Volker Peters et al.

Patent Trials and Appeals Board

Nov 26, 2021

2020006137 (P.T.A.B. Nov. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/274,916 09/23/2016 Volker Peters DDR4-61746-US-NP 3028
44639 7590 11/26/2021
CANTOR COLBURN LLP-BAKER HUGHES OILFIELD
OPERATIONS LLC
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
PATEL, NEEL G
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
11/26/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VOLKER PETERS, ANDREAS PETER,
CHRISTIAN FULDA, HEIKO EGGERS, and
HARALD GRIMMER
____________

Appeal 2020-006137
Application 15/274,916
Technology Center 3600
____________

Before EDWARD A. BROWN, CARL M. DeFRANCO, and
MICHAEL L. WOODS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–28. Appeal Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies “Baker Hughes a GE company” as the
real party in interest. Appeal Br. 2 (The Appeal Brief filed on May 8, 2020,
does not include page numbering. Herein, we refer to pages of the Appeal
Brief based on numbering its pages beginning with “page 1.”).
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CLAIMS
“[Appellant’s] disclosure relates generally to drilling directional
wellbores.” Spec. ¶ 1. Claims 1–13 and 25–28 are directed to a drilling
assembly for drilling a wellbore, and claims 14–24 are directed to a method
of drilling a wellbore. Claims 1 and 14 are independent. Appeal Br.
(Claims App.). Claim 1, reproduced below, illustrates the claimed subject
matter:
1. A drilling assembly for drilling a wellbore, comprising:
a housing having an upper section and a lower section
separate from the upper section;
a downhole drive for rotating a drill bit relative to a drill
pipe;
a shaft, wherein the shaft is coupled to the downhole
drive and the drill bit and is disposed in the housing;
a pivot member that couples the upper section of the
housing to the lower section of the housing, wherein the lower
section of the housing tilts relative to the upper section of the
housing about the pivot member when the drill pipe is
rotationally stationary to allow drilling of a curved section of
the wellbore, and wherein rotating the drill pipe causes a
reduction of the tilt between the upper section and the lower
section to allow drilling of a straighter section of the wellbore;
a bearing section in the lower section that rotatably
couples the shaft to the lower section, wherein the shaft is
disposed and configured to be rotated by the drive within the
upper section, the lower section, the bearing section, and the
pivot member; and
at least one seal that seals at least a portion of a surface of
the pivot member.

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REJECTIONS
Claims 1, 6, 7, 10, 11, 14, 19, 20, 22, 23, and 25–272 are rejected
under 35 U.S.C. § 102(a)(1) as being anticipated by Smith (WO
2013/122603 A1, published Aug. 22, 2013). Final Act. 3.
Claims 2–4, 12, 13, 15–17, and 24 are rejected under 35 U.S.C. § 103
as being unpatentable over Smith and Peter (US 2012/0018225 A1,
published Jan. 26, 2012). Final Act. 13.
Claims 5 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Smith and Mohrmann (US 2006/0096784 A1, published
May 11, 2006). Final Act. 18.
Claims 8, 9, and 21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Smith, Peter, and Hall (US 7,392,857 B1, issued July 1,
2008). Final Act. 19.
Claim 28 is rejected under 35 U.S.C. § 103 as being unpatentable over
Smith and Sugiura (US 2016/0069139 A1, published Mar. 10, 2016). Final
Act. 21.

ANALYSIS
Claims 1, 6, 7, 10, 11, 14, 19, 20, 22, 23, and 25–27 as Anticipated by Smith
The Examiner finds that Smith discloses a drilling assembly
(directional drilling system 10) comprising “a housing (of the tool shown in
fig. 1) having an upper section and a lower section,” “a pivot member that
couples the upper section of the housing (of the tool shown in fig. 1) to the

