Ex parte KOSTEK et al.

Board of Patent Appeals and Interferences

Mar 3, 1998

08235625 (B.P.A.I. Mar. 3, 1998)

Application for patent filed April 29, 1994. According to1
appellants, this application is a continuation-in-part of
application 07/839,969 filed February 20, 1992, which is a
continuation-in-part of application 07/548,169 filed July 5,
1990, now abandoned, which is a continuation-in-part of
application 07/288,742 filed December 22, 1988, now 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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 18
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, CURTIS RANDALL,
JEAN-PIERRE MASSON, JAMES C. MAYES and KAI HSU
_____________
Appeal No. 96-4183
Application 08/235,6251
______________
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 7, 10-16 and 19-24, which are all the
Appeal No. 96-4183
Application 08/235,625
2
claims pending in the application. Claims 1-6, 8-9 and 17-18
have been canceled.
Appellants’ invention is directed to a method for
performing sonic logging while drilling a borehole traversing an
earth formation. Claim 7 is illustrative of the claims on appeal
and recites:
7. 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 of said method 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 at least one output related to the
received acoustic energy, said at least one output comprising a
plurality of waveforms; and
e) processing said at least one output to determine at
least one characteristic of said earth formations, said
processing comprising summing said plurality of waveforms to
obtain a resultant stacked waveform.
THE REFERENCE
The following references were relied on by the examiner
to support the final rejection:
Ely 2,757,358 July 31, 1956
Appeal No. 96-4183
Application 08/235,625
By our count, the examiner’s uses of the word “or” in the2
statement of the rejection results in no less than 24 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
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
Hsu et al. (Hsu) 4,870,627 Sep. 26, 1989
Brie et al. (Brie) 4,888,740 Dec. 19, 1989
Waters, K.H., Reflection Seismology, pages 195-196, John Wiley
and Sons, 1981, TN 269, W37.
THE REJECTION
Claims 7 and 10-16 stand rejected under 35 U.S.C. § 103
“as being unpatentable over Lygas or Kent et al when taken with
Lord et al or Cox et al, and Ely (US Patent) and Hoyle et al, or
Schuster or Moser et al, and Waters or Brie et al.” (Final
Rejection at page 2).2
4
Appeal No. 96-4183
Application 08/235,625
Claims 7, 10-16 and 19-24 stand rejected under 35
U.S.C. § 103 as being unpatentable over the references as stated
above for claims 7 and 10-16 “when taken with Hsu et al” (Final
Rejection, page 8).
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. 13) for the full
exposition thereof.
OPINION
We have carefully reviewed the appellants’ invention as
described in the specification, the appealed claims, the prior
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 7 calls for, inter alia, the step of
receiving, at a location on the drill collar, acoustic energy
returned form 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
Appeal No. 96-4183
Application 08/235,625
5
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
suggests the presence of a receiver. However, Lygas is silent
about the location of the receiver.
The examiner states that measurement of formations
ahead of the drill bit is usually accomplished by keeping the
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
reconstruction 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
Appeal No. 96-4183
Application 08/235,625
6
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, Moser, Waters, Brie and Hsu 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 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 7 as unpatentable under 35 U.S.C.
§ 103 based on the use of Lygas as the 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
rejections of claims 10-16 and 19-24 based on Lygas as the
primary reference.
Appeal No. 96-4183
Application 08/235,625
7
We now turn to the rejections 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 surface. As such Kent does not disclose the
steps of both transmitting signals and receiving signals at the
drill collar, as recited in claim 7.
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 both transmitting
signals and receiving signals at the collar. We have again
Appeal No. 96-4183
Application 08/235,625
8
reviewed the disclosures of Lord, Cox, Ely, Hoyle, Schuster,
Moser, Waters, Brie and Hsu 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.
Therefore, we will not sustain the rejections of claim 7 as
unpatentable under 35 U.S.C. § 103 based on the use of Kent as
the 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 the receiver is mounted on a drill
collar, we also will not sustain the rejections as to claims 10-
16 and 19-24 based on the use of Kent as the primary reference.
The decision of the examiner is reversed.
Appeal No. 96-4183
Application 08/235,625
9
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 )
ANADRILL, ATTN: WAYNE KANAK
ANADRILL & SCHLUMBERGER
200 GILLINGHAM LANE
SUGARLAND, TX 77478