Ex Parte Britton

Patent Trial and Appeal Board

Jan 29, 2018

13267398 (P.T.A.B. Jan. 29, 2018)

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.
13/267,398 10/06/2011 Mark S. Britton 3500-042 1046
23547 7590
Mary M. Lee
MARY M LEE, P.C.
1300 E. NINTH STREET
SUITE 4
EDMOND, OK 73034-5760
EXAMINER
GRAY, GEORGE STERLING
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
mail @ marymlee. com
mml@marymlee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK S. BRITTON
Appeal 2017-003717
Application 13/267,398
Technology Center 3600
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark S. Britton (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1 and 9—21.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Mark S. Britton and Thru Tubing Solutions,
Inc., as the real parties in interest. Appeal Br. 1.
2 Claims 2—8 are objected to as being dependent on a rejected base claim,
but indicated to contain allowable subject matter (Final Act. 2), and claims
22 and 23 are cancelled (Appeal Br. A-5 (Claims App.).
Appeal 2017-003717
Application 13/267,398
CLAIMED SUBJECT MATTER
Claims 1 and 9 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A method for replacing a wellhead blowout preventer on
a wellhead with a Christmas tree, the method comprising:
supporting a coiled tubing injector head using a lifting
unit, wherein the coiled tubing injector head is free of coiled
tubing;
supporting a tool string in the coiled tubing injector head,
wherein the tool string comprises a donut and is unconnected to
a reel of coiled tubing;
installing the donut in the wellhead by inserting the tool
string through the wellhead blowout preventer by operating the
injector head and lifting unit;
removing the wellhead blowout preventer using the lifting
unit; and
positioning the Christmas tree on the wellhead using the
lifting unit.
Appeal Br. (Claims App. A-l).
REJECTIONS
I. Claims 1, 9, 14—19, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nguyen (US 2009/0211749 Al, published
Aug. 27, 2009) and Wood (US 7,681,632 B2, issued Mar. 23, 2010).
II. Claims 10—13 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nguyen, Wood, and Dallas (US 2009/0277647 Al,
published Nov. 12,2009).
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Appeal 2017-003717
Application 13/267,398
ANALYSIS
Rejection I—Claims 1, 9, 14—19, and 21
Claim 1
Claim 1 recites “supporting a tool string in the coiled tubing injector
head, wherein the tool string comprises a donut and is unconnected to a reel
of coiled tubing.” Appeal Br. (Claims App. A-l (emphasis added)). The
Examiner finds that Nguyen discloses supporting a tool string comprising a
donut (Final Act. 3 (citing Nguyen, Fig. 5)), but Nguyen fails to disclose
supporting the tool string in a coiled tubing injector head unconnected to a
reel of coiled tubing (id.). The Examiner relies on Wood for this teaching.
Id. at 3^4. The Examiner finds that Wood teaches an integrated top drive
and coiled tubing injector 40 (hereinafter, “integrated unit 40”) comprising a
top drive (top drive module 42) and a coiled tubing injector (CT module 44)
(citing Wood, Figs. 3, 5), and also finds that integrated unit 40 may be
operated free of coiled tubing (citing Wood, Figs. 7, 8). Id. at 3. The
Examiner notes that Wood teaches that integrated unit 40 “has the benefit of
allowing a universal rig which can selectively handle and run different types
of pipe, coiled tubing, and other earth borehole equipment thereby
eliminating the need for two rigs.” Id. at 4 (citing Wood, col. 6,11. 7—12).
Based on these findings with respect to Nguyen and Wood, the
Examiner concludes that it would have been obvious for a person of
ordinary skill in the art to modify the method of Nguyen with a coiled tubing
injector head free of coiled tubing to perform the claimed functions, as
taught by Wood, to achieve a universal rig system that allows operations to
be performed without use of coiled tubing, but with the capability of using
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Application 13/267,398
coiled tubing for the purpose of providing a simplified system. Id. (citing
Wood, col. 1,1. 60-col. 2,1. 36, col. 6,11. 7—12).
Appellant contends that Wood does not teach using a coiled tubing
injector head free of coiled tubing to support a tool string. Appeal Br. 4.
Rather, Appellant contends, Wood teaches that integrated unit 40 comprises
two functionally-separate devices, top drive 42 and CT injector 44, each
having a conventional structure and operation. Id. (citing Wood, col. 3,11.
43—63). Appellant contends that when integrated unit 40 is running coiled
tubing, the coiled tubing is supported in the CT injector head 44, as shown in
Figure 1, and when integrated unit 40 is used to run jointed pipe, top drive
42 is used, as shown in Figure 3. Id. Appellant acknowledges that jointed
pipe is supported in integrated unit 40, but contends that Wood does not
suggest supporting jointed pipe, instead of coiled tubing, in CT injector 44.
Id. at 5.
In response, the Examiner clarifies how Wood’s teachings are being
applied in the rejection. Ans. 2. Particularly, the Examiner explains that
Wood’s integrated unit 40, as a whole, including top drive module 42 and
CT injector module 44, is considered to correspond to the claimed “coiled
