Halliburton Energy Services, Inc.

Patent Trials and Appeals Board

Dec 16, 2020

2020003868 (P.T.A.B. Dec. 16, 2020)

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.
14/390,646 10/03/2014 David L. PERKINS 2013-070933 U1 US 2345
142050 7590 12/16/2020
HALLIBURTON ENERGY SERVICES, INC.
C/O PARKER JUSTISS, P.C.
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/16/2020 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@pj-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID L. PERKINS, ROBERT PAUL FREESE,
CHRISTOPHER MICHAEL JONES, and RICHARD NEAL GARDNER
____________

Appeal 2020-003868
Application 14/390,646
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–29. 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 Halliburton Energy Services, Inc. as the real
party in interest. Appeal Br. 3.
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Application 14/390,646

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BACKGROUND
The invention relates to fabrication of an integrated computational
element (ICE) having deposited stacked layers of different complex
refractive indices for use in optical analysis of wellbore fluids. Spec. ¶ 1.
According to the Specification, the refractive indices of ICE materials are
temperature-dependent. Id. ¶ 4. In use, wellbore temperatures can lead to
temperature-dependent performance degradation of conventionally
fabricated ICEs. Id. To address that problem, the Specification describes
controlling deposition temperature during ICE fabrication to provide an ICE
structure designed for operation at a desired wellbore operating temperature.
Id.; claim 1. Claim 1, the only independent claim on appeal, reads as
follows:
1. A method comprising:
receiving, by a fabrication system, a design of an
integrated computational element (ICE), the ICE design
comprising specification of a substrate and a plurality of layers,
their respective target thicknesses and complex refractive
indices, wherein complex refractive indices of adjacent layers
are different from each other, and wherein a notional ICE
fabricated in accordance with the ICE design is related to a
characteristic of a sample of wellbore fluids;
forming, by deposition of material and by the fabrication
system, at least some of the plurality of layers of an ICE in
accordance with the ICE design; and
controlling, during the deposition of material and by the
fabrication system during said forming, a temperature of the
formed layers of the ICE such that the ICE, when completed,
relates to the characteristic of the sample, wherein the
completed ICE relates to the characteristic of the sample at
temperatures within a range at which the completed ICE is
operated in a downhole application.
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Application 14/390,646

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Appeal Br. 16 (Claims Appendix) (emphasis added to highlight disputed
claim language).

REJECTIONS
I. Claims 1–3, 8–23, and 25–29 stand rejected under 35 U.S.C. § 103 as
unpatentable over Myrick,2 Pradhan,3 Bergren,4 and DeCusatis.5
II. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over
Myrick, Pradhan, Bergren, DeCusatis, and Kimura.6
III. Claims 5 and 7 stand rejected under 35 U.S.C. § 103 as unpatentable
over Myrick, Pradhan, Bergren, DeCusatis, and Dvorsky.7
IV. Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as unpatentable
over Myrick, Pradhan, Bergren, DeCusatis, and Dobson.8
V. Claim 24 stands rejected under 35 U.S.C. § 103 as unpatentable over
Myrick, Pradhan, Bergren, DeCusatis, and Grimshaw.9

OPINION
Rejection I: Obviousness over Myrick, Pradhan, Bergren, and DeCusatis
Appellant presents arguments for patentability of claim 1, and does
not separately argue any other claim subject to this ground of rejection.
Appeal Br. 4–10. We focus our remarks on Appellant’s arguments

2 US 7,138,156 B1, issued November 21, 2006.
3 US 8,300,313 B2, issued October 30, 2012.
4 US 5,729,013, issued March 17, 1998.
5 US 2003/0072869 A1, published April 17, 2003.
6 US 7,952,054 B2, issued May 31, 2011.
7 US 5,886,864, issued March 23, 1999.
8 US 4,959,245, issued September 25, 1990.
9 WO 2005/045891 A2, published May 19, 2005.
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Application 14/390,646

