Ex parte Crouse

Board of Patent Appeals and Interferences

Apr 15, 1999

07925790 (B.P.A.I. Apr. 15, 1999)

Application for patent filed August 7, 1992. According to appellant, this application is a1
continuation-in-part of Application 07/601,497, filed October 23, 1990, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GERALD CROUSE
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Appeal No. 96-1901
Application 07/925,7901
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ON BRIEF
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Before COHEN, ABRAMS and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally rejecting claims 2-4 and 7-10. As for
the remaining claims of record, claim 1 has been canceled and appeal has not been taken from the final
rejection of claims 5 and 6. No claims have been allowed.
Appeal No. 96-1901
Application 07/925,790
2
The appellant's invention is directed to a portable apparatus for pulling flexible well pipe (claims
2-4, 7 and 8), and to a method of removing flexible pipe from a well (claims 9 and 10). The claims on
appeal have been reproduced in an appendix to Paper No. 27, with errors noted by the examiner in
Paper No. 28.
THE REFERENCES
The references relied upon by the examiner to support the final rejection are:
Parola 3,168,287 Feb. 2, 1965
Haines 3,635,441 Jan. 18,1972
Crees 3,809,366 May 7, 1974
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103:
(1) Claims 2, 3 and 8-10 on the basis of Parola and Haines.
(2) Claims 4 and 7 on the basis of Parola, Haines and Crees.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in the Brief.
OPINION
In reaching our decision on the issues raised in this appeal, we have carefully assessed the
Appeal No. 96-1901
Application 07/925,790
3
claims, the prior art applied against the claims, and the respective views of the examiner and the
appellant as set forth in the Answer and the Brief. We have evaluated the rejections on the basis that
the examiner bears the initial burden of presenting a prima facie case of obviousness (see In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)), which is established when
the teachings of the prior art itself would appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993)).
The appellant’s invention is concerned with managing the removal of flexible well pipe from a
well bore. We shall focus our detailed analysis on independent claim 2, which is representative of the
invention. This claim is directed to the combination of a flexible well pipe, a well pipe hoisting means,
actuation means for rotating the hoist means, and mounting means for mounting the hoisting means and
the actuation means over the well. The well pipe hoisting means comprises
opposed, circular discs carried on an axle, each of said discs having convex, pipe-
engaging surfaces frictionally engaged with said flexible well pipe . . . wherein said
flexible well pipe is bent between and wrapped over the convex, pipe-engaging
surfaces to be frictionally engaged therewith and thereby pulled upwardly by the
hoisting means upon actuation of the actuation means.
It is the examiner’s position that all of the structure recited in claim 2 is disclosed by Parola, except for
the circular discs, which are taught by Haines, and that it would have been obvious to
Appeal No. 96-1901
Application 07/925,790
4
one of ordinary skill in the art to replace the drum winding mechanism of Parola with one that utilized
opposed convex discs, as is Haines, “because the discs would allow a smaller, more portable
apparatus” (Answer, page 5).
We agree with the examiner that, insofar as the language of the appellant’s claim 2 is
concerned, only the discs are lacking from the Parola disclosure. In Parola, the flexible well pipe is
wrapped several times around a drum, with such multiple wrappings providing the necessary friction for
holding the flexible pipe as it is raised and lowered. According to Parola the prior art conventional
cylindrical drums allowed the flexible pipe to flatten under certain tension and bending-torsional forces,
which constricted the flow therethrough (column 1). Parola solves this problem by providing elastic
mattresses with cellular chambers (16, 17, 18) corresponding to the three turns of the flexible pipe
around the drum, which cushion and support the flexible pipe to prevent flattening (column 3). Parola is
mentioned in the appellant’s specification as an example of the prior art devices over which his invention
is an improvement (specification, page 2).
Haines discloses an apparatus for pulling a long commercial fishing line across a boat. Included
in the system is a sheave comprising a pair of opposed convex discs (39, 41) which are biased toward
one another by a pair of springs (54, 61), and are mounted on an axle (43) rotatable by a motor (23).
In order to maintain a tension on the fishing line, Haines teaches that it is “squeezed between” the discs,
which are “clamped tightly” together by the springs (column 4, lines 10-16). To achieve this
Appeal No. 96-1901
Application 07/925,790
5
relationship between the discs and the fishing line, the discs are canted apart at the bottom by a pair of
rollers (75, 76), so that the fishing line is introduced between spaced surfaces of the discs, and is then
clamped by these surfaces as they rotate and the space is eliminated (column 4). Thus, the Haines
system differs from that of the appellant’s invention in that it operates upon a thin line, which has
essentially no surface area, rather than on a flexible pipe, which has a considerable surface area, and
places tension upon the line by clamping it between the discs rather than by controlling the amount of
surface area of the pipe that contacts the discs.
The mere fact that a prior art structure could be modified does not make such a modification
obvious unless the prior art suggests the desirability of doing so. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). There must be some reason why one of ordinary skill
in the art would have been led to modify a prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). To this end,
the requisite motivation must stem from some teaching, suggestion or inference in the prior art as a
whole or from the knowledge generally available to one of ordinary skill in the art and not from the
appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988). Here, we fail to
perceive any teaching, suggestion or incentive which would have led one of ordinary skill in the art to
modify the Parola system in the manner proposed by the examiner.
Appeal No. 96-1901
Application 07/925,790
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We arrive at this conclusion for several reasons. First of all, there simply is no teaching in
Haines which would, in our view, have suggested to one of ordinary skill in the art that the Haines discs
could be used with flexible pipe. Second, in accordance with the Haines system, the flexible pipe
would be clamped between the discs with pressure applied by the springs, and therefore could be
crushed, resulting in the flow of fluids therethrough being curtailed or greatly impeded, thus making it
dysfunctional for the Parola situation. Third, substitution of the discs for the chambered drum of Parola
would destroy the Parola invention. All of these factors would have operated as disincentives to the
artisan to make the proposed modification.
We therefore are of the opinion that the combined teachings of Parola and Haines fail to
establish a prima facie case of obviousness with respect to the subject matter recited in independent
claim 2, and we will not sustain the rejection.
For the same reasons, we also will not sustain the rejection of independent claims 3, 9 and 10,
all of which recite the discs, and all of which also stand rejected on the basis of Parola and Haines. In
addition to the disc limitation, method claims 9 and 10 require the step of controlling the engagement of
the well pipe with the discs by “raising and lowering the well pipe on the side of the apparatus remote
from the well,” which clearly not only is not taught by either of the applied references, but would be
impossible to perform in either.
Appeal No. 96-1901
Application 07/925,790
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The Crees patent, which was cited against several of the claims for its teaching of utilizing an
electric hand drill to power a device which drives a flexible tube, does not overcome the problems set
forth above with regard to the combination of Parola and Haines.
SUMMARY
Neither of the rejections is sustained.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS AND
NEAL E. ABRAMS ) INTERFERENCES
Administrative Patent Judge )
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-1901
Application 07/925,790
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NEA/dal
DAVID J. FRENCH
P.O. BOX 2486, STN. "D"
OTTAWA, CANADA KIP 5W6