Ex Parte 7377324 et al

Patent Trial and Appeal Board

Nov 27, 2012

95000418 (P.T.A.B. Nov. 27, 2012)

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.
95/000,418 11/25/2008 7377324 069669-0003 4212
74954 7590 11/27/2012
Bracewell & Giuliani LLP
711 Louisiana Street
Suite 2300
Houston, TX 77002-2770
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
11/27/2012 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
____________

WEATHERFORD INTERNATIONAL, INC.
Requester

v.

TESCO CORPORATION
Patent Owner and Appellant
____________

Appeal 2012-008959
Reexamination Control 95/000,418
Patent 7,377,324 B21
Technology Center 3900
____________

Before DANIEL S. SONG, JOSIAH C. COCKS, and
MICHAEL R. ZECHER, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent involved in this reexamination proceeding (hereinafter the
“‘324 Patent”) issued to Beierbach et al. on May 27, 2008.
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A. STATEMENT OF THE CASE
Summary
Patent Owner Tesco Corporation (“Tesco”)2 appeals under 35 U.S.C.
§§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-3 and 5-34,
claim 4 having been confirmed.3 Third-Party Requester Weatherford
International, Inc. filed a request for inter partes reexamination on
November 25, 2008, but has filed no briefs in connection with this appeal.
An oral hearing was conducted on August 1, 2012.4
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a).
We reverse the Examiner’s decision to reject claims 1-3 and 5-34.
Related Proceedings
We are informed that the ‘324 patent is involved in litigation in the
U.S. Dist. Ct. for the Southern Dist. of Texas styled C.A. H-08-2531, Tesco
v. Weatherford et al. (App. Br., 1.)

2 See Patent Assignment Abstract of Title, Reel 018107 Frame 0957
which was entered into the record of this proceeding as “Title Report” on
December 03, 2008.

3 See Tesco’s Appeal Brief filed December 06, 2011 (“App. Br.”).

4 This appeal is related to appeal 2012-008625 (inter partes
reexamination control 95/000,407). Oral argument involving this involved
appeal and that concerning 2012-008625 were heard together. A transcript
of the hearing was entered into the record of the 2012-008625 proceeding on
September 20, 2012.
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The Invention
The invention relates to a pipe handling device used in connection
with the drilling or lining of a wellbore. (‘324 Patent, 1:12-16.) Claim 1 is
reproduced below as it appears in Tesco’s Appeal Brief (App. Br., Claims
App’x.)5:
1. (Original) A pipe handling device for mounting onto a pipe
engaging apparatus, the pipe engaging apparatus including a main
body and a pipe gripping mechanism to grip a pipe for rotation and
axial movement thereof and being connectable to a top drive, the
pipe handling device comprising:

a link arm having a first end pivotally connected to the pipe
engaging apparatus and an outboard end pivotally connectable to a
pipe elevator segment, the link arm being sized to present a pipe
lifted by the pipe elevator segment into a position to be gripped by
the pipe engaging apparatus.

The Prior Art
Brown, deceased (“Brown”) 3,915,244 Oct. 28, 1975
Tessari et al. (“Tessari”) 5,433,279 Jul. 18, 1995
Seneviratne 6,276,450 Aug. 21, 2001
Kamphorst et al. (“Kamphorst”) 6,527,493 Mar. 4, 2003
Snider et al. (“Snider”) 6,536,520 Mar. 25, 2003
York et al. (“York”) 6,679,333 Jan. 20, 2004
Shahin et al. (“Shahin”) 2004/0003490 Jan. 8, 2004
Pietras GB 2340859 Mar. 1, 2000

The Involved Rejections
(1) The Examiner rejected claims 1, 2, 9, 12, and 13 under 35 U.S.C.
§ 102(b) as anticipated by Seneviratne.

