COMMISSIONERS DECISION
EXTENSION OF MONOPOLY: Sonic Well Logging
Claims were rejected as not being patentably different frown claim 17 of the
applicants Canadian Patent to the same inventor. The claims contain different
terms which in some respects are broader in scope and in other respects are
directed to different functions than the patent claims.
Final Action: Reversed.
**********************
This decision deals with Applicant's request that the Commissioner of Patents
review the Examiner's Final Action on application 308,913 (Class 349-7). The
application was filed August 8, 1978, by Schlumberger Canada Ltd., and is
entitled METHOD AND SYSTEM FOR SONIC WELL LOGGING. The inventor is John D.
Ingram. The Examiner in charge issued a Final Action on June 14, 1979 refusing
the application.
The application relates to a method for generating displays of sonic waveforms
derived from an acoustic investigation of a borehole. Figure 1 of the
application, reproduced below, shows apparatus used in acoustic borehole logging
to produce a display in the form of a visual log 88. A tool 10 is suspended in
a borehole and includes a transmitter 16 which produces sonic pulses, and a
receiver 18 which picks up the waveforms which move not only along the borehole
but also through the formation surrounding it.
<IMG>
The waveforms are sent via cable 12 to panel 24, and from there to a signal
processor and recorder 86, and also to closing time gate 26. Panel 24 also
applies a signal representative of the firing time of transmitter 16 to timing
control 64, and this control sends an enabling window pulse 60 to time gate 26.
This pulse permits the waveform segment which occurs during the pulse to move
through the gate to a variable band pass filter 66.
Control 64 also generates a delay of duration of the wave, and at the end of the
delay the time gate allows the remaining waveform to reach filter 66. The
output from the filter is applied to an energy detector 82 which in turn
provides an energy amplitude signal 84 representative of the late arriving wave
in the filter 66. This energy signal is applied to the signal processor and
recorder 86 together with the depth signal on line 54 and the waveform from
panel 24. The processor and recorder produces the log 88. The Stoneley waves,
which are included in late arrival waves, appear as wave plot 100. The drop in
amplitude at 114 of the Stoneley wave is interpreted as indicating a narrow
altered formation zone in the borehole.
We also produce figure 14 below to illustrate that the signal processor of the
system has the capability to process the signals it receives, into different
output forms, viz. digital tape, display and plotter record.
(see fig I)
In the Final Action the Examiner rejected the claims of the application as not
being patentably different from claim 17 of Applicant's Canadian patent
1,052,465 by the same inventor. In making his rejection the Examiner said:
...
Claim 17 of the patent depends on claims 1, 7 and 15. Claim
1 defines the waveform as being "derived from an acoustic
investigation". Claim 7 recites the step of "producing a
waveform representative of acoustic waves excited in a
borehole by a sonic pulse". Claim 15 defines the waveform
as "representative of acoustic waves excited by the acoustic
pulse in the borehole". Thus the application uses the
adjective "sonic" to describe the waveform while the patent
uses the adjective "acoustic". Webster's dictionary defines
"sonic" as "utilizing, produced by, or relating to sound
waves", and defines "acoustic" as "of or relating to sound
waves". There is no distinction between the terms. If
applicant wishes to argue that there is a distinction he is
required to indicate where this is set out in the
application.
....
Claim 17 recites the step of recording. The recorder is
defined on page 19 line 5 to line 7 of the application (page
22 line 5 of the patent) as forming log 88 which is defined
on page 19 line 19 of the application (page 22 line 19 of
the patent) as a visual log. Thus as supported by the
disclosure the step of recording in claim 17 is the
formation of a display. The step of recording in claim 17
is not the formation of a non-displayable record such as a
magnetic tape. Therefore claim 17 of the patent and claim 1
both specify the formation of a display.
...
Claim 17 as dependent on claims 1, 7 or 15 recites late
arrival waves which is a broader term than Stoneley wave.
