Ex Parte Joseph

Patent Trial and Appeal Board

Jul 16, 2018

13211515 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/211,515 08/17/2011
90082 7590 07/17/2018
Law Offices of Mark L. Berrier
1715 S.Capital of Texas Hwy., Suite 200-E
Austin, TX 78746
FIRST NAMED INVENTOR
Joseph C. Joseph
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.
BAKR02200 4367
EXAMINER
SEBESTA, CHRISTOPHER J
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
07/17/2018 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 JOSEPH C. JOSEPH
Appeal2017-009853
Application 13/211,515 1
Technology Center 3600
Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
MICHAEL L. HOELTER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 2, 4-7, 9, 10, 12-16, and 18-24.
Final Office Action (August 19, 2016) (hereinafter "Final Act."). 2 We have
jurisdiction under 35 U.S.C. § 6(b).
1 Joseph C. Joseph ("Appellant") identifies Baker Hughes Incorporated as
the real party in interest. Appeal Brief (January 6, 2017) (hereinafter
"Appeal Br.") at 4.
2 Claims 3, 8, 11, and 17 are canceled. Appeal Br. 33, 35, 37, 39 (Claims
Appendix).
Appeal2017-009853
Application 13/211,515
The claimed subject matter relates to "systems and methods for
electrically isolating selected ones of a set of downhole tools that are
connected to a common electrical cable." Specification (August 17, 2011)
(hereinafter "Spec.") ,r 20. The Examiner rejected the claims as obvious
over the prior art. For the reasons explained below, we do not find error in
the rejections. Accordingly, we AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 10, and 14 are the independent claims. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below.
1. A system comprising:
surface equipment positioned at the surface of a well;
a cable coupled to the surface equipment, wherein the
cable extends into a wellbore of the well;
a plurality of downhole tools, wherein for each of the
downhole tools, all electrical connections between the downhole
tool and the cable are made exclusively through a switch,
wherein the switch has a closed position in which the downhole
tool is electrically coupled to the cable and an open position in
which the downhole tool is electrically decoupled from the cable,
wherein the switch is configured to be actuated to move between
the open and closed positions while the downhole tools is
positioned downhole in the wellbore; and
a switch actuator which is external to the downhole tools
and is coupled to be directly controlled by the surface equipment
without action by the downhole tools;
wherein the surface equipment is configured to detect a
malfunction with a first one of the downhole tools and actuate
the corresponding switch, thereby moving the switch from the
closed position to the open position in response to detecting the
malfunction, and thereby interrupting all electrical connections
between the first one of the downhole tools and the cable and
decoupling the first one of the downhole tools from the cable.
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Application 13/211,515
Appeal Br. 32-33 (Claims Appendix).
Hyde
Vachon
McGavem, III et al.
Gerez et al.
Kamata et al.
Mcinally ("Gerald")3
EVIDENCE
us 4,523,194
US 6,615,916 Bl
US 2004/0045714 Al
US 2007/0125540 Al
US 2009/0140879 Al
WO 2004/112212 Al
REJECTIONS
June 11, 1985
Sept. 9, 2003
Mar. 11, 2004
June 7, 2007
June 4, 2009
Dec. 23, 2004
The Final Office Action includes the following rejections under
pre-AIA 35 U.S.C. § I03(a):
1. Claims 1, 2, 4, 6, 7, 10, 12, 14, 15, and 22-24 stand rejected as
unpatentable over Gerald and Vachon.
2. Claims 5 and 16 stand rejected as unpatentable over Gerald,
Vachon, and McGavem.
3. Claims 9 and 13 stand rejected as unpatentable over Gerald,
Vachon, and Hyde.
4. Claims 18 and 20 stand rejected as unpatentable over Gerald,
Vachon, and Kamata.
5. Claims 19 and 21 stand rejected as unpatentable over Gerald,
Vachon, and Gerez. 4
3 The Examiner and Appellant refer to this reference as "Gerald." We do the
same in this Decision for consistency.