2 Claims 25–27 are not listed in the rejection heading, but are addressed in
the body of the rejection. See Final Act. 3, 11–12. We will treat claims 25–
27 under this ground.
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lower section of the housing”; a bearing section (radial bearing 52); and a
shaft (shaft 50) disposed and configured to be rotated by a drive within the
upper section, the lower section, the bearing section, and the pivot member.
Final Act. 3–5.
Appellant contends that Smith does not disclose all limitations of
claim 1. Appeal Br. 8–11. Appellant contends that Smith discloses a shaft
assembly including two separate shafts 50, 56 joined by articulation 54, and
being disposed within housing 84. Id. at 10; see Smith Fig. 2. Appellant
submits that Smith’s pivot member (articulation 54) is part of the shaft
assembly, and, therefore, “it is not possible for the shaft assembly or any of
shaft 50 and shaft 56 to be rotated within the pivot member. Rather, the
shaft assembly and pivot member of Smith rotate together within the
housing 84.” Appeal Br. 10–11. Appellant contends that, in contrast, “claim
1 includes the pivot member as part of the housing, and the shaft of claim 1
is disposed and configured to be rotated within both the housing and the
pivot member.” Id. at 11.
Appellant also contends that
the phrase “. . . wherein the shaft is disposed and configured to
be rotated by the drive within the upper section, the lower
section, the bearing section, and the pivot member . . .” is
clearly disclosed in the specification as the shaft rotating while
the upper section, lower section, bearing section and pivot
member are non-rotating or stationary. Therefore, the clear
meaning of this phrase is that the shaft is able to rotate relative
to each of the upper section, lower section, bearing section and
pivot member.
Reply Br. 7 (emphasis added).
Appellant contends that, in Figure 2 of Smith, shaft 50 is rigidly
connected to articulation 54 and shaft 56 is rigidly connected to the
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counterpart of articulation 54, and in Figure 5 of Smith, shaft 56 is fixedly
connected to articulation 54 and shaft 50 is fixedly connected to ball joint
86. Reply Br. 8. Therefore, Appellant submits, shafts 50 and 56 do not
rotate “relative to” the housing, as claimed. Id.
Appellant’s contentions are persuasive. The Examiner finds that
Figure 1 of Smith discloses the claimed “housing,” i.e., “a housing (of the
tool shown in fig. 1) having an upper section and a lower section,” and “a
pivot member that couples the upper section of the housing (of the tool
shown in fig. 1) to the lower section of the housing.” Final Act. 4. In the
Examiner’s Answer, the Examiner submits that the embodiments shown in
Figures 2 and 5 include structure that is located within housing 84, yet the
Examiner seems to consider this structure to be a “housing.” See Ans. 4–5.
This structure appears to include articulation 54 shown in Figure 2, and ball
joint 86 shown in Figure 5. Id. According to the Examiner, “[F]igure 2 of
Smith illustrates the articulation . . . to house/encase the shaft 50,” and
“[F]igure 5 in Smith teaches another embodiment in which the shaft 50
rotates within . . . the housing/encasing section surrounding element 86.” Id.
(additional emphasis added). We agree with Appellant, however, that the
articulated structure disclosed in Figures 2 and 5 of Smith cited by the
Examiner, namely, articulation 54 and ball joint 86, are to shaft 50, and not
to a “housing.” Appeal Br. 10. Accordingly, this articulated structure does
not satisfy the claim requirement of “a pivot member that couples the upper
section of the housing to the lower section of the housing,” as claimed. The
Examiner’s finding that Smith’s shaft articulation satisfies the required
“pivot member” of the housing is not supportable.
Claim 1 further requires that “the shaft is disposed and configured to
be rotated by the drive within the upper section, the lower section, the
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bearing section, and the pivot member.” Appeal Br. (Claims App.)
(emphasis added). Appellant is correct in arguing that “it is not possible for
the shaft assembly or any of shaft 50 and shaft 56 to be rotated within the
pivot member” of the “housing” shown in Figures 2 and 5 of Smith cited by
the Examiner. Id. at 10–11 (emphasis added).
In response to Appellant’s argument, the Examiner determines that
“the broad claim language does not recite for any of the four elements (i.e.
the upper section, the lower section, the bearing section, the pivot member)
to be stationary while the shaft rotates.” Ans. 4. The Examiner explains,
“[t]he open-ended limitation merely requires for the shaft to be disposed
within the pivot member and the shaft to be configured to rotate (via the
drive) within the pivot member.” Id. (emphasis omitted).
The Examiner’s claim construction is unreasonably broad. The claim
construction gives no weight to the requirement that the shaft be configured
to rotate within the housing and pivot member. Specifically, the Examiner’s
claim construction ignores the phrase “shaft . . . configured to be rotated . . .
within . . . the pivot member.” Appeal Br. (Claims App.). We agree with
Appellant that “the clear meaning of this phrase is that the shaft is able to
rotate relative to each of the upper section, lower section, bearing section
and pivot member.” Reply Br. 7 (emphasis added). In addition to ignoring
the clear meaning of the term “rotate,” the Examiner’s construction is
inconsistent with the Specification. See, e.g., Spec. ¶¶ 10, 11 (describing a
shaft that rotates within a drilling assembly, including the housing); see also,
e.g., id. at Figs. 1, 2, 4, 7 (depicting a shaft for rotation within a deflection
device and housing); see also Reply Br. 7–8 (arguing the same).
Accordingly, the Examiner erred in finding that Smith’s articulation
54 and ball joint 86 shown in Figures 2 and 5 satisfy the limitation of “a
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pivot member that couples the upper section of the housing to the lower
section of the housing,” and further erred in concluding that claim 1 does not
require the shaft be configured to rotate within the housing and pivot
member.
Despite the Examiner’s errors, however, we find that Smith teaches a
housing that is “articulated.” We reproduce Smith’s Figure 1, below:

