Halliburton Energy Services, Inc.Download PDFPatent Trials and Appeals BoardMar 8, 20222021005441 (P.T.A.B. Mar. 8, 2022) Copy Citation 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. 15/303,717 10/12/2016 Jerry Clinton Foster 2012-065611 U1 US 7079 142050 7590 03/08/2022 HALLIBURTON ENERGY SERVICES, INC. C/O PARKER JUSTISS, P.C. 14241 DALLAS PARKWAY SUITE 620 DALLAS, TX 75254 EXAMINER BUTCHER, CAROLINE N ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 03/08/2022 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 JERRY CLINTON FOSTER, DOMINICK JOSEPH BELLOTTE, RICHARD MINEO, and JACK GAMMILL CLEMENS Appeal 2021-005441 Application 15/303,717 Technology Center 3600 ____________ Before KENNETH G. SCHOPFER, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-24. 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 (2022). Appellant identifies the real party in interest as Halliburton Energy Services, Inc. Appeal Br. 3. Appeal 2021-005441 Application 15/303,717 2 BACKGROUND The Specification states that the “disclosure relates to communicating with a downhole tool on a downhole cable that includes a wire.” Spec. ¶ 1. More specifically, the Specification describes “implementations of a control system for controlling one or more downhole tools coupled to a downhole cable, such as a mono-cable.” Id. ¶ 7. CLAIMS Claims 1, 12, and 19 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A downhole tool system, comprising: a mono-cable to support a downhole tool string, the mono- cable comprising a single solid wire and one or more communication lines embedded within or wrapped directly around the single solid wire in a non-linear configuration, the one or more communication lines sized to communicate instructions that comprise at least one of logic or data to the downhole tool string; a downhole tool coupled to the single solid wire in the downhole tool string; and a controller comprising a processor and a memory device coupled to the processor, the memory device comprising a set of instruction that, when executed by the processor, cause the processor to perform operations comprising: generating a command to the downhole tool; transmitting the command to the downhole tool; and receiving, on the one or more communication lines, data from the downhole tool based on execution of the command by the downhole tool. Appeal Br. 10. Appeal 2021-005441 Application 15/303,717 3 REJECTIONS 1. The Examiner rejects claims 1-24 under 35 U.S.C. § 112(a) as failing to comply with the written description requirements.2 2. The Examiner rejects claims 1-3, 5-10, 12, 14-21, 23, and 243 under 35 U.S.C. § 103 as unpatentable over Herrera Duarte4 in view of Varkey.5 3. The Examiner rejects claims 4, 11, 13, and 22 under 35 U.S.C. § 103 as unpatentable over Herrera Duarte in view of Varkey and Zaeper.6 DISCUSSION Written Description The Examiner rejects the claims based on the recitation of “one or more communication lines embedded within or wrapped directly around the single solid wire” found in each of the independent claims. Ans. 12. The Examiner explains: There is no description within the specification that supports the communication lines being wrapped “directly” around the single solid wire. Further, the drawings do not show the communication lines wrapped “directly” around the single solid wire nor are the communication lines labeled as a separate part within the downhole, mono-cable. The Specification as filed October 12, 2016 (hereinafter Specification) merely provides support for one or more communication lines wrapped around or embedded 2 The rejection was introduced as a new ground of rejection in the Examiner’s Answer. See Ans. 12. 3 The Examiner appears to inadvertently include claim 22 in the heading for this rejection. Non-Final Act. 2. This claim is rejected separately. Id. at 10. 4 Herrera Duarte et al., US 2014/0091943 A1, pub. Apr. 3, 2014. 5 Varkey et al., US 2010/0116510 A1, pub. May 13, 2010. 6 Zaeper et al., US 2009/0250225 A1, pub. Oct. 8, 2009. Appeal 2021-005441 Application 15/303,717 4 within one or more wires as indicated in paragraphs [0011]- [0012]. Id. (emphasis omitted). Appellant argues that “there is support for the ‘directly’ language in the as-filed application.” Reply Br. 2. Specifically, Appellant cites Specification paragraph 11 and explains that “the as-[filed] application refers to embedded in, intertwined with, wrapped around, and/or wrapped within, which are all direct couplings,” and that a person of ordinary skill in the art would understand “that the reference to wrapped around would be limited to directly wrapped around.” Id. at 2-3. Appellant asserts that wrapping may be direct or indirect and that the “application contains no support for an indirect wrapping, and furthermore that the reference to wrapping the one or more communication lines around the single solid wire is not a superfluous reference.” Id. at 3. “Adequate written description means that the applicant, in the specification, must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.’” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (citation omitted). As an initial matter, based on the arguments presented, we note that the Examiner and Appellant appear to both contemplate that a communication line wrapped directly around a single solid wire requires that there is no intervening structure between the communication line and the single solid wire. We agree with this interpretation. In light of this interpretation, Appellant has not pointed to any disclosure in the Specification that shows, with reasonable clarity, that the inventors were in possession of the invention, as claimed, at the time the Appeal 2021-005441 Application 15/303,717 5 application was filed. We agree with the Examiner that there is no specific disclosure of the communication lines being wrapped directly around a single solid wire. The Specification describes an embodiment including a mono-cable with “a single solid wire that includes one or more communication lines,” and that “[t]he one or more communication lines is coupled with the solid wire such as, for example, embedded in or wrapped around or within the wire, in a linear or non-linear (e.g., undulating, helical, zig-zag, or otherwise) configuration.” Spec. ¶ 12. We do not see any further detail in the written disclosure regarding the coupling relationship of the single, solid wire and the communication lines. Further, the drawings do not provide any details regarding the structure of the downhole cable 110. See Figs. 1, 2. Thus, neither the description nor the drawings disclose communication lines directly wrapped around a single, solid wire in accordance with the claim interpretation discussed above. We are not persuaded to the contrary based on Appellant’s contention that one of ordinary skill in the art would understand that the structure described limits the wrapping of communication lines to direct wrapping around. Appellant asserts that the Specification lists only direct couplings between the communication lines and the single solid wire. Appellant appears to primarily rely on the disclosure at paragraph 11, which states that “[t]he one or more communication lines is coupled with the braided line such as, for example, embedded in, intertwined with one or more wires, or wrapped around or within one or more wires, in a linear or non-linear (e.g., undulating, helical, zig-zag, or otherwise) configuration.” This disclosure relates to the coupling of a communication lines in a mono-cable having a braided line rather than a single, solid wire as claimed. Appellant does not Appeal 2021-005441 Application 15/303,717 6 explain how this disclosure applies to the embodiment using a single, solid wire. Moreover, Appellant also does not adequately explain why this paragraph is limited to direct couplings. We do not see any indication in the Specification as filed that the couplings described must be direct, and rather, even if this paragraph applied in the embodiment using a single, solid wire (see Spec. ¶ 12), we find that each of the “embedded in, intertwined with, wrapped around, and or wrapped within” couplings may be indirect, i.e., there may be some structure, such as insulation, between the solid wire and the communication lines in each of these coupling types. Thus, the Specification does not describe, with sufficient clarity, that communication lines must be wrapped directly around the single solid wire. Based on the foregoing, we agree with the Examiner that the Specification lacks sufficient support to show with reasonable clarity that the inventors were in possession of the invention as claimed when the application was filed. Accordingly, we sustain this rejection. Obviousness We are persuaded of error by Appellant’s argument that the Examiner has not shown that the art of record teaches or otherwise renders obvious a mono-cable as recited in each of the independent claims. With respect to claim 1, for example, the Examiner finds that Herrera Duarte teaches a downhole tool system as claimed, except that the reference “does not disclose the mono-cable comprising a single solid wire and one or more communication lines embedded within or wrapped directly around the single solid wire in a non-linear configuration.” Non-Final Act. 3. The Examiner relies on Varkey for this deficiency, and states: Varkey discloses a cable component (10c) (Fig 3A-3B, par [0031]). The cable including a single, cable component with an Appeal 2021-005441 Application 15/303,717 7 optical fiber (16) surrounded by an insulation layer (18) and shaped profiles (12) (par [0028]). A layer of wrapped wire (24) is located between the shaped profiles (12) and