Ex Parte Sira et al

Patent Trial and Appeal Board

Jul 6, 2018

14384161 (P.T.A.B. Jul. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/384,161 09/10/2014
29052 7590 07110/2018
Eversheds Sutherland (US) LLP
999 PEACHTREE STREET, N.E.
Suite 2300
ATLANTA, GA 30309
FIRST NAMED INVENTOR
Terje Sira
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.
19727-0078 9429
EXAMINER
PHAN, TRUONG D
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
07/10/2018 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):
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERJE SIRA and TOR BJ0RNSTAD
Appeal2018-005974
Application 14/384,161
Technology Center 2800
Before GEORGE C. BEST, N. WHITNEY WILSON, and
AVEL YN M. ROSS, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
June 3, 2015 decision finally rejecting claims 1, 2, 8-10, 13-17, 20, and 21.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the real party in interest as Resman AS (Br. 2).
Appeal2018-005974
Application 14/384,161
CLAIMED SUBJECT MATTER
Appellants' disclosure is directed to an apparatus for tracer-based
flow measurements (Abstract). As shown in FIG. 1, reproduced below, the
apparatus includes a tracer chamber 20 for installation at a production
tubing 10.
Fig. 1
t
FIG. 1 shows a tracer release device used in an example hydrocarbon
production zone that features an Inlet Control Device (ICD).
The tracer chamber is for holding tracer and is arranged to be linked,
in use, to the pressure in an annulus 3 about the production tubing. As
shown in FIGS. 3a and 3B, reproduced below, the tracer chamber 20
2
Appeal2018-005974
Application 14/384,161
includes an outlet 41 or 141 for fluid communication between tracer
chamber 20 and the fluid within the production tubing:
Fig. 3a
Fig. 3b
Figures 3a and 3b show alternative tracer release devices
internal and external of the tubing, these tracer release devices
using a piston arrangement.
The tracer chamber 43 or 143 includes a pressure transfer device for
conveying the pressure of the annulus fluid to the tracer. The pressure
transfer device is a movable part configured to be pressed against the tracer
within the tracer chamber by the annulus fluid pressure such that the annulus
pressure is transmitted to the tracer by movement of the movable part. The
pressure transfer device may be a piston 44 or 144.
Details of the claimed invention are set forth in independent claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief
(emphasis added):
1. An apparatus for tracer based flow measurement, the
apparatus comprising:
a tracer chamber for installation at a production tubing,
wherein the tracer chamber is for holding tracer and is arranged
to be linked, in use, to the pressure in an annulus about the
production tubing;
3
Appeal2018-005974
Application 14/384,161
the tracer chamber comprising an outlet for fluid
communication between the tracer chamber and the fluid within
the production tubing;
wherein the tracer chamber includes a pressure transfer
device for conveying the pressure of the annulus fluid to the
tracer;
wherein the pressure transfer device comprises a movable
part configured to be pressed against the tracer within the tracer
chamber by the annulus fluid pressure such that the annulus
pressure is transmitted to the tracer by movement of the
movable part, wherein the movable part comprises a first
surface in contact with the fluid from the annulus and a second
surface connected to the first surface and in contact with the
tracer within the tracer chamber; and
wherein tracer is released from the outlet of the tracer
chamber into the production tubing at a release rate that is in
proportion with the pressure differential between the annulus
and the production tubing.
REJECTION
1. Claims 1, 2, 8-10, 13, 14, 16, 17, and 20 are rejected under
35 U.S.C. § 103(a) as unpatentable over Moen2 in view ofHartog. 3
2. Claims 15 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Moen in view of Hartog, and further in view of Haas. 4
DISCUSSION
The Examiner finds that Moen teaches an apparatus 400 for tracer
based flow measurement which includes a tracer chamber 455 for
2 Moen et al., US 2011/0024111 Al, published February 3, 2011.
3 Hartog et al., US 2003/0131991 Al, published July 17, 2003.
4 Haas, US 3,727,048, issued April 10, 1973.
4
Appeal2018-005974
Application 14/384,161
installation at a production tubing 460, as shown in Moen's FIG. 4A,
reproduced below (Final Act. 4):
Moen's FIG. 4A depicts a cross-sectional view of an illustrative
downhole screen assembly for dispensing a tracer material.
The Examiner further finds that Moen's tracer chamber 455 holds tracer 475
and is arranged to be linked to the pressure in annulus 415 about production
tubing 460 (id.).
The Examiner finds that Moen does not explicitly teach the following
limitation:
the pressure transfer device comprises a movable part
configured to be pressed against the tracer within the tracer
chamber by the annulus fluid pressure such that the annulus
pressure is transmitted to the tracer by movement of the
movable part, wherein the movable part comprises a first
surface in contact with the fluid from the annulus and a second
5
Appeal2018-005974
Application 14/384,161
surface connected to the first surface and in contact with the
tracer within the tracer chamber.
(Final Act. 6-7). The Examiner further finds that Hartog teaches a tracer
chamber including a pressure transfer device with a movable part configured
to be pressed against the tracer within the tracer chamber by the fluid
