Ex Parte Foerster et al

Patent Trial and Appeal Board

Dec 26, 2018

14234633 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/234,633 01/24/2014 Frank Foerster
96897 7590 12/26/2018
PA TENT LAW OFFICES OF DR. NORMAN B. THOT
POSTFACH 10 17 56
RATINGEN, 40837
GERMANY
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
JK/WIR 1302 US-PAT 7640
EXAMINER
SCHIMPF, TARA E
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
12/26/2018 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
Ex parte FRANK FOERSTER and THOMAS DOLLS
Appeal2018-001322
Application 14/234,633
Technology Center 3600
Before JOHN C. KERINS, LISA M. GUIJT, and JEFFREY A. STEPHENS,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 11-19. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Aker Wirth GmbH. Appeal
Br. 2.
2 Appeal is taken from the Final Office Action dated March 13, 2017.
Appeal2018-001322
Application 14/234,633
STATEMENT OF THE CASE
Claim 11, reproduced below, is the sole independent claim on appeal
and exemplary of the subject matter on appeal.
11. A device for producing a bore in the ground, the device
compnsmg:
a spindle comprising a rotary lead-through and a first
sealing face configured to be cylindrical, the spindle being
configured so as to be rotatably led through a housing via the
rotary lead-through;
the housing comprising a second sealing face configured
to be concentric with respect to the first sealing face, the housing
being part of a power rotary head (top drive);
a rotary seal arrangement configured to seal the rotary
lead-through of the spindle through the housing, the rotary seal
arrangement comprising a shaft seal configured to act between
the first sealing face of the spindle and the second sealing face of
the housing; and
a labyrinth seal arranged upstream of the shaft seal when
viewed from an outside of the housing.
THE REJECTIONS
I. Claims 11-19 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 11-16, 18, and 19 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Phillips (US 4,416,337; issued Nov. 22, 1983).
III. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Phillips and Lewis (US 4,098,341; issued July 4, 1978).
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Appeal2018-001322
Application 14/234,633
ANALYSIS
Rejection I
Regarding independent claim 11, the Examiner finds that "it is unclear
if the claim requires a top drive, or just a power rotary head." Final Act. 5.
The Examiner determines that the Specification describes "power rotary
head" as "an analogous term or more colloquial term," as compared to "top
drive," but fails to provide a definition of "power rotary head." Ans. 3. The
Examiner interprets "power rotary head" as "a broader term" and "top drive"
as "a more narrow term." Id.
Appellants argue that paragraph 3 of the Specification "provides the
relationship between 'power rotary head' and 'top drive."' Appeal Br. 5; see
also Reply Br. 4 ( arguing that "the housing being a part of the power rotary
head (top drive)," as claimed, clearly means that "the power rotary head of
the present invention is a top drive").
The Specification discloses that, with respect to "a device for
producing a bore in the ground" (Spec. ,r 2), "[t]he housing can also be part
of a power rotary head (also technically referred to as a 'top drive')" (id.
,r 3). The Specification also discloses that "[t]he device can, for example be
a device for producing a substantially vertical bore in the ground, wherein
the rotary seal arrangement can, for example be the upper rotary seal
arrangement of a flushing head or a rotary drive device that is designed as a
power rotary head." Id. ,r 21. The Specification further discloses that
"rotary drive devices, in particular if they are designed as power rotary
heads, already have housing covers and rotary covers." Id. ,r 22. The
Specification discloses, with reference to Figure 1, that "[t]he device ...
comprises a power rotary head 1 for driving on the head side a drill pipe,"
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Appeal2018-001322
Application 14/234,633
wherein "power rotary head 1 forms a rotary drive device 6 of the device
100 by means of which a spindle 7 can be set in rotation, to which spindle 7
a drill pipe ... can be coupled in a manner known per se." Id. ,r 24.
In view of the Specification, we determine that a person of ordinary
skill in the art would unambiguously understand that "a power rotary head"
is one type of power rotary device, which, according to paragraph 3 of the
Specification, is synonymous with the term "top drive." We understand the
term "top drive" to mean that the power rotary head drives on the head side,
or top side, of a structure, such as a drill pipe, as described in paragraph 24
of the Specification. Thus, claim 11 recites "a power rotary head" that is
also known as a "top drive," which limits the power rotary device to one that
drives on the head side of a structure.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 11, and claims 12-19 depending therefrom, as indefinite.
Rejection II
The Examiner finds, inter alia, that Phillips teaches the claimed
device, including "a labyrinth seal 144." Final Act. 6-7.
We agree with Appellants' argument that Phillips fails to disclose that
labyrinth 144 functions as a seal. Appeal Br. 11-15; Reply Br. 4--5. Phillips
discloses that "seal 131 has its pressure side [ extending] away from the
bearings 76 so as to permit excess lubricant to escape from the cavity 90 and
flow through the labyrinth or passageway 144 separating the flinger 64 and
the cover 84," wherein "passageway 144 extends from the seal 131 through
the drill housing 22." Phillips 8:21-26. Thus, Phillips discloses that sealing
is performed by seal 131, whereas labyrinth 144 is a passageway for excess
lubricant, which does not perform a sealing function.
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Appeal2018-001322
Application 14/234,633
Regarding the Examiner's reliance on paragraph 13 of the
Specification for determining that the claimed labyrinth seal reads on
Phillips' labyrinth passageway 144, we understand the definition of
labyrinth seal as set forth in paragraph 13 to require a sealing effect caused
by the extended sealing path. See Spec. ,r 13 ("The term 'labyrinth seal
arrangement' includes all contactless shaft seals whose sealing effect is
based on an extension of the sealing path."). Again, a preponderance of the
evidence fails to support the Examiner's determination that Phillips'
labyrinth or passageway 144 has a sealing effect. Rather, Phillips' labyrinth
or passageway 144 is a passageway for excess lubricant, as discussed supra.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 11, and claims 12-16 and 18-19 depending therefrom as
anticipated by Phillips.
Re} ection III
The Examiner's reliance on Lewis for teaching a second lubricant
feed channel, does not cure the deficiencies in the Examiner's reliance on
Phillips for disclosing a labyrinth seal, as set forth supra. Accordingly, for
essentially the same reasons set forth supra, we do not sustain the
Examiner's rejection of claim 17 as unpatentable over Phillips and Lewis.
DECISION
The Examiner's rejections of claims 11-19 are REVERSED.
REVERSED
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