4 Although the statement of the rejection on page 15 of the Final Office
Action omits Vachon, the Examiner makes clear in the detailed explanation
of the rejection on page 16 that the rejection is based the method of Gerald,
as modified by the teaching of Vachon, and as further modified by the
teaching of Gerez. Final Act. 15-16.
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Application 13/211,515
ANALYSIS
Finality of Office Action
Appellant argues that the Examiner erred making the Office Action
final and refusing to enter amendments presented by Appellant. Appeal
Br. 12-14. Appellant requests that the Board withdraw the finality of the
Office Action. Id. The propriety of an Examiner's refusal to enter an
amendment and of the Examiner's designation of an Office Action as final
are reviewable by petition to the Director and are not appealable to the
Board. 37 C.F.R. § 1.127 (2009); Manual of Patent Examining Procedure
("MPEP") § 1002.02( c )(3)(listing prematureness of final rejection and
refusal to enter an amendment as examples of petitionable matters invoking
the supervisory authority of the Director of the USPTO). See also Ex parte
Frye, 94 USPQ2d 1072, 1078 (BPAI 2010) (precedential) (acknowledging
the line of demarcation between appealable matters for the Board and
petitionable matters for the Director) (citing MPEP § 1201, 8th ed., rev. July
2008). Accordingly, we tum to the merits of the rejections on appeal.
First Ground of Rejection: Claims 1, 2, 4, 6, 7, 10, 12, 14, 15, and 22-24 as
unpatentable over Gerald and Vachon
Appellant argues claims 1, 4, 6, 7, 10, 12, and 14 as a first subgroup,
and argues claims 2, 15, and 22-24 as a second subgroup. Appeal Br. 15.
We select claim 1 as the representative claim for the first subgroup and
claim 2 as the representative claim for the second subgroup. The remaining
claims subject to the first ground of rejection stand or fall with the
representative claim for their respective subgroup. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Application 13/211,515
Claim 1
The Examiner found that Gerald discloses the claimed system,
including downhole tools (10, 12, 14), each connected to common cable (4)
exclusively through respective switches (16, 18, 20). Final Act. 5. The
Examiner also found that Gerald teaches switch actuator (22) external to the
tools and controlled by surface equipment (1, 2) without input from the
tools, where the switches are individually controlled from the surface. Id.
Appellant asserts that the Examiner erred in finding that Gerald's
switches 16, 18, and 20 are controlled by the surface module. Appeal
Br. 16. Appellant argues that Gerald discloses contact 26 is actuated in
response to detecting that switches 16, 18, and 20 are in the incorrect
positions. Id. Appellant asserts, "Gerald only monitors the states of the
downhole switches (16, 18, 20) and compares their states to predetermined
switch states" and "Gerald makes no provision whatsoever for isolating any
one of the downhole tools (10, 12, 14) while allowing the others to remain
operable." Appeal Br. 17-18; see also Reply Brief (June 30, 2017)
(hereinafter "Reply Br."), at 3--4 (presenting similar arguments). We find no
error in the Examiner's reading of Gerald.
Gerald discloses that in both the prior art, and in Gerald's own
invention, switches used to connect downhole tools to a common cable are
controlled by a surface module. For instance, Gerald teaches that it was
known in the prior art to connect each downhole tool to a common cable
using a control switch that is controlled from the surface by means of signals
through the common cable whereby each tool can be electrically connected
or disconnected by remote control. Gerald 2, 11. 24-29. With regard to
Gerald's invention, Gerald teaches switches 16, 18, and 20 are provided with
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Application 13/211,515
known communication elements that are arranged to receive and transmit
control signals through common cable 4. Id. at 4, 11. 22-26. Specifically,
Gerald describes, in one example, that downhole tractor 10 is connected to
common cable 4 by first switch 16, and first switch 16 receives a connecting
signal from switch-monitoring device 1. Id. at 5, 11. 17-20. Switch-
monitoring device 1 is located at the surface and is, thus, a surface module.
