Appellant loses mass spec case on analysis of drilling fluid
from Ex parte ANNIE AUDIBERT
The issue in the case:
Did the Examiner reversibly err in concluding the claimed invention, in
particular controlling drilling based on the C13/C12 ratio measured from
continuously extracted constituents from continuously sampled drilling fluid,
would have been obvious over the combination of Aquilina, Bond, and Delaune?
We answer this question in the negative and affirm the Examiner’s decision
to reject claims 8-15 for the reasons expressed in the Answer.
Keller is cited:
Initially, we reiterate that one
cannot show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). Each reference cited by the Examiner must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). All of the features of the
secondary reference need not be bodily incorporated into the primary reference
(see Keller, 642 F.2d at 425) and the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of independent judgment
(see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889
(Fed. Cir. 1984)).
KSR is cited:
In that regard, combining Bond’s isotopic C13/C12 data analysis from
drilling fluid samples with Delaune’s continuous drilling fluid sampling and
constituent analysis process, especially taken with Aquilina’s teaching that
continuous monitoring during drilling was conventional in the oil industry, appears
to yield, predictably, the claimed method of analysis and measurement of
constituents carried by a well fluid during drilling operations. KSR Int’l Co. v.
Teleflex Inc., 127 S.Ct. 1727, 1739 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.”).
Also cited as to obviousness:
Transocean Offshore Deepwater Drilling, Inc. v.
Maersk Contractors USA, Inc., 617 F.3d 1296, 1304 (Fed. Cir. 2010); In re Sovish,
769 F.2d 738, 742 (Fed. Cir. 1985). No evidence of secondary considerations to
overcome the prima facie case of obviousness has been submitted.
Of the risks of not making an argument:
Appellants do not
separately argue the patentability of independent method claims 8 and 13, or of
their dependent claims, or independent apparatus claim 12. Therefore, all the
claims stand or fall with independent method claim 8. See 37 C.F.R.
§ 41.37(c)(1)(vii); Hyatt v. Dudas, 551 F.3d 1307, 1311-14 (Fed. Cir. 2008). In
any case, the lack of a separate argument constitutes a waiver of such argument,
Hyatt v. Dudas, 551 F.3d 1307, 1311-13 (Fed. Cir. 2008), because an argument
never made cannot establish prejudicial error.