Ex Parte Stover

Board of Patent Appeals and Interferences

May 22, 2012

11148735 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONNIE STOVER
____________

Appeal 2009-014672
Application 11/148,735
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ronnie Stover (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 24-28. Appellant cancelled claims 1-23.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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The Claimed Subject Matter
The claimed subject matter is directed to a system for creating greater
efficiency during perforating and fracturing procedures in a well by
“utiliz[ing] a vehicle having a crane for lowering and raising fracturing and
perforating equipment in a wellbore,” and “a wireline winch is mounted
directly to the crane to facilitate the run in of conductive wireline for
perforating procedures” in order to facilitate sequential perforating and
fracturing procedures. Spec. 2. Claim 24 (the sole independent claim),
reproduced below, is representative of the subject matter on appeal.
24. A system for facilitating a process in a well,
comprising:
a crane truck having a cab and a crane
mounted rearwardly of the cab, the crane having a
cable attachable to fracturing equipment to deliver
the fracturing equipment into the well; and
a wireline winch affixed to the crane to
simultaneously deliver a wireline into a well.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 24-27 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Koopmans (US 5,836,385, issued Nov. 17, 1998), Boyd (US
2005/0279512 A1, published Dec. 22, 2005), and Tolman (US 6,543,538
B2, issued Apr. 8, 2003).
Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Koopmans, Boyd, Tolman, and Shaw (US 6,549,139 B2, issued Apr. 15,
2003).

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OPINION
Obviousness based on Koopmans, Boyd, and Tolman
The Examiner finds that Koopmans discloses claim 24’s system for
facilitating a process in a well including a crane truck having a cab (Fig. 1),
a crane mounted rearwardly of the cab (Fig. 1), and a wireline winch 24
affixed to the cab; however, Koopmans “does not disclose a separate cable
attachable to fracturing equipment to deliver the fracturing equipment into
the well.” Ans. 3. The Examiner turns to Boyd to teach a system that “may
include multiple wirelines (considered synonymous with cable in such
context) delivered into the well simultaneously (paragraphs 14 and 37).”
Ans. 3-4. Appellant argues that “the Boyd reference provides absolutely no
disclosure or teaching related to surface deployment systems, and . . . related
to a crank truck with a combined crane and wireline winch affixed to the
crane to simultaneously deliver a wireline into a well.” Br. 4.
We are not persuaded by Appellant’s argument with respect to Boyd.
First, Appellant’s arguments with respect to Boyd are attacking Boyd
individually. One cannot show nonobviousness by attacking references
individually where the rejections are based on a combination of references.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller,
642 F.2d 413, 426 (CCPA 1981). Here, the Examiner finds that Koopmans
teaches the structure which Appellant argues that Boyd is lacking.
Second, Appellant is arguing an incorrect standard with respect to the
claim language of “to simultaneously deliver a wireline into the well.” This
claim language is a recitation of intended use. As such, the combined
references need not teach this claim language, but rather the resulting
structure from the combination of Koopmans, Boyd, and Tolman must be
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capable of performing the use. We note that the Examiner found that the
combination of Koopmans, Boyd, and Tolman is capable of performing the
recited intended use. “It is well settled that the recitation of a new intended
use for an old product does not make a claim to that old product patentable.”
See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Thus, once the
Examiner establishes a reasonable basis that the product is inherently
capable of the claimed use, the burden shifts to the applicant to show that the
prior art structure does not inherently possess the functionally claimed
limitations of the claimed product. Id. at 1478. Koopmans’ system for
facilitating a process in a well, as modified by Boyd’s Figure 4 apparatus 88
and Tolman’s fracturing equipment (select-fire perforating device 101),
appears reasonably capable of simultaneously delivering a wireline, along
with a cable attachable to fracturing equipment, into a well. Thus, the
Examiner’s finding that the resulting apparatus from the combination of
Koopmans, Boyd, and Tolman is capable of the use described and claimed is
reasonable. Further, Appellant has not alleged, much less shown, that the
system from the combination of Koopmans, Boyd, and Tolman is not
capable of performing the use of “simultaneously deliver[ing] a wireline into
the well” as called for in claim 24. Thus, Appellant’s argument does not
point out error in the Examiner’s rejection.
The Examiner also finds that Boyd is “silent as to fracturing
equipment” and therefore, the Examiner turns to Tolman for the teaching of
“a cable attachable to fracturing equipment (107) to deliver fracturing
equipment into the well (fig 3).” Ans. 4. Appellant alleges that Tolman
“describes a conventional system in which a wireline 107 is deployed
separately with respect to the crane 6.” Br. 5. Hence, Appellant argues that
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Tolman “provides no disclosure or teaching regarding combination of the
conventionally separate fracturing and wireline deployment procedures.” Id.
We are not persuaded by Appellant’s argument with respect to
Tolman for the same reason as discussed supra with respect to the Boyd
reference, i.e., Appellant appears to be attacking Tolman individually, but
one cannot show nonobviousness by attacking references individually where
the rejections are based on a combination of references. See Merck at 1097;
Keller at 426. Since Appellant has failed to address the Examiner’s
proposed combination of Koopmans, Boyd, and Tolman, we do not find
error in the Examiner’s rejection for the reason articulated by Appellant.
Appellant also argues that Koopmans and Tolman “confirm the
traditional approach in which separate units are used for deploying
fracturing equipment and wireline” and thus, combining Boyd with
Koopmans and Tolman “provides absolutely no additional teaching
contradictory to the use of separate units.” Br. 5.
We cannot agree because Appellant’s argument starts with a flawed
premise. Tolman teaches deploying fracturing equipment (select-fire
perforating device 101) via wireline 107. See Fig. 3 and col. 3, ll. 21-23.
Thus, it is not clear how Tolman could confirm the traditional approach of
deploying fracturing equipment and wireline from separate units when
Tolman deploys fracturing equipment (select-fire perforating device 101) via
wireline 107 and thus, both the fracturing equipment and the wireline are
deployed using the same unit. Accordingly, we do not find error in the
Examiner’s rejection for the reason articulated by Appellant.
Appellant also argues that even if Koopmans, Boyd, and Tolman
could be combined, the combination fails to disclose all the elements of
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claim 24, because “none of the cited references, taken alone or in
combination, provides any disclosure, teaching or suggestion related to ‘a
wireline winch affixed to the crane’ to ‘simultaneously’ deliver a wireline
into the well as fracturing equipment is delivered into the well via the
crane.” Br. 5.
We disagree. First, the Examiner found that Koopmans teaches a
wireline winch (winch drum 24) affixed to the crane. Ans. 3. Second, for
the same reason as discussed supra with respect to Boyd, the Examiner’s
finding that the resulting apparatus from the combination of Koopmans,
Boyd, and Tolman is capable of the use described and claimed is reasonable
and Appellant has not alleged that the system from the combination of
Koopmans, Boyd, and Tolman is not capable of performing the use of
“simultaneously deliver[ing] a wireline into the well” as called for in claim
24. Thus, Appellant’s argument does not point out error in the Examiner’s
rejection.
Finally, with respect to the combination of Koopmans, Boyd, and
Tolman, the Examiner concludes that:
it would have been obvious to one of ordinary skill
at the time of invention to provide the system of
Koopmans with an additional wireline or cable
delivery capacity, as suggested by Boyd, since
applying a known technique (the additional or
second wireline/cable of Boyd) to improve a
known device (the system of Koopmans) to yield
predictable results is considered obvious to one of
ordinary skill. [and,] . . . to utilize such a modified
system as above with fracturing equipment, as
taught by Tolman et al., since the simple
substitution of one known element (a generic
wireline tool as used in either Koopmans or Boyd)
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for another (the fracturing equipment of Tolman et
al.) to obtain predictable results is considered
obvious to one of ordinary skill.

