Ex Parte Skinner

Patent Trial and Appeal Board

Aug 11, 2016

13342652 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/342,652 01/03/2012 Neal G. Skinner
46042 7590 08/15/2016
SCHWEGMAN LUNDBERG & WOESSNER I HALLIBURTON
P.O. Box 2938
MINNEAPOLIS, MN 55402
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.
1880.944US2 6323
EXAMINER
CHIEM, DINH D
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
USPTO@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL
BOARD
Ex parte NEAL G. SKINNER
Appeal2015-002022
Application 13/342,652
Technology Center 2800
Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
BRIAND. RANGE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-20 under 35 U.S.C. 103(a) as being unpatentable over
Herbst (US 8,213,756 B2, patented Jul. 3 2012) in view of Shepodd et al.
(US 2005/0051757 Al, published Mar. 10, 2005 hereinafter "Shepodd"). We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is stated to be "Halliburton Energy Services, Inc."
(App. Br. 3).
Appeal2015-002022
Application 13/342,652
Claims 1 and 11 are representative of the claimed invention (emphasis
added to highlight key disputed limitation):
1. A downhole optical sensing system, comprising:
at least one optical line;
at least first and second tubular conduits, the first conduit being
positioned within the second conduit, and the optical line being positioned
within at least one of the first and second conduits; and
a hydrogen scavenging medium flowed in a first direction through the
first conduit, and flowed in a second direction opposite to the first direction
between the first and second conduits, thereby chemically bonding with and
removing hydrogen from about the optical line.
11. A method of reducing hydrogen darkening in a downhole
optical sensing system, the method comprising the steps of:
installing at least first and second conduits and at least one optical
line in a well as part of the sensing system, the first conduit being
positioned within the second conduit, and the optical line being
positioned within at least one of the first and second conduits; and
flowing a hydrogen scavenging medium through the first and
second conduits in the well, so that the hydrogen scavenging medium
flows in a first direction through the first conduit and in a second
direction opposite to the first direction between the first and second
conduits, thereby chemically bonding with and removing hydrogen from
about the optical line.
Appellant mainly focuses the argument on independent claim 1, and
also separately addresses claims 5-10 (App. Br. 9-12). Appellant relies
upon similar arguments for independent claim 11, and its corresponding
separately addressed dependent claims (id. at 12-15).
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Appeal2015-002022
Application 13/342,652
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellant's claims is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejection essentially for the reasons set out by the
Examiner in the Non-final Office Action mailed Oct. 10, 2013, and the
Answer mailed Sep. 25, 2014.
We add the following for emphasis.
Assuming arguendo that Appellant is correct that Herbst does not
explicitly teach that the hydrogen scavenger may be in the purge gas flow, a
preponderance of the evidence still supports the Examiner's determination of
obviousness. There is no dispute that Herbst suggests using hydrogen getters
(i.e., hydrogen scavengers) in addition to the inert gas purge (see, e.g. Herbst
col. 3, 11. 15, 16; col. 5, 11. 52-57) for maintaining performance of a fiber
optic cable in a downhole/subterranean well. As the Examiner aptly points
out, Shepodd discloses the use of a powder form of hydrogen scavenger in
the same field of endeavor of fiber optic systems used in subterranean wells
as Herbst and the present invention (Ans. 3, 4; Shepodd i-f8). Shepodd is
silent as to how this powder or paste is applied to a downhole well fiber
optic system, but does state that the powder/paste may be used to remove
hydrogen from mixtures of hydrogen and inert gases (Shepodd Abstract,
i-fi-fl l, 12; Non-final Action 3).
Appellant's argument that one of ordinary skill in the art would not
have attempted to put the powder or paste of Sheppod in the gas flow of
Herbst because "it is impractical" (e.g., App. Br. 10) and "has the potential
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Appeal2015-002022
Application 13/342,652
of building up and plugging the flow passage" (Reply Br. 12, 17) is not
persuasive of error. Notably, Appellant's Specification is devoid of any
details as to how it incorporates a hydrogen scavenging material into its
"purging medium" which may be "inert gas ... a liquid, gel, etc." (Spec.
8:10-12; see also Spec. 10:10 ("the purging medium 42 may comprise a
gas")). The only description of a hydrogen scavenger in the Specification is
that "[t]he purging medium 42 could also have hydrogen scavenging
capability" (Spec. 8:12-14) and "[t]he purging medium 42 may comprise a
hydrogen scavenging medium" (Spec. 10: 10-11 ). In light of these
circumstances, mere attorney's arguments in a brief that entraining a
hydrogen scavenging powder or paste in the purge gas of Herbst is
impractical, such that one of ordinary skill would not have attempted it,
cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
Appellant has not persuasively disputed the Examiner's determination
that one of ordinary skill in the art, using no more than ordinary creativity,
would have entrained the hydrogen scavenging powder of Shepodd in the
purge gas flow of Herbst. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) ("[T]he analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ."); see also id., at 421 ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton."); In re Fritch, 972 F.2d
1260, 1264---65 (Fed. Cir. 1992) (It is well settled that a reference stands for
all of the specific teachings thereof as well as the inferences one of ordinary
skill in this art would have reasonably been expected to draw therefrom).
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Appeal2015-002022
Application 13/342,652
To the extent Appellant presents arguments regarding dependent
claims, the arguments also do not show error in the Examiner's position for
reasons set out by the Examiner (e.g., Ans. 4-6, 8-9). With respect to
dependent claims 6 and 16, which state "the hydrogen scavenging material
may comprise a liquid", the Examiner's explanation that the polyphenol
ethers of the material would be a liquid is supported by the evidence, since
the temperature range in the downhole fiber optic systems is 150 to 300Q C
(Shepodd i-fi-18, 16, 22; Non-final Action 4, 5; Ans. 4). Contrary to
Appellant's argument that liquid is only used to prepare the powder (Reply
Br. 12), one of ordinary skill would have reasonably inferred that Shepodd
teaches that the getter material of polyphenol ethers (that would be liquid at
the temperature in a downhole well application) includes the catalyst, and
that organic solvents or water may also be present.
Accordingly, for all the reasons stated above and in the Answer, and
taking into account "the inferences and creative steps that a person of
ordinary skill in the art would employ," KSR Int'!, 550 U.S. at 418,
Appellant has not shown reversible error in the Examiner's obviousness
determination.
We sustain the Examiner's § 103 rejection on appeal.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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