Ex Parte BiselDownload PDFPatent Trial and Appeal BoardMar 24, 201713206170 (P.T.A.B. Mar. 24, 2017) Copy Citation 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. 13/206,170 08/09/2011 Neal O. Bisel 657.002 3286 30589 7590 03/28/2017 DUNLAP CODDING, P.C. PO BOX 16370 OKLAHOMA CITY, OK 73113 EXAMINER GRAY, GEORGE STERLING ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 03/28/2017 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): docketing@dunlapcodding.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NEAL O. BISEL Appeal 2015-007046 Application 13/206,170 Technology Center 3600 Before MICHELLE R. OSINSKI, LISA M. GUIJT, and GORDON D. KINDER, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s decision2 rejecting claims 1—8 under 35 U.S.C. § 103(a) as unpatentable over 1 Appellant identifies the real party in interest as Reciprocating Rod Lift Systems, LLC. Br. 1. 2 Appeal is taken from the Final Office Action dated May 30, 2014 (“Final Act.”). Appeal 2015-007046 Application 13/206,170 APA,3 Langston,4 and API Specification 1 IB, Annexes A and B.5 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claims 1 and 5 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claims on appeal. 1. A polished rod for supporting a sucker rod string, comprising: a one piece shank having an upper end and a lower end, the upper end and the lower end each having a diameter; a first connector formed on the upper end of the shank; and a second connector formed on the lower end of the shank, wherein the shank has a sealing section extending from the lower end toward the upper end, the sealing section having a polished surface and a uniform cylindrical diameter, the uniform cylindrical diameter of the sealing section being a maximum diameter of the shank and substantially equal to the diameter of the upper end and the lower end of the shank, wherein the shank has a latching section formed between the sealing section and the upper end, the latching section of the 3 Appellant’s Admitted Prior Art, Spec. Fig. 3. 4 Well Servicing and Workover, The Lease Pumper’s Handbook, Chapter 17, Section B, 1st Ed. 2003, Commission on Marginally Producing Oil and Gas Wells in Oklahoma. 5 “Specification for Sucker Rods, Polished Rods and Liners, Coupling, Sinker Bars, Polished Rod Clamps, Sutffmg Boxes, and Pumping Tees,” API Spec. 1 IB, May 2010, Annex A, pp. 16—26, Annex B, pp. 29—36, 27th Ed., American Petroleum Institute. 2 Appeal 2015-007046 Application 13/206,170 shank having a diameter less than the diameter of the sealing section and the upper end. ANALYSIS Appellant argues claims 1—8 as a group. Br. 6-10. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(viii) (2011). Claims 2—8 stand or fall with claim 1. The Examiner finds, inter alia, that Figure 3 of the Specification discloses “a conventional polished rod,” as claimed, except that Figure 3 “does not disclose a latching section formed between the sealing section of the shank and an upper end.” Final Act. 3^4. The Examiner relies on Langston for disclosing, inter alia, “that it is known to use a short sucker rod as a Tift pony rod’ for attachment to the threaded upper end of a polished rod, and that the lift pony rod may be left in place during normal operations.’ '’ Id. at 4 (emphasis added) (citing Langston, e.g., Fig. 2; see also id. at 17B-6 (“The polished rod is installed last, and the lift pony on the top may be left in position or removed.”). The Examiner determines that [w]hen left in place, as disclosed by Langston, the combination of [Figure 3 of the Specification] and Langston provides a latching section formed between the sealing section of the shank and the upper end (threaded) of the lift pony rod at the elongated portion of the lift pony rod. In this regard, Langston uses a coupling for attaching the lift pony, the coupling having the largest OD in the assembly. Id. The Examiner reasons that it would have been obvious 3 Appeal 2015-007046 Application 13/206,170 to have eliminated the coupling and to have integrated the Langston lift pony rod with the . . . polished rod [(depicted in Figure 3 of the Specification)] in order to eliminate the need for a coupling and to make permanent and unitary what was suggested by Langston as a combination that could be left together indefinitely. This would have achieved the predictable result (a) that the reduced diameter portion of the Langston lift pony rod would be readily available for attaching by the rod elevator and then lifting the polished rod out of the way during a workover in which downhole sucker rods were to be pulled, without the necessity of ascending the well head to put a separate lift pony rod on the polished rod, and (b) that the largest OD of the shank assembly would be the polished rod, such that compatibility with components, such as the carrier bar, etc., would remain optimally compatible with the integrated assembly during re-assembly following the sucker rod maintenance. Id. The Examiner determines that Langston’s configuration of leaving the polished rod and pony lift rod coupled together, “serves no purpose other than to avoid the time and labor to take apart what all know will be put back