleum fractions and products” that “are important in the appropriate design and operation of equipment in petroleum production, processing and transportation” (col. 10, ll. 62-66). “Petroleum fractions and products are mixtures of many hydrocarbon compounds from different groups” (col. 11, ll. 26- 27). DiFoggio performs downhole refractometry and spectrometry to obtain parameters of the fluid sampled downhole (see col. 3, ll. 23-52; col. 4, ll. 61-65; col. 8, ll. 57- 65; col. 9, ll. 9-30; col. 10, l. 22 to col. 11, ll. 52 discussing refractometer assembly 205 and spectrometers 209 and 321). DiFoggio also discloses that “to estimate various thermodynamic and physical properties” (col. 11, l. 25), measured parameters (i.e., based on a compositional analysis) are used to estimate “many physical properties such as critical Appeal 2013-010648 Application 11/388,274 9 properties, equations of state parameters, viscosity, thermal conductivity, diffusivity, heat capacity and heat of vaporization” (col. 11, ll. 35-39). (Dec. 5-6). Appellants’ contentions (1)(a) and (b) supra, that (i) DiFoggio fails to perform sample collection and analysis and/or processing downhole, and (ii) column 1, lines 31-58 of DiFoggio does not support the rejection (App. Br. 9), are not persuasive for at least three reasons. First, the Examiner relies upon column 4, lines 61-65 (“downhole fluid-characterization tool, which can perform in situ analysis of formation and wellbore fluids”), Figure 2 (showing the downhole tool), and the description at column 10, line 22 through column 11, line 52 (describing operations of the “downhole refractometer”) as disclosing the downhole processing and fluid analysis as set forth in claims 30 and 45 on appeal, not column 1, lines 31-58. Second, column 1, lines 31-58 pertains to DiFoggio’s background statement defining the prior art, and in any event, discloses not simply that “fluids can be collected downhole in tanks for subsequent analysis in a laboratory at the surface” (col. 1, ll. 51-52), but that “samples can be analyzed downhole in real time” (col. 1, ll. 54-55) and that the invention relates to “performing downhole analysis of samples at reservoir conditions of temperature and pressure” (col. 1, ll. 56-58). Third, we note that Appellants’ own disclosure, shown in Figure 4 and described from page 15, line 14 through page 16, line 8 of the originally filed Specification, reveals at least some processing occurring in element 18 labeled “electronics and processing” (shown in Figure 4 as located outside of the borehole) which is “on the formation surface” (Spec. 15:17) and not downhole. Appeal 2013-010648 Application 11/388,274 10 Appellants’ contentions (1)(c)-(e) listed supra and relating to compositional analysis, are not timely (i.e., presented in the Appeal Brief) and are therefore waived. Specifically, Appellants’ new line of argument in the Reply Brief that DiFoggio fails to disclose a compositional analysis of the fluid in the sampling tool in the borehole, where the compositional analysis relates to a model of the thermodynamic behavior of the fluid, could have been presented in the Appeal Brief in the first instance, and were not. Therefore, Appellants’ contentions (1)(c)-(e) are untimely and not considered.5 In any event, we further take note of the Board’s findings in the previous Decision mailed May 1, 2012, in Appeal No. 2010-000429. These findings included determinations with regard to DiFoggio’s disclosure of compositional analysis including analyzing the thermodynamic and physical properties of fluids in the sampling tool (Dec. 5-6 restated supra). 5 “Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (citations and quotation marks omitted). Appellants could have made the “compositional analysis” arguments in the original brief. The term “Reply Brief” is exactly that, a brief in reply to new rejections or new arguments set forth in an Examiner's Answer. Appellants may not present their arguments in a piecemeal fashion, holding back arguments until an examiner answers their original brief. Therefore, this basis for asserting error (e.g., based on DiFoggio’s asserted failure to disclose “compositional analysis”) is waived. See 37 C.F.R. § 41.37(c)(1)(vii). Of course, Appellants may present new arguments directly to the Examiner for consideration as part of a continuing application. Appeal 2013-010648 Application 11/388,274 11 Claims 30 and 45 do not require compositional analysis using a model of thermodynamic behavior of the fluid while the fluid is downhole as argued by Appellants (Reply Br. 4). Instead, claims 30 and 45 on appeal merely recite “relating the compositional analysis to a model of the thermodynamic behavior of the fluid” (claim 30) and a means for doing so (claim 45). Therefore, the compositional analysis of the fluid only need be related to a model of the thermodynamic behavior of the fluid, and could be done at a later time (e.g., when the fluid was outside of the borehole, as shown in Appellants’ Fig. 4 and Spec. 15:14-16:8). In view of the foregoing, Appellants’ arguments regarding claims 30 and 45, that DiFoggio does not perform sample collection, analysis, and/or processing downhole (see App. Br. 9), are not convincing. In light of the Examiner’s findings and reasoning, as set forth in the Answer, Appellants’ remaining arguments regarding claims 31-44 and 46-54 are no more persuasive than the arguments addressed above with respect to claims 30 and 45. CONCLUSIONS (1) The Examiner did not err in rejecting claims 30, 31, 41, 44-47, and 53 as being anticipated under 35 U.S.C. § 102(e). (2) The Examiner did not err in rejecting claims 32-40, 42, 43, 48-52, and 54 as being unpatentable under 35 U.S.C. § 103(a). Appeal 2013-010648 Application 11/388,274 12 DECISION The Examiner’s rejections of claims 30-54 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rwk Copy with citationCopy as parenthetical citation