Halliburton Energy Services, Inc.

Patent Trials and Appeals Board

May 28, 2021

2020005767 (P.T.A.B. May. 28, 2021)

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.
15/116,412 08/03/2016 Paul Joseph GANSSLE 140846-054004US 6544
127406 7590 05/28/2021
Chamberlain Hrdlicka
Halliburton Energy Services, Inc.
1200 Smith St., 14th Floor
Houston, TX 77002
EXAMINER
PATEL, NEEL G
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
05/28/2021 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):
Patents@chamberlainlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL JOSEPH GANSSLE, KRISHNA M. RAVI,
SONGHUA CHEN, and PETER JAMES BOUL
Appeal 2020-005767
Application 15/116,412
Technology Center 3600
Before DANIEL S. SONG, JOSIAH C. COCKS, and LEE L. STEPINA,
Administrative Patent Judges.
SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision to reject claims 1–9, 11, and 13–24.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). The Appellant identifies Halliburton Energy Services,
Inc. as the real party in interest. Appeal Br. 3.
Appeal 2020-005767
Application 15/116,412

2
CLAIMED SUBJECT MATTER
The claims are directed to magnetic resonance sensor system
embedded in cement. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A sensor system, comprising
a downhole casing comprising a support arm peripherally
coupled to an outside of the casing, and extending from the
casing, the support arm comprising a magnetic resonance (MR)
sensor spaced apart from the casing along the support arm and
embeddable in a cement/fluid mix composition in an annulus
external to the downhole casing and operable to monitor the
cement/fluid mix composition.
Appeal Br. 18 (Claims App.).
Independent claim 13 is directed to a borehole data transmission
system while independent claim 19 is directed to a method for creating a
sensor system. However, both of these claims include limitations
substantively similar to claim 1. Appeal Br. 19–21 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Liu US 5,167,983 Dec. 1, 1992
Chouzenoux US 2006/0005965 A1 Jan. 12, 2006
Ludwig US 2012/0241172 A1 Sept. 27, 2012
Blank US 8,461,836 B2 June 11, 2013
Walsh US 2014/0009148 A1 Jan. 9, 2014
Lachner, Jr. US 2014/0102792 A1 Apr. 17, 2014

Appeal 2020-005767
Application 15/116,412

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REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103 as
follows:
1. Claims 1, 2, 5–8, 13, 15, 17, 19–22, and 242 as being
unpatentable over Chouzenoux in view of Ludwig and Walsh. Non-Final
Act. 3.
2. Claims 3 and 11 as being unpatentable over Chouzenoux in
view of Ludwig, Walsh and Blank. Non-Final Act. 13–14.
3. Claims 4, 9, and 14 as being unpatentable over Chouzenoux in
view of Ludwig, Walsh, and Liu. Non-Final Act. 16.
4. Claims 16 and 23 as being unpatentable over Chouzenoux,
Ludwig, Walsh, Blank, and Liu. Non-Final Act. 19.
5. Claim 18 as being unpatentable over Chouzenoux in view of
Ludwig, Walsh, and Lachner. Non-Final Act. 22.
OPINION
Rejection 1: Chouzenoux in view of Ludwig and Walsh
The Examiner rejects claims 1, 2, 5–8, 13, 15, 17, and 19–22 as being
unpatentable over Chouzenoux in view of Ludwig and Walsh. Non-Final
Act. 3. As to claim 1, the Examiner finds that Chouzenoux discloses a
sensor system substantially as claimed, but fails to disclose a support arm
peripherally coupled to an outside of the casing, and does not disclose that
its sensor is a magnetic resonance sensor. Non-Final Act. 4 (citing

2 The heading of this rejection omits dependent claim 24, which depends
from claim 1. Non-Final Act. 3. However, this omission appears to be a
typographical error because claim 24 is included in the detailed discussion of
this rejection. Non-Final Act. 13.
Appeal 2020-005767
Application 15/116,412