5 Claim 1 is reproduced in a format which complies with 37 C.F.R.
§ 1.75(i).
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(2) The Examiner rejected claims 1-3 and 9-13 under 35 U.S.C.
§ 102(b) as anticipated by Tessari.
(3) The Examiner rejected claims 1-3 and 9-13 under 35 U.S.C.
§ 102(e) as anticipated by York.
(4) The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1-3 above in view
of Seneviratne, Tessari et al., York et al. or Kamphorst et al.”
(Ans., 8.)6
(5) The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1-3 above in view
of Tessari et al., York et al. or Kamphorst et al.” (Id.)
(6) The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1-3 above in view
of Shahin et al, Tessari et al., Seneviratne, York et al. or Brown.”
(Id. at 9.)
(7) The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1-3 above in view
of York et al., Kamphorst et al. or Tessari et al.” (Id. at 10.)
(8) The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1-3 above in view
of Tessari et al. or York et al.” (Id. at 11.)

6 The Examiner’s formulation of the rejection is reproduced here as it
appears in the Answer. The “rejections of paragraphs 1-3” is a reference to
the prior art rejections numbered in this opinion as (1), (2), and (3).
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(9) The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1-3 above in view
of Tessari et al., Seneviratne, York et al. or Kamphorst et al.” (Id.)
(10) The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1-3 above in view
of Tessari et al., Seneviratne, York et al. or Kamphorst et al.” (Id.
at 12.)
(11) The Examiner rejected claims 14-18 under 35 U.S.C. § 102(b)
as anticipated by Seneviratne.
(12) The Examiner rejected claims 14-19 and 21 under 35 U.S.C.
§ 102(b) as anticipated by York.
(13) The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Shahin and Tessari, Seneviratne, or York.
(14) The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Snider and Tessari, Seneviratne, or York.
(15) The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 12-15 above in
view of Tessari et al., Seneviratne, York et al. or Brown.” (Id. at
15.)7
(16) The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 12-15 above in
view of Seneviratne, York et al. or Kamphorst.” (Id.)

7 The “rejections of paragraphs 12-15” is a reference to the rejections
numbered in this opinion as (11), (12), (13), and (14).
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(17) The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 12-15 above in
view of Seneviratne or York et al.” (Id. at 16.)
(18) The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 18 above in view of
Tessari et al., Seneviratne, York et al., or Kamphorst et al.” (Id. at
17.)8
(19) The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 12-15 above in
view of York et al., Shahin et al. or Snider et al.” (Id.)
(20) The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 12-15 above in
view of “Admitted Prior Art”9, Shahin et al. or Tessari et al.” (Id.
at 18.)
(21) The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 12-15 above in
view of York et al., Shahin et al. or Snider.” (Id.)
(22) The Examiner rejected claims 22-26 under 35 U.S.C. § 102(b)
as anticipated by Seneviratne.
(23) The Examiner rejected claims 22-26 under 35 U.S.C. § 102(b)
as anticipated by York.

8 The “rejection of paragraph 18” is a reference to the rejection
numbered in this opinion as (17).

9 It is not evident what portion of the record is regarded as “Admitted
Prior Art.”
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(24) The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Shahin and Tessari, Seneviratne, Pietras, York,
or Kamphorst.
(25) The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 23-25 above in
view of Tessari et al., Seneviratne, York et al. or Brown” (Id. at
20.)10
(26) The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 23-25 above in
view of Tessari et al., Seneviratne, Pietras, York et al. or
Kamphorst et al.” (Id. at 21.)
(27) The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 23-25 above in
view of Seneviratne or York et al.” (Id. at 22.)
(28) The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 28 above in view of
Tessari et al., Seneviratne, York et al. or Kamphorst et al.” (Id.)11
(29) The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Seneviratne and “Admitted Prior Art,” Shahin,
or Tessari.

10 The “rejections of paragraphs 23-25” refers to the rejections
numbered in this opinion as (22), (23), and (24).

11 The “rejection of paragraphs 28” refers to the rejection numbered in
this opinion as (27).
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(30) The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as
unpatentable over York and “Admitted Prior Art,” Shahin, or
Tessari.
(31) The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Shahin and Tessari, Seneviratne or York.
(32) The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Snider and Shahin or Tessari.
(33) The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 30-33 above in
view of Tessari et al., Seneviratne, York et al. or Brown.” (Id. at
25.)12
(34) The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 30-33 above in
view of Seneviratne, Pietras, York et al. or Kamphorst et al.” (Id.
at 26.)
(35) The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 30-33 above in
view of Seneviratne or York. (Id. at 26.)
(36) The Examiner rejected claims 31-34 under 35 U.S.C. § 102(b)
as anticipated by Seneviratne.
(37) The Examiner rejected claims 31-34 under 35 U.S.C. § 102(b)
as anticipated by York.

