David Labonte et al.

Patent Trials and Appeals Board

Sep 27, 2019

14458991 - (D) (P.T.A.B. Sep. 27, 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.
14/458,991 08/13/2014 DAVID LABONTE WEAT/0640USC2 4432
36735 7590 09/27/2019
PATTERSON & SHERIDAN, L.L.P. / Weatherford
24 Greenway Plaza, Suite 1600
HOUSTON, TX 77046
EXAMINER
WALTERS, RYAN J
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
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 DAVID LABONTE and RICKY GERELUK
____________________

Appeal 2018-002373
Application 14/458,991
Technology Center 3700
____________________

Before JILL D. HILL, LISA M. GUIJT, and PAUL J. KORNICZKY,
Administrative Patent Judges.

KORNICZKY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2018-002373
Application 14/458,991

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision, as set forth in the Final Office Action, rejecting claims
1–13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The application is directed to a method and apparatus for
manufacturing continuous sucker rods. Spec. ¶ 2. Claim 1, the only
independent claim on appeal, is reproduced below with disputed limitations
italicized for emphasis:
1. A system for manufacturing a continuous sucker rod coil, the
system comprising:
a single production line, comprising:
a coil straightener configured to straighten input
coils, each input coil having the same uniform hardness;
a welding machine that is configured to:
fuse adjacent input coils together to form one
continuous length of fused input coils, wherein
fusing creates a heat-affected zone at each fused
joint; and
treat the heat-affected zones to alleviate
irregularities induced during fusing, wherein the
welding machine selectively treats sections of the
fused input coils to form treated sections and
untreated sections;

1 In this Decision, we refer to (1) the Examiner’s Final Office Action
dated March 16, 2017 (“Final Act.”) and Answer dated November 2, 2017,
(“Ans.”) and (2) Appellant’s Appeal Brief dated September 11, 2017 and
Reply Brief dated January 2, 2018 (“Reply Br.”).
2 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.
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a flaw detection system for inspecting a surface of
the straightened coils;
a surface treating machine configured to clean a
surface of the input coils and induce compressive stress in
the surface; and
a transport reel to receive the continuous length of
fused coils.

REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Beasock
Spiegelberg
Widney
US 4,865,309
US 5,217,158
US 6,481,082 B1
Sept. 12, 1989
June 8, 1993
Nov. 19, 2002
Uesugi US 2002/0154308 A1 Oct. 24, 2002

REJECTIONS
The Examiner made the following rejections:
1. Claims 1–10, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Widney, Spiegelberg, and Applicant’s Admitted
Prior Art (AAPA).
2. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Widney, Spiegelberg, AAPA, and Uesugi or Beasock.
Appellant seeks our review of these rejections.

