Ex Parte Moriarty

Patent Trial and Appeal Board

Jul 17, 2013

11127606 (P.T.A.B. Jul. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEITH A. MORIARTY
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Appeal 2011-006777
Application 11/127,606
Technology Center 3600
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Before MICHAEL L. HOELTER, LYNNE H. BROWNE and
RICHARD E. RICE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
Keith A. Moriarty (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 4-13, 16-20 and 23-291. Claims 2,
3, 14, 15, 21 and 22 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claim 1, with emphasis added, is reproduced below:
1. An apparatus for transmitting measurements
while drilling with a drill string equipped with a
mud motor, the apparatus comprising:
a measurement-while-drilling tool for
placement in the drill string beneath the mud
motor, the measurement-while-drilling tool having
a system for transmitting mud-pulse telemetry
signals upwardly through the mud motor and the
drill string at frequencies below approximately
1 Hz.

PRIOR ART
Chin US 5,459,697 Oct. 17, 1995
Comeau US 5,602,541 Feb. 11, 1997
Wisler US 5,812,068 Sep. 22, 1998
Hahn US 6,419,033 B1 Jul. 16, 2002

GROUNDS OF REJECTION
1. Claims 1, 5-7, 13, 17, 20 and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Comeau and Chin.

1Appellant has numbered claim 29 as claim “27” in the Claims Appendix.
We consider this to be a typographical error.
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2. Claims 1, 4-7, 9-13, 16, 17, 19, 20, 23, 24 and 26-29 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Wisler and Chin.
3. Claims 8, 18 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Comeau, Chin and Hahn.
4. Claims 8, 18 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wisler, Chin and Hahn.

OPINION
Rejection based on Comeau and Chin
Appellant argues claims 1, 5-7, 13, 17, 20 and 24 as a group. See Br.
5-8. We select independent claim 1 as the illustrative claim, and claims 5-7,
13, 17, 20 and 24 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
The Examiner finds that Comeau discloses all of the elements of
independent claim 1 except that “Comeau et al. do not disclose that the
signals are at frequencies below 1 Hz.” Ans. 3. The Examiner further finds
that “Chin et al. however do teach that is it [sic] common in the art to use
mud pulse transmission frequencies below 1 Hz (column 9, lines 23-25).”
Id. The Examiner concludes that it would have been obvious “to combine
the devices of Comeau et al. with the teachings of Chin et al. in order to use
commonly known frequencies that will lessen damping or interfere with
byproduct vibration frequencies from other components (column 9, line 25-
39).” Ans. 4.
Appellant argues that because Comeau “states that certain types of
data cannot be easily transmitted from the near bit location to the
measurement-while-drilling tool 46 ‘due to the presence of the intervening
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mud motor 24 . . .,’” the combination of references “fails to disclose, teach
or suggest a measurement-while-drilling tool having a system ‘for
transmitting mud-pulse telemetry signals upwardly through the mud
motor . . .’.” App. Br. 6; see also Reply Br. 6. We disagree and note that
Appellant has taken the above quotation out of context. As the Examiner
correctly finds (Ans. 3), Comeau further states
[i]t is therefore preferred that the information is
transmitted from a near bit location to the MWD
tool by frequency-modulated acoustic signals
indicative of the sensed information. However, the
information may also be transmitted
electromagnetically or inductively or by mud
pulses, for example, and by amplitude or phase
modulation or by time multiplexing rather than by
frequency modulation.
Comeau, col. 4, ll. 23-58 (emphasis added). Thus, Comeau clearly describes
“a system for transmitting mud-pulse telemetry signals upwardly through the
mud motor,” as required by independent claim 1.
Appellant argues that Comeau requires a “two-step process of first
transferring sensor data past the mud motor 24 to the measurement-while-
drilling tool 46, and then utilizing the measurement-while-drilling tool 46 to
transfer the information from a position above the mud motor to the
surface.” Reply Br. 6. Appellant’s argument does not apprise us of error in
the Examiner’s rejection as claim 1 does not preclude a two-step process of
transferring sensor data to the surface.
Appellant argues that “[a]lthough the Comeau et al. system may rely
on sensors 66 to provide data to the measurement-while-drilling tool 46, the
measurement-while-drilling tool 46 is located above the mud motor 24 as
clearly described and illustrated in the Comeau et al. reference.” Reply Br.
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6. We disagree. As the Examiner finds, Comeau describes “[t]he MWD
tool 46 includes a magnetometer or other magnetic sensor 66, a downhole
data storage device or computer 68, an MWD acoustic receiver 70, a power
supply 72, and an MWD mud pulse transmitter 74.” Comeau, col. 4, ll. 59-
62. Thus, the MWD tool includes components located both above and
below the mud motor, with those components located below the mud motor
meeting the claim language at issue.
Appellant further argues that Chin “fails to disclose, teach or suggest
elements missing from the Comeau et al. reference, and therefore no prima
facie case of obviousness can be established.” App. Br. 6. As we have
found no elements to be missing from the Comeau reference as relied upon
in the rejection of claim 1 discussed supra, this argument is not convincing.
The remaining arguments are based on Appellant’s incorrect
contention that Comeau does not describe “a measurement-while-drilling
tool for placement in the drill string beneath the mud motor, the
measurement-while-drilling tool having a system for transmitting mud-pulse
telemetry signals upwardly through the mud motor” as required by
independent claim 1. Accordingly, we need not address these arguments.
For these reasons, we sustain the Examiner’s rejection of claim 1 in
view of Comeau and Chin and claims 5-7, 13, 17, 20 and 24 which were not
argued separately and stand or fall therewith.