12 The “rejections of paragraphs 30-33” is a reference to the rejections
numbered (29), (30), (31), and (32).
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(38) The Examiner rejected claim 31 under 35 U.S.C. § 103(a) as
unpatentable over Shahin and Tessari, Seneviratne, or York.
(39) The Examiner rejected claim 31 under 35 U.S.C. § 103(a) as
unpatentable over Snider and Tessari, Seneviratne, or York.
(40) The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 37-40 above in
view of Tessari et al., Seneviratne, York et al. or Brown.” (Id. at
29.)13
(41) The Examiner rejected claim 33 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 37-40 above in
view of Seneviratne, Pietras, York et al or Kamphorst et al.” (Id.
at 30.)
(42) The Examiner rejected claim 34 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 37-40 above in
view of Seneviratne, or York et al.” (Id. )
(43) The Examiner rejected claims 5-8 under 35 U.S.C. § 103(a) as
unpatentable over Tessari and Pietras.
B. ISSUES
1. Does a threaded connection for a pipe as is disclosed in each of
Tessari, Seneviratne, and York constitute the “pipe gripping mechanism”
required by independent claim 1?
2. Do Tessari, Seneviratne, Pietras, York, Snider, Kamphorst and
Brown disclose the pivotal connection of a pipe handling component to a

13 The “rejections of paragraphs 37-40” is a reference to the rejections
numbered in this opinion as (36), (37), (38), and (39).
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pipe engaging apparatus as required by independent claims 1, 14, 22, 27, and
31?
3. Does the record establish that the Declaration of Warren P.
Schneider is adequate to antedate the Shahin reference in accordance with 37
C.F.R. § 1.131?
C. ANALYSIS
At the outset, Tesco urges that an “issue” involved in this appeal is the
Examiner’s refusal to enter a claim amendment submitted during the course
of prosecution in this reexamination proceeding. (App. Br., 30.) The
Examiner’s refusal to enter an amendment, however, is not a “decision
adverse to the patentability” of a claim or an “appeal from the final rejection
of any claim,” and is thus not an appealable issue. See 35 U.S.C. §§ 134(b)
and 315(a). Tesco’s recourse was to seek review of the Examiner’s decision
via petition to the Director, not by appeal to this Board.
With respect to the claim rejections at issue in this appeal, the
Examiner has applied forty-three separate grounds of rejection based on
eight references. Claims 1, 14, 22, 27, and 31 are the independent claims.
Tesco’s challenge to the Examiner’s rejections primarily centers on subject
matter of those independent claims. Tesco also relies on the declaration
testimony of Warren P. Schneider in challenging the Examiner’s
rejections.14

14 In connection with this reexamination proceeding, a “Declaration of
Warren P. Schneider under 37 C.F.R. 1.132” was entered into record on
April 10, 2009. It is evident that Tesco views that declaration as evidence to
be evaluated in resolving this appeal. (App. Br., 23-28.) It is also apparent
that the Examiner has considered the declaration. (Ans., 38-39.) We note,
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Having reviewed the record, we discern that the following features,
which appear in various portions of the independent claims, are at issue in
this appeal: (1) “a pipe gripping mechanism”; and (2) a pipe handling
component pivotally connected to a pipe engaging apparatus.
(1) “a pipe gripping mechanism”
Claim 1 is directed to a pipe handling device for mounting onto a pipe
engaging apparatus and requires “a pipe gripping mechanism” which
operates “to grip a pipe for rotational and axial movement thereof.” In
accounting for that feature, the Examiner relied, in various instances, on the
content of each the prior art references to Tessari, Seneviratne, and York.
Tesco challenges the Examiner’s rejections of claim 1 with respect to
disclosure in those references of “a pipe gripping mechanism.”
In rejecting Tesco’s claims based on Tessari, Seneviratne, and York,
the Examiner has taken the position that a threaded connection associated
with a pipe for connecting the pipe to a drive assembly of a well drilling
assembly constitutes a pipe gripping mechanism. In particular, the
Examiner characterizes “threads” which correspond to threads on a pipe in
each of Tessari, Senevirante, and York as forming “a pipe gripping
mechanism.” (E.g., Ans., 5-8.) Tesco argues that in the context of the ‘324
patent, threads which interact with corresponding threads of a pipe do not

