Behrens, Randall Dean.

Patent Trials and Appeals Board

Aug 2, 2019

14669754 - (D) (P.T.A.B. Aug. 2, 2019)

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.
14/669,754 03/26/2015 Randall Dean Behrens 031872.0217315.008 1970
23444 7590 08/02/2019
ANDREWS KURTH KENYON LLP
600 TRAVIS, SUITE 4200
HOUSTON, TX 77002
EXAMINER
QUAIM, LAMIA
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
pat-tmk@andrewskurth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDALL DEAN BEHRENS
Appeal 2019-001663
Application 14/669,754
Technology Center 3600
Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
BRETT C. MARTIN, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Premier Coil Solutions,
Inc., appeals from the Examiner’s decision to reject claims 1–15. 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(a). Appellant identifies the real party in interest as Premier
Coil Solutions, Inc. Appeal Br. 1.
Appeal 2019-001663
Application 14/669,754
2
CLAIMED SUBJECT MATTER
The claims are directed to high pressure swivel assemblies for
delivering a pumped substance to the coiled tubing reel. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An oilfield assembly comprising a pump in fluid
communication with a string of coiled tubing on a tubing reel
through a coiled tubing swivel assembly, the coiled tubing swivel
assembly comprising:
a swivel housing having a central axis;
an end cap coupled to one end of the swivel housing; and
a rotatable hollow shaft comprising a first end attachable
to the tubing reel, a portion that extends axially within the swivel
housing between the first end and a second end, wherein the
second end engages a groove in the end cap such that an inner
diameter portion of the second end is protected from direct
contact with the pumped substance as the pumped substance
flows in a direction from the pump through the end cap, swivel
housing, and rotatable hollow shaft to the tubing reel.
REFERENCES
The prior art relied upon by the Examiner is:
Boski
Hailey
Shampine
US 4,199,131
US 4,519,238
US 7,600,564 B2
Apr. 22, 1980
May 28, 1985
Oct. 13, 2009
Ungchusri
Verger
Pecorari
US 2003/0047944 A1
US 2005/0172472 A1
US 2007/0051508 A1
Mar. 13, 2003
Aug. 11, 2005
Mar. 8, 2007

REJECTIONS
Claims 1, 3, 4, 9, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shampine and Verger. Final Act. 3.
Claims 2 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shampine, Verger, Ungchusri, and Pecorari. Final Act. 9.
Appeal 2019-001663
Application 14/669,754
3
Claims 6, 7, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shampine, Verger, and Boski. Final Act. 11.
Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shampine, Verger, and Hailey. Final Act. 14.

OPINION
Shampine and Verger
The Examiner rejects all of the claims using some combination of
Shampine and Verger. Shampine teaches most of the limitations relating to
tubing reel structure, but fails to teach the specific structure of the connector
between the reel and an incoming/outgoing pipe. Ans. 4. The Examiner
finds a similar structure in Verger and combines it with Shampine, asserting
that one of skill in the art would have made the combination “to form a
secure seal/prevent leakage when pumping/recovering fluid from
hydrocarbon wells.” Ans. 5.
Appellant argues, inter alia, against the Examiner’s motivation,
stating that “[i]t is the rotary seals (110, 112) that form a secure seal/prevent
leakage against a fluctuating non-constant fluid pressure present in the
interior chamber of the swivel housing (104a) and/or end cap (104b) during
operation” of Appellant’s invention. App. Br. 11. Appellant further argues
that Verger has nothing to do with “protect[ing] the distal end of the second
end (108) from direct immediate contact with the fluid flowing through the
swivel assembly.” Id. We agree. The Examiner’s reasoning for combining
the references is not founded on a reasonable basis with rational
underpinnings because Shampine already has other structure in place to seal
the joint and sealing/leakage is not a problem at the joint in question. Thus,
Appeal 2019-001663
Application 14/669,754
4
one of ordinary skill in the art would not look to place a seal in a location
where such is not needed in the first place. Because all of the rejections rely
on this faulty motivation for combining Shampine and Verger, we do not
sustain any of the Examiner’s rejections.
DECISION
The Examiner’s rejections are REVERSED.
REVERSED