Halliburton Energy Services Inc.

Patent Trials and Appeals Board

Mar 10, 2021

2020002315 (P.T.A.B. Mar. 10, 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.
14/787,069 10/26/2015 David Warren TEALE 7523.507US01 1052
27683 7590 03/10/2021
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
KAPLAN VERBITSKY, GAIL
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
03/10/2021 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WARREN TEALE

Appeal 2020-002315
Application 14/787,069
Technology Center 2800
Before JEFFREY T. SMITH, BRIAN D. RANGE, and LILAN REN,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–14, and 16–19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Halliburton Energy Services Inc.
Appeal Br. 2.
Appeal 2020-002315
Application 14/787,069

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to an Integrated
Computational Element (“ICE”) based optical device for real-time
temperature detection in a variety of environments including, for example,
downhole temperature measurement. Spec. 1:4–21. Claim 1 is illustrative:
1. A method utilizing an optical computing device to determine
temperature of a sample, the method comprising:
deploying an optical computing device into an environment, the
optical computing device comprising an optical element and a
detector, the optical element being a multivariate optical element
configured to mimic a regression vector of a characteristic of a
sample;
optically interacting electromagnetic radiation with a sample to
produce sample-interacted light;
optically interacting the optical element with the sample-
interacted light to generate optically interacted light which
corresponds to the characteristic of the sample;
generating a signal that corresponds to the optically-interacted
light through utilization of the detector, wherein spectral data of the
signal corresponds to temperature; and
determining a temperature of the sample based upon a spectral
shift of the spectral data caused by temperature.

Appeal Br. 11 (Claims App.).

2 In this Decision, we refer to the Final Office Action dated May 9, 2019
(“Final Act.”), the Appeal Brief filed October 22, 2019 (“Appeal Br.”), the
Examiner’s Answer dated December 9, 2019 (“Ans.”), and the Reply Brief
filed January 31, 2020 (“Reply Br.”).
Appeal 2020-002315
Application 14/787,069

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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Safinya et al. (“Safinya”) US 4,994,671 Feb. 19, 1991
Myrick et al. (“Myrick”) US 7,138,156 B1 Nov. 21, 2006
Vinegar et al. (“Vinegar”) US 7,383,877 B2 June 10, 2008
Macpherson US 8,543,336 B2 Sept. 24, 2013
Zazovsky et al. US 2004/0190589 A1 Sept. 30, 2004
Xian et al. (“Xian”) US 2007/0137292 A1 June 21, 2007
Freese et al. (“Freese”) US 2013/0032545 A1 Feb. 7, 2013
Udd US 2015/0268096 A1 Sept. 24, 2015

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 4–7, 9–14, 18, and 19 under 35 U.S.C. § 103 as obvious
over Freese, Vinegar, Myrick, and Udd. Ans. 3.
B. Claims 8 and 17 under 35 U.S.C. § 103 as obvious over Freese,
Vinegar, Myrick, Udd, and Zazovsky. Id. at 8.
C. Claim 16 under 35 U.S.C. § 103 as obvious over Freese, Vinegar,
Myrick, Udd, and Xian. Id. at 9.
D. Claims 1, 4–7, 9–14, 18, and 19 under 35 U.S.C. § 103 as obvious
over Freese, Macpherson, Myrick, and Udd. Id.
E. Claims 8 and 17 under 35 U.S.C. § 103 as obvious over Freese,
Macpherson, Myrick, Udd, and Zazovsky. Id. at 12.
F. Claim 16 under 35 U.S.C. § 103 as obvious over Freese, Macpherson,
Myrick, Udd, and Xian. Id. at 13.
G. Claims 1, 4–7, 9–14, 18, and 19 under 35 U.S.C. § 103 as obvious
over Freese, Safinya, Myrick, and Udd. Id. at 13–14.
Appeal 2020-002315
Application 14/787,069

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H. Claims 8 and 17 under 35 U.S.C. § 103 as obvious over Freese,
Safinya, Myrick, Udd, and Zazovsky. Id. at 18.
I. Claim 16 under 35 U.S.C. § 103 as obvious over Freese, Safinya,
Myrick, Udd, and Xian. Id. at 19.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues all claims as a group. See Appeal Br. 5–9. Therefore,
consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit
our discussion to claim 1, and all other claims on appeal stand or fall
together with claim 1.
For each of the Examiner’s three rejections of claim 1 (Rejections A,
D, and G above), the Examiner finds, for example, that Freese teaches using
an ICE sensor in a downhole environment, Myrick teaches using regression
vectors for multivariate statistical analysis, and Udd teaches using spectral
shift to measure temperature. See, e.g., Ans. 3–8. For each rejection, the
Examiner relies on Vinegar, Macpherson, or Safinya as teaching temperature
Appeal 2020-002315
Application 14/787,069

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monitoring. Id. at 4, 10, 12. The Examiner provides a rationale for
combining the references’ teachings so that Freese’s sensor is modified “[to]
be able to perform a regression vector for multivariate statistical analysis, as
taught by Myrick” and is modified to measure temperature as taught by
Vinegar, Macpherson, or Safinya. Id. at 4–12.
Appellant argues that claim 1 requires determining temperature using
spectral shift of a signal generated by a multivariate optical element. Appeal
Br. 5–7; Reply Br. 2–3. Appellant further argues that no reference teaches
this requirement. Appeal Br. 5–7; Reply Br. 3. Appellant’s argument does
not identify error. The Examiner’s position, as explained above, is based on
concluding that a person of skill in the art would have reason to modify the
Freese sensor based on the teachings of Myrick and Udd along with Vinegar,
Macpherson, or Safinya. Ans. 4–12. Appellant does not address Myrick’s
teachings, and Appellant does not persuasively dispute the Examiner’s
findings regarding the individual references. Appellant agrees that Freese
uses “shifts in spectral data of a multivariate optical computing device to
measure sample characteristics.” Appeal Br. 8. The Examiner modifies
Freese to measure temperature based on Vinegar, Macpherson, or Safinya;
Appellant’s argument that Freese by itself does not measure temperature is
unpersuasive. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”).
Appellant also argues that the Examiner’s combination of Freese’s
teachings with the teachings of either Vinegar, Macpherson, or Safinya is
improper because the Vinegar, Macpherson, or Safinya devices are different
Appeal 2020-002315
Application 14/787,069

6
than the Freese device and that use of these devices would impermissibly
cause Freese to not operate for its intended purpose. Appeal Br. 7–8. The
Examiner, however, does not rely on the Vinegar, Macpherson, or Safinya
devices to reach claim 1. Ans. 20–22. Rather, the Examiner relies on these
three references as providing a reason to modify Freese so that it is capable
of determining downhole temperature. Id. Appellant does not persuasively
dispute this rationale and, instead, unpersuasively argues against bodily
incorporation of Vinegar, Macpherson, or Safinya devices into Freese. In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“To justify combining reference
teachings in support of a rejection it is not necessary that a device shown in
one reference can be physically inserted into the device shown in the
other.”).
Because Appellant’s arguments do not identify error, we sustain the
Examiner’s rejections.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–7, 9–
14, 18, 19
103 Freese, Vinegar,
Myrick, Udd
1, 4–7, 9–
14, 18, 19

8, 17 103 Freese, Vinegar,
Myrick, Udd, Zazovsky
8, 17
16 103 Freese, Vinegar,
Myrick, Udd, Xian
16
1, 4–7, 9–
14, 18, 19
103 Freese, Macpherson,
Myrick, Udd
1, 4–7, 9–
14, 18, 19

8, 17 103 Freese, Macpherson,
Myrick, Udd, Zazovsky
8, 17
Appeal 2020-002315
Application 14/787,069

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16 103 Freese, Macpherson,
Myrick, Udd, Xian
16
1, 4–7, 9–
14, 18, 19
103 Freese, Safinya,
Myrick, Udd
1, 4–7, 9–
14, 18, 19

8, 17 103 Freese, Safinya,
Myrick, Udd, Zazovsky
8, 17
16 103 Freese, Safinya,
Myrick, Udd, Xian
16
Overall
Outcome
1, 4–14,
16–19

TIME PERIOD FOR RESPONSE
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