however, that Tesco failed to list the declaration in the evidence appendix of
its Appeal Brief as is required. See 37 C.F.R. § 41.67(b)(1)(ix). We
admonish Tesco for failing to comply with proper procedure, however, we
regard the above-noted declaration of Mr. Schneider as before us in this
appeal.

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constitute a pipe gripping mechanism. (App. Br., 11.) Specifically, Tesco
submits that the ordinary meaning of the term “grip” or “gripping” is “to
grasp and hold” and conveys the application of gripping forces in a radial
direction with respect to a gripped pipe and does not include threads. (Id.)
We are in agreement with Tesco. The ‘324 patent does not give the
term “pipe gripping mechanism” a special meaning. In construing that term,
we therefore look to its ordinary and customary meaning. See Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir.
2003)(“In the absence of an express intent to impart a novel meaning to the
claim terms, the words are presumed to take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art.”)
The ordinary meaning of “grip” is “to secure and keep a tight hold on:
GRASP.” Webster’s II New Riverside Dictionary, 549 (1988). The ordinary
meaning of “mechanism” is “[a] mechanical device: MACHINE.” Id. at
737. In reciting “a pipe gripping mechanism,” the claims thus require a
mechanical device or machine which operates to keep hold on or grasp a
pipe. In our view, one with ordinary skill in the art would not have regarded
individual threads of a threaded connection as reasonably forming such a
device. We note that such a view is also supported by the declaration
testimony of Mr. Schneider, who characterizes a “gripping tool” for a pipe
as something that is distinct from, and an improvement upon, a “threaded”
coupling for a pipe. (See Schneider Decl., p. 9, ¶ 22.)
We further observe that claim 1 also specifies a function of the pipe
gripping mechanism in that it must be operable “to grip a pipe for rotational
and axial movement thereof.” (App. Br., Claims App’x.) It is not apparent
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to us how the threads of a threaded connection between a pipe and another
component operate to perform that function.
We have carefully considered the Examiner’s assessment of Tessari,
Senevirante, and York. However, for the foregoing reasons, we do not
sustain the Examiner’s rejections of claim 1 or dependent claims 2-13
involving those references in which portions of a threaded connection are
regarded as constituting the required “pipe gripping mechanism.”
(2) a pipe handling component pivotally connected to a pipe
engaging apparatus

