Ex Parte Arian et al

Board of Patent Appeals and Interferences

Jun 1, 2009

10873087 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ABBAS ARIAN, GARY L. FICKERT, JOAKIM O. BLANCH,
VIMAL V. SHAH, and EUGENE LINYAEV
_____________

Appeal 2009-001980
Application 10/873,087
Technology Center 2800
____________

Decided:1 June 1, 2009
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO,
and MARC S. HOFF, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001980
Application 10/873,087
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1, 3 to 14, 16 to 30, 33 to 37, 39 to 49, and 51 to 58.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the obviousness rejections.
The Invention
Appellants’ invention is concerned with oil well drilling, and
particularly with a low frequency acoustic attenuator a drill used in such
drilling.3 Appellants’ claimed invention is directed to an attenuation
apparatus, system, and method.4
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. An attenuator to attach to a pipe, including:
a housing including an inner sleeve and an outer sleeve;
one or more masses, in the housing, to resonate when exposed to
waves including acoustic frequency components, wherein one or more of the
masses include:
an affixed edge in acoustic contact with the housing; and
an unaffixed edge not in contact with the housing.

2 Claims 2, 31, 32, and 50 have been canceled. Claims 15 and 38 stand
objected to as being dependent upon a rejected base claim, but would be
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims.

3 See Title; Spec. ¶¶ [0001], [0007]-[0017].

4 See generally Abstract; claims 1, 30, and 49.

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The Applied Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Donoho US 5,189,642 Feb. 23, 1993
Arian ‘899 US 6,564,899 B1 May 20, 2003
Arian ‘739 US 2003/0106739 A1 Jun. 12, 2003
Bradley US 6,588,267 B1 Jul. 8, 2003
Egerev US 6,615,949 B1 Sep. 9, 2003

The following rejections are before us for review:
(i) Claims 1, 3 to 12, 16, 17, 20 to 25, 30, 33 to 35, 39, 40, 43 to 49,
and 53 to 55 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Arian ‘899 and Egerev.5
(ii) Claims 13, 14, 27 to 29, 36, 37, and 56 to 58 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Arian ‘899, Egerev, and Arian ‘739.
(iii) Claims 18, 19, 41, 42, 51, and 52 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Arian ‘899, Egerev, and Donoho.
(iv) Claim 26 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Arian ‘899, Egerev, and Bradley.
First, Appellants argue that neither Arian ‘899 nor Egerev, whether
taken singly or in combination, teaches “one or more masses” including (i)
an affixed edge in acoustic contact with the housing and (ii) an unaffixed
edge not in contact with the housing as set forth in each of independent
claims 1, 30, and 49 (App. Br. 4-6; Reply Br. 2-4). Because (i) each of

5 This claim grouping reflects the Examiner’s corrected statement of the
grounds of rejection as stated in the Answer, and includes claims 13, 14, 27
to 29, 36, 37, and 56 to 58 (see Ans. 3). We note that Appellants’ Brief only
presents arguments (and heading VII.1.) as to claims 1, 3 to 8, 11, 12, 20, 30,
33 to 35, 43, 48, and 49 for purposes of this appeal (see App. Br. 4, 7).
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claims 1, 30, and 49 recited the salient “affixed” and “unaffixed” features
included in the “one or more masses” limitation,6 (ii) Appellants have not
argued the specifics of any particular one of these three independent claims,
and (iii) Appellants rely on the arguments presented as to claims 1, 30, and
49 for the patentability of each of claims 3-8, 11, 12, 20, 33 to 35, 43, and
48, we select claim 1 as representative of the group of claims 1, 3 to 12, 16,
17, 20 to 25, 30, 33 to 35, 39, 40, 43 to 49, and 53 to 55.7 See 37 C.F.R.
§ 41.37(c)(1)(vii).
Second, Appellants argue that the combination of Arian ‘899 and
Egerev is improper because Arian teaches away from the combination with
Egerev, and the combination of Arian’s transmitters (which are not
attenuators) with Egerev’s masses would impair the ability of Arian’s
transmitters to transmit (App. Br. 7).

ISSUES
Based on Appellants’ arguments, the first issue is: Have Appellants
demonstrated that the Examiner erred by finding that Arian ‘899 and Egerev,
whether considered singly or in combination, teaches “one or more masses”
including (i) “an affixed edge in acoustic contact with the housing,” and (ii)

6 Claims 1 and 30 on appeal each recite “one or more masses,” and claim 49
on appeal recites “one or more of the masses” (see claims 1, 30, and 49).
7 As discussed supra in footnote 5, Appellants only present arguments with
respect to the rejection of claims 1, 3 to 8, 11, 12, 20, 30, 33 to 35, 43, 48,
and 49, which is less claims than the total of claims rejected over Arian ‘899
and Egerev, for purposes of this appeal (see App. Br. 4, 7). Because we will
address the rejection with claim 1 as representative of the group, we consider
this error not to impact the result of our decision herein.

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“an unaffixed edge not in contact with the housing,” as set forth in
representative claim 1?

The second issue is: Have Appellants demonstrated that the Examiner
erred in determining that Arian ‘899 and Egerev are properly combinable?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
Appellants’ Disclosure
1. As indicated supra, Appellants describe and claim an attenuation
apparatus, system, and method (see generally Abstract; Figs. 1 and 2;
claims 1, 30, and 49). The attenuation apparatus (Fig. 2) includes an
attenuator 170 attached to a pipe 140, a housing having an inner
sleeve 210 and an outer sleeve 215, and one or more masses 220, 225,
230, 235, 240, and 245. The one or more masses include (i) an
affixed edge in acoustic contact with the housing, and (ii) an unaffixed
edge not in contact with the housing (see Fig. 2). A rubberized O-ring
250 is provided at the unaffixed edge of each mass (see Fig. 2).
2. Appellants disclose that measurement-while-drilling (MWD) tools
150/170 may include an acoustic attenuator distributed along the
drillpipe 140 to attenuate acoustic noise propagating along the
drillpipe (Spec. ¶¶ [0009], [0010]). The MWD tools 170 may also
include transmitters to transmit acoustic signals used in the process of
measuring and collecting downhole data while drilling (Spec. ¶¶
[0001], [0009]).
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Arian ‘899
3. Arian ‘899, like Appellants, describes drilling using MWD tools to
take measurements in the borehole while drilling (col. 1, ll. 30-34).
Arian ‘899 uses transmitters to transmit information and also provides
for acoustic isolation of unwanted frequencies (col. 1, ll. 5-12; see
also col. 5, ll. 4-34).
4. Arian ‘899 describes an attenuation apparatus (Figs. 10 and 19)
including an attenuator 112/180 attached to a pipe 26 (Fig. 1), a
housing having an inner sleeve 100 and an outer sleeve 86, and one or
more masses 164 (see generally col. 9, l. 3 to col. 11, l. 14; col. 12, l.
50 to col. 13, l. 10). The one or more masses include (i) an affixed
edge in acoustic contact with the housing (i.e., the contact point
between 164 and 86), and (ii) an unaffixed edge not in contact with
the housing (i.e., the edge of 164 facing inner sleeve 100 in Fig. 10).
A rubberized O-ring 166 is provided at the unaffixed edge of each
mass 164.
5. The mass 164 has “minimal contact” with the housing (col. 10, ll. 58-
60).
6. The unaffixed edge of the mass 164 is isolated with rubber O-rings
166 to provide substantial acoustic isolation of the transmitters 160
and 162 in order to reduce the transfer of acoustic energy (col. 10, ll.
60-63).
Egerev
7. Egerev, like both Arian ‘899 and Appellants, describes drilling using
MWD tools to take measurements in the borehole while drilling (col.
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6, ll. 9-21). Egerev uses transmitter 31 to transmit information and
also provides for acoustic isolation of unwanted frequencies using
attenuator 40 (col. 1, ll. 5-12; see also col. 5, ll. 4-34 and col. 7, ll. 19-
24). More specifically, Egerev describes using masses attached to a
housing in order to provide maximum acoustic attenuation in
designated frequency ranges (Abstract).
8. Egerev describes an attenuation apparatus (50 in Fig. 3) including an
attenuator 40 attached to a pipe 13 (Fig. 1), a housing having an inner
sleeve 64 and an outer sleeve 60, and one or more masses 54/56/58.
The one or more masses 54/56/58 include (i) an affixed edge 62 in
acoustic contact with the housing (i.e., tip of arrow portions of masses
touching outer sleeve 60, or inner/back wall of masses 54/56/58
affixed to inner sleeve 64), and (ii) an unaffixed edge not in contact
with the housing (e.g., any of the perimeter edges of masses 54/56/58
not touching outer sleeve 60) (see Fig. 3; col. 7, ll. 25-46).
9. Although Egerev describes portion 60 of the housing as an “inner
wall,” Egerev provides that in an alternative embodiment an inner
pipe 64 may be provided to protect the masses 54/56/58 (col. 7, ll. 40-
46). In such an embodiment, 64 is the inner sleeve of the housing and
60 is the outer sleeve of the housing.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
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Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellants have the burden of presenting a rebuttal to
the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the burden on appeal to the Board to demonstrate error in
the Examiner’s position. See Kahn, 441 F.3d at 985-86.