together for the next rod job.” Final Act. 3. The Examiner determines that [s]uch practical advantages of integrating separate conventional parts into one (which is the effect of screwing two threaded components together) make it simple to appreciate previous case law holding that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Ans. 3 (citing Howard v. Detroit Stove Works, 150 U.S. 164 (1893)). Appellant argues that the Examiner has engaged in impermissible hindsight. Indeed, rejections based on obviousness must rest on a factual basis; in making such a rejection, the Examiner has the initial burden of 4 Appeal 2015-007046 Application 13/206,170 supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). However, as explained infra, we conclude that the Examiner has supplied the requisite factual basis in support of the Examiner’s conclusion that claim 1 is obvious, because the Examiner has provided support from Langston that discloses that the polished rod and pony lift rod may be left coupled together, as set forth supra. Moreover, although there are no per se rules of obviousness in the application of Howard v. Detroit Stove Works, the facts in the record support the Examiner’s conclusion of obviousness; in view of Langston’s suggestion to leave the rods coupled, integrating the latching section of the lift pony rod with the polished rod would be an obvious alternative. Appellant argues that Langston “clearly discloses a removable pony lift rod with a coupling attachment to the polished rod.” Br. 8. Appellant submits that because Langston discloses that the lift pony may be removed from the polished rod and because Langston is silent with respect to integrating the lift pony and polished rod into one piece, Langston “only suggests the long time industry standard of installing a pony rod at the upper end of a polished rod.” Id. at 9. However, Appellant’s argument does not address the rejection as articulated by the Examiner, which acknowledges that Langston teaches a pony lift rod removably coupled to the polished rod, but relies on Langston’s teaching that the removable pony lift rod may be left attached to the polished rod during normal operation, which fact the 5 Appeal 2015-007046 Application 13/206,170 Examiner reasons supports the rationale that one of ordinary skill would further integrate the pony lift rod and the polished rod to save time during a workover. Third, Appellant argues that “[t]here is no suggestion that it would be preferable to integrate the lift pony rod with the polished rod.” Br. 8; see also id. at 9 (citing Langston p. 17B-6 (“[Langston] describes ‘the lift pony on the top may be left in position or removed.”)). Appellant contends that even if it is readily known how to integrate one component with another component, [Langston] is silent with respect to why someone would have wanted to integrate a removable pony rod into a polished rod. Lurther, the mere knowledge of how to integrate components does not constitute, by itself, a reason to modify Appellant’s prior art to integrate the pony rod of [Langston], Id. at 9. However, Appellant’s argument is foreclosed by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a teaching or suggestion or motivation to combine known elements in order to show obviousness. Id. at 415. The Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Appellant also argues that one of ordinary skill in the art would not be motivated to modify the polished rod of [the APA] by forming an area of reduced diameter into the uniform, polished surface of a polished rod. 6 Appeal 2015-007046 Application 13/206,170 Such a modification would interfere with the ability of the polished rod to form a seal with the stuffing box. Br. 10. Appellant submits that from the teaching of Langston, “one of ordinary skill in the art would find that the solution for latching to a polished rod would be to attach a lift pony rod using a coupling designed for use with polished rods” and that “[such] a coupling is more than sufficient to provide an area for an elevator to latch.” Id. The Examiner responds that “[t]he possibility of the reduced diameter portion encountering the sealing area (the stuffing box) would be eliminated by choosing the respective lengths of the polished rod section and the now integrated latching section to appropriately space the latching section away from (above) the stuffing box.” Ans. 3. “[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Here, we determine that the Examiner has provided adequate factual underpinning to support the Examiner’s proposed modification, in that Langston suggests leaving the pony lift rod in place on the polished rod, as stated supra, such that a person of ordinary skill in the art would have been led to modify Langston’s polished rod to include a pony lift rod (and latching section) with a reasonable expectation of success. In reDroge, 695 F.3d 1334, 1338 (Fed. Cir. 2012). Accordingly, we sustain the Examiner’s rejection of independent claim 1, and claims 2—8 fall with claim 1. 7 Appeal 2015-007046 Application 13/206,170 DECISION The decision of the Examiner to reject claims 1-8 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation