Ex Parte Kramer et al

Patent Trial and Appeal Board

Sep 14, 2017

12696267 (P.T.A.B. Sep. 14, 2017)

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.
12/696,267 01/29/2010 Garrett Kramer 23.0705-US-NP 9557
23718 7590 09/18/2017
Schlumberger Technology Center
10001 Richmond Avenue
IP Administration Center of Excellence
HOUSTON, TX 77042
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
SMarckesoni@slb.com
jalverson@slb.com
USDOCKETING@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARRETT KRAMER, MICHAEL WILT, EDWARD
NICHOLS, LUIS DEPAVIA, and H. FRANK MORRISON
Appeal 2016-003876
Application 12/696,267
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1—6, 9-17, and 26—29 under 35 U.S.C. § 103(a) as being
unpatentable based on at least the combined prior art of Warren (US
5,892,362; issued Apr. 6, 1999), Lopez (US 2009/0302850 Al; published
Dec. 10, 2009), with either of Parra (US 4,835,474; issued May 30, 1989) or
Holman (US 2006/0091888 Al; published May 4, 2006 ).2 The Examiner
1 Schlumberger Technology Corporation is identified as the real party in
interest (App. Br. 2).
2 The rejections of claims 6, 14—17, and 27—29 include additional prior art
references (i.e., rejections listed as C. to H. at App. Br. 5, 6; Final Act. 19-
30).
Appeal 2016-003876
Application 12/696,267
also rejected dependent claim 12 under 35 U.S.C. § 112 for lack of written
description. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claims 1 and 14 are illustrative of the claimed subject matter:
1. A method to determine a property of an earth formation,
comprising:
providing a mobile electromagnetic (EM) transmitter comprising a
multi-turn coil of wire disposed at one or more predetermined elevated
heights above a surface of the earth and not in contact with the surface of the
earth;
providing one or more receivers moveably disposed in a wellbore
penetrating the earth formation;
transmitting electromagnetic energy from the mobile transmitter into
the formation from a plurality of locations by moving the mobile transmitter
in a spiral pattern;
receiving a signal from the formation with the one or more receivers;
wherein the spiral pattern the mobile transmitter is moved in is spiral
with respect to the one or more receivers;
using the signal received by the one or more receivers to determine
the property of the formation.
14. A system to determine a property of an earth formation,
comprising:
a mobile electromagnetic (EM) transmitter coil disposed at one or
more predetermined elevated heights above a surface of the earth and not in
contact with the surface of the earth, wherein the mobile transmitter is
adapted to transmit electromagnetic energy into the formation and is affixed
to a mobile vehicle moving in a spiral pattern;
a plurality of receivers moveably disposed in a wellbore penetrating
the earth formation wherein the receivers are each adapted to receive a
signal from the formation, wherein the spiral pattern the mobile transmitter
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Application 12/696,267
is moved in is spiral with respect to the plurality of receivers; and a
computer means for inverting the signals received by the plurality of
receivers to determine the property of the formation.
Independent claim 26 is directed to a method for reservoir evaluation
similar to claim 1, reciting a similar disputed limitation “moving the
transmitter to a number of locations in a spiral pattern with respect to the
array of downhole electromagnetic receivers” (Claims Appendix, App. Br.
22).
ANALYSIS
The §112 Rejection for lack of written description support
Claim 12 recites “[t]he method of claim 1, comprising selecting the
one or more predetermined heights before transmitting the electromagnetic
energy based on a given depth of investigation or a given volume of
investigation about the wellbore, or both.'” (emphasis added).
The Examiner rejected claim 12 as lacking written description support
in the Specification as originally filed due to the added phrase “or both”
(Ans. 25, 26).
Appellants urge that the first “or” in claim 12 is not exclusive and
needs to be read as inclusive (Appeal Br. 14, discussing Spec. 141). The
Examiner explains
that the original disclosure stated, as noted by appellant, that the
elevated position may be at some predetermined height above
the Earth's surface that is based on a given depth of
investigation or a given volume of investigation about the
wellbore. Nowhere in the original disclosure does it the
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Application 12/696,267
elevated position may be based on both the depth of
investigation or [and] a given volume.
Ans. 25 (emphasis added).
To the extent Appellants may be contending that the use of both
criteria to determine the predetermined height would have been obvious, the
test is not whether one of ordinary skill in the art would find the invention
obvious after reading the disclosure, it is whether the disclosure itself
conveys that Appellants had possession of the later-claimed subject
matter. A disclosure that merely renders the later-claimed subject matter
obvious is not sufficient to meet the written description requirement; the
disclosure must describe the claimed invention with all its
limitations. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998);
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997). “That a person skilled in the art might realize from reading the
