Ex Parte Sheffield

Patent Trial and Appeal Board

Apr 2, 2013

10905196 (P.T.A.B. Apr. 2, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDOLPH J. SHEFFIELD
____________

Appeal 2011-000592
Application 10/905,196
Technology Center 3600
____________

Before NEAL E. ABRAMS, LYNNE H. BROWNE,
and REMY J. VANOPHEM, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Randolph J. Sheffield (Appellant) seeks our review under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1, 14, 31 and 32. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
The claimed invention is directed to a method and system for
actuating a valve downhole in a well bore by a wireless command,
confirming that the valve has operated in accordance with the command, and
acknowledging whether it has been so operated by communicating uphole
by means of a transducer.
Claims 1 and 14, reproduced below, are illustrative of the subject
matter on appeal.
1. A method usable with a well, comprising:
communicating a wireless stimulus in the well, the
wireless stimulus being indicative of a command;
actuating a multi-position valve in response to the
communication, the valve having more than one controllable
open position;
confirming downhole in the well whether the valve has
operated in accordance with the command; and
acknowledging whether the valve has been operated in
accordance with the command, comprising using a transducer
for the valve that is located proximate to an exterior surface of
downhole production tubing to communicate another wireless
stimulus from the valve uphole to identify that the operation of
the valve has been confirmed downhole.

14. A system usable with a well, comprising:
a multi-position valve located downhole in the well, the
valve having more than one controllable open position;
an apparatus to communicate a wireless stimulus to the
tool to actuate the valve, the wireless stimulus being indicative
of a command;
a transducer located proximate to an exterior surface of
production tubing comprising the valve; and
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a circuit located downhole to confirm the command,
operate the valve in accordance with the command, and use the
transducer to communicate another wireless stimulus uphole to
acknowledge that the valve has been operated in accordance
with the command to identify that the circuit confirmed the
command.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Fletcher US 5,531,270 Jul. 2, 1996
Tubel US 5,975,204 Nov. 2, 1999
Vinegar US 6,758,277 B2 Jul. 6, 2004

