Ex parte RAMSEY et al.

Board of Patent Appeals and Interferences

Jul 7, 1998

08424128 (B.P.A.I. Jul. 7, 1998)

Application for patent filed April 19, 1995. According to appellants, the1
application is a continuation of Application 08/087,667, filed July 6, 1993, 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publication in a law journal and (2) is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARK S. RAMSEY
and WILLIAM C. MORRIS, Jr.
_____________
Appeal No. 97-4183
Application 08/424,1281
______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and McQUADE, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Mark S. Ramsey and William C. Morris Jr. (the appellants)
appeal from the final rejection of claims 9-14. Claims 16 and
17, the only other claims remaining in the application, stand
Appeal No. 97-4183
Application 08/424,128
2
allowed.
We AFFIRM.
The appellants’ invention pertains to a method of
adjusting the flow of drilling fluid through the nozzles in a
drill bit while the drilling operation is taking place.
Independent claim 9 is further illustrative of the appealed
subject matter and reads as follows:
9. A method for adjusting the total flow area of a
drill bit concurrently with drilling with a drilling fluid
having a selected composition, comprising the steps of:
(a) attaching a drill bit to a drill string, the
drill bit including a plurality of nozzles, at least one of
the nozzles being open and at least one of the nozzles having
a closure means thereon to prevent upward or downward flow
through the nozzle, the closure means being adapted to open at
a pre-selected differential pressure;
(b) placing the drill string and bit down a
wellbore and commencing drilling; and
(c) before the open nozzle has eroded or plugged
and while drilling with the fluid of the selected composition,
increasing the differential pressure across the bit so as to
cause the closure means to open, causing an adjustment in the
total flow area of the drill bit concurrent while drilling and
without removing the bit from the wellbore.
The references relied on by the examiner are:
Appeal No. 97-4183
Application 08/424,128
Translation attached.2
3
Kistler 3,261,413 Jul. 19, 1966
Miller et al. (Miller) 3,645,346 Feb. 29, 1972
Russian publication SU 861537 Sep. 7, 19812
Claims 9-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miller or the Russian publication in
view of Kistler.
The examiner’s rejections are explained on pages 4 and 5
of the answer. The arguments of the appellants and examiner
in support of their respective positions may be found on pages
3-6 of the brief and pages 6-8 of the answer.
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 the appellants in the brief and by the examiner in
the answer. As a consequence of this review, we will sustain
the rejection of claims 9-14 under 35 U.S.C. § 103(a) as being
Appeal No. 97-4183
Application 08/424,128
4
unpatentable over Miller in view of Kistler. We will not,
however, sustain the rejection of claims 9-14 under 35 U.S.C.
§ 103(a) as being unpatentable over the Russian publication in
view of Kistler.
Considering first the rejection of claims 9-14 under 35
U.S.C. § 103(a) as being unpatentable over Miller in view of
Kistler, it is the examiner’s position that:
Miller et al ’346 disclose that the
initially closed nozzle is opened by fluid
pressure when the initially open nozzle
becomes eroded (column 4, lines 15-39).
However, Miller et al ’346 also disclose in
column 4, lines 4-8 that the dimensions and
pattern of the initially closed nozzle
system can be different from those of the
initially open nozzles to permit the bit to
adapt to different drilling conditions by
merely closing one nozzle system and
opening the other.
* * *
Kistler, Jr. ’413 discloses that it is
desired to use different nozzle dimensions
for different drilling conditions during
the course of drilling a borehole, such as
type and depth of formation, rotary speed,
weight on bit mud weight, etc. (see column
Appeal No. 97-4183
Application 08/424,128
5
1, lines 26-36).
It would have been obvious to one of
ordinary skill in the art at the time the
invention was made to open the initially
closed nozzle(s) in the drill bit of Miller
et al ’346 . . . for reasons other than
erosion, plugging or lost circulation
control in view of the teaching of Kistler,
Jr. ’413. [Answer, pages 4 and 5.]
The appellants, on the other hand, argue that:
Miller et al ’346 teaches a bit having
two nozzle systems, and when the first
nozzles become eroded from flow they are
closed and a second set of nozzles is
opened while the bit is at the bottom of a
well. The invention is related to the
problem of nozzle erosion. . . . Kistler
’413 discloses a shear relief valve to be
placed in a bit and expelled if the bit
flow passages become plugged and ?... is
controllably expellable in other
circumstances? (Kistler ’413 at col. 1,
lines 56, 57). Kistler ’413 in the
Background section of the patent, also
discusses various conditions under which
replaceable nozzles in a bit would
desirably be changed. It is perfectly
clear that the teachings of Kistler ’413
apply to changing the nozzles on the
surface of the earth, while drilling has
been interrupted. [Brief, pages 3 and 4.]
We are unpersuaded by the appellants’ arguments.
Appeal No. 97-4183
Application 08/424,128
6
Initially we note that all of the disclosures in a reference
must be evaluated for what they fairly teach one having
ordinary skill in the art (In re Boe, 355 F.2d 961, 965, 148
USPQ 507, 510 (CCPA 1966)) and, in evaluating such a referenc-
e, it is proper to take into account not only the specific
teachings of the references but also the inferences which one
skilled in the art would reasonably be expected to draw there-
