Ex Parte 7219744 et al

Patent Trial and Appeal Board

Sep 11, 2013

95001114 (P.T.A.B. Sep. 11, 2013)

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.
95/001,114 11/18/2008 7219744 069669-0007-06 8073
9629 7590 09/11/2013
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/11/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TESCO CORP.
Requester and Respondent

v.

Patent of WEATHERFORD/LAMB, INC.
Patent Owner and Appellant
____________

Appeal 2013-007075
Reexamination Control 95/001,114
Patent 7,219,744 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, DANIEL S. SONG, and
WILLIAM V. SAINDON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Patent Owner in the above-
identified inter partes reexamination of U.S. Patent No. 7,219,744. The
Patent Owner appeals the Examiner‟s decision to reject claims 2, 5, 8-13,
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and 15-31 as obvious under 35 U.S.C. § 103. The Board‟s jurisdiction for
this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We reverse and set
forth new grounds of rejection under 37 C.F.R. 41.77(b).

I. STATEMENT OF THE CASE
The patent in dispute in this appeal is US 7,219,744 B2 (hereinafter,
“the „744 patent”), which issued May 22, 2007. A request for inter partes
reexamination of the „744 patent was filed on November 18, 2008, by a
Third Party Requester under 35 U.S.C. §§ 311-318 and 37 C.F.R. §§ 1.902-
1.997 (Request for Inter Partes Reexamination). The Patent Owner is
Weatherford/Lamb, Inc. (hereinafter, “Weatherford”) (Weatherford App. Br.
1, dated January 17, 2012). The Third Party Requester is Tesco Corporation
(hereinafter, “Tesco”). An oral hearing was held August 7, 2013.
Arguments were heard only from Weatherford. Tesco did not participate in
the oral hearing and did not file a brief in a response to Weatherford‟s
Appeal Brief. A transcript of the hearing has been entered into the record
(Oral Hearing Transcript).
The claims of the „744 patent involve methods and an apparatus for
connecting tubular casings in the construction of oil or gas wells („744
patent, col. 1, ll. 24-32). Claims 2, 5, 8-13, and 15-31 are pending and
subject to reexamination. Weatherford has dropped its appeal for claims 1,
3, and 4 (Weatherford App. Br. 2). Claims 6, 7, and 14 are cancelled (id.).
According to Weatherford, the litigation identified previously
involving U.S. Patent No. 7,219,744, Civil Action No.2:07-cv-531 (TJW),
Weatherford International, Inc., et al., v. Tesco Corporation, in the United
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States District Court for the Eastern District of Texas, Marshall Division, has
been settled. (Weatherford App. Br. 2) As part of the settlement,
Weatherford states that Tesco, who was a defendant in the lawsuit, agreed
that it would no longer participate in this reexamination (id.).
There is a related appeal, which is the appeal in Reexamination
95/001,119, for U.S. Patent No. 7,353,880 (“the „880 patent”). That appeal
has been assigned the appeal number 2013-006812, and has been decided
concurrently with this appeal. The „880 patent is a continuation of the
application that issued as U.S. Patent No. 7,219,744, which is the patent in
this appeal.
II. REPRESENTATIVE CLAIMS
Representative claims are reproduced below (underlining and
bracketing indicate amendments relative to the original claims; bracketed
letters a-k were added to claim 29 to identify the steps):
1. A method for facilitating the connection of tubulars using
a top drive, comprising:
connecting an elevator to the top drive or a component
attached to the top drive using a pair of bails;
using the elevator to move a first tubular to a position
below the top drive;
gripping an inner wall of the first tubular by actuating a
plurality of radially movable gripping elements; [and]
supporting the weight of the first tubular with the top
drive; and
rotating the first tubular using the top drive, thereby
connecting the first tubular to a second tubular.

2. The method of claim 1, further comprising using the elevator
to move the first tubular in relation to the pair of bails towards
or away from the top drive for gripping the first tubular.
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5. A method of connecting casing sections by using a top
drive, comprising:
closing a slip around a first casing section;
engaging an elevator with a second casing section;
operating a bail actuator to move the elevator and the
second casing section into substantial alignment with the top
drive;
gripping an inner wall of the second casing section by
actuating a plurality of radially movable gripping elements;
[and]
supporting a weight of the second casing section with the
top drive;
rotating the second casing section using the top drive to
join the second casing section to the first casing section to form
a joint and a casing string;
supporting the weight of the casing string with the top
drive; and
opening the slip.

