Ex Parte Jones

Patent Trial and Appeal Board

Sep 26, 2018

14588757 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/588,757 01/02/2015 Christopher Michael Jones
138627 7590 09/28/2018
Gilliam IP PLLC (Halliburton)
7200 N. Mopac
Suite 440
Austin, TX 78731
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.
164.2008-IP-008543
UlClUS
9508
EXAMINER
LEE,SHUNK
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
uspto@gilliamip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER MICHAEL JONES
Appeal2018-000870
Application 14/588,757
Technology Center 2800
Before ROMULO H. DELMENDO, RAEL YNN P. GUEST, and
BRIAND. RANGE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1-19.2
We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The Appellant is the Applicant, "Halliburton Energy Services, Inc.,"
which, according to the Brief, is the real party in interest (Appeal Brief filed
June 30, 2017 (hereinafter "Appeal Br.") at 3; Application Data Sheet filed
January 2, 2015 at 4).
2 Appeal Br. 7-13; Reply Brief filed November 6, 2017 (hereinafter "Reply
Br.") at 1-3; Final Office Action entered April 13, 2017 (hereinafter "Final
Act.") at 2-21; Examiner's Answer entered September 15, 2017 (hereinafter
"Ans.") at 2-5.
Appeal2018-000870
Application 14/588,757
I. BACKGROUND
The subject matter on appeal relates to an apparatus, a system, or a
method using nanofibers and fluorescence induced by evanescent radiation
to conduct spectroscopic analysis (Specification filed January 2, 2015
(hereinafter "Spec."), Abstract). According to the Inventor, the invention
may be used in downhole environments, where high temperatures and
pressures may be present, encountered during oil and gas well drilling
operations (id. ,r,r 12, 25).
Figure 1 is partially reproduced from the Drawings filed January 2,
2015 (annotations added) to show an embodiment of the claimed apparatus,
as follows:
100"'
~ s:im;,lt>d rnateriai
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'\ '\ '\ .,..__.. EVANESCANCE
104{ ·yvy·
sarnp1jng nanoftlbars
144ba:iier
FIG. 1
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~128
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Appeal2018-000870
Application 14/588,757
Figure 1 above depicts an absorption apparatus 100 including, inter alia:
one or more sampling nanofibers 104, each having a sampling coil disposed
outside a pressure-tight chamber 128 and first and second sampling ends
108, 112 disposed within the pressure-tight chamber 128; a reference
nanofiber 116; an optical energy source SCO; and a receiver 136 for
receiving energy modified by evanescent interaction of the energy with a
sampled material 140 (e.g., a fluid) located within an inner diameter of the
sampling coil or outside an outer diameter of the sampling coil, or the
energy modified by propagation through the reference coil (Spec. ,r,r 28-31 ).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, with key limitations emphasized, as follows:
1. An apparatus, comprising:
a plurality of sampling optical nanofibers, each of the
sampling optical nanofibers formed into a sampling optical
nanofiber coil having a first sampling end and a second sampling
end·
' at least one reference nanofiber formed into a reference
optical nanofiber coil having a first reference end and a second
reference end;
a pressure-tight chamber defined by an inner surface that
is completely enclosed by an outer surface, the first and the
second sampling ends disposed within the pressure-tight
chamber, each of the sampling optical nano fiber coils disposed
outside the pressure-tight chamber in a region open to fluid
flow to sample the fluid;
an optical energy source to direct optical energy to the first
sampling ends and the first reference end, the optical energy
source disposed in the pressure-tight chamber; and
a receiver arranged to receive, from each of the second
sampling ends, optical energy
resulting from the optical energy transmitted to each of the
first sampling ends being modified by evanescent interaction
with sample material located within an inner diameter of the
sampling optical nanofiber coils or outside an outer diameter of
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Appeal2018-000870
Application 14/588,757
the sampling optical nanofiber coils, and to receive, from the
second reference end, optical energy resulting from the optical
energy transmitted to the first reference end being modified by
propagation through the reference coil.
Appeal Br. 14 (Claims Appendix).
II. REJECTIONS ON APPEAL
Claims 1 and 4--9 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over de Vries et al. 3 (hereinafter "de Vries") and Sumetsky4
(Final Act. 2-8). In addition, claims 2, 3, and 10-19 stand rejected under 35
U.S.C. § I03(a) multiple grounds as unpatentable over de Vries, Sumetsky,
and one or more additional prior art references (id. at 8-18).
III. DISCUSSION
The Examiner finds that de Vries describes an apparatus including
most of the limitations recited in claim 1, including an optical nano fiber with
first and second sampling ends, a pressure-tight chamber, and an optical
energy source (Final Act. 2--4 ). The Examiner acknowledges, however, that
the first and second sampling ends of the optical nano fiber and the optical
energy source disclosed in de Vries are not disposed within the pressure-
tight chamber (id. at 5). To bridge these gaps, the Examiner relies on
Sumetsky (id. at 5---6). 5 Based on the collective teachings found in de Vries
3 US 5,097,129, issued March 17, 1992.
4 US 2011/0043818 Al, published February 24, 2011.
5 The Examiner also refers to Provisional Application US 61/124,834, which
is entitled "Conditional Block Replacement for JPEG-2000 Video" (Final
Act. 6), but its relevance to the claimed subject matter is not entirely clear.
It appears that the Examiner may have intended to refer to Provisional
Application US 61/234,834, filed August 18, 2009, to which Sumetsky
claims priority benefit.
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Appeal2018-000870
Application 14/588,757
and Smnetsky, the Examiner concludes that "[i]t would ... have been
obvious to one having ordinary skill in the art ... to dispose the first and the
second sampling ends within the pressure-tight chamber of de Vries ... in
order to use the same source (within the pressure-tight chamber) for both the
sample and reference fiber for common noise rejection" (id. at 6).
The Appellant contends that de Vries and Sumetsky do not disclose or
suggest a sampling apparatus in which the ends of a sampling coil are
disposed within a pressure-tight chamber (Appeal Br. 7). Specifically, the
Appellant argues that although de Vries teaches a "sealed" chamber,
"sealed" is not necessarily "pressure-tight" as that term is defined in the
Inventor's Specification (Spec. ,r 29) and that "there is [n]othing in de
Vries'[s] description suggest[ing] that the housing 12 is sealed in a pressure-
tight manner" (Appeal Br. 8-9). In addition, the Appellant argues that
neither de Vries nor Sumetsky discloses or suggests disposing either the
energy source or the ends of the sampling coil within de Vries's sealed
enclosure (id. at 9). According to the Appellant, the proposed modification
of de Vries would involve a substantial redesign because, in contrast to the
claimed invention, de Vries' s apparatus is configured to sample the sealed
internal space of a head-disk assembly, not the external environment (id. at
10). Therefore, the Appellant urges (id. at 11 ):
Nothing in de Vries or Sumetsky discloses or suggests a
sampling apparatus configured to sample a non-controlled
external environment ... in which the coil is disposed within the
external environmental materials . . . while the ends of the
sampling coil and energy source are disposed within the
pressure-tight chamber.
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Appeal2018-000870
Application 14/588,757
We disagree with the Appellant that the limitation "pressure-tight," as
defined in the Specification, does not read on "sealed" as disclosed in de
Vries. The Specification states (Spec. ,r 29):
"Pressure-tight" as used herein means that the chamber 128 [as
shown in reproduced Figure 1 above] is designed to maintain a
pressure differential between the pressure on the inner surface
130 and the pressure on the outer surface 132 without substantial
leakage between the inside of the chamber 128, and the outside
of the chamber 128.
Given that (1) this description fails to limit "pressure-tight" to withstand any
particular pressure differential and (2) the phrase "without substantial
leakage" does not preclude some leakage, the term "pressure-tight" fails to
distinguish over "sealed" or "substantially sealed" as disclosed in de Vries
because some pressure differential would be necessary to breach the seal in
de Vries before substantialleakage occurs (de Vries col. 1, 11. 6-14; col. 2,
11. 51-58; col. 4, 11. 46-51).
Notwithstanding our disagreement with the Appellant on the
"pressure-tight" limitation, we agree with the Appellant that the Examiner
failed to articulate a sufficient reason with some rational underpinning to
support the conclusion that a person having ordinary skill in the art would
have modified de Vries's apparatus in the manner claimed. In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'! Co. v.
Teleflex, Inc., 550 U.S. 398,418 (2007)).
De Vries teaches an apparatus for detecting and measuring airborne
contaminants within a substantially sealed enclosure, such as a head-disk
assembly of a disk file (de Vries Abstract). De Vries's Figure 1 (partially
annotated) is reproduced as follows:
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Appeal2018-000870
Application 14/588,757
De Vries's Figure 1 above depicts a vertical sectional view of a magnetic
recording disk file 10 including, inter alia: a head-disk assembly 11
comprising a plurality of disks 14; and at least one initially clean infrared
(IR)-transparent optical fiber 20, preferably coiled, disposed within housing
12 such that a considerable length of the fiber is exposed to that airspace
within the housing where the probability of trapping contaminants is highest
and one end of the fiber 20 extends through an opening in the housing 12
and is coupled to a continuous source of IR radiation, while the other end
extends through another opening and is coupled to an IR spectrometer 24
(id. at col. 2, 11. 28-58).
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Appeal2018-000870
Application 14/588,757
Smnetsky discloses an evanescent optical sensor in the form of a fiber
coil useful for analyzing various parameters of an ambient environment
(Sumetsky ,r,r 2, 20). According to Sumetsky, the fiber may be a microfiber
(id. ,I 20).
Although we find no reversible error in the Examiner's conclusion
(Final Act. 6) that it would have been obvious to a person having ordinary
skill in the art to implement Sumetsky's (micro )fiber coils in de Vries, the
Examiner's rejection fails to provide a sufficient reason as to why a person
having ordinary skill in the art would have redesigned or reconfigured de
Vries' s apparatus to have "nano fiber coils disposed outside" ( claim 1) the
sealed enclosure defining the magnetic recording disk file 10 when de
Vries's objective is to detect contaminants within the sealed enclosure.
Therefore, the proposed modification would defeat the purpose of de Vries's
fiber 20, which, as we found, is designed to analyze contaminants within the
housing 12.
For these reasons, we cannot uphold the rejection as entered against
claim 1. Because the other independent claims on appeal-namely, claims
11 and 17-recite similar limitations regarding the nanofiber configuration,
we cannot sustain the rejection of any claim on appeal.
IV. SUMMARY
The Examiner's rejections are not sustained. Therefore, the
Examiner's final decision to reject claims 1-19 is reversed.
REVERSED
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