from (In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968)). Moreover, the issue of obviousness is not only
determined by what the references expressly state but also is
determined by what they would fairly suggest to those of
ordinary skill in the art. See, e.g., In re De Lisle, 406
F.2d 1386, 1389, 160 USPQ 806, 808-09 (CCPA 1969) and In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549-50 (CCPA 1969).
Miller provides a bit having up to three nozzle systems
(column 2, line 15). Other than the first nozzle system, the
remaining nozzle systems are provided with at least one
frangible member (43 or 86) that is rupturable at a
predetermined upstream pressure. When the nozzles of one
system become eroded, the flow of drilling fluid to the eroded
Appeal No. 97-4183
Application 08/424,128
7
nozzles is cut off by plug 50 in the case of the embodiment of
Figs. 1, 2 and 5 or by balls 91 in the case of the embodiment
of Figs. 3, 4 and 6. As a result of the flow to the eroded
nozzles being cut off, the upstream pressure increases to the
point where the frangible members 43 or 86 rupture, thus
providing for the flow of drilling fluid to one of the
remaining nozzle systems. By such an arrangement, Miller
provides for new nozzles to be utilized, when the nozzles
previously being utilized become worn or eroded, without the
need to withdraw the bit from the well (see generally, columns
1 and 2).
In addition to the above, as the examiner has noted,
Miller also teaches that:
Moreover, the nozzle dimensions and nozzle
pattern of one system can be different from
those of its paired system permitting the
bit 10 to adapt to different drilling
conditions by merely closing one nozzle
system and opening another. [Column 4,
lines 5-8.]
Accordingly, Miller teaches (or at least would fairly suggest
Appeal No. 97-4183
Application 08/424,128
8
to) one of ordinary skill in the art that the separate nozzle
systems can also be provided with nozzles of different
dimensions or sizes, and that a change from one size nozzle to
another may be effected ?by merely closing one nozzle system
and opening the other? (i.e., in the same manner that eroded
nozzles are taken out of service) in order to adapt to
different drilling conditions, irrespective of whether the
nozzles being taken out of service are eroded. Thus, the
teachings of Miller are not limited to only taking eroded
nozzles out of service as the appellants would have us believe
but, instead, are also directed to changing from one size of
nozzle to another when drilling conditions dictate.
With respect to claim 11, the artisan would also
reasonably infer that the change in the dimension or size of
the nozzles to ?adapt to different drilling conditions? is done
for the purpose of increasing drilling efficiency. In
addition, the artisan as a matter of ?common sense? (see In re
Bozek, supra) would not change the size of the nozzles in
accordance with Miller’s teachings without first ?predicting
the effect? of such a change.
Appeal No. 97-4183
Application 08/424,128
9
While the examiner has also relied on Kistler (column 1,
lines 29-36) for a broad teaching of changing nozzle size in
order to adapt to various ?drilling conditions,? Miller, as we
have noted above, clearly teaches such an arrangement.
In view of the foregoing, we will sustain the rejection
of claims 9-14 under 35 U.S.C. § 103(a) as being unpatentable
over Miller in view of Kistler.
Turning to the rejection of claims 9-14 under 35 U.S.C.
§ 103(a) as being unpatentable over the Russian publication in
view of Kistler, the examiner has taken the position that it
would have been obvious to open the closed or inactive nozzle
of the Russian publication for reasons other than erosion or
plugging in view of the teachings of Kistler. We do not
agree. The Russian publication only teaches taking one nozzle
out of service when it becomes plugged and opening a
replacement nozzle in response to a rise in pressure of the
drilling fluid caused by the plugged nozzle. There is no
teaching or suggestion whatsoever in the Russian publication
of changing the flow rate. Apparently recognizing this
deficiency, the examiner has also relied on the teachings of
Appeal No. 97-4183
Application 08/424,128
10
Kistler. While Kistler (column 1, lines 29-36) provides a
broad teaching of changing nozzle size in order to adapt to
various ?drilling conditions,? such a change is apparently
effected when the drill bit is withdrawn from the well (as
distinguished from the arrangement of the Russian publication
wherein the change from one nozzle to the other is made while
the bit is in the well). The examiner also makes much of the
fact that Kistler states that the core 14 in nozzle 1 may be
?controllably? expelled from the nozzle. We must point out,
however, that Kistler only apparently controllably expels this
core for the purpose of expediting withdrawal of the bit from
the well (see column 2, lines 36-42). Absent the appellants’
own teachings, we can think of no cogent reason why one of
ordinary skill in this art would have been motivated to
combine the disparate teachings of the Russian publication and
Kistler in the manner proposed. This being the case we will
not sustain the rejection of claims 9-14 under 35 U.S.C. §
103(a) as being unpatentable over the Russian publication in
view of Kistler.
In summary:
The rejection of claims 9-14 under 35 U.S.C. § 103(a) as
Appeal No. 97-4183
Application 08/424,128
11
being unpatentable over Miller in view of Kistler is affirmed.
The rejection of claims 9-14 under 35 U.S.C. § 103(a) as
being unpatentable over the Russian publication in view of
Kistler is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 97-4183
Application 08/424,128
12
JOHN P. McQUADE )
Administrative Patent Judge )
BAKER & BOTTS, L.L.P.
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