Ex Parte Kulhanek

Board of Patent Appeals and Interferences

Aug 23, 2011

09898679 (B.P.A.I. Aug. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EMANUEL KULHANEK
____________

Appeal 2009-013235
Application 09/898,679
Technology Center 3600
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013235
Application 09/898,679

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STATEMENT OF THE CASE
Emanuel Kulhanek (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claim 1 under 35 U.S.C. § 103(a)
as being unpatentable over Palynchuk (US 3,559,905; issued February 2,
1971) and DESIGN ENGINEERS HANDBOOK, Bulletin 0224-B1, at f-8 (Parker
Fluidpower 1979) (hereinafter “DEH”). We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
THE INVENTION
Appellant’s claimed invention is directed to a continuous feed
injection unit used to manipulate well strings for well site operations that
operates in a dual speed configuration. Spec. 1, paras. 02, 04. Claim 1 is
reproduced below (emphasis added).
1. A continuous feed injection unit, comprising:
a first hydraulic motor;
a second hydraulic motor;
cooperating continuous well string gripping chains
connected to be driven by the first and second hydraulic
motors;
a hydraulic power supply connected to provide
pressurized fluid to the first and second hydraulic motors,
and each of the first and second hydraulic motors being
connected through respective first and second drain lines
to a hydraulic fluid return to form an open loop hydraulic
supply;
a control system for the hydraulic power supply;
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Application 09/898,679

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the control system for the hydraulic power supply
having a motor speed control valve with at least a first
and second operating configuration, the first operating
configuration providing power fluid to the first and
second hydraulic motors in parallel and the second
operating configuration providing power fluid to the first
and second hydraulic motors in series;
the control system for the hydraulic power supply
incorporating a motor direction control valve through
which the power fluid flows, the motor direction control
valve being configured to reverse flow of power fluid
through the first and second hydraulic motors; and
the continuous chains comprising a first
continuous chain and a second continuous chain, the first
continuous chain being driven by the first hydraulic
motor and the second continuous chain being driven by
the second hydraulic motor.
CONTENTION AND ISSUE
Appellant contends that the Examiner improperly ignored the
inventive step required to apply known principles to the solutions of
problems that have not been previously identified, and as such, the Examiner
used impermissible hindsight in rejecting claim 1. Br. 8-9.
The issue presented by this appeal is whether the Examiner articulated
adequate reasoning to explain how one of ordinary skill in the art at the time
of Appellant’s invention would have been led to the subject matter of
claim 1 in view of Palynchuk and DEH.

Appeal 2009-013235
Application 09/898,679

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ANALYSIS
The claim calls for the control system for the hydraulic power supply
to have a motor speed control valve that provides power fluid to the first and
second hydraulic motors in parallel and in series.
Palynchuk discloses an apparatus for pulling a continuous metal
member out of a well that uses “[c]onventional equipment . . . to control the
speed, power output and direction of rotation of [a pair of hydraulic
motors].” Ans. 3; see also Palynchuk, col. 6, ll. 17-19. Palynchuk teaches
that the apparatus has three advantageous features: (1) it does not
permanently deform the rod string, (2) it can be quickly rigged up and
dismantled and is mounted on a suitable conveyance for portability, and
(3) it can pull and run the rod string at a speed at least equal to conventional
equipment. Palynchuk, col. 8, ll. 64-72. Palynchuk teaches that “[t]he
second and third features add up to a servicing unit which is ‘fast,’ and
therefore desirable for well servicing work.” Palynchuk, col. 8, ll. 70-72.
Palynchuk discloses that “[r]adial, reciprocating-type piston hydraulic
motors, having a high torque output at low speeds, are suitable for the
purposes of the apparatus.” Palynchuk, col. 6, ll. 11-13. Palynchuk thus
discloses a pair of hydraulic motors having high torque output and low
speeds that are controlled using conventional equipment. Palynchuk does
not identify any problem in the art that would necessitate use of a motor
speed control valve with the claimed first and second operating
configurations, wherein power fluid is supplied to the motors in parallel in
one configuration and in series in the other configuration.
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DEH is a handbook that discloses a circuit diagram for bidirectional
series/parallel motors for use “[i]n a system that requires two motors giving
high-speed, low-torque and low-speed, high-torque.” DEH, p. f-8, (circuit
f-16).
The Examiner’s articulated reason for modifying Palynchuk with the
circuit from DEH is that “it would be advantageous to . . . have the ability to
operate the motors such that they can alternate between high speed and high
torque.” Ans. 4. We are uncertain as to the basis for this reasoning.
Palynchuk does not identify any need in its system for its two motors
to provide both high-speed, low-torque and low-speed, high torque. While
DEH discloses that its circuit allows two motors to alternate between these
two operating conditions, it does not teach or suggest any reason that these
two operating conditions would be advantageous in the well string art.
Looking beyond the cited art, the Examiner failed to identify a reason, based
on demands known in the design community or present in the marketplace,
or background knowledge possessed by a person of ordinary skill in the art
at the time of Appellant’s invention, that would have prompted a person of
ordinary skill to modify Palynchuk’s apparatus to include a motor speed
control valve with the claimed first and second operating configurations.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In other words,
the Examiner has not identified any other condition of such well-string
injection systems known in the art at the time of Appellant’s invention that
would have necessitated two hydraulic motors be configured to provide both
high-speed, low-torque and low-speed, high torque.
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In view of the prior art before us, we see no reason, beyond
Appellant’s own disclosure, that would have led one of ordinary skill in the
art to modify Palynchuk’s apparatus to include a motor speed control valve
with the claimed first and second operating configurations. As such, we
cannot sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a)
as being unpatentable over Palynchuk and DEH.
CONCLUSION
The Examiner failed to articulate adequate reasoning to explain how
one of ordinary skill in the art at the time of Appellant’s invention would
have been led to the subject matter of claim 1 in view of Palynchuk and
DEH.
DECISION
The decision of the Examiner to reject claim 1 is REVERSED.

REVERSED

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