Id. Fig. 1. Consequently, Gerald describes a system in which signals are
sent from a surface module to individual switches to control the electrical
connection between respective downhole tools and a common cable. Gerald
further describes, in this example, that downhole tractor 10 is connected to
common cable 4 via closed switch 16, while detonatable charge 12 is
disconnected from common cable 4 by maintaining switch 18 in an open
state. Id. at 5, 1. 17 - 6, 1. 1. Thus, device 1 separately controls each
individual downhole switch remotely from the surface.
As explained by the Examiner (Ans. 3), Gerald's switch monitoring
device 1 uses central power switch 26 to immediately disconnect power
from the tools in the specific instance in which sending such signals is not
desirable. For example, Gerald describes that in the case in which a
downhole tractor 10 is transporting an electrically detonatable explosive
charge 12 into the well, monitoring part 22 outputs connecting signals to the
energy supply 2 and contact 26 only if the feedback signals from switches
16, 18 about the state (i.e., closed/open) of these switches corresponds to the
predetermined state. Gerald 5, 11. 11-28; see also id. at 2, 11. 18-23
( describing that an unintentional supply of energy to the electrically
detonatable explosive charge during transport into the well could have
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Application 13/211,515
catastrophic consequences). Thus, Gerald's power switch 26 acts as a safe
guard to prevent unintended actuation. See Ans. 3.
Appellant contends that "if Gerald's system could reset the downhole
switches (16, 18, 20) to the correct positions, it would never be necessary to
disconnect the power cable (4) from the power source (2)." Appeal Br. 17.
We are not persuaded by Appellant's argument. Rather, we understand
Gerald to disclose using central power switch 26 to prevent power from
being supplied to cable ( 4) immediately upon discovering that one of the
downhole switches 16, 18, 20 is not in the correct position. Gerald's system
may be capable of resetting the switches, but at the expense of the charge 12
possibly detonating in the meantime.
For these reasons, we find that the Examiner's reading of Gerald is
supported by a preponderance of the evidence. Appellant does not contest
the Examiner's finding as to the disclosure of Vachon, or the proposed
modification of Gerald with the teachings of Vachon in the rejection of
claim 1. Appeal Br. 15-19. Accordingly, we sustain the rejection of claim 1
as unpatentable over Gerald and Vachon. Claims 4, 6, 7, 10, 12, and 14 fall
with claim 1.
Claim 2
Claim 2 depends from claim 1 and recites, "wherein the first one of
the downhole tools is configured to be selectively coupled to or decoupled
from the cable independently of other ones of the plurality of downhole
tools, wherein when the switch is in the open position, the first one of the
downhole tools is electrically isolated from the cable without affecting
others of the downhole tools." Appeal Br. 33 (Claims Appendix). Appellant
argues that "[t]he capability of selectively decoupling one tool from the
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Application 13/211,515
cable independent of other tools is ... distinctive of Gerald." Appeal Br. 19.
Appellant further states, "The Examiner does not contend that Vachon
remedies this shortcoming of Gerald." Id.
As discussed above, we understand Gerald to disclose that switches
16, 18, 20 can be opened or closed independently of each other through
signals sent from the surface so as to selectively couple or decouple
downhole tools 10, 12, and 14 to common cable 4. As such, Appellant has
not identified an error in the Examiner's rejection of dependent claim 2.
Accordingly, we sustain the rejection of claim 2 as unpatentable over Gerald
and Vachon. Claims 15 and 22-24 fall with claim 2.
Second Ground of Rejection: Claims 5 and 16 as unpatentable over Gerald,
Vachon, and McGavern
Claim 5 depends from claim 1 and recites, "wherein the switch is
configured to be actuated by a magnet in the external switch actuator,
wherein actuating the switch comprises moving the external switch actuator
from a first position to a second position, wherein the second position is in
closer proximity to the switch than the first position."5 Appeal Br. 34
(Claims Appendix). The Examiner found that McGavern teaches the use of
downhole tool reed switches actuated by movement of a magnetic source in
proximity to the tool. Final Act. 13. The Examiner determined that
substituting the generic switches of Gerald for the magnetically actuated
reed switches of McGavern is nothing more than the substitution of one
known type of downhole switch actuation means for another with a
5 Appellant argues claims 5 and 16 as a group. Appeal Br. 20. We select
claim 5 as the representative claim. 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/211,515
reasonable expectation of success. Id. Appellant presents three arguments
in rebuttal.
