Ex parte Kostek et al.

Board of Patent Appeals and Interferences

Mar 3, 1998

07839969 (B.P.A.I. Mar. 3, 1998)

Application for patent filed February 20, 1992. According1
to appellants, this application is a continuation-in-part of
application 07/548,169 filed July 5, 1990, which is a
continuation-in-part of application 07/288,742 filed December 22,
1988, both abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SERGIO KOSTEK, SHU-KONG CHANG,
GORDON McDANIEL, THOMAS PLONA and CURTIS RANDALL
_____________
Appeal No. 95-1276
Application 07/839,9691
______________
HEARD: April 7, 1997
_______________
Before McCANDLISH, Senior Administrative Patent Judge, STAAB and
CRAWFORD, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
final rejection of claims 21-87, which are all the claims pending
in the application. Claims 1-20 have been canceled.
Appeal No. 95-1276
Application 07/839,969
2
Appellants’ invention is directed to a method for
performing logging while drilling with a hollow drill string
having a drill bit at its lower end. Claim 80 is illustrative of
the claims on appeal and recites:
80. A method for performing sonic logging while
drilling a borehole traversing an earth formation, including
drilling the borehole with a drill string having a drill bit at
its lower end and drilling fluid in the borehole surrounding the
drill string, the steps comprising:
a) drilling with a drill collar incorporated into the
drill string;
b) transmitting, from a location on said drill collar,
acoustic energy into the surrounding earth formations;
c) receiving, at a location on said drill collar,
acoustic energy returned from the surrounding earth formations;
d) providing an output related to the received acoustic
energy; and
e) determining from said output a characteristic of
said earth formations.
THE REFERENCE
The following references were relied on by the examiner
to support the final rejection:
Ely 2,757,358 July 31, 1956
Moser et al. (Moser) 3,190,388 June 22, 1965
Schuster 3,191,141 June 22, 1965
Cox et al. (Cox) 4,293,936 Oct. 6, 1981
Kent et al. (Kent) 4,302,826 Nov. 24, 1981
Lygas 4,636,999 Jan. 13, 1987
Hoyle et al. (Hoyle) 4,850,450 July 25, 1989

