Ex Parte Huang et al

Patent Trial and Appeal Board

Apr 30, 2013

11830504 (P.T.A.B. Apr. 30, 2013)

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.
11/830,504 07/30/2007 Songming Huang 68.0709 2938
7590 05/01/2013
Patent Counsel
Schlumberger Reservoir Completions
Schlumberger Technology Corporation
14910 Airline Road
Rosharon, TX 77583
EXAMINER
GITLIN, ELIZABETH C GOTTLIEB
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
05/01/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SONGMING HUANG, THOMAS D. MacDOUGALL
and BENJAMIN P. JEFFRYES
____________

Appeal 2011-003691
Application 11/830,504
Technology Center 3600
____________

Before LINDA E. HORNER, PATRICK R. SCANLON and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Songming Huang et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject (1) claims 1-4, 6-8, 23, 24, 26 and 27
under 35 U.S.C. § 103(a) as unpatentable over Huang (US 2005/0168349
A1, pub. Aug. 4, 2005) and Blodgett (US 3,971,321; iss. Jul. 27, 1976); and
(2) claim 5 under 35 U.S.C. § 103(a) as unpatentable over Huang, Blodgett
and Beck (US 6,588,505 B2, iss. Jul. 8, 2003).1,2,3 Claims 9, 13, 16, 17, 19,
20 and 25 have been canceled. Claims 1-8, 23, 24, 26 and 27 are before us
for review. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention relates to “a system and method by which
energy is physically/mechanically transmitted down through a wellbore.”
Spec. para. [0003]; figs. 1-2.
Claims 1 and 23 are illustrative of the claimed invention and read as
follows:
1. A method for ensuring available power in a
downhole environment, comprising:
generating acoustic waves with an acoustic
generator positioned at a surface location;

1 The Examiner withdrew the rejection of independent claim 18 under 35
U.S.C. § 102(b) as being anticipated by Henderson (US 6,745,844 B2, iss.
Jun. 8, 2004). Ans. 2.
2 The Examiner withdrew the rejection of dependent claims 21 and 22 under
35 U.S.C. § 103(a) as being obvious over Henderson and Blodgett. Ans. 2.
3 The Examiner’s rejection of claims 10-12, 14 and 15 under 35 U.S.C.
§ 103(a) as being obvious over Huang and Blodgett (see Final Rej. 5-6,
mailed Dec. 8, 2009) is not subject to this Appeal. See Status of Claims
Section, Br. 2; see also Supp. Ans. 1, mailed Sep. 8, 2010.
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directing the acoustic waves downhole into a
wellbore;
converting the acoustic waves into electrical
energy at a downhole location with a pressure balanced
membrane coupled to a Helmholtz cavity to drive a coil
in a magnetic field; and
using the electrical energy to provide power to a
downhole device.

23. A system, comprising:
a wave generator to generate fluid waves;
a fluid channel connecting the wave generator to a
subterranean location; and
a converter positioned at the subterranean location
to convert the energy of the fluid waves into electric
energy, the converter comprising a pressure balanced
membrane coupled to a Helmholtz cavity to drive a coil
in a magnetic field.

ANALYSIS
Obviousness over Huang and Blodgett - Claims 1-4, 6-8, 23, 24, 26 and 27
Appellants present similar arguments for independent claims 1 and 23.
Br. 8-10. Appellants do not present additional arguments regarding the
patentability of dependent claims 2-4, 6-8, 24, 26 and 27 separate from those
directed against the rejection of independent claims 1 and 23. Id. Therefore,
Appellants have argued claims 1-4, 6-8, 23, 24, 26 and 27 as a group for
purposes of the rejection of those claims under § 103(a). Claim 1 is
representative of the group and is selected for review. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
Independent claim 1 recites a method for ensuring available power in
a downhole environment including the step of “converting the acoustic
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waves into electrical energy at a downhole location with a pressure balanced
membrane coupled to a Helmholtz cavity to drive a coil in a magnetic field.”
Br., Clms. App’x.
Appellants argue that “the cited references, taken alone or in
combination, fail to disclose, teach or suggest generating acoustic waves
‘with an acoustic generator’ in combination with converting the acoustic
waves into electrical energy at a downhole location with a ‘membrane
coupled to a Helmholtz cavity’ as recited in independent claim 1.” Br. 9. In
particular, Appellants argue that (1) Blodgett “does not describe or teach
operation of a Helmholtz resonator in a downhole location in response to an
acoustic generator at a surface location;” and (2) “[t]he air flow technique
disclosed in the Blodgett . . . reference does not disclose or teach conversion
of acoustic waves into electrical energy at a downhole location via the
Helmholz cavity system.” Br. 8-9.
Appellants’ arguments are individual attacks on the references rather
than a challenge to the Examiner’s combination of the teachings of the two
references and thus are not persuasive. See In re Merck & Co., 800 F.2d
1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981) (one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references).
We agree with the Examiner that Huang discloses the limitations of
claim 1 including converting acoustic waves into electrical energy at a
downhole location, except “Huang does not expressly disclose the
conversion uses a pressure balanced membrane coupled to a Helmholtz
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cavity to drive a coil in a magnetic field.” Ans. 3.4 We further agree with
the Examiner that Blodgett teaches a conversion system for acoustic energy
to electric energy (id., citing Blodgett, Abstract); and (2) the system of
Blodgett includes a membrane 20 coupled to a Helmholtz cavity 120 to drive
a coil 124 in a magnetic field (id., citing Blodgett, col. 3, ll. 17-25; fig. 1).
We also agree with the Examiner that “[a]t the time of the invention, it
would have been obvious to a person having ordinary skill in the art to try
the method of Huang, with use of a Helmholtz cavity, as taught by Blodgett,
to achieve the predictable result of converting acoustic energy into useable
electrical energy.” Id.
Moreover, we agree with the Examiner’s reasoning that “[w]hen
considering the references [Huang and Blodgett] together, one would replace
the downhole generator of Huang, with the generator of Blodgett. Therefore,
the Helmholtz cavity and associated components [would be] located
downhole to operate within the system of Huang.” Ans. 6. As such, the
Examiner provided reasons with rational underpinnings to support the
conclusion of obviousness. Appellants have not provided any persuasive
evidence of error regarding the Examiner’s stated reasoning or conclusion of
obviousness.
Appellants further argue that Blodgett “does not appear to provide any
teachings related to use of [a] ‘pressure balanced membrane,’” as required
by independent claim 1. Br. 9.

