Ex Parte 7100710 et al

Patent Trial and Appeal Board

Nov 23, 2012

95001118 (P.T.A.B. Nov. 23, 2012)

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.
95/001,118 11/18/2008 7100710 069669-0007-03 8426
9629 7590 11/26/2012
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
11/26/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TESCO CORP.
Requester

v.

Patent of WEATHERFORD/LAMB, INC.
Patent Owner and Appellant
____________

Appeal 2012-008948
Reexamination Control 95/001,118
Patent 7,100,710 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFERY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Patent Owner from the Patent
Examiner’s rejections of claims 1-6 in an inter partes reexamination of U.S.
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Patent No. 7,100,710, issued September 5, 2006. The Board’s jurisdiction
for this appeal is under 35 U.S.C. §§ 6 and 134. We affirm-in-part.

STATEMENT OF THE CASE
A request for inter partes reexamination of U.S. Patent 7,100,710
(hereinafter, “the ‘710 patent”) was made by Third Party Requester Tesco
Corporation on November 18, 2018 pursuant to 35 U.S.C. §§ 311-318 and
37 C.F.R. 1.902-1.997. The Patent Owner is Weatherford/Lamb, Inc. App.
Br. 1 dated September 27, 2010). The claims were amended during the
reexamination proceeding before the Examiner. A Right of Appeal Notice
was mailed by the Examiner on June 24, 2010, rejecting pending claims 1-6.
The Patent Owner appealed the Examiner’s decision to the Board. Notice of
Appeal dated July 26, 2010. An oral hearing was held on September 5,
2012. A transcript of the hearing has been entered into the record. Oral
Hearing Transcript dated October 16, 2012. The Third Party Requester did
not participate in the oral hearing nor file a Respondent’s Brief.
The ‘710 Patent has been involved in litigation in Weatherford Int’l,
Inc. v. Tesco Corp., C.A. No. 2:07-cv-531 (E.D. Tex), which was dismissed
by joint stipulation on October 26, 2010.

THE CLAIMS
Independent claims 1 and 4 are representative and read as follows
(underlining and bracketing indicates changes to the claims relative to the
original claims in the ‘710 Patent):
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1. (Amended) A method of drilling and lining a[making a
cased] wellbore in one single drilling pass comprising at least
the steps of:
assembling a lower segment of a drill string comprising
in sequence from top to bottom a first hollow segment of drill
pipe,
a latching subassembly means, and
a rotary drill bit having at least one mud passage for
passing drilling mud from the interior of the drill string to the
outside of the drill string;
rotary drilling the well into the earth to a predetermined
depth by rotating the drill string which rotates the drill attached
to[with] the drill string and by attaching successive lengths of
hollow drill pipes to said lower segment of the drill string and
by circulating mud from the interior of the drill string to the
outside of the drill string during rotary drilling so as to produce
a wellbore;
after said predetermined depth is reached, pumping a
latching float collar valve means down the interior of the drill
string with drilling mud until it seats into place within said
latching subassembly means;
leaving the drill bit in the well;
pumping a bottom wiper plug means down the interior of
the drill string with a physically alterable bonding material until
the bottom wiper plug means seats on the upper portion of the
latching float collar valve means so as to clean the mud from
the interior of the drill string;
pumping any required additional amount of said
physically alterable bonding material into the wellbore by
forcing it through a portion of the bottom wiper plug means and
through at least one mud passage of the drill bit into the
wellbore;
pumping a top wiper plug means down the interior of the
drill string with water until the top wiper plug seats on the
upper portion of the bottom wiper plug means thereby cleaning
the interior of the drill string and forcing additional physically
alterable bonding material into the wellbore through at least one
mud passage of the drill bit;
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allowing the physically alterable bonding material to
cure; thereby encapsulating the drill string in the wellbore with
cured [banding] bonding material to make a cased wellbore.

4. (Amended) A method for drilling and lining a wellbore with
a tubular in one single drilling pass comprising:
drilling the well bore using a drill string, the drill string
having a tubular that comprises a casing portion[;], and locating
the casing portion within the wellbore by rotating the casing
portion which rotates an earth removal member attached to the
casing portion;
leaving the earth removal member in the wellbore;
placing a physically alterable [banding] bonding material
in an annulus formed between the casing portion and the well
bore by pumping the bonding material through the casing
portion and through passages in the earth removal member;
establishing [a] an ambient hydrostatic pressure condition in the
wellbore; and
allowing the bonding material to physically alter under the
ambient hydrostatic pressure condition.

