10954124 (B.P.A.I. Nov. 17, 2010)

Ex Parte Blankinship et al

Board of Patent Appeals and InterferencesNov 17, 2010

10954124 (B.P.A.I. Nov. 17, 2010)

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. 10/954,124 09/29/2004 Thomas J. Blankinship 135-0043US 3058 90116 7590 11/18/2010 (Weatherford) Wong Cabello Lutsch Rutherford & Brucculeri LLP 20333 Tomball Parkway, 6th floor Houston, TX 77070 EXAMINER KEITH, JACK W ART UNIT PAPER NUMBER 3663 MAIL DATE DELIVERY MODE 11/18/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte THOMAS J. BLANKINSHIP, EDWIN K. ROBERTS, and LUCIO N. TELLO ____________________ Appeal 2010-002148 Application 10/954,124 Technology Center 3600 ____________________ Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and LINDA E. HORNER Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-002148 Application 10/954,124 2 STATEMENT OF THE CASE Thomas J. Blankinship et al. (Appellants) appeal under 35 U.S.C. § 134 (2002) from the Examiner’s decision rejecting claims 1-3, 8-10, 20, 21, 30-43, and 58-69. We have jurisdiction under 35 U.S.C. § 6(b) (2002). INVENTION The claims are directed to a borehole logging system for measuring properties and conditions of a well borehole environs. Spec. 1:4-5. Claim 12, reproduced below, is illustrative of the claimed subject matter: 1. A tool for measuring a parameter of a borehole, the tool comprising: (a) a scanning head that rotates a scanning transducer assembly radially within said borehole; (b) a mechanical subassembly for rotating said scanning head; (c) a reference transducer assembly comprising (i) a reference transducer, (ii) a first chamber (iii) a second chamber dimensioned so that ring down of an acoustic energy pulse can be measured by the reference transducer without interference from material in the tool, and (iv) a permanently fixed plate separating the first and second chambers and arranged to reflect at least a portion of acoustic energy emitted by the reference transducer back to the reference transducer; and (d) a processor operatively coupled to said scanning transducer and said reference transducer; wherein the processor is programmed to: (i) measure said parameter from said response of said scanning transducer, 2 Last amended Feb. 13, 2008. Appeal 2010-002148 Application 10/954,124 3 (ii) correct said measured parameter for variations in acoustic impedance of borehole fluid using response of said reference transducer in said first chamber, and (iii) correct said measure of said parameter for systematic variations in said scanning transducer response by using said response of said reference transducer in said second chamber, said response of said reference transducer in said second chamber including ring down of an acoustic energy pulse. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Dumont Katahara Zimmer Kinley Liang Maki US 4,685,092 US 4,912,683 US 5,157,392 US 5,358,040 US 5,717,169 US 5,874,676 Aug. 4, 1987 Mar. 27, 1990 Oct. 20, 1992 Oct. 25, 1994 Feb. 10, 1998 Feb. 23, 1999 Hassan US 2004/0095847 A1 May 20, 2004 REJECTIONS Claims 1-3, 8-10, 20, 21, 30-43, and 58-69 stand rejected under 35 U.S.C. § 112 first paragraph as failing to comply with the written description requirement. Ans. 4. Claims 58-60 and 62-68 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dumont. Ans. 5. Claims 1-3 and 61 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dumont and Maki. Ans. 10, 25. Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dumont, Maki, and Kinley. Ans. 12. Appeal 2010-002148 Application 10/954,124 4 Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dumont, Maki, and Hassan. Ans. 14. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dumont, Maki, Hassan, and Kinley. Ans. 15. Claims 30-40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Katahara, Kinley, Hassan, and Dumont. Ans. 16. Claims 41-43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Katahara, Kinley, Hassan, Dumont, and Liang. Ans. 24. Claim 69 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dumont and Zimmer. Ans. 25. SUMMARY OF DECISION We AFFIRM. ISSUES 1. Does Appellants’ Specification, and particularly figure 5 and the last paragraph on page 12 of the Specification describing figure 5, provide written description support for the limitation of a “permanently” fixed plate in each of Appellants’ independent claims 1, 30, 58, and 63? App. Br. 9-10. 2. Does the prior art applied in the Examiner’s rejections render obvious the subject matter of independent claims 1, 30, 58, and 63, particularly the limitation of “a permanently fixed plate”? App. Br. 14-16, 17, 18, 19, 20, 21, 22, 23, and 24. Appeal 2010-002148 Application 10/954,124 5 DISCUSSION Issue 1 – written description Appellants argue that the disclosure in the last paragraph on page 12 of the Specification, and the depiction of the plate 78 in figure 5, provide written description support for the limitation “a permanently fixed plate”3 in independent claims 1, 30, 58, and 63. App. Br. 9-10. Specifically, Appellants contend that because: (1) figure 5 shows the plate fixed to the reference transducer assembly, (2) the passage alluded to by Appellants makes no reference to other positioning or moving of the plate, and (3) no mechanism is described or depicted for moving the plate or compensating for a moved plate, one of ordinary skill in the art would understand that the plate was permanently fixed in position. App. Br. 10. We do not agree with Appellants. The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351. As implicitly acknowledged by Appellants, neither the passage from the Specification alluded to by Appellants, nor the