disclosure that such a step is possible is not a sufficient indication to that
person that [the] step is part of appellants’ invention.” In re Barker, 559
F.2d 588, 593 (CCPA 1977) (quoting In re Winkhaus, 527 F.2d 637,
640 (CCPA 1975)).
In any event as pointed out by the Examiner, Appellants do not
explain how both would be used, and the ordinary meaning of “or” as used
in the original claim language (“energy based on a given depth of
investigation or a given volume of investigation about the wellbore”) is to
indicate items in the alternative (Ans. 26). Appellants do not direct us to any
persuasive reasoning or evidence that one would have recognized that “or”
meant “and” in the context of original claim 12.
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After review of the parties’ respective positions, we determine that a
preponderance of the evidence supports the Examiner’s position, and in light
of these circumstances, we affirm the Examiner’s 112 rejection of dependent
claim 12.
The §103 Rejections
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). “[Rjejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)).
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the
applicable burden in this case. A preponderance of the evidence supports
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Appellants’ assertions that the Examiner’s rejection is based on improper
hindsight in proposing to modify Warren to have the configuration of
steps/elements including moving a transmitter in a spiral pattern relative to a
receiver as required by each independent claim.
Appellants’ arguments focus on the lack of a reason to modify
Warren’s stationary on the ground transmitter to be located above the earth
and move in a spiral pattern relative to a receiver (App. Br. 6—13; Reply Br.
1-10).
The Examiner responds in part that Appellants’ disclosure “never
specifically discloses that the spiral movement of the transmitter is with
respect to the receiver” (Ans. 8). Contrary to the Examiner’s position, we
agree with Appellants that each independent claim de facto requires
obtaining a measurement while the transmitter is moving in a spiral pattern
relative to the receiver (or be capable of this functionality for claim 14) (e.g.,
Reply Br. 3, 10).
Appellants point out that Warren specifically discusses moving both
the transmitter and the receiver to another location to take measurements
while the transmitter and receiver are stationary (Reply Br. 5). Appellants
explain that Lopez’s tow vehicle contains both the transmitter and
receiver(s) together in the same instrument (Reply Br. 6; App. Br. 8) and
Holman is a hand-held device containing a “transmitter and receiver together
in the same handheld device” (Reply Br 6; App. Br. 8, 9). As explained by
Appellants, Parra’s transmitter electrodes and receivers are both placed in
the ground, and cannot be used above the earth. Appellants urge that one
would not have combined these references, and further that even if
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combined would not teach or suggest the claimed relative movement of the
transmitter and receiver (App. Br; Reply Br. generally).
A preponderance of the evidence supports Appellants’ position that
the Examiner is using impermissible hindsight to reconstruct Warren with
Lopez and then modify further with Holman or Parra. The Examiner has not
adequately explained why the skilled artisan’s knowledge or inferences and
creativity would have supported the obviousness determination based on the
teachings of the applied references without an improper hindsight
reconstruction of Warren, which requires a stationary transmitter.
The Examiner does not establish that any of the additional references
as applied in the § 103 rejections of dependent claims 6, 14—17, and 27—29
cure these deficiencies and/or otherwise provide another rationale that cures
these deficiencies.3
3 Appellants’ Specification describes that airborne electromagnetic
surveying systems were known per se but their limitations prevented success
with wellbore receivers (Spec. 14, 15). Appellants describe that “new
generations of airborne electromagnetic systems” now allows them to be
useful in applications such as “deep hydrocarbon reservoir imaging that was
previously impossible” (Spec. 25). The Examiner has not relied upon any of
these known airborne electromagnetic systems, nor established that the new
generations referred to in Appellants’ Specification are indeed prior art, and
thus, an obviousness rationale based on same is not before us. See, e.g., Ex
Parte Frye, 94 USPQ2d 1072, 1075 (BPAI2010 (precedential)). While the
Board is authorized to enter a new ground of rejection, this authority is
discretionary. See 37 C.F.R. § 41.77(b). We decline to exercise our
discretion since the Examiner has not relied upon this admission.
Accordingly, we leave it to the Examiner to apply the acknowledged prior
art, combined with any other applicable prior art developed by him or her, to
the appealed claims.
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Accordingly, we reverse the § 103 rejections on appeal.
ORDER
The Examiner’s § 112 rejection of claim 12 is affirmed.
The Examiner’s § 103 rejections are reversed.
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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