21. An apparatus for connecting casing sections by using a top
drive, comprising:
at least one elevator;
at least one bail operatively coupled to the top drive at
one end and the at least one elevator at another end;
an actuator operatively coupled to the at least one bail
and configured to rotate the at least one bail about a horizontal
axis, whereby the at least one elevator is moved from a first
location substantially below the top drive to a second location
out from under the top drive; and
[at least one] a plurality of gripping elements operatively
coupled to the top drive and configured to be radially
displaceable for engagement with an inner wall of a casing.

29. A method of connecting casings using a top drive
assembly, comprising:
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[a] providing a top drive assembly having a top drive and
[at least one radially displaceable gripping element] a plurality
of radially displaceable gripping elements for gripping [a] an
inner wall of the casing;
[b] supporting an elevator from the top drive assembly
with at least one bail, the at least one bail having an actuator
coupled thereto, the actuator adapted to pivot the at least one
bail about a horizontal axis;
[c] closing a slip around a first casing;
[d] engaging a second casing with the elevator;
[e] moving the second casing to a well center by
operating the actuator;
[f] gripping the second casing with the top drive
assembly;
[g] threading the second casing to the first casing by
rotating an output of the top drive to form a joint and a casing
string;
[h] opening the slip;
[i] lowering the casing string through the slip;
[j] closing the slip around the casing string; and
[k] disengaging the top drive assembly from the casing
string.

III. REJECTIONS
The claims stand rejected by the Examiner as follows:
1. Claims 2, 5, 8-13, 15-18, and 20-31 under 35 U.S.C. § 103 (a) as
obvious in view of Gjedebo
1
and Brown
2
(Answer 3-4); and
2. Claim 19 under 35 U.S.C. § 103 (a) as obvious in view of Gjedebo,
Brown, and Krasnov
3
(Answer 4-5).

1
Gjedebo, Jon, WO 98/11322, published March 19, 1998.
2
Brown, Cicero C., US 3,747,675, July 24, 1973.
3
Krasnov, Igor, US 4,793,422, December 27, 1988.
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IV. GJEDEBO
G1. Figure 1 of Gjedebo, reproduced below, shows a device to
interconnect pipes (3) to form a casing (1) (Abstract):

The top drive is 7. The output shaft 8 of the top drive 7 is attached to
the upper end of a telescopic pipe 9 (p. 5). The catcher 11, is attached to the
shaft 8, is “adapted to be guided into the pipe (3) and to be expanded to rest
against the pipe and, thus, to establish an internal friction connection.” (Id.)
The elevator is 4 (id.). The pipe is 3 (id.). The casing is 1 which is to be
extended with the pipe 3 (id. at 7.) The casing 1 “is screwed [into] an
external socket 2 provided with internal complementary threads. The socket
2 forms an internally threaded extension of the casing 1.” (Id.)
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G2. With reference to Figure 1, Gjedebo describes the following
process for attaching a new pipe (3) to a casing (Abstract) (G3-G5):
G3. “A device serves to interconnect pipes (3) to form a casing
(1).” (Id.)
G4. “A new pipe (3) to be added to the top of the casing (1), is
suspended from an elevator (4) assigned a drawworks, the latter being
assigned a top drive (7) above the elevator (4).” (Id.)
G5.
The device comprises a tubular hydraulic telescopic device (9,
10), one end thereof being connected to the output shaft (8) of
the top drive (7), the other end thereof being provided with a
catcher (11) adapted to catch, raise and rotate the pipe (3). The
catcher (11) is adapted to be guided into the pipe (3) and to be
expanded to rest against the pipe and, thus, to establish an
internal friction connection.
(Id.)
G6. “Further, it is presupposed that a top driven rotational system, a
so[-]called „top drive‟, substantially used for drilling purposes, is assigned to
the drawworks at a higher level than the elevator, as previously known.”
(Page 3.)
G7.
A pipe [3] to be added to the top of a casing [1], is suspended
from the elevator as previously known. . . . Then, the pipe is
raised somewhat by means of the telescope [9, 10], the pipe
sliding in the elevator which is not raised . . . Then, the pipe is
lowered down to contact with the casing by means of the
telescope and put into rotation by means of the top drive
[7]. The pipe is lowered gradually by means of the telescope
as it is screwed to the top of the casing. Finally, the
threaded connection is tightened to the moment prescribed.
. . . The connector is released and lifted clear of the top of the
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pipe, whereafter the casing is lowered into the well as
previously known by means of the elevator, the process being
repeated for each new pipe.
(Page 3-4; emphasis added.)
G8. “The pipe 3 is suspended from an elevator 4 which, by means of
bows, hoops or rods 5, is assigned a drawworks, not shown.” (Page 5.)
G9. “The telescopic pipe 9, the pipe member 10 and, thus, also the
pipe 3 are rotated about their own axis by means of the top drive 7, so that
the pipe 3 is screwed into the socket 2.” (Page 7.)
G10. Figure 6 shows catcher 11:

Figure 6 shows catcher 11 as an egg shaped cylindrical form which is
connected to the telescopic device 10, the latter which is connected to the
top drive (G5).
G11. Gjedebo teaches that it was known in the art to use an elevator
for vertical positioning of pipe (line spanning pages 1-2).

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V. KRASNOV
K1. Krasnov describes an “apparatus for a top drive drill rig [that]
lifts a stand of the drill pipe into engagement with the drive stem in the
derrick. The apparatus includes a set of elevators mounted between the
drive head by a link assembly.” (Abstract; emphasis added.) “In this
invention, an articulated link assembly connects the conventional elevators
into the drive head assembly. The elevators releasably clamp around the
drill pipe.” (Col. 1, ll. 49-51.)
K2. Krasnov teaches in the Abstract:
The link assembly includes two link sections connected
together by a swivel joint. An upper hydraulic cylinder is
connected between the drive head and the upper link section. A
lower hydraulic cylinder is connected between the upper and
lower link sections. These cylinders may be retracted to pull the
stand of drill pipe upward into contact with the drive stem.
K3. The link assembly includes hydraulic cylinders and piston rods
(col. 2, ll. 54-68).
K4. “The drive head assembly 21 is a top drive assembly, having a
drive stem 23 that is rotated by the drive head assembly 21. The drive stem
23 connects to a string of drill pipe 25.” (Col. 2, ll. 20-23.)
Krasnov describes its process as follows:
K5. “During normal drilling, the elevators 45 will be loosely
engaging the drill pipe 25. The drill pipe 25 will rotate relative to the
elevators 45. The upper and lower link sections 35, 41, will be in the fully
extended position shown in FIG. 4, parallel to the axis of the drive stem 23.”
(Col. 3, ll. 38-43.)
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K6. As the elevator reaches the rig floor, the elevator is released and,
as shown in Figure 3, the piston rods are fully retracted, moving the elevator
horizontally from a position below the top drive to a position away from the
top drive (col. 3, ll. 5-14 and 44-53; see Figure 3).
K7. When the string of drill pipe is drilled fully down, the connection
between the drive stem 23 and drill pipe 25 is broken (col. 3, ll. 54-56). The
drive stem 23 is pulled up (col. 3, ll. 58-61).
K8. A stand of three sections of the drill pipe is made up in the mouse
hole of the drill rig (col. 3, ll. 62-64). “The derrick hand will close the
elevators 45 around the upper end of the stand of drill pipe 25. The driller
will pick up the blocks 17 and the stand of drillpipe 25 will be swung over to
a point above the rotary table 27.” (Col. 3, ll. 64-67.)
K9. The drill pipe is aligned with the top drive using the
piston/cylinder actuator to move the elevator:
Then the driller actuates a valve to apply hydraulic fluid
pressure to the lower hydraulic cylinders 57 and to one end of
each upper hydraulic cylinder 49. This causes the piston rods
61 to retract and one piston rod 53 of each upper hydraulic
cylinder 49 to retract. At the same time the upper piston rods 53
retract, the upper link sections 35 pivot upward about the eye
33, as shown in FIG. 2. . . . The elevators 45 will move
upward, lifting the stand of drill pipe 25.
(Col. 4, ll. 3-12; emphasis added.)
K10. A connection is made between the uppermost tool 47 of the drill
pipe 47 and the drive stem 23 of the top drive. The driller “will rotate the
drive stem 23 to make up the connection with the tool joint 47.” (Col. 4, ll.
17-25).
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K11. “The driller then releases pressure in the hydraulic cylinders 49,
51 allowing each to move to the extended position shown in FIG. 4.” (Col.
4, 26-28.) Drilling will continue using the drive stem 23 to rotate the drill
pipe (col. 4, ll. 28-29).
K12. The weight of the string of drill pipe 25 is supported by the link
sections which are attached to the top drive (col. 4, ll. 33-35).
K13. The cycle is repeated when the elevator reaches the drill rig
floor (col. 4, ll. 29-30).
K14.
The invention has significant advantages. The articulated link
assembly allows the driller to easily pull the stand into contact
with the drive stem, even though the connection is made up
ninety feet above the rig floor. This avoids damage to the
threads of the drill pipe and drive stem.
(Col. 4, ll. 36-41.)

