Ex Parte Downton

Patent Trial and Appeal Board

Jun 23, 2016

13205038 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/205,038 08/08/2011
23718 7590 06/27/2016
Schlumberger Technology Center
Intellectual Property Counsel
Houston Formation Evaluation Intergration
200 Gillingham Lane MD-9
Sugar Land, TX 77478
FIRST NAMED INVENTOR
Geoff Downton
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.
92.1032 US CNT2 1140
EXAMINER
FULLER, ROBERT EDWARD
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
SMarckesoni@slb.com
jalverson@slb.com
USDOCKETING@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFF DOWNTON
Appeal2014-003745
Application 13/205,038
Technology Center 3600
Before LINDA E. HORNER, LISA M. GUIJT, and MARK A. GEIER,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Geoff Downton (Appellant) 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject claims 1-13 and 15-20. Br. 2.2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the real party in interest as Schlumberger Technology
Corporation. Br. 1.
2 Appellant filed an Appeal Brief on January 30, 2014, which is identical to
the Appeal Brief filed on October 19, 2013. Therefore, the record does not
contain a Reply Brief, and we omit any duplicate citations to the later filed
brief.
Appeal2014-003745
Application 13/205,038
THE CLAIMED SUBJECT MATTER
Claims 1, 12, and 17 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A steerable system comprising a fluid powered
motor having a rotor and a stator in which the rotor may
be powered by a fluid, and a bias arrangement having at
least one bias pad rotatable with the stator, the at least one
bias pad being connected with a passage extending to an
upstream end of the fluid powered motor such that the at
least one bias pad is actuatable by a pressure differential
between the fluid upstream of the fluid powered motor, via
the passage, and the fluid downstream of the fluid powered
motor to allow the application of a side load to the
steerable system.
THE REJECTIONS
Claims 1--4, 7, 8, 10, 12, 13, 15-18, and 20 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Krueger '941 (US 5,168,941; iss.
Dec. 8, 1992) and Scherbatskoy (US 4,692,911; iss. Sept. 8, 1987).
Claims 5 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Krueger '941, Scherbatskoy, and Krueger '579 (US
6,609,579 B2; iss. Aug. 26, 2003).
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Krueger '941, Scherbatskoy, Krueger '579, and Krimmer (US 2002/0149456
Al; pub. Oct. 17, 2002).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Krueger '941, Scherbatskoy, and MacDonald (US 6,206, 108 B 1; iss.
Mar. 27, 2001).
2
Appeal2014-003745
Application 13/205,038
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Krueger '941, Scherbatskoy, and Barr (US 5,803,185; iss. Sept. 8,
1998).
OPINION
Independent claim 1
Regarding independent claim 1, the Examiner finds, inter alia, that
Krueger '941 discloses a bias arrangement actuated by drilling fluid
pressure, wherein the bias pads are operated "by utilizing a pressure
difference in the drilling mud." Final Act. 3--4. The Examiner further finds
that Krueger '941 discloses that "this pressure difference can come from a
throttle point within [or outside of] the steerable unit housing," and that "a
stabilizer [is] one example of such a throttle point." Final Act. 4 (citing col.
3, 1. 65---col. 4, 1. 23). The Examiner also finds that Krueger '941 discloses
"how to utilize pressure upstream of a throttle point to perform a steering
function, i.e.[,] by providing a 'drilling mud channel like drilling mud
channel 453 in the outer casing 1. "' Ans. 4 (citing Krueger '941, col. 4, 11.
2-3).
The Examiner determines that "Krueger '941 fails to disclose that the
bias pad is actuatable by a pressure differential between the fluid upstream
of the motor via [a] passage and the fluid downstream of the motor." Final
Act. 3; Ans. 4 ("[T]he only thing Krueger ['941] does not explicitly say is
that the throttle point is the mud motor."). The Examiner relies on
Scherbatskoy for disclosing that "it is well known that a mud motor
3 Reference numeral 45 is referred to in Krueger '941 as both "center bore
45 in drive shaft 3," (col. 3, 11. 17-18), which conducts drilling mud, and
"drilling mud channel 45." (col. 4, 11. 2-3).
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Appeal2014-003745
Application 13/205,038
produces 'a large pressure drop' across it." Final Act. 4 (citing
Scherbatskoy col. 14, 11. 30-40).
The Examiner reasons that it would have been obvious
to have modified Krueger '941 such that the bias pads were
operated by a pressure difference across a mud motor, since
Krueger '941 discloses that the bias pads can be operated by a
pressure differential between the upstream and downstream sides
of a throttle point, and since Scherbatskoy teaches that mud
motors are [] such a throttle point, and that they produce a large
pressure differential.
Id. The Examiner further reasons that "it would have been obvious to try
providing [] a passage, in order to yield the predictable result of operating
the bias pads by utilizing the pressure drop across the mud motor." Id. The
Examiner concludes that "[i]n combining the teachings ... one of ordinary
skill would simply provide a drilling mud channel in the outer casing 1 to a
point upstream of the mud motor." Ans. 4.
First, Appellant argues that "the mere knowledge of pressure drop
resulting from restrictions to flow does not lead one of ordinary skill in the
art to the [claimed subject matter]" and also that "being aware of the known
pressure drop across a mud motor does not lead one of ordinary skill in the
art to redesign existing systems (e.g., the Krueger ['941] system) in a
manner which omits the pressure drop created downstream of the mud
motor. "4 Br. 5. In support, Appellant explains that "[Krueger '941]
describes a conventional system which creates the pressure drop below a
4 Although Appellant does not provide additional explanation, we
understand that Appellant means that by obtaining fluid from an upstream
end of the motor, an additional pressure drop downstream of the motor from
which to obtain fluid for operating a bias arrangement is unnecessary.
4
Appeal2014-003745
Application 13/205,038
hydraulic drive motor, thus requiring increased mud pressure [to operate the
bias arrangement]." Id. Appellant further explains that
prior systems effectively used a throttle or pressure drop located
below the mud motor to operate a bias unit. . . . [T]hose of
ordinary skill in the art the time of the invention believed it was
necessary to utilize higher pressures to operate steerable systems
to enable creation of a sufficient pressure drop below the mud
motor. The restricted flow caused by a mud motor resulted in a
pressure drop but no one had figured out how to utilize such a
pressure drop.
Id. at 6. However, Appellant's arguments do not address the Examiner's
proposed combination, which modifies Krueger '941 to use the mud motor
as a throttle point, as disclosed in Scherbatskoy, such that the pressure drop
below the mud motor to operate the bias arrangement is unnecessary. See
Final Act. 3--4; Ans. 4. Although Appellant argues that "[t]he knowledge
gained from the cited references would not lead one of ordinary skill in the
art to act contrary to the teachings of Krueger ['941] ... regarding creation
of a pressure drop downstream of the mud motor" (Br. 9), Appellant
provides no explanation as to why the Examiner's proposed modification,
based on the teachings in Krueger '941 and Scherbatskoy, would be beyond
the knowledge of one skilled in the art.
Appellant also points out that Appellant's Specification "describes a
passage routed through the mud motor in a manner which enables use of this
pressure drop across the mud motor to operate ... a bias unit without the
increased pressure of prior art systems." Br. 6. 5 Appellant concludes that
5 Notably, independent claims 1 and 17 require a passage extending from
the bias arrangement (or unit) to an upstream end (or region) of the fluid
powered motor, but these claims do not require the passage to be "through
5
Appeal2014-003745
Application 13/205,038
"there is nothing disclosed in either of the cited references to teach [the
claimed subject matter]," and that the Examiner is relying on "impermissible
hindsight analysis." Id. However, Krueger '941 specifically teaches that
[i]n a modification of the communication of connecting channels
36, 37, 38, 39 to drilling mud of a high pressure and drilling mud
of a low pressure as provided in the version according to FIGS.
1 and 2, it is also possible to have the action of the high-pressure
drilling mud derive from a drilling mud channel like drilling mud
channel 45 in the outer casing 1 in the direction of flow in front
of a throttle point and to have the action of low-pressure drilling
mud derived from the same drilling mud channel after the throttle
point.
Krueger '941, col. 3, 1. 65---col. 4, 1. 6. In other words, Krueger '941 teaches
using passages to enable use of a pressure drop created by a throttle point.
As stated supra, Scherbatskoy discloses that a large pressure drop (or
throttle point) occurs across a mud motor. Appellant does not identify any
knowledge that the Examiner relied upon that was gleaned only from
Appellant's disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392 (CCPA 1971).
Accordingly, we sustain the Examiner's rejection of independent
claim 1. Appellant chose not to present arguments addressing the
patentability of claims 2--4, 7, 8, 10, 13, 15, 16, 18, and 20, although claims
13, 15, and 16 depend from independent claim 12 and claims 18 and 20
depend from independent claim 17. Br. 10. Thus, we also sustain the
Examiner's rejection of claims 2--4, 7, 8, and 10, and claims 13, 15, 16, 18,
and 20 are addressed below.
the fluid driven downhole motor," as required, for example, by independent
claim 12.
6
Appeal2014-003745
Application 13/205,038
Independent claims 12 and 17, and depending claims 13, 15, 16, 18, and 20
Although Appellant appears to present arguments for the patentability
of claims 1--4, 7, 8, 10, 12, 13, 15-18, and 20 as a group (see Br. 5-9),
Appellant also contends that "the cited combination of references does not
meet the limitations of independent claim 1, 12, and 17" (Br. 9). Appellant's
arguments directed to independent claims 12 and 17 are simply a recitation
of the limitations of claims 12 and 17 (Br. 9), which do not apprise us of any
errors in the Examiner's findings or reasoning. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013) ("A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim."); see also In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011)
(holding that "the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art").
Accordingly, for the reasons set forth with respect to independent
claim 1, and also because Appellant does not present arguments directed to
specific limitations of claims 12 and 1 7 which are not also recited in claim 1,
we sustain the Examiner's rejection of independent claims 12 and 17, claims
13, 15, 16, 18, and 20 depending therefrom.
Claims 5, 6, 9, 11, and 19 - Obviousness over Krueger '941, Scherbatskoy,
Krueger '579, Krimmer, MacDonald, and/or Barr
Appellant argues that Krueger '579, Krimmer, MacDonald, and Barr
"fail[] to obviate the deficiencies" as set forth with respect to independent
claim 1, and Appellant relies on the reasons discussed supra with respect to
independent claim 1. Br. 11-13. Because we do not agree that the
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Appeal2014-003745
Application 13/205,038
Examiner's findings or reasoning are deficient with respect to claim 1, we
also sustain the Examiner's rejection of dependent claims 5, 6, 9, 11, and 19.
DECISION
The Examiner's decision to reject claims 1-13 and 15-20 under
35 U.S.C. § 103(a) is affirmed.
AFFIRMED
8