depiction of the plate 78 3 The term “permanently” was added in the Amendment filed Feb. 13, 2008. Appeal 2010-002148 Application 10/954,124 6 in figure 5 explicitly describes the plate 78 as being permanently fixed to the reference transducer assembly. Neither the passage nor the depiction in figure 5 provides any disclosure that would indicate to a person of ordinary skill in the art that the plate 78 is permanently, rather than removably, fixed to the reference transducer assembly. The absence of any disclosure indicating that the plate 78 must be movable from one position to another on the reference transducer assembly simply suggests, at best, that a permanent attachment is possible; such absence of disclosure in no way excludes the possibility of a non-permanent attachment. This is not sufficient to satisfy the written description requirement. The question of whether a modification is an obvious variant of that which is originally disclosed is irrelevant insofar as the written description requirement is concerned. See, e.g., Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997); In re Wohnsiedler, 315 F.2d 934, 937 (CCPA 1963); In re Barker, 559 F.2d 588, 593 (CCPA 1977): That a person skilled in the art might realize from reading the disclosure that such a step is possible is not a sufficient indication to that person that [the] step is part of appellants’ invention. Such an indication is the least that is required for a description of the invention under the first paragraph of § 112. Issue 2 – obviousness Each of the Examiner’s rejections under 35 U.S.C. § 103(a) relies on Dumont for a reference transducer, including, notably, the fixed plate separating first and second chambers. The Examiner recognized that Dumont does not disclose that the reflector 24 (on which the Examiner reads the claimed “fixed plate”) is permanently fixed, as called for in the claims. See, e.g., Ans. 6. The Examiner concluded, however, that it would have Appeal 2010-002148 Application 10/954,124 7 been obvious to modify the reference transducer assembly taught by Dumont “to include permanently fixing the plate once the parameters have been determined and set [to] ensure that these necessary parameters do not change over the course of a survey of the specific borehole to which the tool and parameters of the plate are set.” Id. For essentially the reasons asserted by Appellants on page 15 of their Appeal Brief, we do not agree with the Examiner’s conclusion. Specifically, Dumont very deliberately describes positioning the reflector 24 in the reference transducer assembly in a removable, or non- permanent manner (col. 7, ll. 28-33) so that the reflector with the appropriate thickness and curvature to correspond to the thickness and diameter of the casing can be selected, from among the series of reflectors provided, and positioned in the appropriate slide from among slides A-J, in order to match the acoustic characteristics of the casing used in the borehole (col. 6, l. 40 to col. 7, l. 28). Dumont teaches doing this so that the measured energy W2i from scanning transducers T1-T8 is normalized relative to the corresponding energy W29 received by reference transducer T9 to eliminate effects due to the casing itself. Col. 8, l. 61 to col. 9, l. 1; col. 11, ll. 4-12). If Dumont’s reflector 24 were permanently attached once the proper reflector were selected and appropriately positioned, as proposed by the Examiner, the resulting reference transducer assembly could only be used, in accordance with the method taught by Dumont, for inspecting a borehole having a casing matching the diameter and thickness of the reflector fixed to the reference transducer assembly. Dumont’s described normalization routine assumes that a reflector having a thickness and diameter matching the borehole casing is positioned in the appropriate slide, so that the normalization is with respect to a casing having acoustic properties matching Appeal 2010-002148 Application 10/954,124 8 that of the borehole casing. Dumont gives no indication that the non- permanent securement of the reflector 24 in the reference transducer assembly is in any manner deficient or inferior to a permanent connection. Thus, there would be no apparent reason for a person of ordinary skill in the art to modify Dumont’s reference transducer so as to permanently fix the reflector, as this would render it unsuitable for use in boreholes having casings of different thicknesses and diameters and would not offer any apparent advantage. Based on the record before us, the Examiner’s articulated reasoning for making the modification lacks rational underpinning. CONCLUSIONS 1. Appellants’ Specification, and particularly figure 5 and the last paragraph on page 12 of the Specification describing figure 5, does not provide written description support for the limitation of a “permanently” fixed plate in each of Appellants’ independent claims 1, 30, 58, and 63. Thus, we sustain the rejection of claims 1, 30, 58, and 63, as well as their dependent claims 2, 3, 8-10, 20, 21, 31-43, 59-62, and 64-69, under 35 U.S.C. § 112, first paragraph. 2. The prior art applied in the Examiner’s rejections does not render obvious the subject matter of independent claims 1, 30, 58, and 63, particularly the limitation of “a permanently fixed plate.” Thus, we reverse the Examiner’s rejections under 35 U.S.C. § 103(a). Appeal 2010-002148 Application 10/954,124 9 DECISION For the above reasons, the Examiner’s decision 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 hh (Weatherford) Wong Cabello Lutsch Rutherford & Brucculeri LLP 20333 Tomball Parkway, 6th floor Houston TX 77070