Ans. 4. Appellant argues that none of Koopmans, Boyd, and Tolman
“provides any motivation or suggestion for combining the teachings of the
references in the manner set forth in the rejection.” Br. 5. Appellant also
argues that “[t]he only description and guidance for the unique combination
comes from the present application itself, and therefore the combination of
the cited references is improper.” Br. 6.
We are not persuaded by Appellant’s arguments. The Supreme Court
has stated that “the simple substitution of one known element for another” or
“the mere application of a known technique to a piece of prior art ready for
the improvement” generally will be obvious unless the substitution or the
application of the known technique would have been beyond the level of
ordinary skill in the art; or the results of the substitution or the application of
the known technique would not have been predictable by one of ordinary
skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416-417 (2007).
Appellant has not explained why the Examiner’s proposed modification of
Koopmans by Boyd involves more than the mere application of a known
technique to a piece of prior art ready for improvement by showing that the
application of the known technique would have been beyond the level of
ordinary skill in the art or the application of the known technique would not
have been predictable by one of ordinary skill in the art. Appellant has also
not explained why the Examiner’s proposed modification of the Koopmans
and Boyd combination by Tolman involves more than a simple substitution
of one known element for another by showing that the substitution would
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have been beyond the level of ordinary skill in the art or the result of the
substitution would not have been predictable by one of ordinary skill in the
art. Thus, Appellant has failed to show error in the Examiner’s combination.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 24, and claims 25-27 dependent thereon, under 35 U.S.C.
§ 103(a) as unpatentable over Koopmans, Boyd, and Tolman.
Obviousness based on Koopmans, Boyd, Tolman, and Shaw
Claim 28 depends upon independent claim 24 and recites a camera to
monitor operational aspects of the crane or the wireline winch. Br., Clms.
App’x. The Examiner cites Shaw to teach the subject matter of claim 28.
Ans. 5. Appellant sets forth the same unpersuasive arguments as discussed
supra with respect to independent claim 24 and alleges that Shaw “fails to
obviate the deficiencies of disclosure found in the other cited references, as
discussed above.” Since we found no deficiencies in the combination of
Koopmans, Boyd, and Tolman with respect to independent claim 24, we are
not persuaded by Appellant’s argument and we sustain the Examiner’s
rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable over
Koopmans, Boyd, Tolman, and Shaw.

DECISION
We affirm the Examiner’s rejections of claims 24-28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).
AFFIRMED
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