Ex Parte CoronadoDownload PDFPatent Trial and Appeal BoardSep 24, 201311950814 (P.T.A.B. Sep. 24, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARTIN P. CORONADO ____________ Appeal 2011-011078 Application 11/950,814 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, LYNNE H. BROWNE and MITCHELL G. WEATHERLY, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011078 Application 11/950,814 2 STATEMENT OF THE CASE Martin P. Coronado (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-6 and 9-12. Claims 7 and 8 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claims 1 and 10 are independent; claim 1 is reproduced below: 1. A downhole system employing a crossover tool comprising: an actuator in operable communication with the crossover tool; a controller in operable communication with the actuator; a wired pipe in operable communication with the controller; and a control device in operable communication with the wired pipe, the wired pipe being configured to pass power between at least the control device and the controller. PRIOR ART Whitsitt US 2008/0128130 A1 Jun. 5, 2008 GROUND OF REJECTION Claims 1-6 and 9-12 stand rejected under 35 U.S.C. § 102(e) as anticipated by Whitsitt. OPINION Appellant argues claims 1-6 and 9-12 as a group. See App. Br. 4-6; Reply Br. 2-3. We select independent claim 1 as the illustrative claim and claims 2-6 and 9-12 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2011-011078 Application 11/950,814 3 The Examiner finds that Whitsitt discloses each and every limitation of independent claim 1. In particular, the Examiner finds that Whitsitt discloses “a wired pipe (the ability of telemetry system 70 to send signals to the surface using electrical signals means Whitsitt contemplates the use of wired pipe,[para.] 36 final 4 lines) in operable communication with the controller.” Ans. 4 (emphasis added). Appellant argues that “[w]hether or not the claim rejections under appeal are maintained or not hinges upon whether Whitsitt does or does not disclose use of ‘wired pipe’ as is currently claimed.” App. Br. 4. The Examiner’s finding that Whitsitt discloses “wired pipe” is based on Whitsitt’s disclosure that “[v]alve control system 68 also may comprise an uplink telemetry system 70 able to output signals, e.g. electrical signals, optical signals, wireless signals, etc., to the surface to confirm the positions of individual valves.” Whitsitt, para. [0036]. The Examiner’s determination that Whitsitt contemplates wired pipe amounts to an admission that Whitsitt does not expressly or implicitly describe wired pipe. Accordingly, we must determine if wired pipe is inherent in Whitsitt’s device. The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (rejection reversed because alleged inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art); see also In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, Appeal 2011-011078 Application 11/950,814 4 may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotations omitted). In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). By describing electrical signals and wireless signals in the quotation supra, Whitsitt implicitly discloses wired output of signals; however, Whitsitt does not describe the device used to output wired signals. Devices other than wired pipe, such as wired line, could be used to perform this function. Accordingly, wired pipe is not necessarily present in Whitsitt’s device and thus, is not inherent in Whitsitt’s disclosure. We may not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). On the record before us there is no factual basis for the Examiner’s determination that “Whitsitt contemplates the use of wired pipe.” Ans. 4. Whitsitt does not address how the electrical signals are output as discussed supra. Accordingly, there is insufficient evidence to support the Examiner’s finding that Whitsitt discloses wired pipe, and Appellant’s arguments are persuasive. For these reasons we do not sustain the Examiner’s rejection of claim 1 and claims 2-6 and 9-12 which stand therewith. Appeal 2011-011078 Application 11/950,814 5 DECISION The Examiner’s rejection of claims 1-6 and 9-12 is REVERSED. REVERSED mls Copy with citationCopy as parenthetical citation