ANALYSIS
Claims 1, 3 to 12, 16, 17, 20 to 25, 30, 33 to 35, 39, 40, 43 to 49,
and 53 to 55
We agree with the Examiner’s findings of fact and conclusions of
obviousness with respect to claims 1, 30, and 49 (Ans. 4-6, 8-10), and adopt
them as our own, along with some amplification of the Examiner’s
explanation of the teachings of Arian ‘899 (see FF 3-6) and Egerev (see FF
7-9). As discussed supra, we select claim 1 as representative of the group
consisting of claims 1, 3 to 12, 16, 17, 20 to 25, 30, 33 to 35, 39, 40, 43 to
49, and 53 to 55 pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
We will sustain the Examiner’s rejection of claims 1, 3 to 12, 16, 17, 20 to
25, 30, 33 to 35, 39, 40, 43 to 49, and 53 to 55 for the reasons that follow.
As indicated supra (FF 4-6), Arian ‘899 describes all of the apparatus
limitations of claim 1 including one or more masses having an affixed edge
in acoustic contact with a housing and an unaffixed edge not in contact with
the housing, as does Egerev (FF 8, 9). In other words, claim 1 reads in its

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entirety on either Arian ’899 or Egerev, whether considered alone or in
combination.8
Appellants’ argument (App. Br. 5-6; Reply Br. 3-4) that the masses of
Arian ‘899 are not in acoustic contact with the housing is unpersuasive,
since the mass 164 has “minimal contact” with housing 86 (FF 4, 5). We
agree with the Examiner that minimal contact is still contact, and will allow
for a transfer of acoustic energy (Ans. 8).
Appellants’ argument (App. Br. 6; Reply Br. 4) that Egerev fails to
teach masses having an unaffixed edge not in contact with the housing are
unpersuasive in view of our findings as to Egerev (FF 8). We agree with the
Examiner that Egerev teaches a mass 54/56/58 with an unaffixed edge not in
contact with a housing 60 since the edges around neck 62 are not affixed to
the housing (Ans. 9).
Arian ‘899, Egerev, and Appellants’ invention are all directed to
drilling using MWD tools to take measurements in a borehole while drilling
(FF 2, 3, 7). Arian ‘899, Egerev, and Appellants’ invention all (i) use
transmitters to transmit information and (ii) provide acoustic isolation of
unwanted frequencies using attenuators (FF 2, 3, 7).
In view of the teachings of the references, we agree with the Examiner
that it would have been obvious to the skilled artisan to modify the
attenuator of Arian ‘899 with the attenuation system of Egerev to attenuate

8 “[A] lack of novelty in the claimed subject matter, e.g., as evidenced by a
complete disclosure of the invention in the prior art, is the ‘ultimate or
epitome of obviousness’” In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982)
(internal citation omitted). “[A] rejection for obviousness under § 103 can
be based on a reference which happens to anticipate the claimed subject
matter.” In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979).