THE REJECTIONS
Claims 1, 14, 31 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fletcher in view of Tubal.
Claims 1, 14, 31 and 32 also stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Vinegar in view of Tubal.
OPINION
Claims 1, 14, 31 and 32 – Obviousness
Fletcher in view of Tubel
The Examiner has found that all of the subject matter recited in these
claims is disclosed in Fletcher, except for the presence of transducers located
proximate to the exterior surface or the interior surface of the downhole
production tubing, and providing a confirmation signal. However, the
Examiner has taken the position that the required transducers are disclosed
in Tubel, and it would have been obvious “to add a transducer and a
confirmation signal to the Fletcher et al. device in order to sense tubing
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pressure and improve efficiency.” Ans. 4. In response to Appellant’s
arguments, the Examiner further explained that operation of a valve would
result in changes in flow through the valve, and Fletcher discloses “[s]ensors
in a circuit, detecting a change in pressure, temperature, and/or flow rate”
which “would confirm the valve has operated per the associated command.”
Therefore, the Examiner concludes, an operator on the surface, noting
changes in these factors, would have confirmation that the valve has
operated in accordance with the command. Ans. 7-8.
With regard to claim 1, Appellant argues that while Fletcher teaches
that valve 42 transmits signals “indicative of” pressure, temperature, flow
rate and fluid composition of fluids flowing through the passage 62, “[t]he
skilled artisan would not conclude that any of these parameters identify that
the operation of the valve 42 has been confirmed downhole” (Br. 10-11),
and that “Fletcher fails to teach or suggest acknowledging whether a valve
has operated in accordance with the command by communicating a wireless
stimulus uphole to identify the operation of the valve has been confirmed
downhole” (Br. 11). See also pages 13-17 of the Brief, where these
arguments also are applied to the rejection of claims 14, 31 and 32.
Claims 1 and 31 require the steps of “communicating a wireless
stimulus . . . being indicative of a command,” “confirming . . . whether the
valve has operated in accordance with the command,” and “acknowledging
whether the valve has been operated in accordance with the command . . .
using a transducer . . . to communicate another wireless stimulus from the
valve uphole to identify that the operation of the valve has been confirmed
downhole” (emphasis added). Claims 14 and 32 recite these limitations in
the context of a system. Fletcher teaches controlling fluid flow through
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wellbore valves by transmitting commands from a controller 54 on the
surface to a signal generating means downhole in the well bore, which then
operates an actuator to position the valve. See Col. 2, ll. 1-1; Col. 4, ll. 15-
37; Col. 5, ll. 8-16. Fletcher also teaches measuring the pressure,
temperature, flow rate and fluid composition of fluids through the valve
passage, and that these conditions may be monitored and transmitted to a
controller on the surface. See Col. 5, ll. 15-48. Fletcher does not explicitly
teach “confirming” downhole whether the “valve has operated in accordance
with the command” or “acknowledging” uphole “by another wireless
stimulus” that such is the case, as is required in all of the rejected claims.
It is our view that the mere fact that changes in the conditions
disclosed in Fletcher, that is, pressure, temperature, flow rate and
composition of fluids, at a valve when a command is sent to the valve
actuator to alter the position of the valve are not “confirming” of the fact that
the valve has “operated in accordance with the command” that was sent to
the actuator. For example, factors such as fouling or binding of the valve or
the actuator, or interference with the transmission of the wireless command
stimulus, could result in movement of the valve and changes in the
monitored factors, even though the valve has not been positioned in
accordance with the command. Therefore, in the absence of evidence to the
contrary, monitoring the factors disclosed in Fletcher cannot be relied upon
to provide a representation of the actual position of the valve after a specific
command has been issued, and the claim limitations of “confirming” that the
valve has operated in “accordance with the command” and, it follows, of
“acknowledging” that to be the case would not have been obvious to one of
ordinary skill in the art as a result of the teachings of Fletcher.
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Consideration of Tubel, which was relied upon for its teachings
regarding the placement of transducers, does not overcome the shortcomings
of Fletcher.
This rejection of claims 1, 14, 31 and 32 is not sustained.
Claims 1, 14, 31 and 32 – Obviousness
Vinegar in view of Tubel
In this rejection the Examiner finds all of the subject matter recited in
the claims to be disclosed in Vinegar, except for the locations of the
transducers and the presence of a confirmation signal, which the Examiner
concludes are taught by Tubel. Ans. 5. The Examiner explains that “Vinegar
et al. disclose a circuit to sense pressure, temperature, flow rate (col. 19,
lines 49-51),” and that “an operator on the surface noting changes in the
pressure, temperature, and flow rate indicated by the sensors (i.e., the
circuit), would have confirmation in the well, from the sensors, whether the
valve has operated in accordance with the command.” Ans. 9. Appellant
argues that while Vinegar discloses monitoring the downhole conditions set
forth in the rejection, Vinegar “fails to disclose or render obvious the act of
confirming downhole in a well whether a valve has operated in accordance
with a command or the act of acknowledging” whether such has occurred,
“including communicating a stimulus uphole to identify that operation of the
valve has been confirmed downhole.” Br. 17. See also pages 18 and 19 of
the Brief, where this argument is applied to the rejection of claims 14, 31
and 32.
The teachings of Tubel do not overcome the deficiencies in Vinegar
pointed out by Appellant, and thus, for the reasons set forth supra with
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regard to the rejection of these claims on the basis of Fletcher and Tubel, the
present rejection also is not sustained.
DISMISSAL OF THE APPEAL
AS TO CLAIMS 3, 5-13, 16 AND 18-26
The Notice of Appeal filed February 9, 2010, states that the Appellant
“hereby appeal(s) to the Board of Patent Appeals and Interferences [now the
Patent Trial and Appeal Board] from the decision of the Primary Examiner
dated November 9, 2009.” In that decision the Examiner rejected claims 1,
3, 5-14, 16, 18-26, 31 and 32. Appellant’s Appeal Brief states that
“[c]laims 1, 14, 31 and 32 have been finally rejected and are the subject of
this appeal. Claims 3, 5-13, 16 and 18-26 are not the subject of this appeal.”
Br. 5. The Appeal Brief does not include any argument addressed to the
rejection of claims 3, 5-13, 16 and 18-26. Since the Appellant unequivocally
indicates an intent not to pursue an appeal from the rejection of claims 3, 5-
13, 16 and 18-26, we DISMISS the appeal as to those claims. See Ex parte
Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)(precedential). We note that
§ 1215.03 of the Manuel of Patent Examining Procedure states that a
“withdrawal of the appeal as to some of the claims on appeal operates as an
authorization to cancel those claims from the application.”
DECISION
The rejection of claims 1, 14, 31 and 32 under 35 U.S.C. § 103(a) as
being unpatentable over Fletcher in view of Tubal is reversed.
The rejection of claims 1, 14, 31 and 32 under 35 U.S.C. § 103(a) as
being unpatentable over Vinegar in view of Tubal is reversed.

REVERSED

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