Ex Parte Parrott et al

Board of Patent Appeals and Interferences

Jul 25, 2012

11425876 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT A. PARROTT, DAVID MILLS,
CYNTHIA L. HICKSON, and JERRY D. CAMPBELL
____________

Appeal 2010-007880
Application 11/425,876
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert A. Parrott et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 33-44. Appellants cancelled
claims 1-32 and 45-54. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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The Claimed Subject Matter
The claimed subject matter “relates to devices and methods to
facilitate conveyance and orientation of perforating devices.” Spec. 1, ll. 11-
12. Claims 33 and 38, reproduced below, are representative of the subject
matter on appeal.
33. An oriented perforating gun affixed to
a tool string, comprising:
one or more eccentrically weighted gun
string components;
a swivel intermediate the one or more gun
string components and the tool string, the swivel
enabling the one or more gun string components to
rotate independently from the tool string, the
swivel comprising:
a thrust bearing; and
a bearing floater adapted to reduce the
load applied to the thrust bearing upon
application of a tensile load to the swivel.
App. Br., Clms. App’x.

The Rejections
The following Examiner’s rejections are before us for review:
1. Claims 33, 34, and 36-44 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Daniel (US 4,410,051; iss. Oct. 18, 1983) and
Aumann (US 6,230,825 B1; iss. May 15, 2001). Ans. 3.
2. Claim 35 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Daniel, Aumann, and Zimmer (US 1,987,316; iss. Jan. 8, 1935).
Id.