Appeal No. 95-1276
Application 07/839,969
By our count, the examiner’s uses of the word “or” in the2
statement of the rejection results in no less than 12 different
and distinct possible combinations of references. It is
questionable whether this circumstance fulfills the examiner’s
basic duty to clearly inform applicants of the evidentiary basis
of the rejection. In this instance, however, we decline to
remand the present application to the examiner for clarification
since the explanation of the rejection found in the body of the
answer clarifies the manner in which the references are applied
to the degree necessary for us to decide the obviousness issues
raised in this appeal on the merits.
3
Lord et al. (Lord), Materials Evaluation, Volume 35, No. 11,
pages 49-54, November 1977.
THE REJECTION
Claims 21-87 stand rejected under 35 U.S.C. § 103 “as
being unpatentable over Lygas or Kent et al when taken with Lord
or Cox et al, and Ely (US Patent) and Hoyle et al, or Schuster or
Moser et al.” (Final Rejection at page 2). 2
Rather than reiterate the respective positions of the
examiner and the appellants in support of their respective
positions, reference is made to the examiner’s answer (Paper No.
14) and the appellants’ brief (Paper No. 12) for the full
exposition thereof.
OPINION
We have carefully reviewed the appellants’ invention as
described in the specification, the appealed claims, the prior
Appeal No. 95-1276
Application 07/839,969
4
art applied by the examiner, and the respective positions
advanced by appellants in the brief and the examiner in the
answer. As a consequence of this review, we conclude that the
rejections of the examiner should not be sustained.
Independent claim 80 calls for, inter alia, the step of
receiving, at a location on the drill collar, acoustic energy
returned from the surrounding earth formations.
Considering first the rejection based on the use of
Lygas as the primary reference, Lygas discloses a method for
performing logging while drilling a borehole traversing an earth
formation, including drilling the borehole with a drill string 13
having a drill bit 14 at its lower end and drilling fluid in the
borehole surrounding the drill string (Fig. 1; Col. 1, lines 15-
18; Col. 3, lines 22-25; Col. 8, line 19). The method steps
include drilling with a data handling sub 15 incorporated into
the drill string 13. Lygas also discloses that the acoustic
signals penetrate the walls of the borehole and enable analysis
of sub-terranian formations ahead of the bit and thus at least
suggest the presence of a receiver (Col. 1, lines 15-28).
However, Lygas is silent about the location of a receiver.
The examiner states that measurement of formations
ahead of the drill bit is usually accomplished by keeping the
Appeal No. 95-1276
Application 07/839,969
5
adjacent receivers in the data handling sub so as not to be
subject to interference by the weathering layer and other strata
between the data handling sub and the earth’s surface (Answer at
page 11). However, the examiner does not have a factual basis
for this statement.
A rejection based on 35 U.S.C. § 103 must rest on a
factual basis, with the facts being interpreted without hindsight
reconstrution of the invention from the prior art. In making
this evaluation, the examiner has the initial duty of supplying
the factual basis for the rejection he advances. He may not,
because he doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in the factual basis. See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
As such it is the examiner’s duty to establish a
factual basis for concluding that Lygas teaches or suggests the
placement of the receiver in the data handling sub. The examiner
has not met this burden. We have reviewed the disclosures of
Lord, Cox, Ely, Hoyle, Schuster and Moser but these references do
not cure the deficiencies of Lygas in this regard. For example,
while Cox, Ely, Hoyle, Schuster and Moser disclose downhole
logging tools which include transmitters and receivers, these
Appeal No. 95-1276
Application 07/839,969
6
references do not disclose tools which are utilized during
drilling.
In view of the foregoing, we will not sustain the
examiner’s rejection of claim 80 as unpatentable under 35 U.S.C.
§ 103 based on the use of Lygas as a primary reference. As each
of the independent method claims recite a step of receiving an
acoustic signal at a location on the drill collar and each of the
independent apparatus claims recite that the receiver is mounted
on a drill collar, we also will not sustain the rejection of
claims 21-79 and 81-87 based on the use of Lygas as a primary
reference.
We now turn to the rejection of the pending claims
based on the use of Kent as the primary reference. Kent
discloses a transducer for coupling an acoustic signal to a
borehole drilling string during drilling. A sensor is mounted in
the borehole in a sub-unit 38 which is adapted to generate an
electrical measure of data relating to the operation of drill bit
40 such as fluid pressure or temperature (Col. 3, lines 7-10).
The output from this sensor modulates an acoustic transmitter and
the resultant acoustic wave is propagated toward the earth’s
surface along the drill string 35 (Col. 3, lines 6-28) where it
is received by a receiver mounted in a sub unit 32 at the earth’s
Appeal No. 95-1276
Application 07/839,969
7
surface. As such Kent does not disclose the steps of both
transmitting signals and receiving signals at the drill collar,
as recited in claim 80.
The examiner argues, in effect, that although Kent
depicts the transmitter 37 and receiver 32 mounted at the earth’s
surface, this does not detract from the teaching of mounting
receivers on drill collars for receiving acoustic energy (Answer
at page 11). The examiner has presented no convincing argument
why this is so, and none is apparent to us. Clearly Kent does
not disclose, teach or suggest the placement of the receiver on
the collar on which the transmitter is disposed. We have again
reviewed the disclosures of Lord, Cox, Ely, Hoyle, Schuster and
Moser as they relate to Kent, but have found nothing in these
references that would have motivated a person of ordinary skill
in the art to modify the apparatus disclosed in Kent so that the
receiving step takes place at the drill collar, where the
transmitting step takes place. In view of the foregoing, we will
not sustain the rejection of claim 80 as unpatentable under 35
U.S.C. § 103 based on the use of Kent as a primary reference.
As each of the independent method claims recite a step of
receiving an emitted acoustic signal at a location on the drill
collar and each of the independent apparatus claims recite that
Appeal No. 95-1276
Application 07/839,969
8
the receiver is mounted on a drill collar, we also will not
sustain the rejection as to claims 21-79 and 81-87 based on the
use of Kent as the primary reference.
The decision of the examiner is reversed.
REVERSED
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 95-1276
Application 07/839,969
9
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