Ex Parte Pietras

Board of Patent Appeals and Interferences

Mar 19, 2009

10746174 (B.P.A.I. Mar. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WEATHERFORD/LAMB, INC.
____________________

Appeal 2009-0425
Application 10/746,174
Technology Center 3600
____________________

Decided:1 March 19, 2009
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic delivery).
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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest,
WEATHERFORD/LAMB, INC. (W/L), under 35 U.S.C. § 134(a) from a
final rejection of claims 1-4, 6-13, 16, and 17. W/L requests reversal of the
Examiner’s rejection of those claims. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

References Relied on by the Examiner
Neilon et al. (Neilon) 3,795,326 Mar. 5, 1974
Friberg et al. (Friberg) 3,902,561 Sept. 2, 1975
Moller 4,202,653 May 13, 1980
Hogan et al. (Hogan) 4,386,883 Jun. 7, 1983
Dysarz 4,552,498 Nov. 12, 1985

The Rejections on Appeal
The Examiner rejected claims 1-3 and 7 under 35 U.S.C. § 102(b) as
anticipated by Moller.
The Examiner rejected claims 4 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Moller and Dysarz.
The Examiner rejected claims 8-10, 16, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Dysarz, Neilon, and Friberg.
The Examiner rejected claims 11-13 under 35 U.S.C. § 103(a) as
unpatentable over Dysarz, Neilon, Friberg, and Hogan.

The Invention
The invention relates to an apparatus for delivering a tubular to a well
center. (Spec. 2: ¶ 2.) A tubular is a term in the field of well drilling that
describes a pipe, such as a drill pipe, that is inserted into the hole of a well.
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The apparatus generally includes a pipe tray that supports the tubular and
transports it to the well. (Spec. 6: ¶ 45.) An arm associated with the pipe
tray moves the tubular into a position in which it is aligned for insertion into
the well hole. (Spec. 7: ¶ 49.)
Claim 1 is reproduced below (Claims App’x 18:1-10):
1. An apparatus for delivering a tubular to a well
center, which apparatus comprises:

a pipe tray, movable with the tubular toward the well center;
and
an arm mounted at an end of the pipe tray and pivotable about a
substantially horizontal axis, wherein the arm contacts an end portion
of the tubular and is configured to pivotably move the tubular from a
first position where a longitudinal axis of the tubular is in an inclined
position with respect to a longitudinal axis of the well to a second
pivoted position when the longitudinal axis of the tubular is
substantially in alignment with the longitudinal axis of the well.
B. ISSUES
1. Has W/L shown that the Examiner erred in finding that Moller
discloses an arm that is “pivotable about a horizontal axis”?
2. Has W/L shown that the Examiner erred in finding that Moller
discloses an arm that is “configured to pivotably move” a tubular from a first
inclined position to a second well-aligned position?
3. Has W/L shown that the Examiner erred in determining that the
combined teachings of Moller and Dysarz teach an arm that is “configured
to pivotably move the tubular” and is “operatively mounted on said pipe
tray”?
4. Has W/L shown that the Examiner erred in determining that
Moller and Dysarz teach a pivotable arm that pivotably moves a tubular
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between an inclined position and a well-aligned position and releases the
tubular by rotation about a horizontal axis?
5. Has W/L shown that the Examiner erred in determining that the
combination of Moller, Dysarz, and Friberg teach an apparatus for
delivering a tubular to a well hole that includes a powered arm that pivots or
rotates around a pivot point to move a tubular between two positions?
C. FINDINGS OF FACT
Moller
1. Moller discloses a pipe handling system in which a pipe is
raised and supported above a well hole by an elevator 48. (Moller 6:15-50;
Figs. 13 and 35.)
2. In Moller, a stabber 47 includes stabber arms 75 that engage the
end of a pipe and extend to align the pipe with a well hole. (Moller 9:19-
28.)
3. Stabber arms 75 are configured for pivotal movement in the
event that an operator attempts to raise a tubular or pipe when the jaws of the
stabber arms are not yet released. (Moller 8:38-43.)
4. In particular, Moller specifies that “[i]t is desirable to extend
the stabber arms exactly in synchronism with one another to assure that the
pipe trapped between the arms is not damaged.” (Moller 8:4-7.)
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5. Moller’s Figure 35 is reproduced below:

Figure 35 shows a pipe being aligned with a well hole.