(see page 7 line 21 of the application: "The use of late
arrival waves such as Stoneley waves"). Thus dependent
claim 2 in the application is merely making a selection from
the class of waves recited in the claims the patent (it is
noted that claim 11 of the patent recites Stoneley waves).
Since Stoneley waves are merely described as an example of
late arrival waves on page 4 line 9 of the application any
display of Stoneley waves would infringe claim 17 of the
patent. Thus claim 2 of the application does not encompass
anything not encompassed by claim 17 of the patent.
...
Applicant states in his letter that claim 1 of the
application is directed to a method for generating a display
of sonic waveforms whereas claim 17 of the patent is
directed to a method for extracting a late arrival wave from
a waveform. It is true that claims 1, 7 and 15 of the
patent are directed to a method of extracting a late arrival
wave from a waveform. However claim 17 which depends on
these claims is directed to the step of recording the wave-
form which has already been extracted by the method recited
in claims 1, 7 and 15. Thus claim 17 does not recite part
of the extraction process and hence is not directed to that
process. Claim 17 is directed to the recording of the wave-
form. Since, as shown above, the recording is disclosed as
a visual log claim 17 is directed to the formation of a dis-
play of the waveform.
Applicant has only pointed out differences in terminology
between claim 17 of the patent and the claims of the appli-
cation. To overcome the rejection applicant will have to
show what embodiment could infringe the claims of the appli-
cation without infringing claim 17 of the patent. Failing
that, allowance of the present application would extend the
monopoly granted to the applicant by Canadian Patent
1,042,651. Since any allowable disclosed subject matter has
been claimed in the parent application (now Canadian Patent
1,052,465) and in the divisional Canadian Patent 1,041,651
no amendment to overcome the above objection appears pos-
sible.
...
In presenting his case for allowance of the application, in his response of
April 20, 1979, Applicant cancelled claim 5 and argued (in part):
...
Claim 17 of Canadian Patent 1,052,465 depends from any one
of independent claims 1, 7 and 15. Claims 1 and 7 include a
limitation calling for production of a waveform which in-
cludes a wavelength substantially exceeding the diameter of
the bore hole. Claims 1, 7 and 15 all contain the limita-
tion that the late arrival is extracted "from a preselected
frequency segment of the waveform". Neither of these
limitations is present in claims 1 and 2 of the present ap-
plication and only the latter is recited in claim 3. Thus,
claims 1-4 are believed patentable over claim 17 of the
patent. Claim 5 has, however, been cancelled.
The Examiner suggested that it would be necessary to show
what embodiment could infringe the claims of the application
without infringing claim 17 of the patent. If the wave-
length does not exceed the diameter of the bore hole, such
an embodiment would not infringe the patent but would in-
fringe the application. Also, to infringe the patent, the
late arrival has to be extracted from a pre-selected fre-
quency segment of the waveform whereas, in the application,
the late arrival could be selected in some other manner, not
necessarily from a pre-selected segment.
...
The issue before the Board is whether or not the claims in the application
differ patentably from certain claims of Applicant's Canadian patent 1,052,465.
Claim 1 of this application reads:
A method for generating a display of sonic waveform
generated in an acoustic investigation of a borehole
comprising the steps of producing a sonic waveform having a
preferentially enhanced late arrival; extracting the late
arrival; and recording the extracted late arrival as a
function of depth to form said display.
Claims 1 and 17 of the patent read:
1. A method for extracting a late arrival wave from a waveform
derived from an acoustic investigation of a borehole
comprising the steps of:
producing a waveform having a preferentially enhanced late
arrival characterized by a wavelength which substantially
exceeds the diameter of the borehole; and extracting the
late arrival from a preselected frequency segment of the
waveform.
17. The method of and one of Claims 1, 7 or 15 further
comprising the step of recording the extracted late arrival
as a function of depth.
