Ex Parte Graf et al

Patent Trials and Appeals Board

Jul 8, 2019

13572338 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/572,338
100183 7590
Adolph Locklar
Michael Locklar
4615 S.W. Freeway
Suite 630
Houston, TX 77027
FILING DATE FIRST NAMED INVENTOR
08/10/2012 Stephan Graf
07/10/2019
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.
SDI.010002 1026
EXAMINER
HAWKINS, DOMINIC E
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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@adolphlocklar.com
docket@al-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHAN GRAF and MATTHEW A. WHITE 1
Appeal2018-007540
Application 13/572,338
Technology Center 2800
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-5, 7-21, and 24--43. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM-IN-PART.
1 Scientific Drilling International, Inc. is identified as the real party in
interest (App. Br. 5).
Appeal2018-007540
Application 13/572,338
Appellants claim an antenna 104 for transfer of information along a
drill string comprising one or more windings 108 to form an antenna coil,
each winding including a long side 110 parallel with the longitudinal axis of
the drill string and a short side 112 perpendicular to the longitudinal axis
(independent claims 1, 24). Appellants also claim a system for
communication in a borehole comprising a first cross-coil antenna of the
type previously described affixed to a drill string and, for example, a second
cross-coil antenna positioned on the drill string (independent claims 8, 30).
In addition, Appellants claim a method of borehole communication
comprising: providing a first cross-coil antenna of the type previously
described affixed to a drill string; providing, for example, a second cross-
coil antenna; actuating a voltage source in electrical communication with the
first cross-coil antenna to produce an electrical current in the first cross-coil
antenna; inducing a magnetic field to form a current on the drill string; using
the current to transmit data among the drill string; and receiving the data at,
for example, the second cross-coil antenna (remaining independent claims
13, 35).
A copy of representative claims 1, 8, and 13, taken from the Claims
Appendix of the Appeal Brief, appears below.
1. An antenna for transfer of information along a drill
string, the antenna comprising:
one or more windings arranged to form an antenna coil,
each winding including a long side and short side, the antenna
coil affixed to the drill string, the long side of each winding of
the antenna coil comprising a plurality of segments wherein at
least one of the plurality of segments is aligned essentially
parallel with the longitudinal axis of the drill string, and
wherein the short side of each winding comprises a plurality of
segments wherein at least one of the plurality of segments is
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Application 13/572,338
aligned essentially perpendicular to the longitudinal axis of the
drill string and essentially perpendicular to the long side of
the winding.
8. A system for communication in a borehole
compnsmg:
a first cross-coil antenna comprising one or more
windings arranged to form an antenna coil, each winding
including a long side and short side, wherein the antenna coil
is affixed to a drill string, wherein the drill string includes a
mud motor and a drill bit, wherein the long side of each
winding of the antenna coil comprises a plurality of segments
wherein at least one of the plurality of segments is aligned
essentially parallel with the longitudinal axis of the drill string,
and wherein the short side of each winding comprises a
plurality of segments wherein at least one of the plurality of
segments is aligned essentially perpendicular to the longitudinal
axis of the drill string and essentially perpendicular to the long
side of the winding; and
an insulated gap electrode, toroidal antenna, a band
electrode, or a second cross-coil antenna positioned on the drill
string.
13. A method of borehole communication comprising:
providing a first cross-coil antenna comprising one or
more windings arranged to form an antenna coil, each winding
including a long side and short side, wherein the antenna coil is
affixed to a drill string, wherein the drill string includes a mud
motor and a drill bit, wherein the long side of each winding of
the antenna coil comprises a plurality of segments wherein at
least one of the plurality of segments is aligned essentially
parallel with the longitudinal axis of the drill string, and
wherein the short side of each winding comprises a plurality of
segments wherein at least one of the plurality of segments is
aligned essentially perpendicular to the longitudinal axis of the
drill string and essentially perpendicular to the long side of the
winding;
providing a voltage source in electrical communication
with the first cross-coil antenna;
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Application 13/572,338
providing an insulated gap electrode, toroidal antenna, a
band electrode, or a second cross-coil antenna;
actuating the voltage source to produce an electrical
current in the first cross-coil antenna;
inducing a magnetic field to form a current on the drill
string;
using the current to transmit data along the drill string;
and
receiving the data at the insulated gap electrode, toroidal
antenna, band electrode, or second cross-coil antenna.