6. As shown in Figure 35, an adapter 115 is arranged on stabber
arms 75 of stabber 47 in order to engage an end of an inclined pipe CP that
is arranged on an offset ramp 117 that is beyond well hole WH. (Moller
9:50-54.) The other end of the pipe CP is attached to elevator 48.
7. The adapter on the stabber arms engages the end of a pipe CP
that is on ramp 117 then the arms retract to align the pipe over the well hole.
(Moller 9:54-59.)
Dysarz
8. Dysarz discloses an apparatus for transferring a pipe from a
pipe rack into position over a drill floor. (Dysarz 2:7-11; 46-56.)
9. In Dysarz, a pipe 9 is carried on a pipe trough 28 that sits on an
inclined trough frame 15. (Dysarz 4:54-56; Figure 1.)
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10. One end of pipe trough 28 includes a lasso 18 that catches pipes
and prevents them from swinging free as the pipes are lifted from the pipe
trough. (Dysarz 2:51-56; 7:12-14).
11. Lasso 18 includes a lasso ring 77 with a hinge 76 at one end, a
latch 64 at another, and a central opening that allows pipes to pass through.
(Dysarz 7:14-18.)
Friberg
12. Friberg discloses an apparatus for moving elongated elements,
such as drill rods, from a stored position to the axis of a drill hole. (Friberg
1:4-6.)
13. Friberg’s Figures 8 and 9 are reproduced below:

“Figures 8 and 9 show in vertical section a lower supporting groove
with a pivotable guiding groove for lower ends of the drilling rods...”
(Friberg 3:30-33.)

14. In Friberg, a magazine device 18 includes a support groove 30
that stores drill rods 19-22. (Friberg 5:1-4.)
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15. A guiding groove 48 is pivotally attached to the end of
supporting groove 30. (Friberg 5:37-40.)
16. Guiding groove 48 pivots about pivot points 49, 50 by
operation of a power cylinder 51. (Friberg 5:41-45.)
17. When guiding groove 48 pivots, a single drill rod is released
from guiding groove 30 onto the guiding groove. (Friberg 5:57-64.)
18. The drill rod then moves along the guiding groove into a
position where it is aligned with drill hole 15. (Friberg 8:50-64.)
D. PRINCIPLES OF LAW
During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404 (CCPA 1969).
“[T]he presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is not present in
the independent claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005).
A basis to combine teachings need not be expressly stated in any prior
art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There need
only be an articulated reasoning with rational underpinnings to support a
motivation to combine teachings. In re Kahn, 441 F.3d at 988.
It is not necessary that the inventions of the references be physically
combinable, without change, to render obvious the invention under review.
In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
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references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” In re Keller, 642
F.2d 413, 425 (CCPA 1981). Furthermore, a person of ordinary skill in the
art is also a person of ordinary creativity, not an automaton. KSR Int’l Co. v.
Teleflex Inc., 127 S.Ct. 1727, 1742 (2007).
A prior art reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985).
E. ANALYSIS
The Examiner rejected W/L’s claims based on four grounds of
rejection. We address each ground separately.
The anticipation rejection
The Examiner rejected claims 1-3 and 7 as anticipated by Moller.
W/L argues claims 1-3 and 7 collectively. We focus on the disputed
limitations. W/L first contends that Moller does not satisfy the limitation in
claim 1of “an arm mounted at an end of the pipe tray…”
The Examiner found that Moller’s subskate 55 is a pipe tray. The
Examiner further found that stabber arms 75 are located at an end of
subskate 55 and satisfy the requirement of an arm that is “mounted at an end
of the pipe tray.” (Ans. 4:19-22.)
W/L argues that Moller’s stabber arms 75 are not “mounted at an end
of the pipe tray” because “[t]here is no arm mounted on the subskate 55.
Moller discloses stabber arms 75 for positioning the riser. However, the
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stabber arms 75 are completely separate from the subskate 55, and thus, are
not mounted on the subskate 55.” (App. Br. 11:25-27.)
W/L’s argument is misplaced. Claim 1 does not require an arm that is
mounted “on” the pipe tray. Instead, the arm is merely mounted “at an end
of the pipe tray.” During examination, claim terms are given their broadest
reasonable interpretation consistent with the specification. In re Zletz, 893
F.2d at 321; In re Prater, 415 F.2d at 1404.
As explained by the Examiner, an arm mounted “at an end” of a pipe
tray does not require that the arm be mounted on the pipe tray. (Ans. 8:10-
15.) That interpretation is neither unreasonable nor inconsistent with W/L’s
specification. Indeed, it is consistent with W/L’s own claims. Claim 4,
which is dependent indirectly on claim 1, adds the limitation “wherein said
arm is operatively mounted on said pipe tray.” (Claims App’x 18:17-18.)
“[T]he presence of a dependent claim that adds a particular limitation gives
rise to a presumption that the limitation in question is not present in the
independent claim.” Phillips v. AWH Corp., 415 F.3d at 1315.
Here, because dependent claim 4 adds the limitation that the arm is
“mounted on” the pipe tray, that gives rise to the presumption that the
“mounted at an end of the pipe tray” requirement in claims 1 means
something other than an arm that is “mounted on the pipe tray.” W/L does
not direct us to evidence that rebuts that presumption. As shown at least in
Moller’s Figures 13 and 15, subskate 55 is located at an end of the arms of
stabber 47. We reject W/L’s argument that Moller does not satisfy the
requirement of an arm that is “mounted at an end of the pipe tray.”
W/L also argues that Moller does not disclose the requirement in
claim 1 of an arm that is (App. Br. 12:3-7.):
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configured to pivotably move the tubular from the first position where
a longitudinal axis of the tubular is in an inclined position to the
second pivoted position wherein the longitudinal axis of the tubular is
substantially in alignment with the longitudinal axis of the well[.]

