Ex Parte Downton et al

Patent Trial and Appeal Board

Jun 30, 2014

11421147 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GEOFFREY DOWNTON and DAVID L. SMITH
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Appeal 2012-005178
Application 11/421,147
Technology Center 3600
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Before JOHN C. KERINS, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Geoffrey Downton and David L. Smith (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–3 and
5–10. App. Br. 2. Claims 4, 11, and 12 are canceled. Id. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

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THE INVENTION
Appellants’ invention is directed to a steerable bottom hole assembly
for use in a well bore. Independent claim 1, reproduced below, is
illustrative:
1. A steerable bottom hole assembly for use in a
well bore comprising:

a universal joint connectable to a distal end of a
drill string to allow the steerable bottom hole
assembly to pivot freely at the universal joint
without causing bending of the drill string;

a control unit;

a bias unit; and

a drill bit,

the control unit and the bias unit being located
between the drill bit and the universal joint such
that the control unit, the bias unit, and the drill bit
are located below the universal joint, wherein the
control unit, the bias unit, and the drill bit are
constrained to rotation at the same speed as
rotation of the drill string.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 5, and 6 under 35 U.S.C. § 103(a) as being unpatentable
over Barr (US 5,803,185, issued Sept. 8, 1998) in view of Cargill (US
6,769,499 B2, issued Aug. 3, 2004); and
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(ii) claims 2, 3, and 7–10 under 35 U.S.C. § 103(a) as being
unpatentable over Barr in view of Cargill and Estep (US 5,857,531, issued
Jan. 12, 1999).

ANALYSIS
Claims 1, 5, and 6—Obviousness—Barr/Cargill
The Examiner finds that Barr discloses the claimed invention with the
exception of the claimed universal joint. Ans. 4. The Examiner relies upon
Cargill as teaching the use of a universal joint “connectable to a distal end of
a drill string (col. 4, lines 50-63 . . .) to allow a steerable bottom hole
assembly to pivot freely at the universal joint without causing bending of the
drill string at a point of bending stress . . . .” Id. at 5. The Examiner
concludes that it would have been obvious to include a universal joint as
taught by Cargill with the system and methods of Barr, in order to reduce
bending stress within the drill string. Id.
Appellants argue that the portion of Cargill relied upon by the
Examiner is a generalized overview of a structure or device disclosed in a
patent to Ikeda1, and that, while Cargill characterizes Ikeda as teaching the
use of a universal joint in some manner at the location of maximum bending
stress on the drill string, Cargill does not disclose where that location would
be. Appeal Br. 6; Reply Br. 5–6. In particular, Appellants assert that Cargill
provides no description as to whether the maximum bending stress would
occur at the drill bit, between components of a bottom hole assembly, at an
upper end of the drill string, etc. Reply Br. 6. Appellants note that the
location of the universal joint in Ikeda does not appear to be at a distal end

1 US 5,875,859, issued Mar. 2, 1999.
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of a drill string, as in claim 1, but rather at a location substantially inward of
the distal end. Appeal Br. 6–7. While this assertion appears to be based on
Appellants’ review of the Ikeda patent itself, it appears to comport with
Cargill’s description that the universal joint is positioned “adjacent the upper
supporting mechanism,” or upper shaft retaining mechanism. Cargill, col. 4,
ll. 41–44, ll. 53–54.
The Examiner counters these arguments by asserting that Cargill
teaches that the universal joint (of Ikeda) is positioned at the location at
which the maximum bending stress on the drill string takes place, and that
this position in the Barr drilling apparatus is “in the section of the drill string
(130) below a stabilizer and above a bias unit.” Ans. 6. The Examiner
elsewhere states that this position would be “above the [Barr] control unit
(9) within the drill string section (2), which would place it in the same
arrangement as claimed,” and that “clearly the maximum bending stress is
within section 130” in Figure 1 of Appellants’ drawings.2 Id. at 7. These
statements appear to be the underlying basis for the Examiner’s conclusion
that it would have been obvious to modify Barr to include a universal joint
in the same position as is claimed by Appellants.
Notwithstanding that Appellants do not directly take issue with the
Examiner’s above characterizations of the location of the maximum bending
stresses on the Barr drill string, or on the drill string in Appellants’ Figure 1,
we believe that the rejection is not supported by a preponderance of the
evidence. The Examiner expressly acknowledges that the Ikeda reference is
not relied upon in making the rejection. Ans. 7. This is significant, in that,
from the description of Ikeda in Cargill, Ikeda appears to involve a

2 Figure 1 is referred to as “prior art” by Appellants. Spec. p. 5, l. 20.
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directional drilling system which operates in a significantly different manner
(harmonic drive mechanism driving annular members of a double eccentric
mechanism) than the claimed system employing a bias unit and a control
unit at the distal end of the drill string. The Examiner’s statement that he
“finds no reason why the system of Ikeda et al. (although not relied on by
the examiner) would or could not function as claimed, as would be
combined with the other references,” (id.) is not supported by any specific
findings as to the Ikeda patent and, as such, is improperly speculative. The
Examiner’s additional finding that “clearly the maximum bending stress is
within section 130 in instant figure 1” is speculative as well. The Examiner
points to no evidence, whether in a description of the prior art in Appellants’
Specification, or elsewhere, regarding the location of maximum bending
stress in the assembly of Appellants’ Figure 1.
Further, the disavowal of reliance on the teachings of Ikeda leaves the
Examiner in the untenable position of relying on Cargill alone, which, as a
whole, discredits and discourages the use of flexible or articulated shafts of
the type disclosed in Ikeda.3 As noted by Appellants, Cargill discloses that
the use of such shafts may not be preferred, and have been found to be prone
to failure. Appeal Br. 9; Cargill, col. 4, ll. 63–67. Given that Cargill
apparently proposes a system that avoids problems associated with flexible
and articulated shafts, the Examiner’s rejection lacks any consideration as to
why a person of ordinary skill in the art would have chosen what Cargill

3 A reference may be said to teach away from a combination when it
criticizes, discredits, or otherwise discourages the proposed modification.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994).

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describes as a less-preferred design that is known to be prone to failure to
modify Barr in the manner proposed.
For the above reasons, we are constrained to reverse the rejection of
claims 1, 5, and 6 as being unpatentable over Barr and Cargill.
Claims 2, 3, and 7–10—Obviousness—Barr/Cargill/Estep
The rejection of these claims is based upon the same flawed
combination of the teachings of Barr and Cargill, and the Estep reference is
not relied on as curing the noted deficiencies in that combination. The
rejection of claims 2, 3, and 7–10 as being unpatentable over Barr in view of
Cargill and Estep is therefore not sustained.

DECISION
The Examiner’s rejections of claims 1–3 and 5–10 are reversed.

REVERSED

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