Weatherford Technology Holdings, LLC

Patent Trials and Appeals BoardMar 18, 2021

2020002539 (P.T.A.B. Mar. 18, 2021)

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. 15/005,809 01/25/2016 Bjoern THIEMANN WEAT/1323US 5774 36735 7590 03/18/2021 PATTERSON & SHERIDAN, L.L.P. / Weatherford 24 Greenway Plaza, Suite 1600 HOUSTON, TX 77046 EXAMINER LAMBE, PATRICK F ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 03/18/2021 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): PSDocketing@pattersonsheridan.com Pair_eOfficeAction@pattersonsheridan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BJOERN THIEMANN Appeal 2020-002539 Application 15/005,809 Technology Center 3600 Before JENNIFER D. BAHR, JILL D. HILL, and CARL M. DeFRANCO, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–19 and 21. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Weatherford Technology Holdings, LLC. Appeal Br. 3. Appeal 2020-002539 Application 15/005,809 2 BACKGROUND Claims 1, 14, and 18 are independent. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A top drive unit, comprising: a top drive housing; a drive stem disposed in the top drive housing; a carrier configured to axially move the drive stem relative to the top drive housing; and a drive mechanism for rotating the drive stem. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Wells US 2007/0251699 A1 Nov. 1, 2007 REJECTION Claims 1–19 and 21 stand rejected under 35 U.S.C. § 102 as anticipated by Wells. OPINION Independent claim 1 recites, inter alia, “a drive mechanism for rotating the drive stem.” Similarly, independent claim 14 recites “rotating the tubular using the drive stem.” Independent claim 18 recites “rotating the tubular using a tong assembly.” Regarding claim 1, the Examiner finds that Wells discloses a top drive unit having “a top drive housing (174); a drive stem (186) disposed in the top drive housing (Fig. 3B); a carrier (182) configured to axially move the drive stem relative to the top drive housing (paragraph 0050); and a drive mechanism (15) for rotating the drive stem.” Final Act. 2. The Examiner Appeal 2020-002539 Application 15/005,809 3 finds that Wells discloses the claimed rotatable drive stem 186, and that the methods recited in independent claims 14 and 18 “are inherent to the above structures.” Id. at 3. Claims 1–19 and 21 The dispositive issue is whether the Examiner is correct in finding that Wells discloses a drive stem 186 that is rotated by a drive mechanism 15. Appellant argues, inter alia, that the Examiner erred in finding that Wells’ stem 186 rotates. Appeal Br. 6. According to Appellant, Wells’ stem 186 cannot rotate because (1) stem 186 is attached to its housing 140 with bolts 185, (2) housing 140 is non-rotatably attached to main body 130, and (3) main body 130 is non-rotatably attached to its dolly 134 via links 133. Appeal Br. 6 (citing Wells Figs. 2G, 3A, 3B, ¶¶ 35, 39, 42, 50). The Examiner responds that Wells discloses, with respect to its Figure 1, a motor 15 driving a main shaft 16 that rotates a drill stem 18. Ans. 3–4. The Examiner reasons that Wells’ Figure 3B also has a “stem” 186, and appears to then equate Wells’ stem 186 with its stem 18 due to the elements having the same name, reasoning that Wells’ stem 186 must, likewise, be driven to rotate. Id. at 5 (citing Wells ¶ 33 (“a motor apparatus 15 (shown schematically) encased within the housing 17 rotates the main shaft 16 which, in turn, rotates the drill stem 18”)). The Examiner disagrees with Appellant’s contention that, just because Wells’ “stem 186 . . . is secured with bolts 185 to the gear housing 140” (Wells ¶ 50), Wells’ stem cannot rotate with respect to its housing 140. Id. Appellant replies that, although Wells’ motors 120 rotate its main shaft 160 in the embodiment of Figures 3A and 3B, just as the motor 15 of Wells’ Figure 1 (prior art) rotates its main shaft 16, Wells’ stems 18 and 186 Appeal 2020-002539 Application 15/005,809 4 “are two entirely different components,” such that “any description of the drill stem 18 is inapplicable to the stem 186,” making the Examiner’s determination “that the stem 186 is rotatable because the drill stem 18 can rotate” erroneous. Reply Br. 3–5. Contrary to the Examiner’s determination, Appellant contends, Wells’ stem 186 is secured with bolts to its gear housing 140, which is secured to main body 130 that does not rotate “due to its arms 131, 132 being attached to the dolly 134 via links 133.” Id. at 5 (citing Wells Fig. 2G, 3B, ¶¶ 39, 50). Upon carefully reviewing the disclosure of Wells in its entirety, Appellant has the better argument. Wells’ Figure 3A shows its top drive system 100 with motors 120 that drive pinions 124 via couplings 123. See Wells Fig. 3A, 3B, ¶ 42. Pinions 124 drive bull gear 142, which in turn drives quill 190 and the main shaft 160. Id. Absent from Wells’ disclosure of driving rotation of main shaft 160 is any discussion of rotating, or otherwise moving, its stem 186. Further, Wells’ drive stem 186 can be seen, in Figure 3B, to be separate from (and directly below) the quill 190 that drives the main shaft 160. See id. Fig. 3B. Indeed, Wells discloses only that stem 186 (1) is secured to housing 140 with bolts 185, and (2) guides, centers, and supports the link adapter 180. See Wells ¶ 50. It seems to us, then, that a skilled artisan would understand that Wells’ drive stem 186 does not rotate, is not rotated by any drive mechanism, and indeed remains stationary with the housing 140 to which it is bolted. Thus, the anticipation rejection of claim 1 cannot stand, as it is based on an erroneous finding regarding the disclosure of Wells. Similarly, the rejection of independent method claims 14 and 18 cannot stand, because the rejection of the methods recited in independent claims 14 and 18 were found Appeal 2020-002539 Application 15/005,809 5 by the Examiner to be “inherent to” the findings underlying Wells’ anticipation claim 1. The remaining claims depend from one of independent claims 1, 14, and 18, and, therefore, contain all of the limitations thereof. CONCLUSION The Examiner’s rejections are REVERSED. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–19, 21 10310211 Wells 1–19, 21 Overall Outcome: 1–19, 21 REVERSED