W/L contends that “[t]he stabber arms 75 move only along their own
longitudinal axis to move the tubular. (Compare Figure 27 to Figure 28; see
also Figure 35).” (App. Br. 12:12-13.) Furthermore, according to W/L
(App. Br. 12:14-20):
Although Moller discloses the stabber arms 75 can achieve a limited
amount of pivotal movement, this movement occurs only when the
"[slprings hold the arms down but allow the outer jaw ends of the
arms to be raised by the pipe if an operator inadvertently tries to raise
the pipe without first releasing the jaws." (Col 8, ln. 40-43). This
inadvertent pivotal movement of the stabber arms 75 will only allow
the tubular to move up and down, rather than from the first position to
the second position.

W/L’s argument is not well supported. As noted by W/L, Moller
discloses that the stabber arms 75 are configured for pivotal movement in
the event that an operator attempts to raise a tubular or pipe when the jaws of
the stabber arms are not yet released. (Moller 8:38-43.) W/L’s claim 1
simply calls for an arm that is “pivotable about a substantially horizontal
axis.” The claim does not require a specific degree or extent of pivoting.
The limitation is satisfied by Moller’s pivotable stabber arms.
Furthermore, W/L’s claim 1 does not require that pivoting motion of
the arm is the motion that causes the tubular to pivot. Rather, the claim only
requires that “the arm contact an end portion of the tubular and is configured
to pivotably move the tubular” from a first inclined position to a second
position. That is, it is only the tubular that moves. The arms need only be
“configured” to allow the pivoting motion of the tubular.
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According to the Examiner, Moller’s stabber arms “are used at the end
of the lifting step where the tubular is still in an inclined state and they hold
the tubular until it is vertically aligned with the drill string in the well bore.”
(Ans. 8:17-19.)
Moller discloses a pipe handling system in which a pipe is raised and
supported above a well hole by an elevator 48. (Moller 6:40-45; Figs. 13
and 35.) Stabber 47 includes stabber arms 75 that engage the end of a pipe
and extend to align the pipe with a well hole. (Moller 9:19-28.) In
particular, Moller specifies that “[i]t is desirable to extend the stabber arms
exactly in synchronism with one another to assure that the pipe trapped
between the arms is not damaged.” (Moller 8:4-7.) Moller’s Figure 35
illustrates an embodiment showing pivoting motion of a pipe about elevator
48 from an inclined to a vertical position
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Figure 35 is reproduced below:

Figure 35 shows a pipe being aligned with a well hole.

