HALLIBURTON ENERGY SERVICES INC.

Patent Trials and Appeals Board

Sep 28, 2020

2019003165 (P.T.A.B. Sep. 28, 2020)

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.
14/443,940 05/19/2015 Paul F. Rodney 7523.498US01 4584
27683 7590 09/28/2020
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
TERRELL, EMILY C
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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 PAUL F. RODNEY and DAVID LYLE
Appeal 2019-003165
Application 14/443,940
Technology Center 2600
Before NORMAN H. BEAMER, SCOTT E. BAIN, and STEVEN M.
AMUNDSON, Administrative Patent Judges.

BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Halliburton
Energy Services, Inc. Appeal Br. 2.
Appeal 2019-003165
Application 14/443,940

2
BACKGROUND
The Claimed Invention
The invention relates to electromagnetic telemetry and, more
specifically, to a “downhole telemetry system” in which electrically
insulating material is placed around one or more portions of a well string.
Spec. 1. According to the Specification, applying the insulating material
will “extend the range of the telemetry system, increase the telemetry rate,
and/or reduce downhole power requirements.” Spec. 1.
Claims 1, 7, and 14 are independent. Claim 1 is illustrative of the
invention and the subject matter in dispute, and is reproduced below:
1. A method for utilizing an electromagnetic telemetry
system in a downhole well, the method comprising:
providing a well string comprising one or more tubulars
attached to a bottom hole assembly, the bottom hole assembly
comprising at least one of an electrical current launching device
or a receiver;
applying electrically insulating material around an exterior
of one or more portions of the well string, the one or more
portions being above or below the at least one of the electrical
current launching device or the receiver;
deploying the bottom hole assembly into the well;
conducting an electromagnetic telemetry operation using
the bottom hole assembly; and
utilizing the electrically insulating material to reduce at
least one of:
short circuits from the current launching device to casing;
or
current leakage from the well string into the casing or
formation along the well.

Appeal Br. 8 (Claims Appendix).
Appeal 2019-003165
Application 14/443,940

3

References
The references relied upon by the Examiner are:
Name Reference Date
Lovell et al.
(“Lovell”)
US 2005/0167098 A1 Aug. 4, 2005
Homan US 2010/0071794 A1 Mar. 25, 2010
Mazyar US 2013/0126185 A1 May 23, 2013

The Rejections on Appeal
Claims 1, 3, 6, 7–12, 14–15, and 17 stand rejected under 35 U.S.C.
§ 102 as anticipated by Homan. Final Act. 2–6.
Claims 1–3 and 5–17 stand rejected under 35 U.S.C. § 102 as
anticipated by Lovell. Final Act. 6–10.
Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over
Lovell and Mazyar. Final Act. 10–13.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments that Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). For the reasons discussed below, Appellant has not
persuaded us of error. We adopt as our own the findings and reasons set
forth in the rejections and in the Examiner’s Answer, and we provide the
following for highlighting and emphasis.
Appeal 2019-003165
Application 14/443,940

4
Anticipation by Homan (Claims 1, 3, 6, 7–12, 14–15, 17)
Appellant argues the Examiner erred in finding Homan discloses an
“electromagnetic telemetry system” and “electrically insulating material” for
the telemetry system, as recited in claim 1. Appeal Br. 4–5; Reply Br. 2.
Specifically, Appellant argues that the Examiner “incorrectly equates
[Homan’s disclosure of] ‘logging’ with ‘telemetry.’” Reply Br. 2.
According to Appellant, one of ordinary skill would understand “logging” as
being limited to “obtaining downhole formation measurements,” while
telemetry refers to “communication between the surface and downhole
string.” Id. We, however, are unpersuaded of error.
As the Examiner finds, Homan discloses “telemetry” for
communication in a well, utilizing “electromagnetic” radiation transmitted
by an “electromagnetic transmitter” and received by an “electromagnetic
receiver.” Homan ¶¶ 9, 21–23; Ans. 2–3. Although Homan also
characterizes the invention as a “well logging instrument,” in Homan that
term does not exclude electromagnetic telemetry, which is described
throughout the disclosure. See, e.g., Homan ¶¶ 9, 21, 36–37. Similarly,
Appellant’s Specification defines “telemetry” broadly as “transmit[ing] and
receiv[ing] electromagnetic signals for a variety of purposes.” Spec. 1.
Appellant has submitted no declaration or other evidence regarding a
different understanding of “telemetry” by a person of ordinary skill in the
art.
Accordingly, we are unpersuaded by Appellant’s argument that the
Examiner erred in finding Homan discloses an “electromagnetic telemetry
system.”
Appeal 2019-003165
Application 14/443,940