outer insulation layer (20). The wrapped wire is cabled helically around the shaped profiles (12) at a helix angle (Fig 3A-3B, par [0031]). The wrapped wire (24) is composed of a conductive material and serves as an electrical conductor capable of transmitting data (Fig 3A-3B, par [0032]). Id. at 3-4 (emphasis omitted). As an initial matter, we agree with Appellant that it is not clear how the Examiner is mapping the claim to the components of Varkey. See Appeal Br. 7. The Examiner does not specifically identify what is being relied upon as the claimed single, solid wire or the communication lines. However, in the Answer, the Examiner provides a more detailed version of the rejection. Ans. 7. Specifically, the Examiner states, Varkey discloses a cable component (10c) (cable serves as a single, solid wire, Fig 3A-3B, par [0031]). The cable (10c) including a single, cable component (single, solid wire) with an optical fiber (16) surrounded by an insulation layer (18) and shaped profiles (12) (par [0028]). A layer of wrapped wire (24) is located between the shaped profiles (12) and outer insulation layer (20) of the cable (10c). The wrapped wire is cabled helically (non-linear) around the shaped profiles (12) at a helix angle (Fig 3A-3B, par [0031]). The wrapped wire (24) serves as a communication line as it is composed of a conductive material and serves as an electrical conductor capable of transmitting data (Fig 3A-3B, par [0032]). Id. (emphasis omitted). Thus, the Examiner appears to clarify that Varkey’s element 10c is relied upon as a single, solid wire and that the wrapped wire 24 is relied upon as a communication line. Even with the Examiner’s clarification, we are persuaded by Appellant’s argument that the Examiner has not established that the art Appeal 2021-005441 Application 15/303,717 8 teaches a mono-cable as claimed. In particular, the claim requires that the mono-cable includes a single solid wire, and we agree with Appellant that it is not clear how Varkey’s cable 10c can be described as a single solid wire, as the Examiner indicates. Reply Br. 4. This element contains an optical fiber 16, insulation layer 18, shaped profiles 12, a wrapped wire 24, and an outer insulation layer 20, rather than a single solid wire. See Varkey Fig. 3B; ¶ 31. It is not clear how one of ordinary skill in the art would consider this to be a single solid wire as claimed. In the Examiner’s response to Appellant’s arguments, the Examiner alternatively states, “one could consider the optical fiber (16) as a single solid wire, included as part of the cable component (10c),” and the wrapped wire 24 as a communication line, which “is clearly wrapped around optical fiber (16) in a non-linear (helical) . . . configuration.” Ans. 13. However, the Examiner indicates that this interpretation of Varkey is somehow related to the use of the term “directly” in the claim and the fact that it is considered new matter. Id. (“As the limitation of wrapped ‘directly’ around is considered as new matter, this alternate interpretation of Varkey would clearly meet the claimed limitations of ‘one of more communication lines embedded within or wrapped directly around the single solid wire in a non- linear configuration”). It is not clear how the term “directly” is affecting the Examiner’s analysis in this alternative approach. Even if the term is new matter, we do not believe that is germane to the issue of obviousness. Based on the claim as it is presently worded, we agree with Appellant that the wire 24 is not directly wrapped around the optical fiber 16, and thus, Varkey does not teach a mono-cable as claimed under this alternative approach. Appeal 2021-005441 Application 15/303,717 9 Based on the foregoing, we are persuaded of error in the rejection of the independent claims. We are also persuaded of error in the rejection of dependent claims 2, 3, 5-10, 14-18, 20, 21, 23, and 24. Accordingly, we do not sustain the rejection of claims 1-3, 5-10, 12, 14-21, 23, and 24. Regarding the separate rejection of dependent claims 4, 11, 13, and 22, the Examiner does not provide any further analysis or citation to evidence that cures the deficiency in the rejection of the independent claims discussed above. Thus, we also do not sustain the rejection of claims 4, 11, 13, and 22. CONCLUSION We AFFIRM the written description rejection of claims 1-24. We REVERSE the obviousness rejections of claims 1-24. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1-24 112(a) Written Description 1-24 1-3, 5-10, 12, 14-21, 23, 24 103 Herrera Duarte, Varkey 1-3, 5-10, 12, 14-21, 23, 24 4, 11, 13, 22 103 Herrera Duarte, Varkey, Zaeper 4, 11, 13, 22 Overall Outcome 1-24 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136 (a) (2022). See 37 C.F.R. § 1.136 (a)(l)(iv) (2022). AFFIRMED Copy with citationCopy as parenthetical citation