Jørgen Hallundbæk et al.

Patent Trials and Appeals Board

Mar 12, 2020

14130224 - (D) (P.T.A.B. Mar. 12, 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.
14/130,224 03/24/2014 Jørgen Hallundbæk PTB-5544-68 5080
23117 7590 03/12/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HERNANDEZ-PREWITT, ROGER G
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
03/12/2020 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JØRGEN HALLUNDBÆK, and
JIMMY KJÆRSGAARD-RASMUSSEN

____________

Appeal 2018-006536
Application 14/130,224
Technology Center 2800
____________

BEFORE KAREN M. HASTINGS, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–22 and 24 under 35 U.S.C. § 103 as
unpatentable over at least the combined prior art of Al-Khamis
(US 2010/0226206 Al, published September 9, 2010), Pabon (US

1 We use the word “Appellant” to refer to the “Applicant” as defined in 37
C.F.R. § 1.42(a). “WELLTEC A/S” is identified as the real party in interest
(Appeal Br. 3).

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2003/0235114 Al, published December 25, 2003), and Almaguer (US
2009/0166035 Al, published July 2, 2009).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):

1. A downhole tool for determining laterals in a borehole wall
or a borehole casing, comprising:
- a tool housing extending along a longitudinal axis and
having a circumference perpendicular to the longitudinal axis
and adapted to be lowered into a well, and
- a plurality of sonic transceivers, each sonic transceiver
for transmitting sonic signals from the housing and for
receiving sonic signals reflected from the borehole wall or
borehole casing in a predefined angular segment that is
different from the predefined angular segments corresponding
to the other sonic transceivers of the plurality of sonic
transceivers,
wherein the plurality of sonic transceivers are arranged
along the circumference of the tool housing having a mutual
distance and are configured to transmit sonic signals radially
away from the tool housing in an entire central angle of 360
degrees towards the borehole wall or borehole casing and

2 Hallanbaek (EP 2 317 070 A1, published May 4, 2011), was additionally
applied to claims 13–16, Morin (Downhole Measurements in the AND-1b
Borehole, ANDRILL McMurdo Ice Shelf Project, Antarctica 14(3) TERRA
ANTARCTICA, ANDRILL Research and Publications 167–174 (2007)) was
additionally applied to claims 17–20, and Angehrn (5,164,548, issued
November 17, 1992) was additionally applied to claims 21 and 22 (Final
Action 19–26). These references are listed in the Summary Table located at
the end of this Decision. A discussion of these references is not needed for
disposition of this appeal.
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wherein, during use, only a portion of the plurality of sonic
transceivers transmit, during a pulse time, a sonic signal in the
predefined angular segments of the one or more transmitting
sonic transmitters, and wherein at least one sonic transceiver of
the plurality of sonic transceivers, receives, during a
subsequent pre-set echo time period, a reflected sonic signal
from the borehole wall or borehole casing, and wherein an
absence of the received reflected sonic signal, during the
subsequent pre-set echo time period, indicates a lateral.

Appeal Br. 19 (Claims Appendix).

Independent claim 13 is also directed to a downhole system with a
tool similar to that of claim 1 (Claims Appendix 21, 22). Independent claim
17 is directed to a method of determining a position of a lateral using a
downhole tool similar to that of claim 1 (Claims Appendix 22, 23).
Independent claim 24 is also directed to a downhole tool similar to claim 1
(Claims Appendix 24, 25).
Appellant basically relies upon the same arguments for all of the
claims, except it is also further contended that the Examiner did not
specifically treat the language of claim 24 regarding absence of a detected
signal during “multiple pre-set echo time periods” for detecting a lateral
(Appeal Br. 14).

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not identified reversible error in the
Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
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requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection.). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant does not dispute the Examiner’s findings based on Al-
Khamis which is directed to a tool for locating (and plugging) lateral
wellbores using information from sensor and acoustic transducers. The
Examiner relies upon Pabon for a teaching or suggestion of receiving a
reflected sonic signal “during a subsequent pre-set echo time period” (e.g.,
Final Action 12). Appellant’s main argument is that the claim phrase of
“subsequent pre-set echo time period” does not encompass Pabon’s
minimum and/or maximum transit times (e.g., Appeal Br. 11–13; Reply Br.
2–4). Appellant also argues that the Examiner has not explained how
Almaguer discloses that the absence of a reflected signal indicates a lateral
(Appeal Br. 13; Reply Br. 4). Finally, Appellant contends that the Examiner
failed to explain how the prior art specifically applied to the language of
independent claim 24 (Appeal Br. 13, 14). These arguments are not
persuasive of reversible error.
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It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.”)
Here, as the Examiner aptly points out, Appellant’s Specification
lacks any limiting definitions (e.g., Ans. 5). The Specification merely
describes that “different schemes may be set up for the sequence” of
transceivers, as well as for the “duration of pulse times, duration of echo
time, frequencies, amplitudes, etc.” (Spec. 11:21–24). Notably, the
Specification does not appear to describe any specific scheme for the pre-set
echo time period of claims 1, 13 and 17, or for the “multiple pre-set echo
time periods” of claim 24.
The Examiner reasonably determined that the disputed claim
recitation reasonably encompasses the time periods set out in Pabon (Ans.
generally), and also is obvious and unpatentable over Al-Khamis/Pabon’s
downhole evaluation schemes that may be explicitly designed for locating
lateral wellbores as taught in Al-Khamis (e.g., Ans. 5–7; Final Action 10–
13).
Appellant’s contention that the Examiner did not “indicate where [the
feature of locating a lateral] was specifically disclosed by Almaguer”
(Appeal Br. 13) is not persuasive of reversible error as it fails to consider the
applied prior art as a whole and the inferences that one of ordinary skill
would have made. As Appellant recognizes (id.), the Examiner merely
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relied upon Almaguer to exemplify that one could locate features such as
joints based on the reflected acoustic echo, or perforations (Final Action 13,
14; relying on Almaguer abstract, ¶¶ 15,16, also ¶¶ 21, 60, 65 for various
other features not in dispute). One of ordinary skill would have readily
inferred and appreciated from the applied prior art as a whole that an
absence of a reflected signal would indicate a lateral opening in a wellbore.
Appellant’s arguments that the Examiner has failed to sufficiently
explain how the applied prior art rendered claim 24 obvious is also not
persuasive of error as they fail to consider the applied prior art as a whole
and the inferences that one of ordinary skill would have made. Under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the “inferences and creative steps,” or even routine steps, that an ordinary
artisan would employ. Ball Aerosol and Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (citation omitted). The use
of multiple pre-set echo time periods to, e.g., verify the absence of a
reflected signal so as to indicate a lateral opening in a wellbore, would have
been within the skill and creativity of one of ordinary skill in the art.
On this record, Appellant has not sufficiently explained why the
claimed subject matter is “more than the predictable use of prior art elements
[or steps] according to their established functions.” KSR, 550 U.S. at 417.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 13, 17, and 24, as well as all claims dependent thereon, noting that
Appellant relies upon the arguments made for claim 1 for all the other claims
except additional remarks are made with respect to the “multiple pre-set
echo time periods” recited in claim 24 (Appeal Br. generally).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–12, 24 103 Al-Khamis,
Pabon, Almaguer
1–12, 24
13–16 103 Al-Khamis,
Pabon, Almaguer,
Hallunbaek
13–16
17–20 103 Al-Khamis,
Pabon, Almaguer,
Morin
17–20
21, 22 103 Al-Khamis,
Pabon, Almaguer,
Angehrn
21, 22
Overall
Outcome

1–22, 24

TIME PERIOD FOR RESPONSE
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