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Rejection based on Wisler and Chin
With respect to independent claims 1, 13 and 20, the Examiner finds
that Wisler2 discloses all of the elements of these claims except that
“Wis[l]er al. do not teach mud pulse frequencies below 1 Hz.” Ans. 4. The
Examiner further finds that “Chin et al. however do teach that is it common
in the art to use mud pulse transmission frequencies below 1 Hz (column 9,
lines 23-25).” Id. at 4-5. The Examiner concludes that it would have been
obvious “to combine the devices of Wis[l]er et al. with the teachings of Chin
et al. in order to use commonly known frequencies that will lessen damping
or interfere with by-product vibration frequencies from other components
(column 9, line 25-39).” Ans. 5.
Appellant argues “the reference [Wisler] does not appear to describe
or teach the use of mud-pulse telemetry from a measurement-while-drilling
system deployed beneath a mud motor for transmission of signals upwardly
through the mud motor.” App. Br. 9. We agree. Wisler’s measurement-
while-drilling embodiment is described in detail in column 10. As the
Examiner finds, this embodiment includes a MWD tool 2183. Ans. 4.
However, the Examiner’s finding that Wisler describes “the MWD tool
having a system for transmitting telemetry signals upwardly through the
mud motor and drill string by mud pulse (42 in figure 2a, within 20 of in
figure 1b)” (Ans. 4) is incorrect. In reference to the MWD embodiment,
Wisler describes the use of electromagnetic telemetry instead of mud pulse

2 The Examiner refers to the Wisler reference as “Wisier.” See Ans. 4. We
consider this to be a typographical error.
3 We note that the MWD tool includes more than resistivity device 218, and
is more properly referred to as module 216.
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telemetry. See Wisler, col. 10, ll. 37-47. Thus, Appellant’s argument is
persuasive.
For these reasons, we do not sustain the Examiner’s rejection of
independent claims 1, 13 and 20 in view of Wisler and Chin and claims 4-7,
9-12, 16, 17, 19, 23, 24 and 26-29 which depend either directly or indirectly
from one of claims 1, 13 or 20.

Rejection based on Comeau, Chin and Hahn
With regard to claims 8, 18 and 25, Appellant argues the “[a]ddition
of the Hahn et al. reference fails to obviate the deficiencies of disclosure
found in the Comeau et al. and Chin et al. references as discussed above.
Because no prima facie case of obviousness has been established, Appellant
respectfully requests withdrawal of the rejection of these dependent claims.”
App. Br. 12; see also Reply Br. 10. We have found no deficiencies in the
Examiner’s rejection of 1, 13 and 20 over Comeau and Chin as discussed
supra. Accordingly, we sustain the Examiner’s rejection of claims 8, 18
and 25 over Comeau, Chin and Hahn.

Rejection based on Wisler, Chin and Hahn
With regard to claims 8, 18 and 25, Appellant argues the “[a]ddition
of the Hahn et al. reference fails to obviate the deficiencies of disclosure
found in the Wisler et al. and Chin et al. references as discussed above.
Because no prima facie case of obviousness has been established, Appellant
respectfully requests withdrawal of the rejection of these dependent claims.”
App. Br. 13; see also Reply Br. 10. We agree as discussed supra.
Accordingly, we do not sustain the Examiner’s rejection of claims 8, 18
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and 25 over Wisler, Chin and Hahn.

DECISION
The Examiner’s rejections of claims 1, 5-8, 13, 17, 18, 20, 24 and 25
are AFFIRMED.
The Examiner’s rejections of claims 4, 9-12, 16, 19, 23 and 26-29 are
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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