Ex Parte Desai

Patent Trial and Appeal Board

Aug 30, 2016

12952999 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/952,999 11/23/2010
59977 7590 09/01/2016
OSHA, LIANG LLP I SMITH
TWO HOUSTON CENTER
909 FANNIN STREET, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Praful C. Desai
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
05516/520001 2709
EXAMINER
LOBO,IANJ
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
docketing@oshaliang.com
bergman@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRAFUL C. DESAI
Appeal2014-008364
Application 12/952,999
Technology Center 3600
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3, 5-11, 13, 14, and 16-18 under 35 U.S.C. 103(a) as
being unpatentable over Priest (US 5,541,889, iss. July 30, 1996) and
Clerke (US 4,766,577, iss. Aug. 23, 1988); claims 4, 15, 21, and 22 over
Priest, Clerke, and Roberts (US 2010/0059219 Al, pub. Mar. 11, 2010); and
claims 12 and 19 over Priest, Clerke, and Varsamis (US 5,987,385, iss. Nov.
16, 1999). 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Alternative grounds of rejection over combinations based on Wraight (US
2009/0147907 Al, pub. June 11, 2009) have been withdrawn. Ans. 2-3.
Appeal2014-008364
Application 12/952,999
THE INVENTION
Appellant's invention relates to oil field downhole tools. Spec. i-f 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A downhole imaging system comprising:
a downhole imaging tool;
a collision avoidance probe disposed at a distal end of the
downhole imaging tool;
a surface workstation; and
a real-time data feed configured to connect between the
downhole imaging tool and the surface workstation.
OPINION
Unpatentability of Claims 1, 3, 5-11, 13, 14, and 16-18
over Priest and Clerke
Claims 1, 3, 5, 11, 13, and 14
Appellant argues claims 1, 3, 5, 11, 13, and 14 as a group. Appeal
Br. 6-12. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
The Examiner finds, and Appellant does not dispute, that Priest
discloses all of the elements of claim 1 except for a collision probe. Final
Action 2. The Examiner finds, and Appellant does not dispute, that Clerke
discloses a collision avoidance probe. Id. at 3. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
of the invention to modify Priest with Clerke' s collision avoidance probe.
Id. According to the Examiner, a person of ordinary skill in the art would
have done this to avoid structures such as element 65 depicted in Figure 1 of
Clerke. Id.
Appellant traverses the Examiner's rejection by first arguing that there
is no motivation to combine Priest with Clerke. Appeal Br. 6. Appellant
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Application 12/952,999
argues that Priest's tool is operated in a reverse direction compared to
Appellant's tool. Id. In other words, instead of operating as it descends into
a borehole, it operates while being drawn upward and, therefore, Clerke' s
transducer (collision avoidance probe) would not be necessary or useful if
combined with Priest. Id.
In response, the Examiner states that Priest is not limited to imaging
only while being drawn upward. Ans. 3. The Examiner also notes that an
imaging tool that operates while ascending within the borehole must first
descend before being drawn upward. Id. The Examiner also points out that
Clerke acknowledges a long-felt need to be able to look ahead of an imaging
tool as well as sideways, since 'junk" may be located at the bottom or along
the walls of the borehole. Id.
In reply, Appellant argues that Priest is operated under conditions
where an operator would have already removed obstructions within the
borehole before lowering the tool. Reply Br. 4.
We think the Examiner has stated the more persuasive position.
Contrary to Appellant's argument, Priest merely discloses that its logging
operation is "usually performed" as the tool is drawn upward. Priest, col. 6,
11. 15-19. Thus, a person of ordinary skill in the art would have known that
Priest is not limited to operation while being drawn upward.
Appellant next argues that a person of ordinary skill in the art would
not modify Priest with Clerke because Priest discloses an inexpensive,
sacrificial mud-excluder 32 that is designed to shear away from the
remainder of the tool if it gets stuck in the borehole. Appeal Br. 7.
Appellant contends that mud-excluder 32 of Priest "must be attached" to the
distal end of Priest's televiewer 30 in order for Priest to function in the
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Application 12/952,999
manner intended. Id. Appellant argues that a person of ordinary skill in the
art would not attach an expensive, non-sacrificial component, such as
Clerke's collision avoidance device, to an inexpensive, sacrificial
component, such as Priest's mud-excluder. Id.
In response, the Examiner states that, in the proposed combination,
Clerke' s collision avoidance device would be attached to the distal (or
bottom) end of Priest. Ans. 5. Consequently, according to the Examiner, it
would not be attached to the mud-excluder 32 that is located along the radial
periphery of Priest's tool. Id. In reply, Appellant essentially reiterates the
arguments made in the Appeal Brief. Reply Br. 4--5.
Priest's mud-excluder assembly 32 is situated approximately mid-way
between the proximal and distal ends of the tool. See Priest, Fig. 3. It is
comprised of a plastic shroud 54, a top retaining plate 52, and lower support
plate 56. Id. col. 5, 11. 13-22. The mud-excluder assembly is attached to the
logging tool by means of shear screws 58. Id. col. 6, 11. 4--14. The physical
configuration disclosed and depicted by Priest supports the Examiner's
position that a collision avoidance device would be attached to the distal end
of the tool and would not, as argued by Appellant, need to be attached to the
mud-excluder.
Next, Appellant argues that modifying Priest with Clerke's collision
avoidance device would render Priest unsatisfactory for its intended purpose.
Appeal Br. 8. Appellant predicates this position on the assumption that
attaching Clerke' s device to Priest would somehow prevent or preclude
Priest's mud-excluder from enshrouding acoustic window 44 of
televiewer 30. Id. In response, the Examiner points out that Priest's tool
scans radially and further states that person of ordinary skill in the art would
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Application 12/952,999
