Ex Parte Pettinato et al

Patent Trial and Appeal Board

Mar 30, 2016

13028474 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/028,474 02/16/2011 Miguel H. PETTINATO
127406 7590 04/01/2016
Chamberlain Hrdlicka
Halliburton Energy Services, Inc.
1200 Smith St., 14th Floor
Houston, TX 77002
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.
l 40846-009902US 8827
EXAMINER
GITLIN, ELIZABETH C GOTTLIEB
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
Patents@chamberlainlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIGUEL H. PETTINATO, FEDERICO SORENSON,
ROBERT F. SHELLEY, SAUL PLAVNIK, and RICARDO JORQUERA
Appeal2014-001815
Application 13/028,4741
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-6, 8-12, 28-38, and 41. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is Halliburton
Energy Services, Inc. Appeal Br. 3.
Appeal2014-001815
Application 13/028,474
Claimed Subject Matter
Claims 1 and 28 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method of evaluating multiple subterranean
zones during a single trip into a wellbore, the
method comprising the steps of:
interconnecting a formation evaluation
assembly in a coiled tubing string;
for each of the multiple zones, displacing the
coiled tubing string including the formation
evaluation assembly to a position proximate the
respective zone, receiving formation fluid from the
respective zone into the formation evaluation
assembly by using a downhole pump to draw the
formation fluid into the formation evaluation
assembly, determining at least one characteristic of
the formation fluid, and pumping a sample of the
formation fluid to a surface location using the
downhole pump; and
performing the multiple displacing,
receiving, determining, and pumping steps during
the single trip of the coiled tubing string into the
wellbore.
Rejections
Claims 1, 2, 5, 6, 8, 9, 11, 12, 28, 29, 32-35, 37, 38, and 41 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Sorensen
(US 5,337,838, iss. Aug. 16, 1994) and Weis (US 5,675,674, iss. Oct. 7,
1997).
Claims 3, 4, 30, and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sorensen, Weis, and Bussear (US 5,934,371, iss. Aug. 10,
1999).
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Appeal2014-001815
Application 13/028,474
Claims 10 and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sorensen, Weis, and Bittleston (US 2006/0101905 Al,
pub. May 18, 2006).
ANALYSIS
Independent claims 1 and 28 recite "[a] method of evaluating multiple
subterranean zones during a single trip into a wellbore," which includes a
step of "receiving formation fluid from the respective zone into the
formation evaluation assembly by using a downhole pump to draw the
formation fluid into the formation evaluation assembly." See Appeal Br. 21,
Claims App.
The Examiner's rejection of claims 1 and 28 relies on a finding that
Sorensen discloses a downhole pump. See Final Act. 3. The Examiner does
not rely on Weis to teach a downhole pump.
The Appellants contend that Sorensen fails to "describe[] using a
downhole pump to draw formation fluid into a formation evaluation
assembly." Appeal Br. 12. The Appellants support this contention by
distinguishing Sorensen's pump as a "surface pump," which is apparently
included in control unit 9. Id. In response, the Examiner explains that:
the term 'downhole pump' is a broad term which
encompasses not only pumps located in a
downhole environment, but those pumps located at
the surface which are used for downhole purposes.
Thus, the pump located on surface which pumps
the compressed air into line 31 to displace the
formation fluid up line 33 (column 6, lines 58-60)
can be considered a downhole pump.
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Appeal2014-001815
Application 13/028,474
Ans. 3 (emphasis added). As such, it is clear that both the Appellants and
the Examiner agreed that Sorensen's pump is located at the surface of the
earth.
We note that the Appellants' Specification lacks an explicit definition
for the adjective "downhole" in the claimed phrase "downhole pump."
Further, we note that the plain meaning of the claimed term "downhole"
refers to "denoting any piece of equipment that is used in the well itself."
COLLINS ENGLISH DICTIONARY-COMPLETE AND UNABRIDGED (12th ed.
2014)) ("downhole," (Mining & Quarrying) (in the oil industry)),
http://www.thefreedictionary.com/ downhole (last visited Mar. 24, 2016).
This definition is consistent with the Specification, which instructs that
directional terms, such as "'downward' and similar terms refer to a direction
away from the earth's surface along the wellbore." Spec. 5, 1. 26-6, 1. 2.
We determine that the term "downhole" is a directional term and is similar
to the term "downward" as used in connection with direction and/or position
of an object associated with a well bore. See, e.g., Figs. 1, 2 (illustrating
pump 62 used in wellbore 12), Spec. 12, 11. 14--18. Hence, the Appellants'
contention that Sorensen's surface pump is not a downhole pump, as
required by independent claims 1 and 28, is persuasive.
Thus, the Examiner's rejection of independent claims 1 and 28, and
dependent claims 2, 5, 6, 8, 9, 11, 12, 29, 32-35, 37, 38, and 41 as
unpatentable over Sorensen and Weis is not sustained.
The remaining rejections based on Sorensen and Weis in combination
with Bussear or Bittleston rely on the errant finding that Sorensen's surface
pump is a downhole pump. As such, we do not sustain the rejections under
35 U.S.C. § 103(a) of: claims 3, 4, 30, and 31 as unpatentable over
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Appeal2014-001815
Application 13/028,474
Sorensen, Weis, and Bussear; and claims 10 and 36 as unpatentable over
Sorensen, Weis, and Bittleston.
DECISION
We REVERSE the Examiner's decision rejecting claims 1---6, 8-12,
28-38, and 41.
REVERSED
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