As shown in Figure 35, an adapter 115 is arranged on stabber arms 75
of stabber 47 in order to engage an end of an inclined pipe CP that is
arranged on an offset ramp 117 that is beyond well hole WH. (Moller 9:50-
54.) The other end of the pipe CP is attached to elevator 48. The adapter on
the stabber arms engages the end of a pipe CP that is on ramp 117 then the
arms retract to align the pipe over the well hole. (Moller 9:54-59.) That is,
retracting the arms causes the pipe to pivot about elevator 48 to align the
pipe with the well hole. Although in the embodiment of Figure 35 the pipe
is delivered from a location that is beyond the well hole, a person of ordinary
skill in the art would have recognized that a similar pivoting motion of the
pipe also occurs when the stabber arms must extend to deliver the pipe from
subskate 55. W/L has not shown that the Examiner erred in finding that
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Moller’s stabber arms 75 satisfy the requirement of an arm that is
“configured to pivotably move the tubular” from a first inclined position to a
second position in alignment with the well.
We sustain the rejection of claims 1-3 and 7 under 35 U.S.C. § 102(b)
as anticipated by Moller.
The obviousness rejection based on Moller and Dysarz
The Examiner rejected claims 4 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Moller and Dysarz. Claim 4 is indirectly dependent on
claim 1 and adds the limitation “wherein said arm is operatively mounted on
said pipe tray.” Claim 6 is dependent on claim 1 and adds the limitation
“wherein said arm is rotatable about its axis to release said tubular
therefrom.”
The Examiner found that Moller discloses all the limitations of claims
4 and 6 with the exception of “the arm being directly connected to the tray.”
(Ans. 5:15-16.) To account for the deficiency, the Examiner pointed to
Dysarz. The Examiner determined that Dysarz discloses a “pipe tray” 28
and an “arm” 77 that is “operatively mounted at the end of the pipe tray” and
pivots about a “point” 76. (Ans. 5:18-21.) The Examiner stated “[i]t would
have been obvious to one of ordinary skill in the art, at the time of invention
to provide the device taught by Moller with an arm mounted on the tray as
taught by Dysarz in order to assure the arm position is always in position
relative to the movement of the tray.” (Ans. 5:25-6:4.)
W/L disputes that the combination of Moller and Dysarz satisfies
either claim 4 or 6. W/L contends that there is no motivation to combine the
teachings of those references, “[b]ecause Moller uses a separate stabber arm
75, there is no need or motivation to mounted the lasso ring 77 of Dysarz to
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the end of the subskate of Moller.” (App. Br. 13:29-30.) W/L also contends
that even if combined, “the combination of the lasso ring 77 of Dysarz
placed on the subskate 55 of Moller is an unworkable combination.” (App.
Br. 14: 1-2.) According to W/L, attaching Dysarz’s lasso ring 77 to Moller’s
subskate 55 would prevent the stabber arms 75 from moving the tubular to
the center of the wellbore. (App. Br. 14:4-6.) We address claims 4 and 6
separately.
With regard to claim 4, W/L’s arguments are not persuasive. W/L’s
analysis of the combined teachings of Moller and Dysarz is limited to the
physical combination of Dysarz’s lasso ring 77 with Moller’s subskate 55.
However, it is not necessary that the inventions of the references be
physically combinable, without change, to render obvious the invention
under review. In re Sneed, 710 F.2d at 1550. “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” In re Keller, 642
F.2d at 425. Furthermore, a person of ordinary skill in the art is also a