Each of claims 1, 14, 22, 27, and 31 requires the feature of a pipe
handling component that is pivotally connected to a pipe engaging
apparatus. For instance, claim 1 sets forth a “pipe handling device for
mounting onto a pipe engaging apparatus” where the pipe handling device
incorporates a “link arm having a first end pivotally connected to the pipe
engaging apparatus.” (App. Br., Claims App’x.) There is no dispute that
each of claims 14, 22, 27, 31 also requires a similar pivotal connection or
coupling relationship between a pipe handling component and a pipe
engaging apparatus.
Tesco urges that when the above-noted claims are interpreted in the
context of the disclosure of the ‘324 patent, the connection of a pipe
handling device to a pipe engaging apparatus distinguishes such a
relationship from that disclosed throughout the prior art in which the pipe
engaging apparatus is only connected directly to a separate top drive
component. In particular, Tesco draws distinction between its claims and
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the mounting of pipe handling components in each of Tessari, Seneviratne,
Pietras, York, Snider, Kamphorst, and Brown. (App. Br., 12-19.)
The Examiner takes the position that the claims do not exclude
mounting to a top drive and generally encompass within their scope any
mounting of a pipe handling component to a pipe engaging device even if
such mounting is something characterized as “partially” mounted. (Ans.,
33-34.) Relying on responses from the third party requester filed during the
course of this reexamination proceeding, the Examiner submits that the
mounting required by the claims is set forth in the prior art. (Id.)
Even assuming the Examiner is correct that the involved claims do not
exclude attachment of a pipe handling device to a component regarded as a
top drive, what is expressly required is that a pipe handling component to
include structure which is pivotally connected to a pipe engaging apparatus.
After a thorough review of the record, we are not persuaded that the above-
noted prior art references disclose such a pivotal mounting arrangement of a
pipe handling assembly to a pipe engaging apparatus. We share Tesco’s
view that any such pivotal connection in those references arises between a
pipe handling component and a top drive assembly rather than a pipe
engaging apparatus.
Having reviewed the corresponding rejections, we are not persuaded
that the pivotal mounting features required by claims 1, 14, 22, 27, and 31
are disclosed in, or would have been obvious in view of, any of Tessari,
Seneviratne, Pietras, York, Snider, Kamphorst or Brown. Accordingly, we
do not sustain the rejections which are premised on the disclosure of those
references as setting forth the required pivotal mounting arrangement.
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The Schneider Declaration
Tesco has introduced into the record a declaration from one Warren P.
Schneider. We note that while the title of the declaration makes explicit
reference only to “37 C.F.R. 1.132,” Tesco has characterized the declaration
as also a “1.131 declaration” which was submitted as evidence of an actual
reduction to practice of the invention of the ‘324 patent prior to the filing
date of Shahin, thereby antedating that reference and removing it as prior art.
(App. Br. 1, 23-26.) In connection with this appeal, the declaration’s status
as evidence submitted under 37 C.F.R. § 1.131 is unchallenged. We regard
the declaration as having been submitted in accordance with that section.
As set forth in 37 C.F.R. § 1.131(a), the owner of a patent under
reexamination may submit an oath or declaration to establish invention of
the subject matter of a rejected claim prior to the effective date of a prior art
reference. Part (b) of § 1.131 establishes the quality of the evidentiary proof
associated with a declaration which is necessary to make a showing of prior
invention:
(b) The showing of facts shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.

In assessing the Schneider declaration, the Examiner was seemingly
unpersuaded that Mr. Schneider’s testimony and the accompanying
photocopy exhibits in support of that testimony were adequate to
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demonstrate an actual reduction to practice of an invention corresponding to
the claims of the ‘324 patent. In particular, the Examiner’s position in that
regard is stated in the Right of Appeal Notice (“RAN”) mailed September 9,
2011 as follows (RAN, 70):
[T]he declaration of Schneider discusses a device that is ‘virtually
identical’ to that of the ‘443 device. However, as it is not the ‘443
device (as admitted in the declaration), reduction to practice of the
specific claimed invention cannot be established.

The Examiner further states in the Examiner’s Answer (Ans., 38):
The Examiner maintains that as the patented invention is admittedly
different from that which was discussed in the declaration and Patent
Owner has the burden of showing all the features. Patent Owner’s
contention that they do not need to match every feature to the figure is
irrelevant in that it must show enough that the Examiner can
determine that the claimed invention has been reduced to practice. As
the Examiner cannot do this based on evidence provided, Patent
Owner has not met the required burden and the rejections stand.

