Ex parte Thompson et al.

Board of Patent Appeals and Interferences

Apr 7, 1998

07696059 (B.P.A.I. Apr. 7, 1998)

Application for patent filed May 6, 1991.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ARTHUR H. THOMPSON and GRANT A. GIST
_____________
Appeal No. 93-2518
Application 07/696,0591
______________
ON BRIEF
_______________
Before MEISTER, JERRY SMITH and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
final rejection of claims 1-29, which are all the claims pending
in the application.
Appeal No. 93-2518
Application 07/696,059
2
Appellants’ invention is a method for geophysical
prospecting of a subsurface region. Claim 1 is exemplary of the
subject matter on appeal:
1. A method for geophysical prospecting of a
preselected subsurface region, comprising;
generating an electric field of sufficient strength to
penetrate said preselected region to a depth of interest,
converting said electric field to a seismic wave in at
least one porous subsurface earth formation in said preselected
region containing at least one fluid, and
detecting said seismic wave with a seismic detector.
THE REFERENCES
The following prior art was relied on by the examiner
in support of new grounds of rejections made by the examiner in
the examiner’s answer:
Evjen 2,172,557 Sep. 12, 1939
Taylor, Jr. 2,172,778 Sep. 12, 1939
Zimmerman, Jr. 3,392,327 July 9, 1968
Tsao et al. (Tsao) 3,660,754 May 2, 1972
Thompson 4,904,942 Feb. 27, 1990
Morrison, Jr. et al. (Morrison), “Electrokinetic Energy
Conversion in Ultrafine Capillaries,” The Journal of Chemical
Physics, Vol. 43, No. 6, (Sept. 1965), pages 2111-2115.
THE REJECTIONS
Claims 1, 8-12, 14, 16-18, 22, 23 and 25-29 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Thompson or Zimmerman in view of Morrison.
Appeal No. 93-2518
Application 07/696,059
It appears that claim 13 was inadvertently left out of2
the statement of this rejection. We will assume, as did the
appellants (reply brief at page 3) that claim 13 is included in
this rejection.
3
Claims 2-7, 15, 19-21 and 24 stand rejected under 35
U.S.C. § 103 as being unpatentable over Thompson or Zimmerman in
view of Morrison as applied to claim 1 and further in view of any
one of Taylor, Tsao or Evjen. 2
Rather than reiterate the examiner’s full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and the appellants regarding the
rejections, we make reference to the Examiner’s Answer (Paper No.
13) and the Supplemental Examiner’s Answer (Paper No. 21) for the
examiner’s complete reasoning in support of the rejections and to
Appellants’ Brief (Paper No. 11), Reply Brief (Paper No. 14) and
the Supplemental Reply Brief (Paper No. 22) for the appellants’
arguments thereagainst.
OPINION
In reaching our conclusions in this case, we have given
careful consideration to appellants’ invention as described in
the specification, the appealed claims, to the prior art applied
by the examiner, the evidence submitted by the appellants and to
the respective viewpoints advanced by appellants and the
Appeal No. 93-2518
Application 07/696,059
4
examiner. These considerations lead us to conclude that the
examiner’s rejections of claims 1-29 should not be sustained.
Our reasons for this determination follow.
Turning first to the rejection of claims 1, 8-12, 14,
16-18, 22, 23 and 25-29 under 35 U.S.C. § 103 as unpatentable
over Thompson or Zimmerman in view of Morrison, we agree with the
examiner that:
...Thompson and Zimmerman, Jr. ...each
discloses a method and apparatus for
geophysical prospecting of a subsurface
region by generating acoustic energy in the
subsurface region and detecting, at a remote
surface region, the electromagnetic energy
that is formed by a conversion of the
acoustic energy to electromagnetic energy at
a porous interface. [examiner’s answer at
page 5]
Regarding the recitation in claim 1 that an electric
field is generated to penetrate a preselected region to a depth
of interest and later converted to a seismic wave, the examiner
relies on the following teaching of Morrison:
When an axial electric field is impressed on
a fluid electrolyte in a fine capillary tube
and the flow is restricted, a pressure
difference appears between the ends of the
tube. Conversely, when an axial pressure
gradient is impressed on the fluid and the
electrical current is restricted, an
electrical potential difference appears. In
the first of these effects a conversion of
electrical into pumping power occurs. (page
2111, Col. 1) (Emphasis added).
Appeal No. 93-2518
Application 07/696,059
5
We note that Morrison also discloses that the conversion is
favored by small tube radii (Page 2111, Col. 2).
The examiner is of the opinion that:
Morrison clearly implies that the analysis of
a conversion of electromagnetic energy to
pressure variations or electro-
mechanical energy (of which acoustic and
seismic energy are) and vice-versa, the
conversion of electromechanical energy to
electromagnetic energy are not unlike each
other. [Examiner’s Answer at page 5].
We will not sustain this rejection.
It is the burden of the examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the expressed or implied suggestions found
in the prior art. See In re Sernaker, 702 F.2d 989, 994, 217
USPQ 1, 5 (Fed. Cir. 1983).
We agree with the appellants that Morrison does not
suggest any application to geophysical prospecting but rather is
limited to pump/generator devices. In our view, the only
suggestion for combining the teachings of Morrison with either
Thompson or Zimmerman in the manner proposed by the examiner
stems from impermissible hindsight knowledge derived from the
appellants’ own disclosure. Accordingly, we will not sustain the
rejection of claims 1, 8-12, 14, 16-18, 22, 23 and 25-29 under 35
Appeal No. 93-2518
Application 07/696,059
6
U.S.C. § 103 as unpatentable over Thompson or Zimmerman in view
of Morrison.
The rejection of claims 2-7, 15, 19-21 and 24 is based
on the combination of Morrison with either Thompson or Zimmerman
and further in view of Taylor, Tsao or Evjen. We have reviewed
the disclosures of Taylor, Tsao and Evjen but they do not cure
the deficiencies noted above for the combination of Morrison with
either of Thompson or Zimmerman. Therefore, we will likewise not
sustain this rejection.
The decision of the examiner is reversed.
REVERSED
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
S. J. CASAMASSIMA
EXXON PRODUCTION RESEARCH COMPANY
Appeal No. 93-2518
Application 07/696,059
7
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