Ex Parte Morys et al

Patent Trial and Appeal Board

Jun 29, 2018

11993430 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111993,430
112839 7590
Tumey LLP - HES
PO Box 22188
FILING DATE
12/20/2007
07/03/2018
Houston, TX 77227-2188
FIRST NAMED INVENTOR
Marian Morys
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.
1391-779.02 7022
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
ctumey@tumeyllp.com
jflook@tumeyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIAN MORYS, SERGEI KNIZHNIK,
and WILLIAM FRANCIS GALLAGHER III, 1
Appeal2017-009181
Application 11/993,430
Technology Center 2800
Before BEYERL YA. FRANKLIN, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
BEYERL Y A. FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Halliburton Energy
Services, Inc.
Appeal2017-009181
Application 11/993,430
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1--4, 6, 7, 9--13, 15, and 17. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A method for resistivity logging, the method comprising:
generating a current, the current oscillating at a
plurality of different frequencies, wherein at least one of the
frequencies is above a critical frequency;
directing the current into a surrounding material from
a borehole containing a conductive fluid;
detecting the current via electrodes and, in response
thereto, determining a resistivity of the surrounding material
at the plurality of different frequencies, which resistivity is
collected as resistivity log data;
estimating a quality of the collected resistivity log data
based on a relative difference between responses of the
electrodes collected at different frequencies; and
accepting or rejecting the collected resistivity log data
when said re la ti ve difference matches or exceeds a
predefined value.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Meyer et al. US 6,400,148 Bl June 4, 2002
(hereinafter "Meyer")
Tabarovsky et al. US 2003/0155925 Al Aug. 21, 2003
(hereinafter "Tabarovsky")
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Appeal2017-009181
Application 11/993,430
Ritter et al.
(hereinafter "Ritter")
Tabanou et al.
(hereinafter "Tabanou")
Shimizu et al.
(hereinafter "Shimizu")
US 2005/0001624 Al Jan. 6,2005
US 2005/0067190 Al Mar. 31, 2005
US 2006/0091890 Al May4, 2006
THE REJECTIONS
1. Claims 1--4, 6, 7, 9--13, 15, and 17 stand rejected under pre-AIA
35 USC § 112, first paragraph (written description requirement).
2. Claims 1--4, 6, 7, 9--13, 15, and 17 stand rejected under pre-AIA
35 USC§ 112, first paragraph (enablement).
3. Claims 1--4, 6, 7, 9--13, 15, and 17 stand rejected under pre-AIA
35 USC§ 112, second paragraph, as being indefinite.
4. Claims 1--4 and 6 stand rejected under pre-AIA 35 USC§ 103(a) as
being unpatentable over Tabanou in view of Tabarovsky, further in view of
Ritter and further in view of Meyer.
5. Claims 9-13 stand rejected under pre-AIA 35 USC§ 103(a) as being
unpatentable over Tabarovsky in view of Ritter and further in view of
Meyer.
6. Claim 7 stands rejected under pre-AIA 35 USC§ 103(a) as being
unpatentable over Tabanou in view of Tabarovsky, Ritter, and Meyer and
further in view of Shimizu.
7. Claims 15and17 stand rejected underpre-AIA35 USC§ 103(a) as
being unpatentable over Tabarovsky in view of Ritter, Meyer, and Shimizu.
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Appeal2017-009181
Application 11/993,430
ANALYSIS
To the extent that Appellant has presented substantive arguments for
the separate patentability of any individual claims on appeal, we will address
them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii).
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports the Examiner's findings and conclusion that
Appellants' claims do not meets certain requirements of 35 U.S.C. § 112.
Accordingly, we sustain each of the Examiner's 35 U.S.C. § 112 rejections
for the reasons set forth in the Final Office Action and in the Answer,
discussed below. We also address the prior art rejections below.
Rejection 1
We refer to the Examiner's rejection as set forth on pages 3-5 of the
Final Office Action, and incorporate it herein. We have thoroughly read
Appellants' position as set forth in the Appeal Brief and Reply Brief
regarding Rejection 1. We begin by stating that "[t]he essence of the written
description requirement is that a patent applicant, as part of the bargain with
the public, must describe his or her invention so that the public will know