person of ordinary creativity, not an automaton. KSR Int’l Co., 127 S.Ct. at
1742.
W/L’s limited focus on physically attaching Dysarz’s lasso ring 77 to
Moller’s subskate 55 does not account for the basic adaptations that a person
of ordinary skill and creativity in the art would know to carry out to
accomplish the intended goal. Moller teaches that its stabber arms 75
interact with the pipe when subskate 55 reaches the end of guide track 54.
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At that point, the stabber arms operate as guides for the pipe to position it
over a well hole. Dysarz teaches a pipe guide that is attached to the end of a
pipe tray. One with ordinary skill and creativity would have recognized that
pipe guiding arms, such as Moller’s stabber arms 75, may be mounted on the
device that transports the pipe to the well hole, such as with the mounting
configuration of Dysarz’s lasso ring 77 on pipe trough 28. The level of
ordinary skill in the pipe handling art is such that one with ordinary skill
would have addressed basic implementation requirements that would arise
from combining the teachings of Moller and Dysarz.
Furthermore, the Examiner reasoned that in light of the teachings of
Dysarz, a person of ordinary skill in the art would have mounted Moller’s
arms on the end of its pipe tray (subskate 55) to “ensure the arm position is
always in position relative to the movement of the tray” and “always be
ready when the tubular is being raised to the inclined position.” (Ans. 9:11-
14.) A basis to combine teachings need not be expressly stated in any prior
art reference. In re Kahn, 441 F.3d at 989. There need only be an
articulated reasoning with rational underpinnings to support a motivation to
combine teachings. Id. at 988.
In Moller, the subskate 55 carrying the pipe must be brought to the
end of the guide track 54 to operatively position the pipe relative to the
stabber arms 75 such that the arms can grasp and extend the pipe over the
well hole. The Examiner reasoned that the combined teachings of Moller
and Dysarz would have suggested mounting Moller’s stabber arms 75 on
subskate 55 such that they are always in the operative position relative to
one another. In that configuration, Moller’s stabber arms 75 and the
subskate 55 advance together to the end of guide track 54. That reasoning is
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rational. A person of ordinary skill in the art would have recognized that
when stabber arms 75 are mounted on subskate in the operative position, the
assembly would adequately operate to deliver the pipe to the end of guide
track 54 and extend the pipe over the well hole. W/L does not explain why
there is error in the Examiner’s reasoning. We reject W/L’s argument that
the combined teachings of Moller and Dysarz do not satisfy claim 4.
Claim 6 requires that the “arm is rotatable about its axis to release said
tubular therefrom.” Claim 6 is also dependent on claim 1, which requires an
arm that is “pivotable about a substantially horizontal axis” and is
“configured to pivotably move the tubular” from an inclined position to a
positioned aligned with the longitudinal axis of a well. Thus, claim 6
requires a pivotable arm that pivotably moves a tubular between an inclined
position and a well-aligned position and releases the tubular by rotation
about a horizontal axis. The Examiner does not explain how that
requirement is satisfied by the combination of Moller and Dysarz. Neither
Moller nor Dysarz disclose an arm that pivots about a horizontal axis to
pivotably move a tubular.
We do not sustain the rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Moller and Dysarz.
The obviousness rejection based on
Dysarz, Neilon, and Friberg