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DISCUSSION
Rejection 1: Claims 1–10, 12, and 13
as Unpatentable Over Widney, Spiegelberg, and AAPA
Appellant argues claims 1–10, 12, and 13 as a group. Appeal Br. 6–8.
We select independent claim 1 as the representative claim, and claims 2–10,
12, and 13 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that the combined teachings of Widney,
Spiegelberg, and AAPA disclose the limitations in claim 1. Final Act. 2–4.
In particular, the Examiner finds that Widney’s Background discloses that it
is conventional for welding machines to fuse adjacent input coils together to
form one continuous length of fused input coils (at 23), wherein fusing
creates a heat-affected zone at each fused joint and along the whole
continuous length of fused input coils (at 25). Final Act. 2–3; Ans. 2–3.
The Examiner, however, finds that Widney does not disclose a “welding
machine [that] selectively treats sections of the fused input coils to form
treated sections and untreated sections” as recited in claim 1. Final Act. 2–3;
Ans. 2–3. The Examiner further finds that this limitation is disclosed by
Spiegelberg. Final Act. 3 (citing Spiegelberg, 1:29–2:2).
The Examiner reasons that it would have been obvious to one of
ordinary skill in the art “to have modified the system of Widney by
substituting his welding machine for the one taught by Spiegelberg, when
welding pre-hardened sucker rods to form the continuous length of fused
input coils” because it would “save on power that would be needed to heat-
treat the whole continuous length of fused input coils” and “not require any
skill to remove one machine and replace it with another machine having the
desired capabilities for producing products being made in the production
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line.” Final Act. 3. The Examiner further explains that Spiegelberg’s
selective heat treatment “would enable an efficient way of treating the
components utilizing less power by specifically heat treating specific
portions of a component” and “a more efficient system for manufacturing a
continuous sucker rod coil.” Ans. 3.
Appellant argues that the Examiner’s rejection is erroneous because
Widney “teaches away from the use of heat treatment devices, and therefore,
one skilled in the art would not modify the apparatus of Widney [] to include
the selective heat treatment device of Spiegelberg [], as asserted by the
Examiner.” Appeal Br. 6. Appellant explains:
Widney et al. discloses a portable continuous sucker rod
manufacturing process and device (See abstract). The device of
Widney et al. seeks to cure the deficiencies of the prior art, for
example, coil transportation (See column 2, lines 14-18). To
address these deficiencies, Widney et al. invented a
method/device which is portable, so that sucker rods can be
manufactured at the point of use, such as a well site (See column
2, lines 13-17). In order to be portable and to be able to use the
device/method at the point of use, Widney et al. eliminated two
processes from conventional approaches: (1) flash butt welding;
and (2) heat treatment.
Id. at 6–7. According to Appellant, “Widney et al. discloses excluding heat
treatment because ‘heat treating equipment requires too much power to be
portable and available at any given location.’” Id. at 7 (quoting Widney,
2:27–28).
Appellant’s argument is not persuasive because Widney does not
criticize, discredit, or otherwise discourage the Examiner’s proposed
combination of Widney and Spiegelberg. DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (A “reference
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does not teach away, however, if it merely expresses a general preference for
an alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.”) (quoting In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004)). The Federal Circuit has explained
that just because better alternatives exist in the prior art does not mean that
an inferior combination is inapt for obviousness purposes. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). “The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000).
Here, Widney states that flash butt welding and heat treatment are
well-known and conventional steps for making sucker rods. Widney, 1:53–
2:30. As Appellant readily admits, Widney only eliminated flash butt
welding and heat treatment steps from conventional manufacturing
approaches “[i]n order to be portable and to be able to use the device/method
at the point of use.” Appeal Br. 6–7 (emphases added). Contrary to
Appellant’s argument, Widney does not state that heat treatment steps are
never useful and never provide any benefits. If portability or power usage is
not a concern, there appears to be little advantage to Widney’s device. In
addition, Widney does criticize, discredit, or otherwise discourage the
Examiner’s proposal to use Spiegelberg’s selective heat treatment in place of
Widney’s continuous heat treatment so as to provide “an efficient way of
treating the components utilizing less power by specifically heat treating
specific portions of a component” and “a more efficient system for
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manufacturing a continuous sucker rod coil.” Ans. 3. In light of Widney’s
assertion that “[h]eat treating equipment requires too much power to be
portable” (Widney, 2:27–28), Spiegelberg’s selective heat treatment, which
minimizes power usage, would seem to be consistent with Widney’s desire
to minimize power requirements.
For the reasons above, Appellant’s arguments are not persuasive and
the Examiner’s rejection of claim 1 is sustained, and claims 2–10, 12, and 13
fall with claim 1.

Rejection 2: Claims 11
as Unpatentable Over Widney, Spiegelberg, AAPA, and Uesugi/Beasock
Appellant argues that the rejection of claim 11 is erroneous because of
the deficiencies of the combination of Widney and Spiegelberg discussed
above in connection with claim 1, and Uesugi and Beasock do not cure these
deficiencies. As discussed above, Appellant’s arguments are not persuasive.
Like claim 1, the rejection of claim 11 is sustained.

CONCLUSION
In summary:
Claims
Rejected
Basis
(35 U.S.C.)
Affirmed Reversed
1–10, 12, 13 § 103 Widney, Spiegelberg,
AAPA
1–10, 12, 13
11 § 103 Widney, Spiegelberg,
AAPA, Uesugi, Beasock
11
Overall
Outcome
1–13

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Application 14/458,991

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For the above reasons, we AFFIRM the Examiner’s rejection of
claims 1–13 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED