US Well Services LLC

Patent Trials and Appeals Board

Aug 26, 2020

2019006056 (P.T.A.B. Aug. 26, 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.
15/235,788 08/12/2016 Jared OEHRING 047158.100021 2750
132858 7590 08/26/2020
Hogan Lovells US LLP
609 Main Street
Suite 4200
Houston, TX 77002
EXAMINER
THOMPSON, KENNETH L
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
hlusdocketing@hoganlovells.com
stephanie.mcdonough@hoganlovells.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JARED OEHRING and BRANDON NEIL HINDERLITER
____________

Appeal 2019-006056
Application 15/235,788
Technology Center 3600
____________

Before WILLIAM A. CAPP, JEREMY M. PLENZLER and
ERIC C. JESCHKE, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1 and 3–21. 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 US Well Services, LLC as the
Applicant and real party in interest. Appeal Br. 3.
Appeal 2019-006056
Application 15/235,788
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THE INVENTION
Appellant’s invention relates to supplying electric power to
components of an oil and gas well hydraulic fracturing operation. Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A fracturing system comprising:
a turbine generator having an electrical output;
an electric motor that is in electrical communication with
the electrical output;
a variable frequency drive connected to the electric motor to
perform electric motor diagnostics to prevent damage to the
electric motor;
a fracturing pump that is driven by the electric motor; and
a wireline system that is in electrical communication with
the electrical output and powered by the turbine generator.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Huber US 5,025,861 June 25, 1991
Pettigrew US 7,170,262 B2 Jan. 30, 2007
Sanborn US 2013/0306322 A1 Nov. 21, 2013
Broussard US 8,789,601 B2 July 29, 2014
Ayan US 9,051,822 B2 June 9, 2015
The following rejections are before us for review:
1. Claims 1, 4, 6, 7, 8, 9, 10, 11, 12, 13, 15, 17, 19, and 20 are
rejected under 35 U.S.C. § 103 as being unpatentable over Sanborn and
Broussard.
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2. Claims 3 and 21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Sanborn, Broussard, and Ayan.
3. Claims 5, 14, and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Sanborn, Broussard, and Pettigrew.
4. Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable
over Sanborn, Broussard, and Huber.
OPINION
Unpatentability of
Claims 1, 4, 6, 7, 8, 9, 10, 11, 12, 13, 15, 17, 19, and 20
over Sanborn and Broussard
Claim 1
The Examiner finds that Sanborn discloses the invention substantially
as claimed except for performing electrical motor diagnostics, for which the
Examiner relies on Broussard. Final Act. 2–3. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
of the invention to modify Sanborn to include a diagnostics feature. Id. at 3.
According to the Examiner, a person of ordinary skill in the art would have
done this as it achieves predictable results. Id. Implicit in the rejection is
the notion that adding such capability would be a beneficial improvement to
Sanborn.
Appellant first argues that Sanborn fails to disclose a “wireline
system” that is in “electrical communication” with an “electrical output” that
is powered by a “turbine generator.” Appeal Br. 6. Appellant asserts that
Sanborn fails to disclose a “wireline system” as claimed. Id.
In response, the Examiner states that skilled practitioners know how
to use whatever power source is available. Ans. 4.
Sanborn does not state that all of the other equipment is
powered by electricity but that one skill in the art will know
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how to deploy such equipment. One having ordinary skill in
the art would know that the wireline requires power and would
be in electrical communication with the gas turbine generator
which is the source of electrical power.
Id.
In reply, Appellant accuses the Examiner of making a “conclusory
dismissal” of the “practical realities” of wellsite operations. Reply Br. 4.
Sanborn is directed to a hydraulic fracturing system that includes
power-subsystem 11 and electric motor-driven pumping sub-system 13.
Sanborn ¶¶ 12, 17, 18, 45. In Sanborn’s system, electrical power is provided
on-site. Id. ¶ 46. Sanborn’s system provides electrical power from a
plurality of power generation units to electrical feed source 24. Id. ¶ 47,
Fig. 2. Sanborn teaches that many different types of generators can be used
and that the size of the generators will depend on a number of variables. Id.
¶ 46. Sanborn’s generators can be energized from any available source of
mechanical energy, such as a gas turbine. Id. ¶¶ 19, 26. Sanborn further
teaches that:
A variety of other equipment, tools, and the like, may be on site
as well, such as transformers, power distribution components,
switchgear (including fuses or circuit breakers), cables, hoses,
air conditioning equipment, wireline, cranes, fluid pumps, and
the like.
Id. ¶ 31.
Appellant’s arguments cannot be supported by the record before us.
A person of ordinary skill in the art would have known that electrical
equipment at a wellsite needs to be powered by a source of electricity.
Sanborn teaches just such a source of electricity. Appellant presents neither
evidence nor persuasive technical reasoning to support the position that a
skilled practitioner, armed with the teachings of Sanborn, would not have