The Examiner rejected claims 8-10, 16, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Dysarz, Neilon, and Friberg. Those claims are
argued collectively.
Claims 8 and 10 are independent. Each claim includes a limitation
relating to the pivoting of an arm or centering means about a pivoting point.
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In claim 8 the limitation reads (Claims App’x 19:5-11):
wherein the arm is operatively mounted to an inclined ramp member
and the arm is pivotable around a pivot point to move the tubular
between a first position where the longitudinal axis of the tubular is in
an inclined position with respect to the longitudinal axis of a well and
a second position where the longitudinal axis of the tubular is
substantially in alignment with the axis of the well, and;
a motor configured to pivot the arm.

In claim 10 (Claims App’x 19:21-27):
wherein the centering member rotates around a pivot point to move
the tubular between a first position where the longitudinal axis of the
length of tubular is in an inclined position with respect to the
longitudinal axis of the wellbore and a second position where the
longitudinal axis of the tubular is substantially in alignment with the
axis of the wellbore, and;
a motor configured to pivot the centering member.

The Examiner found that Dysarz “does not teach the arm as pivoting
under power during movement of the tubular from an inclined position to the
vertical position.” (Ans. 6:14-15.) To remedy the deficiency the Examiner
pointed to each of Neilon and Friberg.
W/L argues that “[n]either Dysarz nor Neilon, et al. disclose[s] [that]
the arm, or a centering member, is pivotable, or rotates, around a pivot point
to move the tubular between a first position and a second position as recited
in claims 8-10, 16, and 17.” (App. Br. 15:11-15.) W/L further argues that
“[t]he Examiner relies on Friberg, et al. for the teaching of a power
cylinder.” (App. Br. 15:2-3.) W/L contends that “the addition of the power
cylinder of Friberg, et al. to the Dysarz and/or Neilon, et al. does not
compensate for the deficiencies of the references.” (App. Br. 15:24-25.)
W/L additionally argues that there is no motivation to combine Friberg,
which relates to drilling mines in a mine shaft, with Dysarz and Neilon,
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which relate to drilling oil and gas wells. (App. Br. 16:1-8.) Evidently,
according to W/L features of mine drilling devices are categorically not
combinable with devices that drill oil and gas wells.
W/L’s arguments are not persuasive. We first reject W/L’s
characterization of the extent that the teachings of Friberg apply in the
rejection of claims 8-10, 16, and 17. The teaching value of Friberg is not
limited solely to a power cylinder. That is simply one of the teachings that a
person of ordinary skill in the art would have taken from the reference.
Moreover, the Examiner did not rely on Friberg for only its disclosure of a
power cylinder. Rather, the Examiner cited Friberg as disclosing (Ans. 7:4-
10):
a device for delivering a tubular to a well bore comprising:
a tray (30) for holding tubular;
an arm (48) pivotally mounted at the end of said tray;
wherein said arm prevents swinging of a tubular when
suspended from an elevator;
pivoting of said arm about a substantially horizontal axis is
caused by a motor driving fluid for actuator (51).

We also reject W/L’s argument that a person of ordinary skill in the
art would have had no motivation to combine teachings of Friberg with
Dysarz. Friberg discloses an apparatus for moving elongated elements, such
as drill rods, from a stored position to the axis of a drill hole. (Friberg 1:4-
6.)
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Friberg’s Figures 8 and 9 are reproduced below:

“Figures 8 and 9 show in vertical section a lower supporting groove
with a pivotable guiding groove for lower ends of the drilling rods...”
(Friberg 3:30-33.)