The statement directed to “the ‘443 device” is a reference to the
disclosure of US. Patent No. 7,140,443 (the“‘443 patent”) whose
reexamination and resulting appeal to this Board is the subject of related
appeal 2012-008625. The patent involved in the present reexamination
proceeding, i.e., the ‘324 patent, is a continuation of the above-noted patent
and their corresponding specifications appear essentially identical. We
discern also from the record of the original examination of the application
which became the ‘324 patent, that the patent is subject to a terminal
disclaimer disclaiming any patent term beyond that of the ‘443 patent.
Tesco contends that the Schneider Declaration and its associated
exhibits demonstrate that a product termed the “CDS Product” corresponds
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to the claimed invention of the ‘324 patent and was reduced to practice prior
to the filing date of Shahin on March 5, 2003. (App. Br., 23-28.) There is
no dispute that March 5, 2003 constitutes the effective date of Shahin.
Having reviewed the Schneider Declaration submission, we discern
that it presents testimony and records conveying that a device called the
“CDS Product” was created and subsequently commercialized and sold prior
to the filing date of the Shahin reference. The evidence also tends to
establish that the “CDS Product” includes the features of Tesco’s claimed
invention involved in this present appeal. In particular, the evidence
conveys that the CDS Product constitutes a pipe handling device for
operation in connection with a wellbore, in which the device incorporates a
pipe engaging apparatus, a pipe gripping mechanism, and a link arm
assembly pivotally connected to the pipe engaging apparatus. (E.g.,
Schneider Decl., pp. 3-9.)
We are cognizant of the Examiner’s general assessments, reproduced
above, that the evidentiary record embodied by the Schneider Declaration is
insufficient to establish reduction to practice of the claimed invention. The
underlying basis of those assessments, however, appears to be premised on
the belief that the declaration itself conveys the development of a device that
was only “virtually identical” to the claimed invention and thus allegedly
something other than the involved invention. While it is not apparent where
the term “virtually identical” appears in the Schneider Declaration, even
assuming it does, we think use of that term insufficient to render
inapplicable the evidentiary content of the declaration and its supporting
documentation in evaluating the issue of prior invention. Tesco submits that
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the Schneider Declaration and its supporting documentation demonstrates
adequate proof that reduction to practice of the claimed invention of the ‘324
patent occurred. Although the Examiner takes the view that the evidence is
insufficient in that regard, it is not apparent what claim features the
Examiner considers absent or unaccounted for in connection with the
Schneider Declaration and evidence submitted therewith.
Having duly considered the Schneider Declaration and its
accompanying exhibits, along with Tesco’s arguments, we conclude that
Tesco has set forth a sound evidentiary showing that an invention according
to Tesco’s claims at issue in this involved appeal was reduced to practice
prior to the filing date of the Shahin reference. Accordingly, we are in
agreement with Tesco that the record before us is sufficient to antedate
Shahin and disqualify it as available prior art. Accordingly, we do not
sustain the pertinent rejections advanced by the Examiner which require
incorporation of the teachings Shahin.
The Schneider Declaration was also offered as evidence directed to
secondary considerations of non-obvious. As discussed above, we have
determined that features required by each of the involved independent
claims are absent from the disclosures of Tessari, Seneviratne, Pietras, York,
Snider, Kamphorst and Brown. We have also determined that, on the record
before us, Tesco has suitably demonstrated that Shahin is unavailable as
prior art in rejecting the claims. As a result of our determinations, we do not
sustain any of the prior art rejections numbered 1-43 in this opinion.
Accordingly, we need not further consider the additional evidence of non-
obviousness which forms part of the Schneider Declaration.
Appeal 2012-008959
Reexamination Control 95/000,418
Patent 7,377,324 B2

19
D. CONCLUSION
1. A threaded connection for a pipe as is disclosed in each of
Tessari, Seneviratne, and York does not constitute the “pipe gripping
mechanism” required by independent claim 1.
2. Tessari, Seneviratne, Pietras, York, Snider, Kamphorst and
Brown do not disclose the pivotal connection of a pipe handling component
to a pipe engaging apparatus as required by independent claims 1, 14, 22, 27,
and 31.
3. The record establishes that the Declaration of Warren P.
Schneider is adequate to antedate the Shahin reference in accordance with 37
C.F.R. § 1.131.
E. ORDER
The Examiner’s decision to reject claims 1-3 and 5-34 (the rejections
numbered 1-43 in this opinion) is reversed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
Appeal 2012-008959
Reexamination Control 95/000,418
Patent 7,377,324 B2

20
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).

REVERSED

PATENT OWNER:
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THIRD-PARTY REQUESTER:
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