4
Chouzenoux ¶¶ 11–31, 58–69, 90–97). The Examiner relies on Ludwig for
disclosing a support arm that is peripherally coupled to an outside of the
casing, and concludes that it would have been obvious to one of ordinary
skill in the art to modify the support arm Chouzenoux such that it is coupled
to an outside of the casing “for extending and retracting a well logging tool .
. . while downhole.” Non-Final Act. 4 (citing Ludwig Abstract, ¶¶ 33–49,
Fig. 11). The Examiner also relies on Walsh for disclosing the use of
magnetic resonance sensors in a wellbore to conclude that it would have
been obvious to use a “MR sensor taught by Walsh to determine NMR
[Nuclear Magnetic Resonance] properties of engineered flow management
structures, and to estimate engineering properties using determined NMR
properties.” Non-Final Act. 5 (citing Walsh Abstract, ¶¶ 36–45).
The Appellant argues independent claims 1, 13, and 19 together as a
group, asserting that the suggested combination of Chouzenoux with Ludwig
is improper. Appeal Br. 10, 15. Accordingly, we select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Appellant argues that Chouzenoux discloses a plug 11 with
sensing element 12 that is “embedded into and only measures properties of a
formation 22,” and “fails to teach a sensor embeddable in a cement/fluid mix
composition in an annulus external to the downhole casing and operable to
monitor the cement/fluid mix composition as claimed.” Appeal Br. 11; see
also Reply Br. 8. The Appellant also argues that Chouzenoux’s plug with its
sensing element is installed after the casing has been cemented in place such
that no monitoring of the cement/fluid mix composition could occur.
Appeal Br. 11; see also Reply Br. 7.
Appeal 2020-005767
Application 15/116,412

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The Examiner responds that claim 1 merely requires the sensor to
have the capability of being embedded, and that it “does not specify at what
stage the cement/fluid mix composition is in (i.e. cured stage or curing
stage)” such that “the teachings of Chouzenoux still meet the claim
limitation as the claim language is broad in nature.” Ans. 3–4.
In our view, the issue of whether the plug/sensor of Chouzenoux is
installed when the cement/fluid is cured or still wet is not dispositive in
deciding this appeal because we are persuaded that:
even if the cement were still a cement/fluid mixture instead of
only solid cement, modifying the sensing element 12 to
measure the cement/fluid mixture instead of formation
properties would change the principle of operation of the
embodiment of Chouzenoux as well as render Chouzenoux
unsatisfactory for its intended purpose of measuring properties
of the formation.
Appeal Br. 11–12; see also Reply Br. 8–9.
In the above regard, it cannot be disputed that Chouzenoux discloses a
sensor system that is embedded into the formation to sense “properties of an
underground formation surrounding the well,” or installed within the casing
to monitor the fluid properties within the casing. Chouzenoux Abstract,
¶¶ 4, 12, 13, 23, 26, 28, 75, Figs. 1, 2, 4, 5. As such, as the Appellant points
out, “the Examiner has still failed to address the fact that Chouzenoux does
not teach a sensor that is operable to monitor anything in the annulus
external to the casing.” Reply Br. 9. In that regard, absent from
Chouzenoux is the specifically recited “monitor[ing] the cement/fluid mix
composition” of claim 1. The Examiner’s rejection does not set forth any
reasoning with rational underpinnings as to why a person of ordinary skill in
the art would have modified Chouzenoux to “monitor the cement/fluid mix
Appeal 2020-005767
Application 15/116,412

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composition” within the annulus between the casing and the formation. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” The
Examiner also fails to address how such a modification would not render the
sensor system of Chouzenoux unsatisfactory for its intended purpose of
measuring properties of the formation or fluid properties within the casing.
The Appellant and the Examiner also disagree as to the teachings of
Ludwig and how its extendable/retractable arm could be applied to the
device of Chouzenoux. Appeal Br. 13; see also Ans. 5. However, as the
Appellant further argues, the Examiner’s application of Ludwig does not
cure the above-noted deficiency with respect to Chouzenoux. Appeal Br.
13.
Therefore, in view of the above, we reverse the Examiner’s rejection
of claim 1, as well as claims 2, 5–8, 13, 15, 17, and 19–22.

Rejections 2–5
The Appellant relies on dependency on one of the above-noted
independent claims for patentability of the rejected dependent claims, and
correctly notes that the Examiner’s application of Blank, Liu, and/or
Lachner in these rejections fails to remedy the deficiencies of the
combination of Chouzenoux and Ludwig. Appeal Br. 15–16. Therefore, we
reverse Rejections 2–5 as well.
CONCLUSION
The Examiner’s rejections are reversed.
Appeal 2020-005767
Application 15/116,412

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DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–8,
13, 15, 17,
19–22, 24
103 Chouzenoux,
Ludwig, Walsh
1, 2, 5–8,
13, 15, 17,
19–22, 24
3, 11 103 Chouzenoux,
Ludwig, Walsh
Blank
3, 11
4, 9, 14 103 Chouzenoux,
Ludwig, Walsh,
Liu
4, 9, 14
16, 23 103 Chouzenoux,
Ludwig, Walsh,
Blank, Liu
16, 23
18 103 Chouzenoux,
Ludwig, Walsh,
Lachner
18
Overall
Outcome
1–9, 11, 13–
24

REVERSED