what it is and that he or she has truly made the claimed invention." Abb Vie
Deutsch/and GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285,
1298 (Fed. Cir. 2014) (citing Festa Corp. v. Shoketsu Kinzoku Kabushiki
Co., 535 U.S. 722, 736 (2002); O'Reilly v. Morse, 56 U.S. 62, 120-21
(1853)). In the instant case, we agree with the Examiner that there is
inadequate written descriptive support as to how Appellants are estimating
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Appeal2017-009181
Application 11/993,430
quality. Appellants refer to disclosure found in paragraph [0053] of the
published application corresponding to the instant Specification and submit
that this disclosure provides adequate written description support. However,
we agree with the Examiner that this paragraph indicates that one can accept
or reject when the relative difference will match or exceed some predefined
value. What is missing is how it is decided as to whether to accept or reject
based upon the same value. This is the point the Examiner makes in the
record that is not resolved by Appellants. We thus affirm Rejection 1.
Rejection 2
In a similar fashion that we affirm Rejection 1, we also affirm
Rejection 2. The Examiner's position includes the same position with
respect to the disclosure in the Application as filed, adding that based on the
disclosure, it would require undue experimentation to practice the invention
as claimed. Final Act. 5-10. Appellants' position includes the same flaw
discussed with regard to Rejection 1, supra. Appeal Br. 14--16; Reply Br. 4--
6.
We note that a specification complies with the 35 U.S.C. § 112, first
paragraph, enablement requirement if it allows those of ordinary skill in the
art to make and use the claimed invention without undue experimentation.
See, e.g., In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); In re Wands,
858 F.2d 731, 736-37 (Fed. Cir. 1988). "The enablement requirement
ensures that the public knowledge is enriched by the patent specification to a
degree at least commensurate with the scope of the claims. The scope of the
claims must be less than or equal to the scope of the enablement." Nat'!
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Appeal2017-009181
Application 11/993,430
Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190,
1195-96 (Fed. Cir. 1999).
As discussed above with regard to Rejection 1, what is missing in the
Specification is how it is decided as to whether to accept or reject based
upon the same value. We thus agree with the Examiner that undue
experimentation exists to practice the invention as claimed for the reasons
provided by the Examiner in the record. We thus affirm Rejection 2.
Rejection 3
We refer to the Examiner's position as set forth on pages 10-13 of the
Final Office Action, and agree with the Examiner's stated response
(Ans. 12-15) to Appellants' position made in the Appeal Brief and Reply
Brief (Appeal Br. 16-17; Reply Br. 6-7). As such, we affirm Rejection 3
for the reasons provided by the Examiner in the record.
Rejections 4--7
The metes and bounds of the claims are unclear and indefinite, as
discussed above, to an extent that it is impossible to ascertain the propriety
of the grounds of rejection of these claims. See In re Wilson, 424 F.2d 1382,
1385(CCPA1970); In re Steele, 305 F.2d 859, 862---63(CCPA1962).
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a§ 103
rejection of the claims can be reversed as impermissibly involving
speculative assumptions as to the meaning of the claims. Steele, 305 F.2d at
862---63. Because the rejected claims fail to particularly point out and
distinctly claim Appellants' invention as required by the second paragraph
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Application 11/993,430
of 35 U.S.C. § 112, the§ 103 rejection of these claims necessarily involves
speculative assumptions as to the meaning of the claims. Under these
circumstances, we must reverse each of the § 103 rejections.
However, we emphasize that our reversal of these rejections is
because the claims are indefinite; hence, a decision has not been made based
on the technical merits of the obviousness rejection respecting these claims.
DECISION
Rejections 1-3 are affirmed.
Rejections 4--7 are reversed.
TIME PERIOD
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).
AFFIRMED
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