VI. REJECTIONS BASED ON GJEDEBO AND BROWN
Claims 2, 5, 8-13, and 15-31 stand rejected over the combination of
Gjedebo and Brown (Rejections 1 and 2). Claim 19 is rejected based on the
additionally cited patent to Krasnov (Rejection 2).

Claim 2
Because claim 2 is dependent on claim 1 and incorporates all its
limitations, we begin our analysis with claim 1.
Claim 1 requires an elevator connected to a top drive. The Examiner
found this feature was described by Gjedebo, but the only structure
identified in Gjedebo by the Examiner as meeting this limitation is the
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drawworks. The Examiner apparently found that the elevator is connected
to the top drive because both the top drive and elevator are both connected to
the drawworks (Answer 6). This interpretation is not reasonable.
Claim 1 recites “connecting an elevator to the top drive or a
component attached to the top drive using a pair of bails.” As explained in
the “Summary of the Invention” of the „744 patent, coupling the elevator to
the top drive is for the purpose of facilitating the connection of tubulars (col.
2, ll. 6-15; col. 3, ll. 11-29.) The elevator is moved by the top drive. All the
embodiments in the „744 patent describe and show a direct connection to the
top drive, whether by attaching the bails directly to the top drive or through a
component (see Fig. 1a-1e; 2a-2d; col. 3, ll. 19-22). The skilled worker
would thus understand that the term “connect,” which has the ordinary
meaning of “to join or fasten together,”
4
means that the elevator is connected
to the top drive in such a way that the top drive can move the elevator.
Claim terms are given their broadest reasonable interpretation as they
would be understood by one of ordinary skill in the art when read in light of
the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re
Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re Abbott
Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012). The Examiner‟s
interpretation that the top drive and elevator are connected because they both
are attached to a drawworks (G4, G6, and G8) is broader than what is
described in the „744 patent and unreasonable based upon reading the patent
and the language of the claims. In Gjedebo, the top drive and elevator are
not mechanically connected together, and the connection does not permit the

4
http://www.thefreedictionary.com/connect (accessed August 21, 2013).
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elevator to be moved by the top drive. Rather, the two are just supported by
the same drawworks. We therefore reverse the rejection of claim 2, which
incorporates all the limitations of claim 1, based on Gjedebo and Brown.

Claims 5, 8-13, 15-18, and 20-31
Claims 5, 8-13, 15-18, and 20-31 require a bail actuator. The
Examiner contends that the drawworks in Gjedebo to which the elevator is
attached is an actuator (Answer 6).
The term “actuator” is not defined in the „744 patent. We therefore
adopt its ordinary dictionary meaning as a “mechanism that puts something
into automatic action.”
5
Consistent with this interpretation, a piston and
cylinder mechanism is shown in the „744 patent as actuating the bails (col. 2,
ll. 57-59; col. 3, ll. 44-46).
The Examiner states that the drawworks is an actuator because it is
“for raising and lowering pipes.” (Answer 6.) However, Weatherford argues
that a drawworks is not an actuator as that term would be understood upon
reading the „744 patent. Rather, Weatherford contends that drawworks is
operated manually: “Any argument that an actuator could be a rig hand who
could move the bails manually, would be contrary to the scope and intent of
the description in the '744 Patent that movement of the bails is „actuated‟
through the mechanical action of elements such as pistons and cylinders.”
(Weatherford Appeal Br. 8). The Examiner did not provide evidence or a
persuasive rationale to the contrary, but rather appeared to not take into

5
“a mechanism that puts something into automatic action”
(http://www.thefreedictionary.com/actuator, accessed August 12, 2013.)
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account the ordinary meaning of “actuator” as it would be understood upon
reading the „744 patent. The Examiner did not provide evidence that the
drawworks activates or puts into automatic action the elevator to which it is
attached. Consequently, we cannot sustain the rejection of claims 5, 8-13,
15-18, and 20-31.

