Ex Parte Stoesz et al

Patent Trial and Appeal Board

Mar 8, 2018

14073395 (P.T.A.B. Mar. 8, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/073,395 11/06/2013 Carl W. Stoesz OPS4-56351-US-NP 6589
44639 7590 03/12/2018
TANTOR TOT RTTRN T T P- RAKFR HTTrTHFS INFORPOR ATFF)
EXAMINER
20 Church Street JORDAN, ANDREW
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
03/12/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL W. STOESZ, DOUGLAS J. MURRAY, and
DAVID O. CRAIG
Appeal 2017-001625
Application 14/073,395
Technology Center 2800
Before JAMES C. HOUSEL, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 1-5, 7-28, and 30. We have
jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as Baker Hughes
Incorporated (Br. 1).
Appeal 2017-001625
Application 14/073,395
We REVERSE, but enter New Grounds of Rejection (37
C.F.R. § 41.50(b)).2
STATEMENT OF THE CASE
The invention relates to a fiber optic mounting arrangement
and a method of coupling an optical fiber to a tubular. Spec., Title.
Appellants disclose “[tjypical systems for coupling optical fiber to a
tubular for purposes of sensing parameters such as strain,
temperature, pressure, acoustic energy of the tubular include
adhesively bonding the optical fiber to the tubular” (id. Tf 1).
However, Appellants note that such adhesive bonding
arrangements have proven difficult (id.). Appellants disclose a
method of coupling optical fiber to a tubular by placing the optical
fiber at least partially within an annular cavity defined between a
tubular and an elongated member followed by radially
compressing the elongated member against the tubular such that
the optical fiber is parameter transmissively mounted to the
tubular (id. 2-3).
Claim 1, reproduced below from the Claims Appendix to the
Appeal Brief, is illustrative of the subject matter on appeal.
1. A method of coupling optical fiber to a tubular,
2 Our Decision refers to the Specification (Spec.) filed November 6,
2013, the Examiner’s Non-Final Office Action (Non-Final) dated
March 30, 2016, Appellant’s Appeal Brief (Br.) filed June 17, 2016,
the Examiner’s Answer (Ans.) dated October 4, 2016, and
Appellant’s Reply Brief (Reply Br.) filed November 8, 2016.
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Application 14/073,395
comprising:
positioning at least one optical fiber at least
partially within an annular cavity defined between a
tubular and an elongated member;
radially outwardly compressing the elongated
member against the tubular; and
radially outwardly compressing the optical fiber
against the tubular by the elongated member.
Independent claim 22 recites a fiber optic mounting
arrangement in which at least one fiber optic is at least partially
positioned between a tubular and an elongated member and is
radially compressed against the tubular by the elongated member
such that the fiber optic is parameter transmissively mounted to
the tubular.
REJECTIONS3
The Examiner maintains, and Appellants request our review
of, the following grounds of rejection under 35 U.S.C. § 103:
3 Appellants present arguments against the Examiner’s objection
to the Specification. App. Br. 4. However, as stated by the
Examiner (Ans. 2-3), this objection is not an appealable matter
because it does not relate to review of rejections under 35 U.S.C. §
134(a). Because an appeal under 35 U.S.C. § 134(a) is generally
limited to matters relating to rejections of claims, an objection to
the Specification is a petitionable matter. In re Berger, 279 F.3d
975, 984-985 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d
1395, 1403 (CCPA 1971)); see also MPEP § 1201. Thus, this
matter should have been raised by a timely-filed petition under 37
C.F.R. S 1.181. See 37 C.F.R. S 1.113.
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Application 14/073,395
1. Claims 1-4, 7-10, 13-28, and 30 as unpatentable over
Coronado4 in view of Stoesz5 and Richard;6
2. Claims 5 and 11 as unpatentable over the combination
of Coronado, Stoesz, and Richard, as applied to claim 1,
further in view of Landry;7 and
3. Claim 12 as unpatentable over the combination of
Coronado, Stoesz, and Richard, as applied to claim 1,
further in view of Nagasaki.8
ANALYSIS
The Examiner finds Coronado discloses a method of coupling
optical fiber to a tubular comprising positioning at least one
optical fiber 318 at least partially within an annular cavity
defined between tubular 330 and elongated member 328 (Ans. 6).
The Examiner also finds Coronado does not disclose the steps of
radially outwardly compressing the elongated member against the
tubular and the optical fiber against the tubular by the elongated
member (id. at 6-7). However, the Examiner finds Stoesz discloses
a fiber assembly method in which the fiber may be provided on the
4 Coronado et al., US 2008/0271926 Al, published November 6,
2008 (“Coronado”).
5 Stoesz et al., US 2009/0252464 Al, published October 8, 2009
(“Stoesz”).