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concerning claim 1. Each of claims 2, 3, 8–23, and 25–29 stands or falls
with claim 1.
In rejecting claim 1, the Examiner finds Myrick discloses a deposition
process for fabricating an optical analysis ICE comprising stacked layers
having different indices of refraction selected for a desired sample analysis.
Final Act. 3–4. The Examiner finds Pradhan would have provided a reason
to control fabrication temperatures to achieve desired indices of refraction in
the final ICE. Id. at 4–5. The Examiner also finds Bergren teaches in-situ
measurement of wellbore fluids using an optical filter “designated to be
suitable for facilitating the desired spectrum analysis.” Id. at 5. In light of
the foregoing disclosures, the Examiner determines it would have been
obvious to one of ordinary skill in the art to use a temperature-controlled
fabrication process, in accordance with Myrick and Pradhan, to produce an
optical filter having properties related to in-situ spectral analysis of wellbore
fluids, as suggested by Bergren. Id. at 5–6.
Appellant acknowledges “Pradhan discloses adjusting a design of its
device to obtain a desired product” by compensating for fabrication
conditions, including temperature. Appeal Br. 8. Appellant argues,
however, “[a]djusting a design to obtain a desired final product is not the
same as adjusting a design to perform the desired functions in an operating
environment.” Id. Appellant contends “[t]here is no discussion in the cited
portion of Pradhan that Pradhan adjusts a design of its device to compensate
for a temperature at which Pradhan’s device is operated.” Id. Thus, in
essence, Appellant argues the prior art’s teaching of temperature controlled
fabrication to produce a desired final ICE product does not teach producing
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a completed ICE that relates to a sample characteristic “at temperatures at
which the ICE is operated in a downhole application.” Id. at 9.
The Examiner finds the claim does not require “any particular
relationship between the completed ICE and the characteristic of the sample
at the claimed temperature.” Ans. 4–5. Thus, according to the Examiner,
“any result the completed ICE returns necessarily relates to the characteristic
of the sample at the measured temperature.” Id. at 5.
Appellant replies, “any result the complete ICE returns does not
necessarily relate to the characteristic of the sample at the measured
temperature since the ICE is fabricated at a much lower temperature that
[sic] the temperature of the sample.” Reply Br. 4.
Claim 1 recites that “the completed ICE relates to the
characteristic of the sample at temperatures within a range at which the
completed ICE is operated in a downhole application.” Appellant does
not dispute the Examiner’s finding that Bergren teaches using an
optical filter device for in-situ determination of a sample characteristic
in a wellbore fluid in a downhole. Nor does Appellant dispute the
Examiner’s findings that the combined disclosures of Myrick and
Pradhan teach a temperature-controlled fabrication technique suitable for
producing an optical element having optical characteristics designed for its
intended use. Appellant’s principle argument, that the relied-upon prior art
does not recognize designing the ICE for operation at a particular wellbore
temperature, is not persuasive because, as recognized by the Examiner (Ans.
4–5), claim 1 does not require operation at a particular wellbore temperature.
Rather, the claim merely calls for the completed ICE to be operable to relate
to a sample characteristic at some unspecified temperature at which the ICE
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Application 14/390,646

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is operated in a downhole. Appellant does not challenge the Examiner’s
determination that the prior art suggests fabrication of an ICE for use in a
downhole application.
For the foregoing reasons, Appellant does not persuade us of
reversible error in the Examiner’s rejection of claim 1. Rejection I as
applied to each of claims 1–3, 8–23, and 25–29 is sustained.

Rejections II–V: Obviousness of claims 4–7 and 24
Appellant does not separately argue any of claims 4–7 and 24, except
that each of these claims depends from claim 1. Accordingly, we sustain
Rejections II–V as applied to claims 4–7 and 24 for the reasons set forth
above in connection with claim 1.

CONCLUSION
The Examiner’s decision rejecting claims 1–29 is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 8–23,
25–29
103 Myrick, Pradhan,
Bergren, DeCusatis
1–3, 8–
23, 25–29

4 103 Myrick, Pradhan,
Bergren,
DeCusatis, Kimura
4
5, 7 103 Myrick, Pradhan,
Bergren,
DeCusatis,
Dvorsky
5, 7
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Application 14/390,646

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5, 6 103 Myrick, Pradhan,
Bergren,
DeCusatis, Dobson
5, 6
24 103 Myrick, Pradhan,
Bergren, DeCusatis
Grimshaw
24
Overall
outcome
1–29

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