Appellant first argues "there is no teaching [in McGavern] that the
tool is connected to an electrical cable, or that any connection to such a cable
is maintained or interrupted by the actuation of a switch." Appeal Br. 21.
Contrary to Appellant's first assertion, McGavern states, "The motor [of the
drive system of the milling tool] may be line powered via a wireline, or may
be battery operated" and McGavern discloses that a magnetically sensitive
reed switch closes an electrical circuit when placed in sufficient proximity of
a magnet to actuate the drive system within the tool. McGavern ,r,r 34, 3 7.
Thus, McGavern discloses an embodiment in which the tool is connected to
an electrical cable and that connection is maintained or interrupted by
actuation of a magnetically sensitive reed switch.
Second, Appellant argues that in McGavern, "the switch is closed by
the close proximity of the magnet, which is contrary to the switch being
opened by proximity of the magnet." Appeal Br. 21. We do not find this
distinction to be a patentable difference. It would have been obvious to use
the magnetically actuated reed switch to either decouple or couple the tool to
the common cable in Gerald, based on when the tool was needed to be
operative during well operations. Further, as aptly noted by the Examiner,
the claim requires only actuating the switch and does not recite opening or
closing a switch. Ans. 3.
Third, Appellant argues that "magnet 332 is internal to the tool,
instead of being external to the tool, as recited in the claims." Appeal
Br. 22. This argument does not address the proposed modification of
Gerald's system with the reed switch ofMcGavern. As explained by the
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Application 13/211,515
Examiner, Gerald's switches 16, 18, 20 are external to tools 10, 12, 14, and a
magnetically actuatable reed switch "necessarily requires a moveable
actuator." Ans. 4. Thus, "given that the switch is external to the tool, the
actuator would necessarily also be external to the tool." Id. We find the
Examiner's explanation of the application of the known reed switch to the
system of Gerald to be based upon rational underpinnings.
For these reasons, Appellant has not identified an error in the
Examiner's rejection of dependent claim 5. Claim 16 falls with claim 5.
Third Ground of Rejection: Claims 9 and 13 as unpatentable over Gerald,
Vachon, and Hyde
Claim 9 depends from claim 1 and recites, "wherein the first one of
the downhole tools further comprises a fuse connected between the
downhole tool and the cable." Appeal Br. 35 (Claims Appendix). 6 The
Examiner found that Hyde teaches the use of fuses within a downhole tool
connected between the tool and the cable. Final Act. 13 (citing Hyde, col. 4,
11. 3-10, Fig. 2 ( element 56) ). Appellant contests the Examiner's finding
that Hyde's fuse 56 is connected between a downhole tool and the cable.
Appeal Br. 23. The Examiner responds that Hyde's "switch (54) is
connected to an electrical conductor (26) through the fuse (56) and finally to
a sensor circuit." Ans. 4. We understand the Examiner to find that Hyde's
sensor circuit 40 corresponds to the downhole tool.
We agree with the Examiner that Figure 2 of Hyde shows the claimed
subject matter. Specifically, Figure 2 depicts fuse 56 connected between
sensor circuit 40 (the downhole tool) and the cable (power cable 34). The
6 Appellant argues claims 9 and 13 as a group. Appeal Br. 22. We select
claim 9 as the representative claim. 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/211,515
claim does not recite that the fuse is connected directly to the cable. The
fact that an additional tool, i.e., motor 20, is interposed between fuse 56 and
cable 34 does not distinguish the prior art from the claimed subject matter,
as recited in claim 9. Further, we agree with the Examiner's reasoning that
the purpose of the fuse in Hyde is to regulate excess power from a power
source to a tool, i.e., sensor circuit 40, and one having ordinary skill in the
art would have been motivated to use a fuse in the system of Gerald for the
same purpose. Ans. 4-5.
