Ex Parte Lavalley et al

Patent Trial and Appeal Board

May 31, 2018

14555945 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/555,945 11/28/2014 Jason LAV ALLEY
52835 7590 06/04/2018
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20300.00lOUSCl 8894
EXAMINER
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
06/04/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON LAV ALLEY, DANIEL L. LARSON,
ROGER LAV ALLEY, MARVIN N. LARSON,
RODNEY WURGLER, CHRISTOPHER G. KAY,
MATTHEW J. MICHEL, and JESSE J. KILDE
Appeal2017-008755
Application 14/555,945
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 9, 12-15, 20, 21, 25, and 26. 1 We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.
1 Claims 9, 12-17, and 20-27 were rejected in the Non-Final Action dated
June 10, 2016, from which this appeal is taken. Of those claims, claims 22,
24, and 27 are canceled and the rejection of claims 16, 17, and 23 is
withdrawn, with the claims being indicated as allowable over the prior art.
Ans. 2.
Appeal2017-008755
Application 14/555,945
CLAIMED SUBJECT MATTER
Appellants' invention relates to a pipe handling attachment that is
attachable to a prime mover, for use in making up or breaking out pipes
during assembly or disassembly of the pipes. Spec. 1, 11. 6-9.
Claims 9 and 20 are independent. Claim 9 is illustrative of the
claimed invention and reads as follows:
9. A method of pipe make up and pipe break out, comprising:
attaching a pipe handling attachment to a first end of an
arm of a prime mover, a second end of the arm is attached to the
pnme mover;
using the pipe handling attachment to make up a first pipe
and a second pipe and to break out a first pipe and a second pipe,
the first pipe and the second pipe having ends that are threaded
for threaded connection to one another;
during pipe make up, using the pipe handling attachment
to thread the end of the second pipe onto the end of the first pipe,
followed by applying final torque to a predetermined torque
value using the pipe handling attachment to complete the pipe
make up;
during pipe break out, using the pipe handling attachment
to apply a torque to break the joint between the end of the first
pipe and the end of the second pipe, followed by unthreading the
end of the second pipe from the end of the first pipe using the
pipe handling attachment;
prior to pipe make up, using the pipe handling attachment
to pick up the second pipe from a location that is separate from
the prime mover and to position the end of the second pipe
relative to the end of the first pipe to permit threading of the end
of the second pipe onto the end of the first pipe; and
after pipe break out, using the pipe handling attachment to
position the second pipe on a pipe stack that is at a location that
is separate from the prime mover or on the ground.
2
Appeal2017-008755
Application 14/555,945
THE REJECTI0NS 2
The Examiner has rejected:
(i) Claims 9, 14, 20, 21, 25, and 26 under 35 U.S.C. § I03(a) as being
unpatentable over Casagrande (US 5,129,764, issued July 14, 1992) in view
of Haberer (US 5,018,588, issued May 28, 1991), and Montabert (US
4,364,540, issued Dec. 21, 1982); and
(ii) Claims 12, 13, and 15 under 35 U.S.C. § I03(a) as being
unpatentable over Casagrande in view of Haberer, Montabert, and Hauk (US
2004/0069097 Al, published Apr. 15, 2004).
ANALYSIS
Claims 9, 14, 20, 21, 25, and 26--0bviousness--
Casagrande/Haberer/Montabert
The Examiner finds that Casagrande discloses an apparatus
comprising a pipe handling attachment ( excavation equipment 14), the pipe
handling attachment having a feed device ( device 26) for lifting rods from
the ground and feeding the rods to clamping devices for applying a torque to
pipe connections. Non-Final Act. 4 (citing Casagrande, col. 2, 11. 56-60, col.
3, 11. 1-2). The Examiner acknowledges that Casagrande does not disclose
using the pipe handling attachment to spin a first pipe relative to a second
pipe, nor to apply a final torque to make up (join) or break out (disconnect)
the pipes. Id. The Examiner takes the position that the apparatus of
Casagrande is inherently capable of spinning the pipes and applying a final
torque to make up or break out the pipes and takes Official Notice that these
2 A rejection of claims 22, 24, and 27 under 35 U.S.C. § 112, first paragraph,
is moot as these claims are now canceled.
3
Appeal2017-008755
Application 14/555,945
steps are old and well-known in the art. Id. at 4--5. The Examiner further
finds that Casagrande discloses vices for unscrewing a drilling shaft. Id. at
5.
The Examiner relies on Haberer as disclosing a drilling device that
uses several pipe sections that are sequentially screwed together during
drilling and unscrewed from one another during removal of the drill, with
the screwing and unscrewing accomplished using clamping jaws. Id. at 5
(citing Haberer, col. 2, 11. 49--51). The Examiner also finds that Montabert
discloses a drill for making subterranean holes in order to place explosives
inside the holes or to take sample materials from the holes. Id. ( citing
Montabert, col. 1, 11. 19--30). The Examiner concludes that it would have
been obvious to provide the apparatus of Casagrande with a plurality of
pipes, as taught by Haberer, for drilling holes for reinforcement rods and to
place explosives inside the holes or take sample materials from the holes, as
taught by Montabert. Id. The Examiner further concludes that it would have
been obvious to spin and apply a final torque "during make-up and break out
of the drill string when using the apparatus of Casagrande for drilling," and
to use the feed device 26 of Casagrande to return the pipes to the ground to
form a stack of pipes when the pipes are removed. Id. at 5---6.
In response to various arguments advanced by Appellants, the
Examiner takes the position that, even if the structure of Casagrande were
not capable of performing the steps as claimed,
the disclosure of Haberer to provide the apparatus with the
capability to provide all necessary functions would provide
motivation to one of ordinary skill to provide some additional
structure to the apparatus of Casagrande to provide the unloading
function if needed, wherein the pending method claims do not
disclose specific structure to allow the claimed function such that
4
Appeal2017-008755
Application 14/555,945
the teaching of Haberer that the apparatus provides all functions
would in itself make obvious the functional step of moving the
pipe to a different location.
Ans. 11.
Although claims 9 and 20 are directed to a method of pipe make up
and pipe break out, in order to properly reject the claims as having been
obvious, the Examiner must establish that an apparatus that is at least
capable of carrying out the claimed steps either exists in the applied prior art
or would have been obvious in view thereof. However, Casagrande only
provides an apparatus having structure for lifting a reinforcement rod from
the ground and bringing the reinforcement rod to a required position.
Casagrande, col. 3, 11. 15-34. Thus, the apparatus of Casagrande would
require substantial modification in order to even be capable of carrying out
all of the claimed steps. While the Examiner explains that it would have
been obvious to perform all of the claimed steps based on the teachings of
the combined references, the Examiner does not explain adequately how the
apparatus of Casagrande would be modified such that it is even capable of
carrying out those claimed steps. Accordingly, the Examiner fails to set
forth a prima facie case of obviousness.
For this reason, we do not sustain the Examiner's decision rejecting
claims 9 and 20, and claims 14, 21, 25, and 26, which depend therefrom.
Claims 12, 13, and 15--0bviousness--
Casagrande/Haberer/Montabert/Hauk
The Examiner does not rely on Hauk in any manner that would
remedy the above-noted deficiency in the rejection of claim 9, from which
claims 12, 13, and 15 depend therefrom, over Casagrande, Haberer, and
5
Appeal2017-008755
Application 14/555,945
Montabert. Non-Final Act. 6-7. For the same reasons discussed supra, we
do not sustain the obviousness rejections of claims 12, 13, and 15.
DECISION
The rejections of claims 9, 12-15, 20, 21, 25, and 26 are reversed.
REVERSED
6