6 Richard, US 2005/0205263 Al, published September 22, 2005.
7 Landry et al., US 4,836,872, issued June 6, 1989 (“Landry”).
8 Nagasaki, US 2002/0006254 Al, published January 17, 2002.
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Application 14/073,395
inside or the outside of tubular 14, thereby showing equivalence
between the interior and exterior surfaces for the optical fiber (id.
at 7). The Examiner notes that Coronado similarly teaches that
the optical fiber may be on the inside or the outside of shroud 26,
326 (id.). Moreover, the Examiner finds Richard discloses a self-
conforming screen including elongated member 16 that swells and
conforms to the shape of the borehole upon heating (id.).
The Examiner concludes it would have been obvious to heat
and swell Coronado’s elongated member as taught in Richard to
ensure conformance with the interior of shroud 326 (id.). In
addition, the Examiner concludes it would have been obvious to
have the elongated member and optical fiber inside the tubular as
taught in Stoesz as such is a known equivalent configuration of an
exterior configuration (id. at 7-8). The Examiner notes the
resulting combination would provide the steps of radially
outwardly compressing the elongated member against the tubular
due to expansion of the conforming material and radially
outwardly compressing the optical fiber against the tubular by the
elongated member (id. at 8).
Appellants argue, inter alia, that none of the applied prior
art describes positioning a fiber optic within a tubular and
radially outwardly compressing the fiber optic towards an inner
wall of the tubular (App. Br. 6). In particular, Appellants assert
that Richard discloses outward expansion of the conforming layer
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Application 14/073,395
16 to engage a surface of a formation rather than to force a fiber
optic against a tubular (Reply Br. 2). As a result, Appellants urge
that the ordinary artisan would not have employed Richard’s
outer conforming layer within a tubular because, unlike borehole
surfaces, tubulars do not have irregularities (id.). Further,
Appellants contend that even if Richard’s outer conforming layer
would compress a fiber optic, such compression would be a
radially inwardly directed force (id.). Therefore, Appellants urge
that it is unclear how the teachings are combined to teach
expanding an elongated member radially outwardly to compress a
fiber optic against a tubular (id.).
In response, the Examiner states that the prior art need not
describe radially outwardly compressing a fiber optic towards an
inner wall of the tubular (Ans. 5). Instead, the Examiner states
that such outward compression need only have been obvious to
one of ordinary skill in the art (id.). The Examiner reiterates the
conclusion that it is the combination of the prior art that provides
outward compression, rather than any one reference (id.).
The difficulty with the Examiner’s proposed combination is
that Richard’s outer conforming layer is specifically designed, as
Appellants contend, to be used on the outside of a tubular to swell
and conform to the irregularities in a borehole. The only teaching
to use such an expandable material within a tubular so as to apply
a compressive force against a fiber optic is Appellants’
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Application 14/073,395
Specification. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“A rejection based on section 103 clearly must rest on a factual
basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”).
While it may have been obvious to have provided Richard’s
outer conforming layer on the outside of Coronado’s tubular with
the fiber optic on the outside, the result would have applied a
radially inwardly compressive force against the fiber optic and
tubular. As such, the Examiner has not carried the burden of
establishing, by a preponderance of the evidence, the factual basis
for the conclusion that the claimed invention would have been
obvious. Therefore, we are unable to sustain the Examiner’s
obviousness rejection based on a combination of Coronado, Stoesz,
and Richard.
As the Examiner’s rejections of each of the remaining claims
relies on the same improper hindsight reconstruction, we likewise
do not sustain these rejections for the same reasons given above.
New Ground of Rejection, 37 C.F.R. 41.50(b)
We note that Coronado teaches radially outwardly swagable
base pipe 330 having helical channel 334 with fiber optic cable 318
therein and sleeve 322 disposed thereover, wherein base pipe 330
is swaged or expanded radially outwardly so as to mechanically
lock and sealingly engage to sleeve 322 and fiber optic cable 318
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Application 14/073,395
(Coronado, Figs. 9 and 10, Tf 32). We further note that although
Appellants assert that Coronado’s sleeve 322 is not a tubular (Ans.
5), Appellants do not support this assertion with either persuasive
technical reasoning or evidentiary showing.
Appellants fail to direct our attention to any portion of their
disclosure defining or otherwise limiting “tubular,” nor do we find
any. Therefore, this term is construed using its ordinary and
customary meaning to those skilled in the art. We find the term
“tubular” would be understood by those skilled in this art to mean
“oil-drilling equipment made from tubes”
(https://en.oxforddictionaries.com/definition/tubular, last accessed
February 27, 2018). A “tube” would generally be understood to be
“[a] long, hollow cylinder of metal, plastic, glass, etc. for holding or
transporting something, chiefly liquids or gases”
(https://en.oxforddictionaries.com/definition/tube, last accessed
February 27, 2018). Based on these definitions, we find Coronado’s
sleeve 322 is a tubular because it is oil-drilling equipment made
from a tube or hollow cylinder (Coronado Tf 1, “Downhole tools are
used in the hydrocarbon production industry”).