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acoustic waves traveling in an MWD system (Ans. 5). Kahn, 441 F.3d at
988; Fine, 837 F.2d at 1073. In addition, one of ordinary skill in the art
would have found it obvious to combine the teachings of Arian ‘899 with the
teachings of Egerev in order to provide maximum acoustic attenuation in
designated frequency ranges as taught by Egerev (FF 7).
Appellants’ arguments (App. Br. 7) that (i) the Examiner erred in
combining Arian ‘899 with Egerev because Egerev’s masses would interfere
with the transmitters of Arian ‘899, and (ii) Arian ‘899 teaches away from
either the claimed invention or Egerev are unconvincing. To the contrary,
Arian ‘899 describes an MWD system (Figures 1 and 3) having a transmitter
162 in combination with an acoustic attenuation system (Figures 10 and 19).
Egerev also describes an MWD system (Figure 1) that employs a transmitter
31 and was designed to combine the ability to transmit data with the capacity
to isolate certain unwanted frequencies using an attenuator 40 having masses
54/56/58 (FF 7).
In view of the foregoing, we will sustain the obviousness rejection of
claim 1 based upon the teachings of Arian ‘899 and Egerev. The same holds
true for claims 30 and 49 which were argued with claim 1 (App. Br. 4-7;
Reply Br. 2). The obviousness rejection of claims 3 to 12, 16, 17, 20 to 25,
33 to 35, 39, 40, 43 to 48, and 53 to 55 is sustained because Appellants have
not presented any patentability arguments for these claims apart from the
arguments presented for claims 1, 30, and 49 (see App. Br. 7).
Claims 13, 14, 18, 19, 26 to 29, 36, 37, 41, 42, 51, 52, 56 to 58
We agree with the Examiner’s findings of fact and conclusions of
obviousness with respect to claims 13, 14, 18, 19, 26 to 29, 36, 37, 41, 42,
51, 52, and 56 to 58 (Ans. 6-8; see rejections (ii)-(iv) listed supra), and
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adopt them as our own. The Examiner has provided articulated reasoning
with a rational underpinning to support the combination for the legal
conclusion of obviousness (Ans. 6-10). Once the Examiner has satisfied the
burden of presenting a prima facie case of obviousness, the burden then
shifts to Appellants to present evidence and/or arguments that persuasively
rebut the Examiner's prima facie case. See Oetiker, 977 F.2d at 1445.
Appellants have not presented any patentability arguments as to (i)
claims 13, 14, 27 to 29, 36, 37, and 56 to 58 other than to assert that Bradley
does not remedy the deficiencies of Arian ‘899 and Egerev (App. Br. 7);9 (ii)
claims 18, 19, 41, 42, 51, and 52 other than to assert that Donoho does not
cure the deficiencies of Arian ‘899 and Egerev (App. Br. 7-8); and (iii) claim
26 other than to assert that Bradley does not cure the deficiencies of Arian
‘899 and Egerev (App. Br. 8).
Since Appellants have not particularly pointed out errors in the
Examiner’s reasoning to persuasively rebut the Examiner's prima facie case
of obviousness, the rejections of claims 13, 14, 18, 19, 26 to 29, 36, 37, 41,
42, 51, 52, and 56 to 58 are therefore sustained.

CONCLUSIONS OF LAW
First Issue
Appellants have not shown that the Examiner erred in finding that
Arian ‘899 and Egerev, whether singly or in combination, teach “one or

9 The rejection of claims 13, 14, 27 to 29, 36, 37, and 56 to 58 is based on
the combined teachings of Arian ‘899 and Egerev with Arian ‘739, and not
Bradley, as argued by Appellants. However, arguments which Appellants
could have made but did not make in the Briefs have not been considered
and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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more masses” including (i) “an affixed edge in acoustic contact with the
housing,” and (ii) “an unaffixed edge not in contact with the housing,” as set
forth in representative claim 1.
Second Issue
Appellants have not shown that the Examiner erred in determining
that Arian ‘899 and Egerev are properly combinable.

ORDER
The decision of the Examiner to reject claims 1, 3 to 14, 16 to 30, 33
to 37, 39 to 49, and 51 to 58 is affirmed.
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

KIS

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