4 Throughout this Opinion, we shall refer to the Examiner’s Answer, mailed
Aug. 27, 2010, as “Ans.”; and the Examiner’s Supplemental Answer, mailed
Sep. 8, 2010, as “Supp. Ans.”
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The Examiner reasoned that Blodgett’s diaphragm 20 is acted on by
the oscillation of the fluid in the Helmholtz resonator 120. Ans. 6. The
Examiner further reasoned that “[w]hen the system of Figure 1 [of Blodgett]
is not in operation, there will be no elevated pressure in the Helmholtz
resonator, both sides of the diaphragm 20 will be exposed to pressure of the
surrounding environment, thus making the diaphragm a ‘pressure balanced’
diaphragm.” Id. Appellants have not apprised us of error regarding the
Examiner’s interpretation of the disclosure of Blodgett.
Appellants also argue that Blodgett teaches away from the
combination suggested by the Examiner. Br. 10. In particular, Appellants
argue that (1) Blodgett “is directed to a safety and arming mechanism for use
with a missile rather than to a conversion system deployed downhole in a
subterranean location;” and (2) “the safety and arming mechanism [of
Blodgett] relies on the use of a column of air to activate the resonator 120.
The described approach of employing a column of air would not be
conducive, or even available, for use in a downhole, wellbore environment.”
Id.
First, Appellants’ arguments are not persuasive because Appellants do
not point to any passage in Blodgett that “criticize[s], discredit[s] or
otherwise discourage[s]” use of air to activate a Helmholtz resonator in a
subterranean location. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits or otherwise discourages the solution claimed).
Second, we agree with the Examiner’s reasoning that
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Blodgett teaches a system for conversion of a
fluidic pressure signal into useable electrical
energy (column 1, lines 60-62). Though this
system is designed for use in a safety and arming
mechanism, the background of the patent clearly
states it is meant for an environment that is
exposed to severe shock, vibration, and
temperature and pressure extremes (column 1,
lines 32-36 and lines 57-59). These are the exact
conditions often found in wellbores where
temperatures and pressures can become very high
and deterioration of parts is avoided. When
viewing the Blodgett reference, one skilled in the
art would note these benefits of the disclosed
invention.

The fact that Blodgett uses air as an example (but
does not restrict it to air, claiming a fluid in claim
1), does not teach away from use in a wellbore.
When considering modes of energy conversion,
one skilled in the art would see Blodgett as a fluid
operated, durable system, capable of being used in
a wellbore, and beneficial due to the [system’s]
ability to withstand high temperatures and
pressures. One would not dismiss the system
simply because it is disclosed as being operated by
air, given the amount of potential benefits, nor
would it be assumed that air is the only fluid that
could operate the system. Given that Blodgett
discloses the system is ‘fluidically actuated’
(column 4, line 17), one considering this with
Huang would see that the system could also be
operated by a well fluid, such as in Huang, and
thus try to achieve the benefits of a durable
conversion system by applying the teachings of
Blodgett to Huang.

Ans. 6-7. Therefore, we find that the disclosures of Huang and Blodgett do
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not teach away from Appellants’ claimed invention.
Accordingly, for the foregoing reasons, the rejection of independent
claim 1 and of claims 2-4, 6-8, 23, 24, 26 and 27, which fall with claim 1, as
unpatentable over Huang and Blodgett is sustained.

Obviousness over Huang, Blodgett and Beck – Claim 5
Appellants do not present additional arguments for dependent claim 5
separate from those presented above in reference to independent claim 1.
See App. Br. 11. Accordingly, for the reasons discussed supra, we also
sustain the rejection of claim 5 as unpatentable over Huang, Blodgett and
Beck.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-8, 23,
24, 26 and 27.
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

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