In the first action on this divisional application, the objection was made that
its claims are not patentably different from claim 17 of application 295,834,
now Patent 1,052,465, which was also a divisional application of application
239,560; but we note that no objection was made against the claims of
application 295,834.
In comparing the first recited step in application claim 1 to that in the
present claim 1 of Patent 1,052,465, we find these steps differ in two
respects. In the application the step of producing a waveform includes the word
'sonic' in referring to the waveform, but excludes the limitation of the
wavelength exceeding the diameter of the borehole found in Claim 1 of the
patent. There is therefore a material difference between the first step of the
processes claimed in the patent and this application.
In the second step in claim 1 of the application it is merely stated that the
late arrival wave is extracted, which is a broader term than the one in claim 1
of the patent.
Application claim 1 also contains a third step, viz., recording the extracted
late arrival (of step two) as a function of depth to form the display. By
adding a statement that the display called for in the preamble is formed, the
third step defines a feature not found in patent claim 17. Further, the term
display, as found in application claim 1, defines a specific form that is
provided by the signal processor.
We find that application claim 1 contains different terms which in some respects
are broader in scope and in other respects are directed to different functions
than patent claims 1 and 17.
Considering next application claim 2 as dependent on claim 1, we observe that it
is limited to the late arrival in the form of a Stoneley wave and to a display
thereof. We note that there are no steps in any of the patent claims which are
directed to any kind of display or recording of Stoneley waves per se.
Considering next application claim 3. We note that the third step is different
from patent claim 17, in that it adds that the recording is to form the display,
a feature not set out in the patent claims.
Reviewing next application claim 4 as dependent on claim 3, we note that step
five has no equivalent in any of the patent claims. We find that application
claim 4 is directed to a different method from that claimed in the patent.
In Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Limited, S.C.C., March
18, 1981, the subject of divisional applications issued to separate patents was
considered:
...
As I noted earlier, the appellant originally filed a single
patent application for Letters Patent, but was required by
the Commissioner of Patents to divide his application into
two parts. It may be open to question whether the
Commissioner of Patents should have split off the wafers and
treated them as the subject of a separate patent but in my
view a patentee is not to be prejudiced by enforced
divisional applications. If patents are granted on
divisional applications directed by the Patent Office, none
of them should be deemed invalid, or open to attack, by
reason only of the grant of the original patent. (See
J.R. Short Milling Co. (Canada) Ltd. v. George Weston Bread
& Cakes Ltd. et al [1941], Ex. C.R. 69 at 82 (affirmed
[1942] S.C.R. 187); Fox Canadian Patent Law and Practice,
supra at 270.
. . .
We are therefore informed by the above jurisprudence that patents granted on
divisional applications so directed by the Office, shall not be invalid or open
to attack only because of the grant of the original patent.
We are also guided by the statement found in 23 Fox Pat. C. 116,117, as referred
to in Xerox of Canada Ltd. v IBM Canada Ltd., 33 CPR (2d), 58:
A subsequent claim cannot be invalidated on the ground of
prior claiming unless the two claims are precisely
coterminous.
We have reviewed the claims of this divisional application and find that they
are directed to different features and to a different scope, albeit slight, from
the claims in Applicant's patent. We are mindful also that Applicant was
directed to file divisional applications on the subject matter found in this
application and in his patent. Since there was no other objection, we are
satisfied that the claims of this applicaton should not be prevented from
issuing solely for the reasons advanced in the Final Action.
We recommend that the rejection of the application be withdrawn and the
application be returned to the examiner.
A. McDonough M.G. Brown S.D. Kot
Chairman Assistant Chairman Member
Patent Appeal Board Patent Appeal Board
I concur with the findings and the recommendation of the Patent Appeal Board.
Accordingly, I am remanding this application to the Examiner for continued
prosecution consistent with the findings and recommendations of the Board.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 29th, day of August, 1983
Agent for Applicant
Smart & Biggar
Box 2999, Station D
Ottawa, Ontario