Mock, Philip Wayne.

Patent Trials and Appeals Board

Dec 20, 2019

14964371 - (D) (P.T.A.B. Dec. 20, 2019)

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.
14/964,371 12/09/2015 Philip Wayne Mock 79010/W277 4555
23363 7590 12/20/2019
Lewis Roca Rothgerber Christie LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
CARROLL, DAVID P.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
12/20/2019 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PHILIP WAYNE MOCK

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Appeal 2019-003089
Application 14/964,371
Technology Center 3600
____________

Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Philip Wayne Mock (hereinafter “Appellant”)1 seeks our review under
35 U.S.C. § 134(a) of the final rejection of claims 1–20 as unpatentable
under 35 U.S.C. § 103(a) over Mock (US 2009/0173539 Al, pub. July 9,
2009) 2 and Fincher (US 2001/0045300 Al, pub. Nov. 29, 2001). 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(a). Appellant identifies WWT North America Holdings, Inc.
as the Applicant and real party in interest. Appeal Br. 1.
2 The Mock reference is an earlier work of the inventor in the application
under appeal.
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THE INVENTION
Appellant’s invention relates to anti-stall devices for oil field
downhole use. Spec. ¶¶ 2–3. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. A method of operating a bottom hole assembly in real-
time including a drill pipe, an anti-stall tool, a motor and a drill
bit comprising the steps of:
entering an upper torque threshold and a lower torque
threshold as operating parameters for the bottom hole assembly
into the a processor of anti-stall tool;
continuously sensing torque of the bottom hole assembly by
a torque sensor in the bottom hole assembly;
electronically determining if the sensed torque has exceeded
the upper torque threshold or drops below the lower torque
threshold for a specified duration of time by the processor
requiring intervention by the anti-stall tool; and
communicating motor sequence instructions from the
processor to the anti-stall tool for proper hydro-mechanical
adjustment of the anti-stall tool.
OPINION
Claims 1–12
Appellant argues claims 1–12 as a group. Appeal Br. 3–8. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Mock teaches the invention substantially as
claimed except for electronic torque sensing and using a processor to control
an anti-stall tool, for which the Examiner relies on Fincher. See Final
Action 5–6. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time the invention was made to
modify Mock by the teachings of Fincher to achieve the claimed invention.
Id. at 6–7. According to the Examiner, a person of ordinary skill in the art
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would have done this to facilitate changing operational limits and to avoid
overcorrecting. Id. at 7.
Appellant argues that the proposed combination would not result in
upper and lower thresholds as claimed. Appeal Br. 4. Appellant argues that
the proposed combination “teaches away” from the claimed invention. Id.
Appellant argues that Fincher’s control system “constantly” adjusts
force-on-bit during drilling operations. Appeal Br. 5. Appellant contrasts
such with the controller of the instant invention which only sends
instructions to the anti-stall tool when torque exceeds either an upper or
lower threshold. Id. at 4. Appellant characterizes the foregoing as a
“teaching away.” Id. However, teaching away requires “clear
discouragement” from implementing a technical feature. In re Ethicon, Inc.,
844 F.3d 1344, 1351 (Fed. Cir. 2017). Appellant’s allegation, even if true,
does not discourage pursuit of the claimed invention.
With respect to Appellant’s contention that the proposed combination
does not result in upper and lower thresholds, the Examiner maintains that
Fincher teaches thresholds as claimed. Ans. 7. The Examiner directs our
attention to Fincher’s recital of “desired limits” of a number of parameters
that are monitored by Fincher’s controller. Id.; Fincher ¶ 51.
In reply, Appellant argues that Fincher lacks any clear disclosure that
its controller will stop intervening when parameters are within the
boundaries of its allowed limits. Reply Br. 3.
Fincher expressly acknowledges the problem of a drill motor stalling
in response to excess axial force on the drill bit (or “weight-on-bit”).
Fincher ¶ 7. Fincher is directed to a bottom hole thruster that applies an
axial force on the drill bit during drilling of a wellbore. Id.; Abstract.
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Fincher discloses a sensor that provides measurements for determining a
parameter of interest related to drilling the wellbore. Id. A processor that is
responsive to the sensor controls the magnitude of the force generated by the
thruster. Id.
The dispute between Appellant and the Examiner involves disparate
interpretations of the teachings of the Fincher reference. Essentially,
Appellant interprets Fincher’s controller as constantly intervening with
control signals to vary the magnitude of the force generated by the thruster.
The Examiner, on the other hand, interprets Fincher’s controlling as
intervening only when necessary to maintain parameters within desired
limits. Essentially, the Examiner interprets “desired limits” as a
synonymous expression for having upper and lower thresholds.
Having considered the competing positions of Appellant and the
Examiner, we find that Examiner’s position more persuasive. We note the
following disclosures from Fincher:
The thruster 501 of the present invention enables drilling of the
wellbores by maintaining the desired parameters of interest
within their limits.
Fincher ¶ 51.
The processor 810 continues to cause the thruster power