locate a collision avoidance probe at the distal end of the Priest tool and,
thus, would not render Priest inoperable. Ans. 4. There is no evidence that
tends to show that incorporating a Clerke collision avoidance device onto the
distal end of Priest, as proposed by the Examiner, would impair or impede
radial scanning by Priest's tool through acoustic window 44 and shroud 54.
See Priest, Fig. 3.
Finally, Appellant accuses the Examiner of engaging in impermissible
hindsight. Appeal Br. 9. This argument is unpersuasive. Clerke explicitly
states that its apparatus is "particularly suited for locating lost articles in a
borehole." Clerke, col. 3, 11. 56---61; Final Action 3. The Examiner has
articulated an adequate non-hindsight reason for making the proposed
combination, namely, to avoid collision with structures situated in the
borehole. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (hindsight
argument is of no moment where the Examiner provided a sufficient, non-
hindsight reason to combine the references).
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, 3, 5, 11, 13, and 14.
Claims 6-10, and 16-18
Claims 6-10 depend from independent claim 1, and claims 16-18
depend from independent claim 13. Appeal Br., Claims App. Appellant
raises essentially the identical argument to the Examiner's rejection of each
of these claims. Appeal Br. 12-16. Under the circumstances, we deem it
appropriate to treat these claims together.
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Application 12/952,999
\Vith respect to each claim, the Examiner finds that the respective
dependent limitation is merely directed to a specific performance parameter
that is a matter of design choice that one of ordinary skill would have found
obvious. Final Action 3.
In traversing each of these rejections, Appellant argues that the prior
art is silent with respect to the claimed dependent limitation. Appeal
Br. 12-16. Appellant cites Ex Parte Eisenberg, 2010 WL 1697196, *10,
No. 2009-004928 (BPAI 2010) for the proposition that resorting to "design
choice," without more, is insufficient rationale for establishing a prima facie
case of obviousness.
In response, the Examiner states:
[T]he specific data rate, downhole temperature and pressure,
and images having specific lateral and depth resolutions are
design incentives that are predictable to one of ordinary skill in
the art and since the instant specification has not shown that
such specific data rates, downhole temperature and pressure,
and lateral and depth resolutions are new and have unexpected
results, such design choices would be obvious to one of
ordinary skill in the art. Although not applied in the current
rejection, appellant's attention is directed to para. 0095 of
Biester et al ('476), col. 1, lines 30-33 of Owens et al ('028),
col. 2, lines 39-42 of Hanson et al ('629) showing exemplary
teachings of well known prior art data transmission rates,
downhole temperatures and pressures.
Ans. 6-7. We interpret the Examiner's statement as a finding that prior art
imaging systems are known to have lateral and depth resolutions of some
amount, and that achieving the claimed resolutions requires no more than
ordinary skill.
In reply, Appellant does not challenge the Examiner's position that
non-applied art demonstrates that the claimed performance parameters with
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respect to data transmission rates, temperatures, and pressures, are well-
known. Reply Br. 7-9. See In re Chevenard, 139F.2d 711, 713 (CCPA
1943) ("In the absence of anything in the record to contradict the examiner's
holding, and in the absence of any demand by appellant for the examiner to
produce authority for his statement, we will not consider this contention.").
With respect to claims 9, 10, 16, and 17, Appellant argues that the
non-applied art recited in the Examiner's Answer is silent as to the lateral
and depth resolution performance criteria specified in such claims. Reply
Br. 7-9. However, Appellant presents neither evidence nor persuasive
technical reasoning that tends to rebut the Examiner's position that such
lateral and depth resolutions are design incentives that are predictable to one
of ordinary skill in the art. Ans. 6-7. Neither does Appellant provide
evidence or persuasive technical reasoning that tends to show that the
subject matter of claims 9, 10, 16, and 17 is new or achieves unexpected or
non-obvious results.
Under the circumstances, we think that the Examiner has done enough
to meet Examiner's initial burden. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011). Thus, the burden shifts to Appellant to come forward with
evidence or argument. See In re Oeticker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Appellant has not presented any evidence, argument, or other means
of persuasion to show that designing a down hole imaging system with a
lateral imaging resolution of 10 mm and/or a depth imaging resolution of
100 mm requires more than mere ordinary skill and, thus, is merely a matter
of design choice. Inasmuch as the claim limitations at issue relate to
performance parameters (e.g., image resolution) that are common to all
imaging systems and that the specifically claimed parameters merely relate
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to a particular metric of an otherwise common performance parameter, we
are of the opinion that Eisenberg is distinguishable from the case before us.
We sustain the rejection of claims 6-10, 16, and 17.
Unpatentability of Claims 4, 15, 21, and 22
over Priest, Clerke, and Roberts
Appellant does not argue for the separate patentability of claims 4, 15,
21, and 22 apart from arguments presented with respect to claim 1 which we
have previously considered and found unpersuasive. Appeal Br. 16-17.
We sustain the rejection of claims 4, 15, 21, and 22.
Unpatentability of Claims 12 and 19
over Priest, Clerke, and Varsamis
Appellant does not argue for the separate patentability of claims 12
and 19 apart from arguments presented with respect to claim 1 which we
have previously considered and found unpersuasive. Appeal Br. 17.
We sustain the rejection of claims 12 and 19.
DECISION
The decision of the Examiner to reject claims 1, 3-19, 21, and 22 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)(l )(iv).
AFFIRMED
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