Coronado discloses a method of coupling optical fiber to a
tubular (sleeve) 322 wherein optical fiber cable 318 is positioned
within helical groove (channel) 334 formed in elongated member
(base pipe) 330 wherein optical fiber cable 318 is positioned at
least partially within an annular cavity defined between tubular
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Application 14/073,395
322 and elongated member 330 (Coronado Tf 32). Coronado further
discloses radially outwardly compressing elongated member 330
against tubular 322 such that optical fiber cable 318 is also
radially outwardly compressed against tubular 322 by elongated
member 330 (id.). Therefore, we find Coronado anticipates
independent claim 1, and also claim 7 (coupling the at least one
optical fiber to the elongated member), claim 8 (swaging the base
pipe requires radially expansion thereof), claim 9 (positioning the
optical fiber cable in the helical groove requires twisting the cable
around the base pipe), claim 14 (the helical groove is formed
longitudinally around the base pipe), claim 20 (swaging the base
pipe against the sleeve mechanically locks and sealingly engages
the base pipe to the sleeve thereby adhering the sleeve and base
pipe together without additional material), and claim 21 (the
optical fiber cable senses parameters such as stress exhibited by
the sleeve).
In addition, we find Coronado anticipates the fiber optic
mounting arrangement of independent claim 22 because Coronado
teaches tubular (sleeve) 322, elongated member (base pipe) 330
positioned within the tubular, and at least one optical fiber 318 at
least partially positioned between the tubular and the elongated
member and being radially outwardly compressed against the
tubular by the elongated member such that the optical fiber is
parameter transmissively mounted to the tubular (see Coronado
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Application 14/073,395
Tf 32). Moreover, we find Coronado anticipates claim 24 (the
optical fiber is positioned within the annular cavity defined
between the sleeve and the base pipe), claim 26 (the optical fiber is
positioned within the helical groove 334), and claim 30 (the optical
fiber transmits parameters such as stress, strain, temperature,
and pressure (id. Tf 1). Moreover, Coronado teaches swaging the
base pipe radially outwardly which necessarily requires building
and applying pressure within the base pipe
(http://www.efunda.com/processes/metal_processing/swaging.cfm,
last accessed February 18, 2018 (“Swaging is a process that is
used to reduce or increase the diameter of tubes and/or rods.”).
Accordingly, for the reasons given above, we find claims 1, 5,
7-9, 14, 20-22, 24, 26, and 30 are anticipated by Coronado under
35 U.S.C. § 102(a)(1). Because this is a new rejection whose fact
findings and reasoning differs from that of the Examiner, we
designate this rejection as a new ground in accordance with 37
C.F.R. § 41.50(b).
We further find Coronado teaches that the optical fiber cable
may be adhered to the base pipe using an adhesive (Coronado ^ 31
(“An adhesive 238 such as epoxy, for example, adheres the fiber
optic cable 218 to the base pipe 230 within the channel 234.”)).
While Coronado does not teach adhering the fiber optic cable 318
to the base pipe 330 within the channel 334, it would have been
obvious to one of ordinary skill in the art to apply the teaching
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Application 14/073,395
from the embodiment of Figures 7 and 8 to the embodiment of
Figures 9 and 10 in order to further secure the fiber optic cable to
the sleeve 322 and base pipe 330. As such, we conclude that claim
4 is unpatentable over Coronado under 35 U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected
Basis Reference(s) Affirmed Reversed
1-4, 7-10,
13-28, 30
§ 103 Coronado,
Stoesz,
Richard
1-4, 7-10,
13-28, 30
5, 11 § 103 Coronado,
Stoesz,
Richard,
Landry
5, 11
12 § 103 Coronado,
Stoesz,
Richard,
Nagasaki
12
New Grounds of Rejection
Claims Newly
Rejected
New Ground
Basis
Reference(s)
1, 5, 7-9, 14, 20-22,
24, 26, 28, 30
§ 102(a)(1) Coronado
4 § 103 Coronado
DECISION
Upon consideration of the record, and for the reasons given
above and in the Appeal and Reply Briefs, the Examiner’s
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Application 14/073,395
rejections of claims 1-5, 7-28, and 30 are reversed. However, for
the reasons given above and in accordance with 37 C.F.R.
§ 41.50(b), we find claims 1, 5, 7-9, 14, 20-22, 24, 26, 28, 30 are
anticipated by Coronado under 35 U.S.C. § 102(a)(1) and claim 4 is
unpatentable over Coronado under 35 U.S.C. § 103.
This decision contains a new ground of rejection pursuant to
37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg.
49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September
7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for
judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the
claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be
remanded to the examiner . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . .
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Appeal 2017-001625
Application 14/073,395
REVERSED
37 C.F.R. $ 41.50(b)
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