Claim 19
Claim 19 depends on claim 5 and further recites “wherein the bail
actuator comprises at least one piston and cylinder assembly.” The
Examiner cites Krasnov for teaching an actuator meeting this claim
limitation. However, the Examiner improperly found that Gjedebo describes
an actuator. Since the rejection as stated by the Examiner is deficient, we
are compelled to reverse the rejection of claim 19 as obvious in view of
Gjedebo, Brown, and Krasnov.

VII. NEW GROUND OF REJECTION
We agreed with Weatherford that Gjedebo is deficient in not teaching
an actuator nor an elevator connected to a top drive, and therefore reversed
all the Examiner‟s rejections. However, after considering the description by
Krasnov of a device for connecting drill pipe, we conclude that claims 5, 8-
13, and 15-31 are obvious under 35 U.S.C. § 103 in view of Gjedebo,
Brown, and Krasnov. We designate this as a new ground of rejection under
37 C.F.R. § 41.77(b). The rationale for the rejection is set forth below. We
also explain why claim 2 is not subject to this rejection.

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Claim 2
Claim 2 recites “further comprising using the elevator to move the
first tubular in relation to the pair of bails towards or away from the top
drive for gripping the first tubular.” Weatherford argues that this “feature is
shown in FIGS. 2a-2d of the '744 Patent and refers to the pistons 117, 118
and cylinders 119, 120, which can move the elevator along the bail, toward
and away from the top drive 105, to which the bails are connected.”
(Weatherford Appeal Br. 5.) Weatherford reproduced Figures 2c and 2d of
the „744 patent showing the bails moving the elevator carrying the tubular
from a lowered position to a raised position (Weatherford Rebuttal Br. 2; see
„744 patent, col. 3, ll. 30-35 and 48-52). As described at column 3, lines 30-
35 of the „744 patent:
The elevator 102 is provided with pins 115 on either side
thereof and projecting therefrom. The pins 115 are located in
slots 116 and 116g. A piston 117, 118 and cylinder 119, 120 are
arranged in each of the bails 103, 104. The cylinders are
arranged in slot 121, 122.
Thus, Weatherford takes the position that “using the elevator to
move the first tubular in relation to the pair of bails towards or away from
the top drive” means that the elevator moves up and down with respect to
the bails as shown in Figures 2c and 2d of the „744 patent, e.g., along the
slots as described in the patent (Weatherford Rebuttal Br. 3).
Claim terms are given their broadest reasonable in view of the
Specification. However, in interpreting the claims we must safeguard
against importing structural limitations from the Specification into the
claims, when the language of the claim does not impose such structure.
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
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2004); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003). In this case, the language of “using the elevator to move the first
tubular in relation to the pair of bails towards or away from the top drive”
imposes the limitation that the elevator, which holds the tubular, must be
operated in such a way that the tubular moves in reference or relative to (“in
relation”) to the bails “towards or away from the top drive.” The example
in the „744 patent accomplishes this by having slots in the bails which allow
the elevator to ride up them.
6
As argued by Weatherford, this feature is not
described in Gjedebo because the elevator is connected to the end of the
bails and cannot move in relation to the bails. Thus, in Gjedebo the elevator
cannot move the first tubular in relation to the bails as required in claim 2
(Weatherford Rebuttal Br. 3-4). Krasnov moves the bails upward but this
done by pivoting the bails (“links”) horizontally (Krasnov, col. 2, ll. 43-44)
as shown in Krasnov‟s Figures 2 and 3 (K6). The tubular is moved to the
side of the top drive, but not towards or away from it. Importantly, the
elevator is not used to move the first tubular in relation to the pair of bails as
required by claim 2.
Consequently, the subject matter of claim 2 is not obvious in view of
Gjedebo, Brown, and Krasnov.