For these reasons, Appellant has not identified an error in the
Examiner's rejection of dependent claim 9. Claim 13 falls with claim 9.
Fourth Ground of Rejection: Claims 18 and 20 as unpatentable over
Gerald, Vachon, and Kamata
Claim 18 depends from independent method claim 14 and recites,
"wherein detecting the malfunction with the first one of the downhole tools
comprises detecting a current leak from the first one of the downhole tools."
Appeal Br. 39 (Claims Appendix). 7 The Examiner found that Kamata
teaches the detection of leaks and fault conditions which could interfere with
the operation of downhole tools. Final Act. 15 (citing Kamata ,r 36).
Appellant argues that "Kamata teaches that when these faults occur, all of
the downhole tools (modules) continue to operate" and this teaching "is
contrary to Gerald's disconnection of the entire cable." Appeal Br. 26.
As discussed above, Gerald's teaching to disconnect the entire cable 4
from energy supply 2 via power switch 26 is employed only in the instance
in which one of the downhole switches is not in the correct predetermined
7 Appellant argues claims 18 and 20 as a group. Appeal Br. 26. We select
claim 18 as the representative claim. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
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position. During other times of use of Gerald's system, the surface module 1
controls each individual downhole tool by sending signals to their respective
switches. We agree with the Examiner that Kamata's teaching of
monitoring downhole tools for potential leaks and faults would have
suggested to one having ordinary skill in the art to modify Gerald to monitor
tools 10, 12, 14 for such leaks and faults. Ans. 5. As explained above,
Gerald's system is capable of disconnecting a malfunctioning tool through
opening of its respective switch while continuing to supply power to other
tools via common cable 4.
For these reasons, Appellant has not identified an error in the
Examiner's rejection of dependent claim 18. Claim 20 falls with claim 18.
Fifth Ground of Rejection: Claims 19 and 21 as unpatentable over Gerald,
Vachon, and Gerez
Claim 19 depends from claim 14 and recites, "wherein detecting the
malfunction with the first one of the downhole tools comprises detecting
noise generated by the first one of the downhole tools." Appeal Br. 40
(Claims Appendix). 8 The Examiner found that Gerez teaches the detection
of noise to indicate the presence of a fault condition. Final Act. 16 ( citing
Gerez ,r 32). Appellant argues Gerez teaches that monitoring the cable for
noise that could indicate a fault condition continues through gun firing, and
this teaching is contrary to Gerald, in which the entire cable is disconnected
if a fault (incorrectly set switches) is detected. Appeal Br. 29.
The Examiner is not proposing to bodily incorporate Gerez into
Gerald. Rather, the Examiner found that Gerez teaches the known technique
8 Appellant argues claims 19 and 21 as a group. Appeal Br. 28. We select
claim 19 as the representative claim. 37 C.F.R. § 4I.37(c)(l)(iv).
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of monitoring a cable for noise as an indicator of a fault condition in the
downhole well drilling art, and that this technique would be applicable in
system of Gerald for the same purpose. As discussed above, Gerald's
teaching to disconnect the entire cable 4 from energy supply 2 via power
switch 26 is employed only in the instance in which one of the downhole
switches is not in the correct predetermined position. During other times of
use of Gerald's system, the surface module 1 controls each individual
downhole tool by sending signals to their respective switches. We agree
with the Examiner that Gerez' s teaching of monitoring downhole tools for
noise would have suggested to one having ordinary skill in the art to modify
Gerald to monitor tools 10, 12, 14 for noise as an indicator of a tool fault.
Ans. 5. As explained above, Gerald's system is capable of disconnecting a
malfunctioning tool through opening of its respective switch while
continuing to supply power to other tools via common cable 4.
For these reasons, Appellant has not identified an error in the
Examiner's rejection of dependent claim 19. Claim 21 falls with claim 19.
DECISION
The decision of the Examiner rejecting claims 1, 5, 6, 8, 11-13, and
15 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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