Ex Parte Rauch

Board of Patent Appeals and Interferences

Dec 2, 2004

10094413 (B.P.A.I. Dec. 2, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VERNON RAUCH
__________
Appeal No. 2005-0118
Application 10/094,413
___________
ON BRIEF
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Before ABRAMS, FRANKFORT, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 2. Claim 3 was canceled by appellant
in the brief (filed March 9, 2004).
Appellant’s invention relates to a pipe spinning tool for
spinning together and apart threaded segments of drill pipe such
as are used in the drilling of oil and water wells. Independent
claim 1 is representative of the subject matter on appeal and a
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Application 10/094,413
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copy of that claim can be found in the Appendix to appellant’s
brief.
The prior art references of record relied upon by the
examiner in rejecting the claims on appeal are:
Hudson 4,221,269 Sept. 9, 1980
Rauch 6,065,372 May 23, 2000

Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rauch in view of Hudson.
Rather than attempt to reiterate the examiner's commentary
with regard to the above-noted § 103 rejection and the
conflicting viewpoints advanced by appellant and the examiner
regarding that rejection, we make reference to the examiner's
answer (mailed June 15, 2004) for the reasoning in support of the
rejection, and to appellant’s brief (filed March 9, 2004) and
reply brief (filed August 20, 2004) for the arguments
thereagainst.
Appeal No. 2005-0118
Application 10/094,413
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OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that the above-noted
§ 103 rejection will not be sustained. Our reasons follow.
In the rejection of claims 1 and 2 under 35 U.S.C. § 103(a),
the examiner recognizes that the motorized wrench shown in Rauch
for spinning together lengths of drill pipe is significantly
structurally different than that defined in appellant’s claims on
appeal, i.e., in that Rauch’s power wrench does not have a frame
with two engaging arms pivotally mounted to the frame and
defining a pipe receiving space therebetween, does not have two
drive systems of the type required in claim 1 on appeal and an
arrangement wherein one of the drive systems is attached to each
of the two above-noted pivotally mounted engaging arms, and also
does not have an engagement assembly like that in appellant’s
claim 1 using two compressed air rams positioned in the manner
set forth in claim 1 for moving the respective pivotally mounted
Appeal No. 2005-0118
Application 10/094,413
1 Unlike the examiner, we find no “compressed air rams”
disclosed in the pipe spinner of Hudson. The elements (52)
disclosed as moving the pivoted arms (38) therein are
specifically said to be “hydraulic cylinders” (col. 3, lines
25-33).
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engaging arms. To account for the above-noted differences, the
examiner looks to the pipe spinner mechanism of the Hudson
patent, which the examiner characterizes as disclosing “two
pivoted engaging arms, two drive systems, and two compressed air
rams” (answer, page 3) to enable engagement and rotation of
threaded pipe segments in a well drilling operation.1 From the
combined disclosures and teachings of Rauch and Hudson, the
examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of appellant’s invention to
form the device of Rauch with two pivoted engaging arms, two
drive systems, and two compressed air rams to enable engagement
and rotation of threaded pipe segments in a rapid, efficient
manner as taught by Hudson.
Appellant argues, and we strongly agree, that the examiner’s
attempted combination of the pipe spinning tools of Rauch and
Hudson, and the wholesale structural changes to the motorized
wrench of Rauch resulting therefrom, represents an improper
Appeal No. 2005-0118
Application 10/094,413
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exercise in hindsight reconstruction of the claimed invention
based on appellant’s own teachings, and also runs contrary to the
disclosure in Hudson (col. 1, lines 58-68) that chain drives,
e.g., like that seen in Rauch for driving the rollers (33, 34) on
the fixed frame (12), are to be avoided in favor of the use of a
light-weight hydraulic rotary motor (56) co-axial with each
roller and mounted within the roller structure. Contrary to the
examiner’s apparent belief, the mere fact that Hudson may embody
a concept involving the use of two pivoted engaging arms, two
drive systems, and two rams, in and of itself, provides no
motivation or suggestion for drastically structurally modifying
the particular type of power wrench seen in Rauch in the manner
urged by the examiner.
Since we have determined that the teachings and suggestions
found in the Rauch and Hudson patents would not have made the
subject matter as a whole of claims 1 and 2 on appeal obvious to
one of ordinary skill in the art at the time of appellant’s
invention, we must refuse to sustain the examiner’s rejection of
those claims under 35 U.S.C. § 103(a).
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Application 10/094,413
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In light of the foregoing, the decision of the examiner to
reject claims 1 and 2 of the present application under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2005-0118
Application 10/094,413
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