unit 850 to adjust the applied force so as to maintain selected
parameters within their desired limits.
Id. ¶ 57 (emphasis added).
[M]odels 812 provide the ranges or values of the selected
parameters, such as the weight on bit, differential pressure
across the mud motor, vibration, etc. The processor 810 adjusts
the thruster force so as to maintain these parameters at their
desired values.
Id. (emphasis added).
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[I]f the mud motor pressure differential is outside the allowed
limits, the thruster force is adjusted (within its own limits) until
the mud motor pressure is within the allowed limits.
Id. (emphasis added).
[T]he processor causes the thruster to adjust the application of
the force on the drill bit to maintain the parameter of interest
within a predetermined range.
Id.; claim 5 (emphasis added).
[A] control unit controlling the operation of the power unit in
response to a parameter of interest determined at least in part
based on a measurement made in the wellbore during drilling of
the wellbore to maintain the force on the drill bit within a
predetermined range.
Id.; claim 12 (emphasis added).
In analyzing an obviousness rejection, we interpret the applied art
from the vantage point of a person of ordinary skill in the art. What a
reference teaches a person of ordinary skill is not limited to what a reference
specifically “talks about” or what is specifically “mentioned” or “written” in
the reference. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380
(Fed. Cir. 2005). This follows, in part, because an artisan is presumed to
know something about the art apart from what the references disclose. See
In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Here, the subject matter of
the invention deals with sensing and digital control circuitry for a
mechanical device. The use of digital control circuitry has become
ubiquitous in our technology driven economy. Practitioners are presumed to
be familiar with problems that can arise if a processor is programmed to
send intervention instructions to an apparatus if a sensed parameter deviates
from a predetermined set value by of a minor amount. A correction initiated
when the set value is exceeded on one side of the limit can then result in
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exceeding the set value on the opposite side of the limit by a similar minor
amount. Frequent and continuing repetition of this overcorrection cycle can
cause undue wear and premature failure of the system. To prevent this
occurrence, practitioners know to program a deadband about a
predetermined value. A person of ordinary skill in the art reading Fincher is
presumed to be familiar with using deadbands in a digital control system and
would read and apply the teachings of Fincher regarding maintaining
parameters within “desired limits” in view of such familiarity. Fincher
¶¶ 51, 57. In an obviousness analysis, we are required to read the prior art in
context, taking account of, among other things, the background knowledge
possessed by a person having ordinary skill. Randall Mfg. v. Rea, 733 F.3d
1355, 1362 (Fed. Cir. 2013). In following Randall, we agree with the
Examiner that Fincher’s “desired limits” correspond to Appellant’s claimed
“thresholds” as understood by the person of ordinary skill.
Finally, Appellant’s arguments concerning the lack of teaching,
suggestion, or motivation to combine the prior art are without merit. Appeal
Br. 4. The Examiner’s rejection contains explicit articulated reasoning
supported by rational underpinning. Final Action 6–7; see In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness conclusion to be
based on explicit articulated reasoning with rational underpinning) cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
Examiner elaborated further on such reasoning in the Answer. Ans. 5–6.
Appellant’s challenge to the Examiner’s position amounts to unsubstantiated
attorney argument that is devoid of supporting evidence or persuasive
technical reasoning. Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052,
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1068 (Fed. Cir. 2005) (unsubstantiated attorney argument is no substitute for
competent evidence).
It is well settled that any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed. KSR, 550 U.S.
at 420. Appellant’s Background section acknowledges a need in the
industry for a self-contained, automatic feedback, real-time, downhole
assembly that optimizes weight-on-bit to prevent downhole parameters from
exceeding operational limitations. Spec. ¶ 13. Fincher solves this very need
and does so approximately one decade before Appellant. The Examiner’s
reason for combining Fincher with Mock tracks closely to taking advantage
of the improvements offered by Fincher. Final Action 6–7; Ans. 5–6. See
Dystar Textilfarben GmBH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006) (explaining that an implicit motivation to combine exists
when the improvement is technology-independent and the combination of
references results in a product that is more desirable).
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of
claims 1–12.
Claims 13–20
Claim 13 is an independent claim and claims 14–20 depend
therefrom. Claims App. Appellant does not argue for the separate
patentability of these claims apart from arguments presented with respect to
claim 1, which we have previously considered. We sustain the Examiner’s
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rejection of claims 13–20. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to
separately argue claims).
CONCLUSION
Claims
Rejected
§ Reference(s) Aff’d Rev’d
1–20 103 Mock, Fincher 1–20

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