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Figure 1 “is a representative partially cross-sectional view of a directional
drilling system.” Smith 2, ll. 2–3. Figure 1 depicts “a directional drilling
system 10 . . . used to drill a wellbore 12 through an earth formation 14 in a
desired direction.” Id. at 2, ll. 20–24 (emphasis added). Moreover, drilling
system 10 comprises a bottom hole assembly 30, which includes drill bit 16,
bit deflection assembly 18, and “an optional articulated housing 20.” Id. at
2, ll. 25–27 (emphasis added). Smith explains that “[t]he articulated housing
20 permits the bottom hole assembly 30 to bend at the articulated housing.”
See id. at 3, ll. 25–26. Figure 1 of Smith illustrates articulated housing 20
using multiple horizontal lines which are vertically spaced along the length
dimension. Although these horizontal lines are not described by Smith, their
locations and form clearly suggests that articulated housing 20 includes
multiple sections along its length.
Smith does not define the term “articulated” as used to describe
articulated housing 20. We note, however, that a plain and ordinary
meaning of “articulated” is “having a hinge or pivot connection esp. to allow
negotiation of sharp turns.” See Merriam-Webster’s Collegiate Dictionary
70 (11th ed. 2003). We find this definition to be consistent with the
structure of articulated housing 20 in Figure 1, as one of ordinary skill in the
art would understand that articulated housing 20 would inherently include a
hinge or pivot connection (i.e., a “pivot member”) to connect two sections of
housing (i.e., an “upper section” and a “lower section”) such that “the lower
section of the housing tilts relative to the upper section of the housing about
the pivot member (i.e., the hinge or pivot connection) when the drill pipe is
rotationally stationary to allow drilling of a curved section of the wellbore,”
as required by claim 1. Furthermore, Smith’s shaft 50 would be “disposed
and configured to be rotated by the drive within the upper section, the lower
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section, the bearing section, and the pivot member,” as also required by
claim 1.
Additionally, Appellant’s Specification includes the following
description of an “articulation joint”:
In aspects, directional drilling is achieved by using a self-
adjusting “articulation joint” (also referred to herein as a
“pivotal connection”, “hinge device” or “hinged” device) to
allow a tilt in the drilling assembly when the drill string and
thus the drilling assembly is stationary and optionally using a
dampener to maintain the drilling assembly straight when the
drilling assembly is rotated.
See Spec. ¶ 8 (emphasis added). We find that the above-noted definition of
“articulated” is consistent with this description of the “articulation joint.”
Figures 2 and 5 of Smith do not depict housing 84 as having the
articulated structure described by Smith in Figure 1. However, Smith
discloses:
The articulated housing 20 could be used for a housing
84 in the bit deflection assembly 18, if desired. In this
configuration, the articulated housing 20 could overlie a shaft
articulation 54 (see FIGS. 2, 4 & 5).
See Smith 4, ll. 6–9. Accordingly, the articulated housing described in
Smith can be used as the housing surrounding the rotatable shaft in the bit
deflection assembly shown in Figures 2 and 5.
For the above reasons, we sustain the rejection of claim 1, and claims
6, 7, 10, and 11 depending from claim 1, as anticipated by Smith. We also
sustain the rejection of claim 14, and claims 19, 20, 22, and 23 depending
therefrom, for substantially the same reasons as for claim 1. Apart from
those unsupportable findings and claim construction issues discussed above,
we otherwise adopt the Examiner’s findings and reasoning as set forth in the
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Final Office Action and Answer. Pursuant to 37 C.F.R. § 41.50(b), we
designate our affirmance as to these claims as a new ground of rejection.

New Ground of Rejection of Claim 1 as Obvious over Smith
Even accepting Appellant’s argument that Smith does not disclose all
limitations of claim 1, and particularly, “a pivot member that couples the
upper section of the housing to the lower section of the housing ” and “the
shaft is disposed and configured to be rotated by the drive within the upper
section, the lower section, the bearing section, and the pivot member,” we,
nonetheless, determine that it would have been obvious to one of ordinary
skill in the art to provide at least one “pivot member,” as claimed, in Smith’s
articulated housing shown in Figure 1. Consistent with Smith’s use of the
term “articulated” for “articulated housing 20,” the structure of articulated
housing 20 that is shown in Figure 1, the description of the bending function
of articulated housing 20 in Smith, and the above-noted ordinary meaning of
“articulated,” the “pivot member” provided in Smith would couple at least
two adjacent sections of articulated housing 20 to each other, allowing the
sections to “tilt” relative to each other during the described bending.
Additionally, it would have been obvious to locate the “pivot member” in
directional drilling assembly 10 so that the shaft is disposed and configured
to be rotated “within” the sections and the pivot member, as required by
claim 1. For example, it would have been obvious for the pivot member to
include one or more hinged connections between the adjacent sections of
articulated housing 20 to enable tilting of the sections. In other words, a
skilled artisan would have modified Smith’s articulated housing 20 to
include a hinge or other suitable pivotable connection (i.e., a “pivot
member”) to connect two sections of housing (i.e., an “upper section” and a
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“lower section”) to allow the sections to tilt about a pivot, for the purpose of
complimenting and accommodating angular displacement of Smith’s
articulated shaft in a curved or non-linear wellbore. Therefore, pursuant to
37 C.F.R. § 41.50(b), we enter a new ground of rejection of claim 1 under 35
U.S.C. § 103 as being unpatentable over Smith.3

Claims 2–4, 12, 13, 15–17, and 24 as Obvious over Smith and Peter;
Claims 5 and 18 as Obvious over Smith and Mohrmann;
Claims 8, 9, and 21 as Obvious over Smith, Peter, and Hall; and
Claim 28 as Obvious over Smith and Sugiura
With respect to the rejection of claims 2–4 and 13, Appellant contends
that “Peter does not teach a pivot member that couples a lower and upper
housing section to each other. Thus, Peter does not teach a shaft that rotates
within a pivot member,” as required by parent claim 1. Appeal Br. 12.
Appellant contends that claims 15–17 and 24 are patentable over Smith and
Peter for the same reasons as for parent claim 14. Id. As for claims 5 and
18, Appellant contends that Mohrmann fails to teach or suggest a pivot
member, as recited in claim 1 (id. at 12–13), and Appellant makes
substantially the same contention about both Hall and Sugiura for claims 8,
9, 21, and 28 (id. at 13–14).
For the reasons discussed above, Appellant’s argument is persuasive
as to certain findings made by the Examiner as to claim 1. As also discussed
above, however, Smith inherently discloses the claimed “pivot member,”
and, even assuming Smith does not disclose this element, it nonetheless

3 Our decision to enter a new ground of rejection is discretionary. See 37
C.F.R. § 41.50(b). We here exercise our discretion and do not reach whether
additional claims are also obvious over Smith.
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would have been obvious to modify Smith’s articulated housing to have one.
Other than those unsupportable findings and claim constructions discussed
above, we otherwise adopt the Examiner’s findings and reasoning as set
forth in the Final Office Action and Answer. Accordingly, we sustain the
rejections of claims 2–4, 5, 8, 9, 12, 13, 15–18, 21, 24, and 28 and designate
our affirmance of each rejection as a new ground of rejection consistent with
this Decision.

CONCLUSION
We affirm the Examiner’s rejections of claims 1–28 and designate our
affirmances as new grounds of rejection, and we enter a separate new ground
of rejection of claim 1.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed New
Ground
1, 6, 7, 10,
11, 14, 19,
20, 22, 23,
25–27
102(a)(1) Smith 1, 6, 7,
10, 11,
14, 19,
20, 22,
23, 25–27
1, 6, 7,
10, 11,
14, 19,
20, 22,
23, 25–
27
1 103 Smith 1
2–4, 12,
13, 15–17,
24
103 Smith, Peter 2–4, 12,
13, 15–
17, 24
2–4, 12,
13, 15–
17, 24
5, 18 103 Smith, Mohrmann 5, 18 5, 18
8, 9, 21 103 Smith, Peter, Hall 8, 9, 21 8, 9, 21
28 103 Smith, Sugiura 28 28
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Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed New
Ground
Overall
Outcome
1–28 1–28

FINALITY OF DECISION AND RESPONSE
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellant],
within two months from the date of the decision, must exercise
one of the following two options with respect to the new
ground[s] of rejection to avoid termination of the appeal as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground[s] of
rejection [are] binding upon the examiner unless an amendment
or new Evidence not previously of Record is made which, in
the opinion of the examiner, overcomes the new ground[s] of
rejection designated in the decision. Should the examiner reject
the claims, [Appellant] may again appeal to the Board pursuant
to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground[s] of
rejection and state with particularity the points believed to have
been misapprehended or overlooked in entering the new
ground[s] of rejection and also state all other grounds upon
which rehearing is sought.

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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed., Rev.
10.2019, June 2020).
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) (2019).

AFFIRMED; 37 C.F.R. § 41.50(b)