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been able to provide electrical power to the electrical equipment disposed at
a wellsite using Sanborn’s portable, turbine powered generation means.
Indeed, Sanborn explicitly acknowledges that utilizing and powering such
equipment falls within the ambit of ordinary skill in the art.
Those familiar with drilling and fracturing operations
understand the purpose of this other equipment, as well as the
way in which it is deployed at the site.
Id. Moreover, it is well settled that a patent need not teach, and preferably
omits, what is well known in the art. Streck, Inc. v. Research & Diagnostic
Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012). An artisan is presumed to
know something about the art apart from what the references disclose. In re
Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Appellant’s arguments really go to the issue of whether Sanborn’s
teachings are enabled. To be enabled, the prior art reference must teach a
skilled artisan to make what it discloses in relation to the claimed invention
without undue experimentation. In re Antor Media Corp., 689 F.3d 1282,
1289–90 (Fed. Cir. 2012). The court, in Antor Media, maintains that
examiners, during prosecution, are entitled to a presumption that prior art
references are enabled. Id. at 1289. Such presumption shifts the burden to
demonstrate non-enablement of Sanborn onto Appellant. Id.
Here, Appellant merely offers an unsubstantiated, generic description
of what takes place during wellsite operations and a conclusory statement
that such operations are challenging. Reply Br. 4–5. However, nothing in
Appellant’s briefs and the accompanying record calls into serious question
whether Sanborn is enabled much less carries a burden of proof that has
been shifted to Appellant. On the record before us, we determine that the
Examiner’s finding that Sanborn discloses a wireline system that is in
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electrical communication with the electrical output and powered by the
turbine generator is supported by a preponderance of the evidence.
Appellant next argues that the Examiner’s rejection reflects hindsight
reconstruction. Appeal Br. 7. However, Appellant never challenges the
Examiner’s findings that: (1) Broussard discloses diagnostics; and (2)
Broussard’s diagnostics capability could have been successfully
incorporated into Sanborn’s system using only ordinary skill. See Appeal
Br. 7–8. Thus, we are at a loss to understand where the Examiner might
have needed, must less used, hindsight to formulate the subject rejection.
Built-in electrical diagnostics subsystems are ubiquitous in our modern-day
technology driven economy. One can hardly buy a new car, washing
machine, clothes dryer, or other appliance that lacks some degree of built-in
diagnostics. Since there is no dispute that Broussard teaches diagnostics or
that Broussard is combinable with Sanborn, we are left to speculate that
Appellant believes that the Sanborn reference, itself, needs to be
“reconstructed” using hindsight. This notion defies logic, reason, and
common sense. “A reference may be read for all that it teaches.” In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418–21 (2007). Here, the portions of Sanborn’s
teaching relied on by the Examiner are sufficient to render claim 1
unpatentable.
Appellant spends several pages in the Appeal Brief addressing the
Examiner’s previous Office Actions during prosecution. Appeal Br. 8–10.
However, this Appeal concerns the rejection on review before us, which is
the Final Action dated April 27, 2018. We decline Appellant’s invitation for
us to review the Examiner’s previous office actions.
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Application 15/235,788
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In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claim 1.
Claim 10
Claim 10 is an independent claim. Claims App. Appellant does not
argue for the separate patentability of claim 10 apart from arguments
presented with respect to claim 1 which we have previously considered.
Appeal Br. 10–11. We sustain the Examiner’s rejection of claim 10. See 37
C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a
waiver of arguments for separate patentability).
Claims 4, 6, 7, 8, 9, 10, 11, 12, 13, 15, 17, 19, and 20
These claims depend, directly or indirectly, from either claim 1 or 10.
Claims App. Appellant does not argue for their separate patentability apart
from arguments which we have previously considered with respect to
claims 1 and 10. Appeal Br. 11. Consequently, we sustain the Examiner’s
rejection of claims 4, 6, 7, 8, 9, 10, 11, 12, 13, 15, 17, 19, and 20. 37 C.F.R.
§ 41.37(c)(1)(iv).
Unpatentability of Claims 3, 5, 14, 16, 18, and 21
over Combinations Based on Sanborn and Broussard
These claims depend, directly or indirectly, from either claim 1 or 10
and are not separately argued. Appeal Br. 11–12. We sustain the rejection
of claims 3, 5, 14, 16, 18, and 21. 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2019-006056
Application 15/235,788
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CONCLUSION
Claims
Rejected
§ References Affirmed Reversed
1, 4, 6, 7, 8, 9,
10, 11, 12, 13,
15, 17, 19, 20
103 Sanborn, Broussard 1, 4, 6, 7, 8, 9,
10, 11, 12, 13,
15, 17, 19, 20

3, 21 103 Sanborn, Broussard,
Ayan
3, 21
5, 14, 16 103 Sanborn, Broussard,
Pettigrew
5, 14, 16
18 103 Sanborn, Broussard,
Huber
18
Overall
Outcome
1, 3–21

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).
AFFIRMED