5
We are also unpersuaded by Appellant’s argument regarding
“insulating material.” As the Examiner finds, Homan discloses multiple
examples of applying electrically insulating material around various portions
of a well string. Ans. 6–8. Paragraph 28 of Homan discloses, for example,
“inner fiber layer 52 as explained will provide the tube 40 with substantial
hoop strength. Various examples may include a plurality of fiber reinforced
layers disposed outside the conduit 54 of alternating composition of glass
fiber and other composition fiber.” Paragraph 29 of Homan discloses, “[i]n
other examples, individual fibers may be embedded in matrix, and wound
around the exterior of the tube. In still other examples, matrix may be pre-
applied to the exterior of the tube, and one or more fibers wound about the
exterior of the tube.” Paragraph 32 of Homan discloses, “[a]nother example
of a composite tube structure is shown in FIG. 5. The tube structure 40B in
FIG. 5 includes a plastic or ceramic inner concluit54 as in the previous
examples. The conduit 54 may be surrounded on its exterior by one or more
layers 68 of woven glass cloth or composite woven glass/carbon (or other
composition) fiber cloth.”
The Examiner also cites several other examples of insulating material
in Homan that read on the disputed claim limitation. Ans. 6–8 (citing
Homan ¶¶ 21, 27–36, Figs. 2, 3, 8).
Accordingly, we are unpersuaded of error regarding the anticipation
rejection of claim 1 over Homan. For the same reasons as discussed above
(including the Examiner’s extensive citations to Homan’s disclosures
regarding insulating material), we are also unpersuaded for error regarding
claims 6 and 17. Ans. 9–11.
Appeal 2019-003165
Application 14/443,940

6
The remaining claims are not argued separately. We, therefore,
sustain the Examiner’s rejection of claims 1, 3, 6, 7–12, 14–15, and 17 as
anticipated by Homan.
Anticipation by Lovell (Claims 1–3, 5–17)
Appellant argues that the Examiner erred in finding Lovell discloses
“electrically insulating material,” as recited in claim 1. Appeal Br. 6.
Specifically, Appellant argues that Lovell only uses an insulating layer for
“providing a hydraulic seal” against leakage of fluid, whereas claim 1 recites
using insulating material to “prevent short circuits and current leaks.” Id.
We, however, are unpersuaded of error.
As the Examiner finds, Lovell discloses using a “non-conductive”
layer to “enhance the electrical connection” (i.e., prevent current leak) and
extend the connection “over greater distance.” Lovell ¶¶ 43–44; Ans. 11–
12. One of ordinary skill in the art would understand a “non-conductive”
insulating layer, as in Lovell, to prevent short circuits because, by definition,
a “non-conductive” layer would interrupt electrical connection points. Ans.
11–12. The Examiner provides a detailed explanation of various
embodiments of a “non-conductive layer” disclosed by Lovell, and the
advantageous electrical properties of such a layer. Ans. 11–12 (citing Lovell
¶¶ 41–51, Figs. 3, 4). Appellant does not present any evidence rebutting the
Examiner’s findings, and we are not persuaded of error.
For the same reasons, we are not persuaded the Examiner erred in
rejecting dependent claims 6 and 17. Ans. 13; Lovell ¶¶ 12–13.
Appeal 2019-003165
Application 14/443,940

7
The remaining claims are not argued separately. We, therefore,
sustain the Examiner’s rejection of claims 1–3 and 5–17 as anticipated by
Lovell.
Obviousness over Lovell and Mazyar (Claim 4)
Appellant does not argue the obviousness rejection of dependent
claim 4 separately from the anticipation rejection of claim 1 over Lovell, as
discussed above. Accordingly, for the same reasons as discussed above, we
are unpersuaded of error regarding the obviousness rejection of claim 4, and
we sustain that rejection.
CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–17.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 6, 7–
12, 14–15,
17
102 Homan 1, 3, 6, 7–12,
14–15, 17

1–3, 5–17 102 Lovell 1–3, 5–17
4 103 Lovell, Mazyar 4
Total
Outcome
1–17

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED