Ex Parte Downton et alDownload PDFPatent Trial and Appeal BoardJun 30, 201411421147 (P.T.A.B. Jun. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GEOFFREY DOWNTON and DAVID L. SMITH ____________ Appeal 2012-005178 Application 11/421,147 Technology Center 3600 ____________ 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. Appeal 2012-005178 Application 11/421,147 2 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 Appeal 2012-005178 Application 11/421,147 3 (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. Appeal 2012-005178 Application 11/421,147 4 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. Appeal 2012-005178 Application 11/421,147 5 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). Appeal 2012-005178 Application 11/421,147 6 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 hh Copy with citationCopy as parenthetical citation