pressure, which meets these claim limitations (id. at 7-8). In particular, the
Examiner finds that Hartog discloses tracer chamber that includes a bag
which, according to the Examiner, corresponds to the claimed pressure
transfer device (id. at 7). The Examiner further finds that deformation of the
bag (and ejection of the tracer) is proportional to the pressure difference
between the inside of the bag and the fluid outside of the bag (id. at 7-8).
The Examiner also finds that the bag corresponds the claimed movable part,
and that its outer surface corresponds to the claimed "first surface" and its
inner surface corresponds the claimed "second surface."
The Examiner determines that it would have been obvious to modify
Moen with the teachings of Hartog to arrive at the claimed invention to
provide a more accurate reflection of the fluid flowrate in a downhole well
conduit, which can be more easily replaced, which is able to release an
accurately dosed minimal amount of tracer material into the well effluents
and which is able to transmit other well data than the fluid flowrate to a well
fluid flow monitoring and survey system at the earth surface (id. at 9).
Appellants contend that in Moen, the rate of release of the tracer is in
response to the fluid flow path, not its velocity, and thus is not proportional
to a pressure differential (Br. 5). Appellants also argue that Moen's
disclosure shows that while its tracer release rate varies with changes in
pressure differential, it does not teach that the tracer release rate is
proportional to the pressure differential (Br. 5---6). In particular, Appellants
6
Appeal2018-005974
Application 14/384,161
point out that the rate of tracer release can vary with the shape of the tracer
block and how this shape changes as the fluid erodes the block (id.).
Appellants' arguments are persuasive. The Examiner correctly finds
that Moen states that "high velocity or erosive flow can be guided in a path
directly toward the material 475 to achieve erosion of material 475 and
thereby increase or otherwise promote the release of material 475" (Moen
i-f 40). However, the Examiner has not provided a persuasive explanation of
how the changing shape and size of the tracer block would mean (or suggest)
releasing the tracer "into the production tubing at a release rate that is in
proportion with the pressure differential between the annulus and the
production tubing."
We reach this determination based on our construction of the phrase
"in proportion with the pressure differential." It is well established that "the
PTO must give claims their broadest reasonable construction consistent with
the specification. Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation." In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citation omitted). In this instance, the Specification states:
With this arrangement the tracer release rate is accurately
controlled in relation to the differential pressure between the
annulus and the tubing and is in principle in proportion with
this differential pressure. This allows for accurate calculations
of the volume inflow rate at the position where the tracer is
released ....
The link between the tracer chamber and the annulus pressure
should be such that changes in the annulus pressure would be
reflected by a corresponding change in the pressure in the tracer
chamber. This may be as an equivalent change in pressure, or
alternatively it may be as a change in pressure that can be
determined in a known way, for example by a linear
7
Appeal2018-005974
Application 14/384,161
mathematical relationship such as a direct proportionality. It is
preferred for the pressure in the tracer chamber to have a known
and calculable relationship with the pressure in the annulus.
(Spec. 2-3). Thus, the claim phrase "in proportion with the pressure
differential" requires an ability to accurately control the tracer release rate as
the differential pressure between the annulus and the tubing changes.
As explained by Appellants, Moen's disclosure does not teach or
suggest this limitation. In particular, the structure of Moen's tracer does not
allow for the accurate control of the release rate because that rate is
dependent on both the velocity of the fluid flowing by the tracer block
(which the Examiner correctly finds is related to the pressure differential),
and also the size and shape of the tracer block, which varies in a non-
controlled way as the block is eroded.
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."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F .2d 1071,
1074 (Fed. Cir. 1988). In this instance, the evidence of record does not
adequately establish that the cited art would have made obvious the
limitation "wherein tracer is released from the outlet of the tracer chamber
into the production tubing at a release rate that is in proportion with the
pressure differential between the annulus and the production tubing."
8
Appeal2018-005974
Application 14/384,161
Accordingly, we reverse this rejection. Moreover, as each of the remaining
claims on appeal depend from claim I-and the Examiner has not made
findings based on the Haas reference which address the deficiency outlined
above-we also reverse the rejection of the remaining claims.
CONCLUSION
We REVERSE the rejection of claims 1, 2, 8-10, 13, 14, 16, 17, and
20 under 35 U.S.C. § 103(a) as unpatentable over Moen in view of Hartog.
We REVERSE the rejection of claims 15 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Moen in view of Hartog, and further in view
of Haas.
REVERSED
9