tubing injector head.” Id. The Examiner further explains that integrated unit
40 may have a monolithic structure. Id. (citing Wood, col. 6,11. 53—55).
The Examiner adds that integrated unit 40 is disclosed as being constructed
such that modules 42, 44 share common components. Id. The Examiner
determines that Wood considers that these modules, together, may be
viewed as a single component, that is, the monolithic, shared-component
integrated unit 40. Id. The Examiner reasons that, when viewed as a single
component, integrated unit 40 has a coiled tubing injector head (portion of
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Application 13/267,398
integrated unit 40 comprising the CT injector structure) which is free of
coiled tubing. Id. (“Figure 8 which teaches CT out of alignment”). The
Examiner also determines that Wood teaches integrated unit 40 may be used
with jointed pipe, having coiled tubing positioned out of alignment with
integrated unit 40. Id. at 2—3 (citing Wood, Fig. 8, col. 5,11. 30—38).
In reply to the Examiner’s position that Wood’s integrated unit 40 is
considered “a monolithic structure and as such corresponds to the claim
element reciting a coiled tubing injector head which is ‘free of coiled
tubing,”’ Appellant acknowledges that “Wood does show an injector head
without coiling tubing in it.” Reply Br. 2. Appellant contends, however, “in
Wood, the coiled tubing injector head is not ‘supporting’ the coiled tubing,
as recited in claim 1.” Id. (emphasis added).
We understand that Appellant intended to refer to “the tool string,”
rather than “the coiled tubing,” as claim 1 recites “supporting a tool string in
the coiled tubing injector head.” But even with this understanding,
Appellant’s contention does not adequately address the Examiner’s position.
The Examiner’s position is that integrated unit 40, not CT injector module
44 alone, corresponds to the claimed “coiled tubing injector head.” Ans. 2.
The top drive module 42 of integrated unit 40 includes a spindle 46. Wood,
col. 3,11. 57—58, Fig. 1. Wood discloses that Figure 3 shows “that spindle
46 has been threaded into the box 92 of a tubular 94 which could be drill
pipe, casing or any other oilfield tubular, or for that matter a threaded tool
which in turn is connected to other downhole tubular and associated tools as
desired.” Id. at col. 5,1. 12—17 (emphasis added), Fig. 3. Accordingly,
Wood teaches that threaded pipe and other “oilfield tubular,” as well as
tools, can be supported with spindle 46 of top drive module 42. Appellant
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Application 13/267,398
does not explain persuasively why Wood does not disclose or suggest
“supporting a tool string in a coiled tubing injector head [i.e., ‘coiled tubing
injector head 40’].”
Appellant also asserts that “the combined references still offer no
teaching or suggestion of the step of ‘installing the donut in the wellhead ...
by operating the injector head,'” as recited [in] claim 1.” Reply Br. 3
(bolding omitted). It is not clear whether this assertion pertains to the
Examiner’s position that Wood’s integrated unit 40, including top drive
module 42 and CT injector module 44, corresponds to the claimed “coiled
tubing injector head.” But even assuming it does pertain to this position, the
Examiner finds that Nguyen discloses supporting a tool string comprising a
donut. Final Act. 3. It is well-established that “[n]on-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. [Each reference] must be
read, not in isolation, but for what it fairly teaches in combination with the
prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (citation omitted). Although Appellant refers to “the combined
references,” Appellant’s contention does not address persuasively the
Examiner’s combination, which is based on the combined teachings of
Nguyen and Wood. Consequently, the contention does not apprise us of
error in the Examiner’s findings or reasoning. Thus, we sustain the rejection
of claim 1 as unpatentable over Nguyen and Wood.
Claims 9, 14—19, and 21
Similar to claim 1, claim 9 recites that “the coiled tubing injector head
is free of coiled tubing,” “a tool string . . . comprising an upper segment. . .
wherein the upper segment is supported in the coiled tubing injector head.”
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Appeal 2017-003717
Application 13/267,398
Appeal Br. (Claims App. A-4). The Examiner’s findings and reasoning and
Appellant’s contentions are substantially the same as for claim 1. Compare
Final Act. 3—4, with Ans. 2—3; compare Appeal Br. 3—6, with Reply Br. 2—3.
Accordingly, we sustain the rejection of claim 9, and of dependent claims
14—19 and 21 which are not separately argued, as unpatentable over Nguyen
and Wood for the same reasons as for claim 1.
Rejection II—Claims 10—13 and 20
For claims 10-13 and 20, which depend from claim 9, Appellant
contends that Dallas fails to cure the deficiencies of Nguyen and Wood with
regard to claim 9. Appeal Br. 9. As we sustain the rejection of claim 9, we
likewise sustain the rejection of claims 10—13 and 20 as unpatentable over
Nguyen, Wood, and Dallas for the same reasons as for claim 9.
DECISION
We affirm the rejections of claims 1 and 9—21.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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