6
“What we have is the elevator moving along the bail itself.” (Oral Hearing
Transcript, p. 5, ll. 19-20). See also Oral Hearing Transcript, p. 5, l. 9 to p.
10, l. 8.

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Claim 5
Claim 5 is directed to a method of connecting casing sections by using
a top drive. In the first steps of the method, an elevator is engaged with a
second casing which is to be connected to a first casing. This is
accomplished in a series of steps which begins with “operating a bail
actuator to move the elevator and the second casing section into substantial
alignment with the top drive.”
Gjedebo describes a method of using a device to interconnect a first
casing (“pipe” 3) to a second casing (“casing “1”) using an elevator and
drive stem connected to a top drive (G1 and G3). Gjedebo teaches using the
elevator to move a second casing pipe into alignment in order to
interconnect it to a first casing pipe (G1, G3, and G7) as in the first steps of
claim 5. Gjedebo teaches that a pipe 3 – a tubular – is “suspended from the
elevator” and “the pipe is lowered down to contact with the casing by means
of the telescope” (G7) where the telescope 9, 10 “being connected to the
output shaft (8) of the top drive (7)” (G5). Gjedebo does not use an actuator
to perform the operation as required by the claim. However, as explained
below, this feature is described in Krasnov.
Krasnov describes a link assembly connecting the elevator to the top
drive comprising pistons and cylinders which serve as a bail actuator (K1-
K3; Answer 5). Krasnov describes closing the elevator 45 around the drill
pipe (K8) and then actuating the piston cylinder actuators which move
“elevator 45 “upward” under the top drive (K9). This movement thus aligns
the drill pipe with the top drive. While Krasnov teaches aligning a drill pipe,
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not a casing, for the following reasons, the latter would have been obvious to
one of ordinary skill in the art in combination with Gjedebo.
Weatherford acknowledges that both casings and drill pipes are
tubulars, and thus members of the same class of structural elements („744
patent, col 1, ll. 24-28; Oral Hearing Transcript, p. 4, l. 21 to p. 5, l. 9).
Logically, because Krasnov teaches aligning a drill pipe with an elevator
attached to a top drive in order to attach the pipe to another stand of drill
pipe, the skilled worker would have seen that such operation would be
generally useful when connecting other tubulars and would have found it
obvious to apply it to casings, as taught by Gjedebo, when forming the
casing of a drilled well for the advantages taught by Krasnov, i.e.,
facilitating making connections (K14).
Following the step of operating the bail actuator, claim 5 recites
“gripping an inner wall of the second casing section by actuating a plurality
of radially movable gripping elements.” This gripping step is performed in
both Gjedebo and Krasnov, but not with a plurality of gripping elements.
As explained by Gjedebo, the catcher 11 serves this purpose because
it is “adapted to be guided into the pipe (3) and to be expanded to rest
against the pipe and, thus, to establish an internal friction connection.” (G5.)
The catcher 11, however, is cylindrically shaped device with no apparent
plurality of gripping elements as required by the claim. Krasnov uses a
drive stem to grip the pipe, but it also does not appear to be comprised of a
plurality of gripping elements (K10).
The gripping elements with a plurality of radially movable elements
were found by the Examiner to have been taught by Brown (Answer 4). The
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Examiner‟s determination is reasonable that it “would have been obvious to
one of ordinary skill in the art to have utilized the pipe gripping device of
Brown '675 for that of the bellows device shown in Gjedebo '322 as a mere
substation of known gripping devices for pipes.” (Id.)
After the casing inner wall is gripped, the claim calls for “supporting a
weight of the second casing section with the top drive.” This step is
performed in both Gjedebo and Krasnov. According to Gjedebo, when the
pipe 3 is attached to the telescope (9, 10), “the pipe is lowered down to
contact with the casing by means of the telescope.” (G7.) The telescope is
attached to the top drive (G1 and G5). Because the pipe is lowered by the
telescope, and the telescope is attached to the top drive, there is a factual
basis to believe that this step of claim 5 is met. Likewise, Krasnov describes
connecting the drill pipe to the drive stem 23, which in turn is connected to
the top drive, and then rotating the drive stem 23 to make the connection
with a second pipe (K10) which would result in the second pipe being
supported by the top drive as recited in the claim.
The last recited step of “rotating the first tubular using the top drive,
thereby connecting the first tubular to a second tubular” is also met by
Gjedebo. Gjedebo describes using a tubular telescopic device (9,10),
provided with a catcher (11), connected to the output of the top drive to
rotate the pipe and screw it into the socket of another pipe to which it is to be
connected (G5, G7, and G9).

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Claim 8
Claim 8 depends on claim 5, and further recites “wherein the elevator
is coupled to the top drive using at least one bail.” In Gjedebo, the elevator
is attached to a drawworks (G8).
Krasnov, as found by the Examiner, describes an elevator attached to
a top drive (Answer 5). The elevator is connected to the top drive by a link
assembly (K1) that comprises pistons and cylinders as recited in dependent
claim 19 (K2 and K3). The link assembly serves the same function as the
“bails” recited in claim 8. A person of ordinary skill in the art at the time of
the invention would have found it obvious to connect the elevator to the top
drive with an articulated assembly (i.e., bail), as taught by Krasnov, because
of its advantage in allowing tubulars to be easily connected while avoiding
damage to threads (K14). Thus, the recited feature of “wherein the elevator
is coupled to the top drive using at least one bail” is suggested by the
combination of Gjedebo and Krasnov.

Claims 9-20
With respect to claims 9-20 which depend on claim 5, Tesco
identified the features of the claims in Krasnov (Request for Inter Partes
Reexamination 112-115). We find Tesco‟s contentions factually supported
and adopt them herein.

Claims 29-31
Claim 29, like claim 5, is directed to a process of connecting casings
using a top drive. Krasnov describes substantially all the steps recited in
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claim 29, but performs them with drill pipe, not casing as recited in the
claim. However Gjedebo describes a similar method to Krasnov, but for
connecting casings together (G1). As discussed already, Weatherford
acknowledges that both casings and drill pipes are tubulars, and thus
members of the same class of structural elements. One of ordinary skill in
the art would have recognized that Krasnov‟s method for connecting drill
pipes would be generally useful when connecting other tubulars and would
have found it obvious to apply it to casings when forming the casing of a
drilled well for the advantages taught by Krasnov, i.e., facilitating making
connections (K14).
For step [a] of “providing a top drive assembly having a top drive and
a plurality of radially displaceable gripping elements for gripping an inner
wall of the casing,” Krasnov describes a top drive (K1 and K4) and a
gripping element to grip a pipe drill (drive stem 23), but not “a plurality of
radially displaceable gripping elements for gripping an inner wall of the
casing.” However, as stated above, it would have been obvious to one of
ordinary skill in the art to have used Brown‟s gripping device for its
established function in gripping casing. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007) (“. . . a court must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions.”)
For step [b] of “supporting an elevator from the top drive assembly
with at least one bail, the at least one bail having an actuator coupled thereto,
the actuator adapted to pivot the at least one bail about a horizontal axis,”
Krasnov describes an elevator attached to a top drive assembly with link
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sections (a “bail”) and a piston/cylinder actuator that performs this function
(K2, K3, K6, and K9).
Krasnov also describes steps [c]-[k] of claim 29, although for a drill
pipe not a casing as claimed (K5-K12). The steps involve moving a casing
with an elevator, as described by both Krasnov and Gjedebo (G11; K9), “[d]
engaging a second casing with the elevator” (K8), “[e] moving the second
casing to a well center by operating the actuator” (K9); “[f] gripping the
second casing with the top drive assembly” (K10 and K12); “[g] threading
the second casing to the first casing by rotating an output of the top drive to
form a joint and a casing string” (K10); and “[k] disengaging the top drive
assembly from the casing string” (K7 and K13).
With respect to step [g] of “threading the second casing to the first
casing by rotating an output of the top drive to form a joint and a casing
string,” Krasnov teaches that the “driller will rotate the drive stem 23 to
make up the connection with the tool joint 47.” (K10.) Since the drive stem
is connected to the top drive and rotated by it (K4), it reasonable to believe
that the driller is using the top drive to rotate the drive stem. Nonetheless, it
would be obvious to do so because Gjedebo, in a similar method of
connecting tubulars, uses the top drive to attach a second tubular to a first
tubular (“Then, the pipe is lowered down to contact with the casing by
means of the telescope and put into rotation by means of the top drive [7].
The pipe is lowered gradually by means of the telescope as it is screwed to
the top of the casing.” (G7).)
With respect to claims 30 and 31 which depend on claim 29, Tesco
identified the features of the claims in Gjedebo (Request for Inter Partes
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Reexamination 25-26). We find Tesco‟s contentions factually supported
and adopt them herein.

Claims 21-28
Claim 21 is an apparatus claim. The apparatus comprises (1) an
elevator; (2) “at least one bail operatively coupled to the top drive at one end
and the at least one elevator at another end”; (3) “an actuator operatively
coupled to the at least one bail and configured to rotate the at least one bail
about a horizontal axis”; and (4) “a plurality of gripping elements
operatively coupled to the top drive and configured to be radially
displaceable for engagement with an inner wall of a casing.”
Krasnov describes an apparatus for connecting drill pipe comprising
claimed elements (1) through (3). Specifically, Krasnov teaches an elevator
which is connected to a top drive with link sections which serve as bails
(elements (1) and (2); K1); and a link assembly, which includes hydraulic
cylinders and piston rods (K2 and K3), where the links serve as bails and the
cylinders/rods act as actuators which swivel and enable movement as in
element (3).
Krasnov does not describe gripping elements with the structure recited
in element (4) of claim 21. However, gripping elements with such structure
are taught by Brown. It would have been obvious to one of ordinary skill in
the art to substitute Brown‟s gripping tool for Krasnov‟s for its established
function in gripping casing employed as a drilling string (Brown Abstract:
“A drive connection for connecting a rotary power source to a string of well
casing employed as a rotary drilling string. The drive connection . . . is
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provided with . . . a slip expander for gripping the interior of the casing and
pipe-gripping shoes operable in response to angular movement of the
mandrel to apply torsional force to the casing.”) To the extent that Krasnov
is drawn to drill pipe and Brown to casing, we have already found it obvious
to apply Krasnov‟s teaching to casing as described in Gjedebo.
We note that the claim preamble recites that it is drawn to an
“apparatus for connecting casings using a top drive assembly.” “Preamble
language that merely states the purpose or intended use of an invention is
generally not treated as limiting the scope of the claim.” Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006). “If the body of the
claim „sets out the complete invention,‟ the preamble is not ordinarily
treated as limiting the scope of the claim. Schumer v. Lab. Computer Sys.,
Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002). However, the preamble is
regarded as limiting if it recites essential structure that is important to the
invention or necessary to give meaning to the claim.” Bicon, 441 F.3d at
952. “[W]hen the limitations in the body of the claim „rely upon and derive
antecedent basis from the preamble, then the preamble may act as a
necessary component of the claimed invention.‟” Eaton Corp. v. Rockwell
Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” Id. In this case, there is
insufficient evidence that claim preamble imparts a structure to the claim
which is not already recited in the body of the claim.
During oral argument, Weatherford argued that the claim preamble in
combination with the gripping elements require the top drive to rotate the
casings to connect them (Oral Hearing Transcript, p. 17, l. 7 to p. 18, l. 7).
However, first, we fail to see what additional structure that would add to the
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claim. Second, since the gripping elements are coupled to the top drive, the
top drive would be capable of being rotated to connect casing using the
gripping elements, even if that step was not explicitly taught or suggested by
Krasnov.
With respect to claims 22-28 which depend on claim 21, Tesco
identified the features of the claims in Krasnov (Request for Inter Partes
Reexamination 220). We find Tesco‟s contentions factually supported and
adopt them herein.

TIME PERIOD; NEW GROUND
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Accordingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record.
Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c).
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board‟s entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board‟s rejection is maintained or has been overcome.
The proceeding will then be returned to the Board together with any
comments and reply submitted by the owner and/or requester under
37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by
the Board as provided by 37 C.F.R. § 41.77(f).

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REVERSED; § 41.77(b)

cc:
Patent Owner:

Morgan Lewis & Bockius LLP (WA)
1111 Pennsylvania Ave. NW
Washington, DC 20004

Third Party Requester:

Bracewell & Giuliani LLP
P.O. Box 61389
Houston, TX 77208-1389

Mr. Todd D. Mattingly
Bracewell & Giuliani
711 Louisiana Street, Suite 2300
Houston, Texas 77002

alw