Ex Parte 7353880 et al

Patent Trial and Appeal BoardNov 5, 2015

95001119 (P.T.A.B. Nov. 5, 2015)

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. 95/001,119 11/18/2008 7353880 069669-0007-09 8440 7590 11/05/2015 PAUL E. KRIEGER THE JL SALAZAR LAW FIRM 1934 W. GRAY STREET SUITE 401 HOUSTON, TX 77019 EXAMINER GRAHAM, MATTHEW C ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 11/05/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ TESCO CORP.1 Requester and Respondent v. Patent of WEATHERFORD/LAMB, INC. Patent Owner and Appellant ____________ Appeal 2015-006301 Reexamination Control 95/001,119 Patent 7,353,880 B2 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, DANIEL S. SONG, and WILLIAM V. SAINDON, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION UNDER 37 C.F.R. § 41.77(f) This is a Decision under 37 C.F.R. § 41.77(f) which incorporates the previous PTAB Decision mailed September 11, 2013 (“2013 Decision”). 1 Weatherford informs the PTAB that as part of a settlement agreement involving the patent in this Inter Partes Reexamination, Requester Tesco has agreed not to participate any further in this reexamination. Request to Reopen Prosecution (Oct. 11, 2013) (“Request to Reopen”) 7. Appeal 2015-006301 Reexamination Control 95/001,119 Patent 7,353,880 B2 We agree with the Examiner’s Determination under 37 C.F.R. § 41.77(d). The 2013 Decision in the above-identified inter partes reexamination set forth a new ground of rejection under 37 C.F.R. § 41.77(b) of claims 7– 10, 25, and 26 as obvious under 35 U.S.C. § 103 in view of Gjedebo, Brown ’675, and Krasnov. 2013 Decision 12. Representative claim 7 as addressed in the 2013 Decision is reproduced below (underlining and bracketing indicate amendments relative to the original claims): 7. An apparatus for connecting casing sections by using a top drive, comprising: at least one elevator; at least two bails operatively coupled to the top drive at one end and the at least one elevator at another end; an actuator operatively coupled to each of the at least two bails and configured to rotate the at least [one] two bails about a horizontal axis, whereby the at least one elevator is moved from a first location substantially below the top drive to a second location out from under the top drive; and a plurality of [at least one] gripping elements operatively coupled to the top drive and configured to be radially displaceable for engagement with an inner wall of a casing. With respect to independent claim 7, which is an apparatus claim, the 2013 Decision found that Krasnov describes substantially all its elements, except for the plurality of gripping elements.2 The Examiner found, and we agreed, that this feature is described in Brown ’675, and that it would have 2 On page 13 of the 2013 Decision, it is stated that “Krasnov does not describe gripping elements with the structure recited in element (4) of claim 21.” The statement should refer to claim 7, not claim 21. 2 Appeal 2015-006301 Reexamination Control 95/001,119 Patent 7,353,880 B2 been obvious to one of ordinary skill in the art to have used such gripping elements in Krasnov for its established function and based on the teachings in Gjedebo. 2013 Decision 13–14. Independent claim 25 and dependent claim 26 are also apparatus claims. The 2013 Decision found that the narrower limitations recited in these claims are also described in Krasnov. Id. at 15–16. In response to the rejection, Weatherford requested that prosecution be reopened under 37 C.F.R. § 41.77(b)(1)(“Request to Reopen”). As authorized under § 41.77(b)(1), Weatherford amended the claims to address the rejection. Request to Reopen 2–6. Amended claim 7 reads as follows (underlining and brackets indicate the amendments relative to the original claims): 7. (Amended) An apparatus for moving a first casing section from a location out from under a top drive to a location substantially below the top drive and connecting said first casing section to a second casing section[s] by using a top drive, comprising: at least one elevator configured to be coupled to said first casing section at a location out from under the top drive; at least two bails operatively coupled to the top drive at one end and the at least one elevator at another end; an actuator comprising a hydraulic piston and cylinder operatively coupled to each of the at least two bails and configured to rotate the at least [one] two bails about a horizontal axis, [whereby] and move the at least one elevator [is moved] from a first location substantially below the top drive to a second location out from under the top drive; the hydraulic piston and cylinder further being configured to be actuated for moving said bail and first casing section from a location out from under the top drive to a 3 Appeal 2015-006301 Reexamination Control 95/001,119 Patent 7,353,880 B2 location substantially below the top drive after said elevator is coupled to said first casing section; and a plurality of [at least one] gripping elements operatively coupled to the top drive and configured to be radially displaceable for engagement with an inner wall of [a] said first casing. After considering the amendment to the claim, the Examiner cited Brown ’244,3 which the Examiner found describes the claimed limitation of moving casings out from under the top drive to a location substantially below the top drive. Examiner’s Determination under 37 C.F.R. § 41.77(d) (March 24, 2014) (“Examiner’s 41.77(d) Determination”) 7. Specifically, the Examiner relied upon Figures 1B and 1C of Brown ’244 for this teaching. Id. Figs. 1B (left)(unlabeled) and 1C (right) of Brown ’244 are reproduced below: Fig. 1B shows the drive head 11, electric motor M, elevator 12, bails 13, and pipe string PS. Brown ’244, col. 3, ll. 19–40. Fig. 1C shows the 3Cicero C. Brown, U.S. Patent 3,915,244, issued Oct. 28, 1975. 4 Appeal 2015-006301 Reexamination Control 95/001,119 Patent 7,353,880 B2 drive connector assembly 10 comprising the drive head 11, elevator 12, and bails 13. Id. Fig. 1B shows how the drive connector assembly can be moved out laterally (phantom lines) from under the drive head to pick up a pipe. Id. at col. 3, ll. 42–55, col. 2, ll. 14–16; 39–42 (“[F]luid powered cocking cylinders are employed to cock the bails supporting the elevator so that the elevator swings laterally away from the vertical.”). Fig. 1C shows the elevator being manually pivoted. Id. at col, 6, ll. 3–7 (“The elevator may be manually pivoted about trunions 58 [shown in Fig. 3] into the operative position shown in Fig. 1C as required to engage a pipe or other equipment which is non-vertically oriented.”). The Examiner determined that it would have been obvious to one of ordinary skill in the art “to have moved the casing section from a position out from under the top drive to a position below the top drive in view of these teachings in Brown ‘244 and [Krasnov] in that it would be necessary to pick up the pipes (casings) from a position that is not under the top drive and then move them under the top drive to be engaged by the top drive.” Examiner’s 41.77(d) Determination 7. Thus, the Examiner determined that the amendment to the claim as set forth in the Request to Reopen did not make the claim patentable. No comments on the Examiner’s determination were filed by Weatherford. Office Communication (September 19, 2014). At minimum, when amending the claims under 37 C.F.R. § 41.77(b)(1), Weatherford should have taken prior art already of record under consideration, such as Brown ’244. Weatherford was specifically aware of the Brown ’244 patent. The ’244 patent was cited in the Initial 5 Appeal 2015-006301 Reexamination Control 95/001,119 Patent 7,353,880 B2 Request for Examination in which Requester described and reproduced Figs. 1A–1C of it and proposed a rejection over the patent. Request for Reexamination 183–184. In sum, we agree with the Examiner’s Determination regarding the unpatentability of claims 7–10, 25, and 26 for the reasons set forth by the Examiner. TIME PERIOD FOR RESPONSE In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. §§ 41.79(c) and (d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008). 6 Appeal 2015-006301 Reexamination Control 95/001,119 Patent 7,353,880 B2 In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. 7 Appeal 2015-006301 Reexamination Control 95/001,119 Patent 7,353,880 B2 cc: Patent Owner: Paul E. Krieger The JL Salaza Law Firm 1934 W. Gray Street, Suite 401 Houston, TX 77019 Third Party Requester: Bracewell & Giuliani LLP P.O. Box 61389 Houston, TX 77208-1389 bar 8