In Friberg, a magazine device 18 includes a support groove 30 that
stores drill rods 19-22. (Friberg 5:1-4.) A guiding groove 48 is pivotally
attached to the end of supporting groove 30. (Friberg 5:37-40.) Guiding
groove 48 pivots about pivot points 49, 50 by operation of a power cylinder
51. (Friberg 5:41-45.) When guiding groove 48 pivots, a single drill rod is
released from guiding groove 30 onto the guiding groove. (Friberg 5:57-64.)
The drill rod then moves along the guiding groove into a position where it is
aligned with drill hole 15. (Friberg 8:50-64.)
Dysarz discloses an apparatus for transferring a drill pipe from a pipe
rack into position over a drill floor. (Dysarz 2:7-11; 46-56.) In Dysarz, a
pipe 9 is carried on a pipe trough 28 that sits on an inclined trough frame 15.
(Dysarz 4:54-56; Figure 1.) One end of pipe trough 28 includes a lasso 18
that catches pipes and prevents them from swinging free as the pipes are
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lifted from the pipe trough. (Dysarz 2:51-56; 7:12-14). Lasso 18 includes a
lasso ring 77 with a hinge 76 at one end, a latch 64 at another, and a central
opening that allows pipes to pass through. (Dysarz 7:14-18.)
Thus, each of Friberg and Dysarz discloses a pipe guiding device that
positions drill pipes with respect to drill holes. A person of ordinary skill in
the art would not have viewed the teaching value of each reference as being
limited based on the intended use of the drilled hole, i.e. as a mine hole or as
a gas or oil well.
As we have already noted, the test for obviousness is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art. In re Keller, 642 F.2d at 425. Additionally, a prior
art reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
attempting to protect. EWP Corp., 755 F.2d at 907.
Here, a person of ordinary skill in the art would have recognized
Dysarz and Friberg as disclosing alternative mechanisms for aligning drill
pipes with a drill hole. The level of ordinary skill in the pipe handling art is
such that a person with ordinary skill would also have recognized that those
alternative mechanisms would each adequately operate to position drill pipes
when arranged on a drill pipe delivery device such as Dysarz’s pipe trough
28. W/L’s argument that Friberg’s power cylinder does not address the
deficiencies of Dysarz does not take into account how a person of ordinary
and creativity would evaluate the entirety of the teachings of the references
in resolving the obviousness of W/L’s claims.
As discussed above, Friberg’s pipe delivery device includes a guiding
groove or arm 48 that pivots or rotates around a pivot point by operation of
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21
powered cylinder 51 to move a tubular from an inclined position to one
where the pipe is aligned with a drill hole. W/L does not dispute that
powered cylinder 51 corresponds to the “motor” of claims 8 and 10.
Therefore, Friberg’s pipe delivery device satisfies the limitations in claims 8
and 10 of an arm that pivots or rotates by a motor to move a tubular between
positions.
For the foregoing reasons, we conclude that the combined teachings
of Dysarz and Friberg satisfy the requirements of claims 8 and 10. We need
not address the additional teachings of Neilon.
We sustain the rejection of claims 8-10, 16, and 17 as unpatentable
over Dyzarz, Neilon, and Friberg.
The obviousness rejection based on
Dysarz, Neilon, Friberg, and Hogan

Claims 11-13 were rejected over Dysarz, Neilon, Friberg, and Hogan.
Claims 11-13 are dependent either directly or indirectly on independent
claim 10. W/L does not separately argue the merits of the rejection of
claims 11-13. W/L argues only that the alleged deficiencies of the
combination of Dysarz, Neilon, and Friberg with respect to claim 10 are not
made up by Hogan.
For the reasons given above, we reject W/L’s argument that the
combination of Dysarz, Neilon, and Friberg does not satisfy claim 10.
Accordingly, we sustain the rejection of claims 11-13 under 35 U.S.C.
§ 103(a) as unpatentable over Dysarz, Neilon, Friberg, and Hogan.
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F. CONCLUSION
1. W/L has not shown that the Examiner erred in finding that
Moller discloses an arm that is “pivotable about a horizontal axis.”
2. W/L has not shown that the Examiner erred in finding that
Moller discloses an arm that is “configured to pivotably move” a tubular
from a first inclined position to a second well-aligned position.
3. W/L has not shown that the Examiner erred in determining that
the combined teachings of Moller and Dysarz teach an arm that is
“configured to pivotably move the tubular” and is “operatively mounted on
said pipe tray.”
4. W/L has shown that the Examiner erred in determining that
Moller and Dysarz teach a pivotable arm that pivotably moves a tubular
between an inclined position and a well-aligned position and releases the
tubular by rotation about a horizontal axis.
5. W/L has not shown that the Examiner erred in determining that
the combination of Moller, Dysarz, and Friberg teach an apparatus for
delivering a tubular to a well hole that includes a powered arm that pivots or
rotates around a pivot point to move a tubular between two positions.
G. ORDER
The rejection of claims 1-3 and 7 under 35 U.S.C. § 102(b) as
anticipated by Moller is affirmed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Moller and Dysarz is affirmed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Moller and Dysarz is reversed.
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The rejection of claims 8-10, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Dysarz, Neilon, and Friberg is affirmed.
The rejection of claims 11-13 under 35 U.S.C. § 103(a) as
unpatentable over Dysarz, Neilon, Friberg, and Hogan is affirmed.

AFFIRMED-IN-PART

ack

cc:

William B. Patterson
MOSER, PATTERSON & SHERIDAN, L.L.P.
Suite 1500
3040 Post Oak Blvd.
Houston TX 77056