Under pre-AIA 35 U.S.C. § I02(b), the Examiner rejects claims 1-5,
7-9, 13-16, 18-21, 24--31, and 35--43 as anticipated by Sinclair et al., (US
2010/0117855 Al, pub. May 13, 2010) ("Sinclair") (Final Action 21-31).
Under pre-AIA 35 U.S.C. § I03(a), the Examiner rejects remaining
claims 10-12, 17, 32-34, and 39 as unpatentable over Sinclair in view of
Price et al., (US 2008/0211687 Al, Sept. 4, 2008) ("Price") (id. at 31-32).
The § 102 Rejection
For the reasons given by the Examiner and below, we affirm the
rejection of claims 1-5, 7-9, and 24--31 as anticipated by Sinclair.
In response to the Examiner's finding that Sinclair's receiver coils 108
satisfy the antenna limitation of independent claim 1, Appellants argue
"Sinclair does not teach using receiver coils 108 to 'transfer [ ofJ information
along a drill string' as claimed" (App. Br. 17). Appellants' argument is
unpersuasive. Sinclair expressly teaches receiver coils 108 output an
electrical signal indicative of data transferred along the drill string to
circuitry located within the L WD tool in the borehole or located at the
surface of the borehole (see, e.g., Sinclair ,r,r 38, 59, 61, 93, 95, 96).
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Appeal2018-007540
Application 13/572,338
Appellants disagree with the Examiner's finding that a single winding
of Sinclair's receiver coil is adequate to satisfy the "one or more windings"
limitation of claim 1 (App. Br. 20-21 ). This disagreement apparently is
based on Appellants' incorrect belief that the "plurality of segments"
recitation of claim 1 requires plural windings (id. at 21 ). In fact, this
recitation defines the parts of an individual winding that comprise the long
and short sides of the winding as indicated by the Examiner (Final Action 22
("a plurality of segments (parts of the coil that form the long and/or short
sides)")) and not specifically disputed by Appellants (see generally App.
Br.).
Appellants challenge the Examiner's finding that Figures 2A-2C of
Sinclair show receiver coils 108 having long and short sides as required by
claim 1 (App. Br. 21 ). According to Appellants, "Figures 2A-2C merely
disclose a series of rectangles positioned about a drill collar referred to as
receiver sensors [i.e., receiver coils 108]" (id.). However, an artisan
reasonably would infer that the depicted rectangles represent receiver coils
having a rectangular shape with long and short sides. See In re Preda, 401
F.2d 825,826 (CCPA 1968) (In determining whether a prior art reference
teaches the claimed subject matter under 35 U.S.C. § 102, "it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.").
Appellants argue independent claim 8 distinguishes from Sinclair for
the reasons given with respect to claim 1 and for the additional reason that
Sinclair fails to disclose, for example, a second cross-coil antenna as claimed
(App. Br. 22). Appellants acknowledge the Examiner's finding that Figure
2A of Sinclair shows multiple receiver coils 108 (i.e., first and second cross-
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Application 13/572,338
coil antennas as claimed) but argues "Figure 2A merely discloses a series of
rectangles positioned about a drill collar referred to as receiver sensors"
(id.). As explained above, an artisan reasonably would infer that the
rectangles represent receiver coils having a rectangular shape. See Preda,
401 F .2d 826. Such rectangular-shaped receiver coils are indistinguishable
from the cross-coil antennas defined by claim 8.
Appellants argue that Sinclair's ferromagnetic core is not coated with
an insulator as required by dependent claim 4 (App. Br. 25). However,
Appellants fail to explain why this claim requirement is not satisfied by the
insulation on the copper wire surrounding the ferromagnetic core (see
Sinclair ,r 30). Furthermore, it is reasonable to believe that Sinclair's step of
filling the channels containing receiver sensors with non-conducting
material (id. ,r 101) necessarily would coat the ferromagnetic core of these
sensors.
Appellants contest the Examiner's finding that paragraph 20 of
Sinclair discloses the dependent claim 9 requirement of the first cross-coil
antenna being located between the drill bit and the mud motor (App. Br. 26-
27). Appellants argue that Sinclair's LWD tool (i.e., the tool housing a first
cross-coil antenna) is above mud motor 18 (id.). As support for this
argument, Appellants accurately quote Sinclair's disclosure that "the L WD
tool may be placed above mud motor 18" (Sinclair ,r 20 (underlining added);
see also App. Br. 26). However, in light of the permissive term "may," an
artisan reading this disclosure would at once envisage the L WD tool placed
below the mud motor (i.e., wherein the first cross-coil antenna is located
between the drill bit and the mud motor as claimed). See Blue Calypso, LLC
v. Groupon, Inc., 815 F.3d 1331, 1343 (Fed. Cir. 2016) ("[A] reference can
anticipate a claim ... if a person of skill in the art, reading the reference,
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Application 13/572,338
would 'at once envisage' the claimed arrangement or combination." (internal
citations omitted)).
The foregoing discussion of claims 1, 4, 8, and 9 also applies to their
corresponding claims 24, 27, 30, and 31.
For the above-stated reasons and those given by the Examiner,
Appellants do not show error in the§ 102 rejection of claims 1-5, 7-9, and
24--31.
Regarding independent claim 13 ( and corresponding independent
claim 35), Appellants argue that the Examiner fails to identify where
Sinclair teaches the claim step of "inducing a magnetic field to form a
current on the drill string" (App. Br. 22-23).
We agree.
In the rejection, the Examiner addresses this claim step by stating
"[Sinclair's] par 62 lines 1-10 discloses that 310 induces the transmitters of
104 intro [ sic, into] producing a magnetic field around the L WD tools"
(Final Action 25). However, we find no teaching in paragraph 62 of Sinclair
that the magnetic field forms a current on the drill string. In the Answer, the
Examiner responds to Appellants' argument by contending that "the
reflected waves [resulting from Sinclair's induced magnetic field] would
come back to the drill collar creating current along the drill string" (Ans. 13
citing Sinclair ,r,r 23, 24, 29). Our study of the cited paragraphs of Sinclair
reveals no evidence supporting the Examiner's contention.
In the record of this appeal, the Examiner does not establish support
for the finding that Sinclair discloses "inducing a magnetic field to form a
current on the drill string" as required by independent claims 13 and 3 5 and
by the claims depending thereon. Accordingly, we do not sustain the§ 102
rejection of claims 13-16, 18-21, and 35--43.
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Application 13/572,338
The§ 103 Rejection
Appellants fail to address or even acknowledge the § 103 rejection of
claims 10-12, 17, 32-34, and 39 over Sinclair in view of Price (see
generally App. Br.). Apparently, this failure is due to Appellants' incorrect
belief that all of the claims on appeal are rejected under 35 U.S.C. § 102(b)
as anticipated by Sinclair (see id. at 16).
We sustain the§ 103 rejection of claims 10-12 and 32-34 based on
the findings of fact and conclusions of law expressed by the Examiner.
However, we do not sustain the§ 103 rejection of claims 17 and 39 because
this rejection does not supply the earlier mentioned deficiency in the § 102
rejection of parent independent claims 13 and 35.
Conclusion
In summary, we sustain the§ 102 and§ 103 rejections of claims 1-5,
7-12, and 24--34, but we do not sustain the§ 102 and§ 103 rejections of
claims 13-21 and 35--43.
The Examiner's decision is affirmed-in-part.
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-IN-PART
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