Ex Parte Akins

Patent Trial and Appeal Board

Aug 21, 2013

11342395 (P.T.A.B. Aug. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHARLES THOMAS AKINS
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Appeal 2011-000075
Application 11/342,395
Technology Center 2800
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Before DEBRA K. STEPHENS, DAVID M. KOHUT, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000075
Application 11/342,395

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
21–39. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
The claimed subject matter relates to coding of drill pipes (Spec., p. 1,
ll. 5–8).
Claim 21 is illustrative and is reproduced below:
21. A drill pipe, comprising:
a pipe segment having an outer surface and a wear
allowance zone that extends from said outer surface to a
predetermined depth within said pipe segment;
a plate having an upper face and a perimeter edge, said
upper face including an identifying indicia for identifying said
pipe segment; and
an open cavity formed in said outer surface and having a
depth greater than a most inner depth of said wear allowance
zone, said plate coupled to said pipe segment within said open
cavity such that said upper face of said plate is located at or
below said most inner depth of said wear allowance one such
that at least a portion of said perimeter edge lies exposed
proximate a worn outer surface when said wear allowance zone
is removed from said outer surface.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Savage
Kao
US 5,202,680
US 5,497,879
Apr. 13, 1993
Mar. 12, 1996
Mordekhay US 2004/0092025 A1 May 13, 2004
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Application 11/342,395

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Kudo
Lubow
US 2004/0256463 A1
US 2005/0199724 A1
Dec. 23, 2004
Sep. 15, 2005
Tanimura JP 2000-090228 Mar. 31, 2000
Lang DE 19905490 Aug. 17, 2000
Williams WO 2005/001795 Jan. 6, 2005

Rejections
Claims 21–39 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Williams and Savage alone or in combination with other art (Ans. 3–
12).

Issues1
Appellant’s contentions present us with the following issues:
1. Whether the Examiner erred in finding the combination of
Williams and Savage teaches or suggests:
an open cavity formed in said outer surface and having a
depth greater than a most inner depth of said wear allowance
zone … such that at least a portion of said perimeter edge lies
exposed proximate a worn outer surface when said wear
allowance zone is removed from said outer surface,

as recited in independent claim 21 and commensurately recited in
independent claim 32;
2. Whether the Examiner erred by improperly combining the
teachings and suggestions of Williams and Savage.

1 Appellant presents arguments for claims 21, 22, 26, 27, and 32 collectively.
Although the other claims are addressed under separate headings, Appellant
merely references the arguments made for claim 21 without presenting any
additional arguments to establish separate patentability. We therefore treat
claim 21 as representative of all claims under appeal. 37 C.F.R. §
41.37(c)(1)(vii). Except for our ultimate decision, the other claims are not
discussed further herein.
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ANALYSIS
Issue 1
Appellant contends that “there is no teaching or suggestion in the
combination [of Williams and Savage] of an open recess or cavity having a
depth greater than a wear zone and having the disk positioned within that
open cavity such that it would serve as a wear indicator in addition to
providing identification data for the drill pipe” (App. Br. 10–11).
Williams “relates to a tubular member and methods for marking and
identifying tubular members” such as drill pipe (Williams, p. 1, ll. 3–5). The
Examiner relies on a particular embodiment shown in Fig. 3 of Williams and
described as follows:
An exemplary drill pipe segment 40 is shown having an
identification disk 42 fixedly secured within a sidewall 44 of
the segment 40. There is an exposed central portion 46 of the
disk 42 and a surrounding retained portion 48…. [T]he
exposed central portion 46 has a pattern of slots 50 that are cut
therewithin. The pattern of the slots 50, including the presence
or absence of slots, the number of slots, the arrangement, slot
shape, and so forth encodes identifying information concerning
the particular pipe segment 40.
(Williams, p. 13, ll. 19–30, emphases added)
The Examiner inferentially reasons that the combination of Williams’s
disclosure of the identification disk secured “within” a sidewall and express
reference to an “exposed central portion” and a “surrounding retained
portion” suggests that “[t]he retained portion is, therefore, implied to be
unexposed” (Ans. 3–4). Appellant disputes this inference, relying at least in
part on Fig. 5B of Williams, which Appellant asserts “shows the upper
portion of the disk located at the outer surface of the pipe” (App. Br. 9).
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Appellant’s reliance on Fig. 5B is misplaced. We find that the
structure shown in Fig. 5B is related to a distinct embodiment in which “a
series of bars 61 to 64 … is applied to the body of said tubular member [to]
form a bar code which is readable” (Williams, p. 14, ll. 14–23). One of skill
in the art would reasonably understand the inset portion of Fig. 5B to
correspond to one of the bars shown and identified in Fig. 5A rather than to
a square version of the identification tag 42 shown in Figs. 3 and 4 (see
Reply Br. 2).
Without addressing whether we agree that the Examiner’s drawing on
p. 4 of the Answer is “[t]he only way [] for the identification plate element
to have an exposed portion, an implied unexposed portion, and also be
within the sidewall” (Ans. 4), we agree with the Examiner’s more limited
finding that one of skill in the art would reasonably infer, as the Examiner
does, that Williams’s express teachings at least suggest the limitation recited
in claim 21 and commensurately recited in claim 32.

Issue 2
Appellant contends that:
one skilled in the art, when looking at the teachings of Williams
and Savage would not bury the disk in a recess and then fill it
with a resin because Williams teaches that the disk should be at
the surface of the pipe so that it can be easily read, which is
contrary to placing the disk within a recess and covering it with
resin to protect it
(App. Br. 11–12).
The Examiner finds that “Savage teaches a drill string segment having
a cavity/recess … having a plate-like, machine-readable element … located
therein” (Ans. 4). Appellant contends that Savage “does not teach or
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suggest an open cavity [because] Savage specifically teaches that the cavity
must be filled to prevent drilling material from entering the recess and
possibly damaging the delicate electronic component” (App. Br. 10).
We find this contention unpersuasive because it attacks Savage
individually when the Examiner has, in fact, relied on the combination of
Williams and Savage. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Specifically, the Examiner relies on Williams for suggesting the open cavity,
citing Savage instead “to further show that it is known in the art to place an
identification plate below the outer surface of a drill string segment (the
depth being a wear zone of the drill string segment)” (Ans. 15).
For these reasons, we are not persuaded that the Examiner improperly
combined the teachings and suggestions of Williams and Savage.

CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 21–39 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 21–39 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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