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OPINION
Appellants argue claims 33, 34, and 36-44 as a group and we select
independent claim 33 as the representative claim. See App. Br. 4-7; see also
37 C.F.R. § 41.37(c)(1)(vii) (2011).
Obviousness based on Daniel and Aumann
The Examiner finds that Daniel teaches
an oriented perforating gun affixed to a tool string, comprising:
one or more eccentrically weighted gun string components 42; a
swivel 40 intermediate the one or more gun string components
and the tool string, the swivel enabling the one or more gun
string components to rotate independently from the tool string
(Fig. 2; col. 4, lines 26-62),
but that Daniel does not specifically teach that “the swivel further comprises:
a thrust bearing; and a bearing floater adapted to reduce the load applied to
the thrust bearing upon application of a tensile load to the swivel.” Ans. 3.
The Examiner however finds that “Aumann et al teach a swivel 481 between
two downhole components similar to that of Daniel et al (Fig. 2F)” and that
Aumann further teaches that “the swivel comprises: a thrust/roller bearing
484/485; and a bearing floater, which is spring 49[8], adapted to reduce the
load applied to the thrust bearing upon application of a tensile load to the
swivel (col. 18, line 15 through col. 19, line 19).” Id. Thus, the Examiner
concludes that “the claims would have been obvious because the substitution
of the known swivel of Aumann et al for the known swivel of Daniel et al
would have yielded predictable results to one of ordinary skill without
changing the function of the Daniel et al device.” Ans. 3-4.
Appellants argue that the “combination of the Daniel et al. and
Aumann et al. references fails to provide any disclosure or teaching related
to a bearing floater or bearing isolation device which reduces the load
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applied to a thrust bearing upon application of a tensile load” and that the
“cited references do not disclose, teach or suggest components or systems
that are actually able to reduce the undesirable tensile loading.” App. Br. 4.
In particular, Appellants argue that the “coil spring 498 [of Aumann] does
not reduce the load applied to the bearings upon application of a tensile load
to the swivel mechanism” and that the “[s]pring 498 actually is preloaded to
provide sufficient force to lift battery section 441, pressure section 342,
inner tube 126, and the sample core through the bearings, while also being
able to close the ball valve 160.” App. Br. 5. Appellants further argue that
“the design [of Aumann] does not allow spring 498 to reduce the load
applied to the bearings, such as bearing 484” and that “the full lifting force
acting on spring 498 is transferred to the bearings.” Id. Appellants also
contend that “[e]ven if spring 498 becomes fully compressed, there is no
relief for the bearings and the full loading is transferred to the bearings.”
App. Br. 6. Appellants also assert that “spring 498 is the sole mechanism
supporting bearings 484, 485 within bearing housing 486 so the loading
cannot be limited” and that the “spring 498 transfers the entire axial loading
to the bearings 484, 485 without relief, because nothing prevents continuous
escalation of the pulling force acting on the bearings.” Id.
The Examiner responds that “the spring 498 does not transfer the
entire axial loading to the bearings without relief . . . because the entire axial
load is first transferred to the sub 490, then to the spring 498, which then
compresses before any of the load can reach the bearings 484/485.” Ans. 7.
Appellants contend that the Examiner’s stated understanding is incorrect.
Reply Br. 5.
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Appellants’ arguments are not persuasive. Aumann describes a
“swivel mechanism 481 [that] provides for free rotation of the outer barrel
262 relative to the inner tube 126” (Aumann, col. 18, ll. 55-56), that
“provides a low friction connection for both axial and radial loads” (Id., col.
18, ll. 58-59), and that “provides free rotation in the case of either up or
down thrust of the inner tube 126” (Id., col. 18, ll. 60-61). Aumann
discloses that “the bearing housing 486 and mandrel 470 assembly provides
[the] swiveling mechanism” and that “[b]earings 484 and 485 . . . allow . . .
the mandrel 470 to slide relative to the bearing housing 486.” Id., col. 18, ll.
17-19 and 49-51. “In the space 496 defined between the mandrel 470 and
the bearing housing 486, a biasing device, such as a coil spring 498 is
positioned to force the bearing 484 from the seal bearing 490.” Id., col. 18,
ll. 31-35.
Aumann also discloses that “it is possible for the inner tube 126 to
develop upward thrust should the core . . . become jammed in the inner tube
126.” Id., col. 18, ll. 63-65. Aumann further discloses that “[c]ore jamming
can produce axial forces on the swivel mechanism 481 . . . and is the usual
cause of swivel mechanism 481 failure.” Id., col. 18, l. 66, to col. 19, l. 1.
Aumann describes that the “oil sealed thrust bearings 485 and 484 (one for
up thrust and one for down thrust) are incorporated into the swivel
mechanism 481” and that a “ball valve protection spring 498 is also
contained in the swivel mechanism to better protect it from axial loads.” Id.,
col. 19, ll. 15-19. Thus, Aumann indicates that the thrust bearing 484, which
is incorporated in the swivel mechanism 481 and allows the mandrel 470 to
slide relative to the bearing housing 486, is protected from axial loads by the
spring 498, which is also contained in the swivel mechanism. Therefore, in
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view of the above, the Examiner’s finding that Aumann’s structure is
capable of “reduc[ing] the load applied to the thrust bearing upon application
of a tensile load to the swivel” or “limit[ing] the potential load acting on the
thrust bearing” is reasonable. See App.Br., Clms. App’x; see also Ans. 3
and 7. Moreover, as far as we understand, the potential axial load acting on
thrust bearings 484, 485 of Aumann is limited by the amount of axial
deformation of spring 498. Accordingly, Appellants’ arguments that the
spring 498 does not reduce the load, that the design of Aumann does not
allow the spring 498 to reduce the load, or that the spring 498 being the sole
mechanism supporting the bearings so that loading cannot be limited are not
persuasive.
Aumann also discloses that the “spring 498 is preloaded sufficiently to
provide enough force to lift the battery section 441, pressure section 342 and
inner tube 126 with the core in addition to closing the ball valve 160.”
Aumann, col. 19, ll. 19-22. However, Aumann does not indicate whether
the preloaded spring 498 either transfers the full lifting force to the bearing
484 or is fully compressed so that the spring 498 transfers full load to the
bearing 484. Thus, we are not persuaded by Appellants’ argument that the
preloading of spring 498 results in full loading of the bearings or that the
spring 498 is fully compressed.
Also, Appellants do not contest the Examiner’s finding that the
substitution of the known swivel of Aumann for the known swivel of Daniel
would have yielded predictable results to one of ordinary skill without
changing the function of the Daniel device. See App. Br. 4-6. “[T]he simple
substitution of one known element for another” generally will be obvious
unless the substitution or the application of the known technique would have
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been beyond the level of ordinary skill in the art. KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 416-417 (2007). To the extent that the spring 498 of
Aumann requires further modification “to reduce the load applied to the
thrust bearing upon application of a tensile load to the swivel” or “to limit
the potential load acting on the thrust bearing,” Appellants have not
provided any evidence to show such modifications would have been beyond
the level of skill of one of ordinary skill in the art. See KSR, 550 U.S. at 421
(“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
For the above reasons, we agree with the Examiner’s conclusion of
obviousness and sustain the rejection of independent claims 33 and 38 as
unpatentable over Daniel and Aumann. Appellants did not present separate
arguments for the patentability of dependent claims 34, 36, 37, and 39-44.
App. Br. 6-7. As such, these claims fall with independent claims 33 and 38.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Obviousness based on Daniel, Aumann, and Zimmer
Appellants state that “claim 35 directly depends from independent
claim 33 and recites additional elements not disclosed in the cited
references” and that the “[a]ddition of the Zimmer reference does not
obviate the deficiencies of disclosure in the Daniel et al. and the Aumann et
al. references as discussed . . . with respect to . . . claim 33.” App. Br. 7.
Finding Appellants’ arguments as to claim 33 unpersuasive, we
sustain the rejection of claim 35 based on Daniel, Aumann, and Zimmer, for
the reasons set forth supra in our analysis of claim 33. Thus, we sustain the
Examiner’s rejection of claim 35 under 35 U.S.C. § 103(a) as unpatentable
over Daniel, Aumann, and Zimmer.
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DECISION
We affirm the Examiner’s rejection of claims 33-44.
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)(1)(iv).

AFFIRMED

mls