Claim interpretation
The claims are directed to methods for drilling and lining a wellbore
with casing “in one single drilling pass.” The Examiner did not give weight
to the preamble limitation of “single drilling pass,” but in view of the ‘710
Patent Specification, we conclude this was an error.1

1 See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950-51 (Fed. Cir.
2006)(“While it is true that preamble language is often treated as nonlimiting
in nature, it is not unusual for this court to treat preamble language as
limiting, as it is in this case. Preamble language that merely states the
purpose or intended use of an invention is generally not treated as limiting
the scope of the claim. [Citations omitted]. However, we have stated that
there is no ‘litmus test’ for determining whether preamble language is
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According to the ‘710 Specification:
The present invention allows for cementation of a drill string
with attached drill bit into place during one single drilling pass
into a geological formation. The process of drilling the well and
installing the casing becomes one single process that saves
installation time and reduces costs during oil and gas well
completion procedures.
‘710 Specification, col. 7, ll. 30-35 (emphasis added). The ‘720 Patent also
refers to installing the casing “during one single pass down into the earth of
the steel drill string.” ‘710 Patent, col. 15, ll. 29-30. The ‘710 Patent
specifically distinguishes its “single pass drilling” process as reducing the
number of steps taught in the prior art to accomplish well drilling. ‘710
Patent, col. 19, l. 20 to col. 20, l. 29. The ‘720 Patent further states that in
single pass drilling, a drill bit is chosen “so the entire production can be
drilled to its final depth using only a single drill bit.” ‘710 Patent, col. 19, l.
26. See also Oral hearing Transcript, p. 12, l. 13 to p. 13, l. 20. Thus, the
claim preamble is more than statement of an intended use, but rather is used
to describe a specific process in which a well is drilled in a single pass with
one drill bit.
During the Oral Hearing, counsel for Patent Owner further explained
that single pass drilling precludes removing parts from the wellbore during
the drilling process:

limiting. [Citation omitted]. To the contrary, we have stated that ‘whether to
treat a preamble as a claim limitation is determined on the facts of each case
in light of the claim as a whole and the invention described in the patent.’
[Citation omitted]”).

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This is so that you don’t have to pull something out that’s an
integral part of the drilling process itself, the bit, and then being
able to cement without having anything come out, such as a
down-hole drill motor or the bit itself.
Oral Hearing Transcript, p. 18, ll. 12-15.
Accordingly, we interpret a “one single drilling pass” method to be
one in which the drilling and cementing of the casing is done in one drilling
pass, without requiring extraction of the bit or other drilling parts during the
drilling process.
THE REJECTIONS
The claims stand rejected by the Examiner over ten different grounds
of rejection. We address each below.

1. ANTICIPATION BY DISMUKES ‘856
Claim 4 stands rejected by the Examiner under 35 U.S.C. § 102(b) as
anticipated by Dismukes ‘856.2 Answer 5.
The Examiner found that Dismukes ‘856, which describes a motor
assembly for drilling wells, teaches all the steps of the claimed method.
Answer 5. Patent Owner contends that Dismukes ‘856 does not teach the
recited step of “locating the casing portion within the wellbore by rotating
the casing portion which rotates an earth removal member attached to the
casing portion.” App. Br. 8. According to Patent Owner, the drill bit (“earth
removal member”) described by Dismukes ‘856 is not rotated by the casing
portion because the drill bit is connected to the casing through bearings that
allow for relative rotational movement between the two. Id.

2 Newton B. Dismukes, U.S. 4,646,856 (Mar. 3, 1987).
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Patent Owner’s argument is supported by the disclosure in Dismukes
‘856. Figures 3 and 4 of Dismukes ‘856, which illustrate the structure of a
motor assembly for drilling, are reproduced below:

Figure 3 is proximal to, and contiguous with, the portion of the motor
assembly illustrated in Figure 4. As shown in Figure 4 of Dismukes ‘856,
the drill bit 19a is attached to the drive shaft 32, but not directly to the
housing 13a which corresponds to the casing. Dismukes ‘856, col. 6, ll. 14-
17. The drill bit 19a and hollow drive shaft 32 are connected to housing 13a,
which serves as a casing string, through bearings 34, 35. Dismukes ‘856,
col. 6, ll. 14-17; col. 7, ll. 44-47. The motor 14a (top of Figure 3) is
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connected to drive shaft 32 (bottom of Figure 3) which rotates the drill bit
19a (Figure 4). The casing (“housing 13a”) as shown in Figures 3 and 4
runs along the entire motor assembly, but does not rotate the drill bit, but
rather is only connected to the drill bit 19a by a bearing assembly 33
comprised of bearings 34, 35 as shown in Figure 4.
In further support of this position, a declaration by inventor William
Banning Vail III, was provided by Patent Owner. Dr. Vail testified in his
written declaration that the drill bit 19a and drive shaft 32 are rotated by the
motor 14a, and that the casing portion (housing 13a) does not rotate the earth
removal member (drill bit 19a). Vail. Decl. ¶¶ 7 & 8.
The Examiner contends that the casings inherently cause the bit to
rotate. Answer 15. However, the Examiner did not provide evidence of this
or reasonable basis to believe that the casings rotate the bit, when the
drawings clearly show that the motor rotates the bit.
For the foregoing reason, we reverse the anticipation rejection of
claim 4 over Dismukes ‘856.

2. ANTICIPATION BY DISMUKES ‘719
Claim 4 stands rejected by the Examiner under 35 U.S.C. § 102(b) as
anticipated by Dismukes ‘719.3 Answer 6.
The Examiner found that Dismukes ‘719, which is an apparatus for
installing casing and pipe in a well, teaches all the steps of the claimed
method. Answer 6-7. Patent Owner contends that Dismukes ‘719 does not
teach the claimed step of “locating the casing portion within the wellbore by

3 Newton B. Dismukes, U.S. 4,616,719 (Oct. 14, 1986).
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rotating the casing portion which rotates an earth removal member attached
to the casing portion.” App. Br. 9. Patent Owner contends that the drill bit
is rotated by a motor, not the casing as required by the claim. Id.
Patent Owner’s arguments are supported by the disclosure in
Dismukes ‘719. Figure 12 of Dismukes ‘719 is reproduced below:

As shown in Figure 12 and taught by Dismukes ‘719, “motor 432 will
cause rotary tool 366 to turn.” Dismukes ‘719, col. 7, ll. 13-14. Rotary tool
366 serves as the claimed “earth removal member.” Rotary tool 366 is
rotatably connected to the casing 326 by bearings 416 and 418. Dismukes
‘719, col. 6, l. 64 to col. 7, l. 4. Tube 412, which is shown connected to the
stem of the rotary tool 366, is “prevented from vertical movement by upper
thrust bearing 416 and lower thrust bearing 418 while being free to turn with
respect to casing 326.” Dismukes ‘719, col. 7, ll. 1-4. This disclosure
supports Patent Owner’s argument that the earth removal member is rotated
by the motor, not the casing. Dr. Vail’s written declaration makes the same
assertion based on his interpretation of Figure 12. Vail Decl. ¶¶ 9 & 10.
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Accordingly, we reverse the rejection of claim 4 as anticipated by Dismukes
‘719.

3. OBVIOUS: BROWN IN VIEW OF DISMUKES, ‘856,
DISMUKES ‘719, OR SCOTT
Claim 4 stand rejected under 35 U.S.C. § 103(a) as obvious over
Brown4 in view of Dismukes ‘856, Dismukes ‘719, or Scott.5 Answer 7.
The Examiner found that the claimed invention “differs from Brown
only in leaving the earth removal member in the wellbore and pumping
bonding material through the casing portion and through passages in the
earth removal member.” Answer 8. Based on Dismukes ‘856, Dismukes
‘719, and Scott, all of which teach cementing casing and an earth removal
member in place, the Examiner determined it would have obvious to have
modified Brown with these “well known” teachings and “to have allowed
the drill bit 38 to remain in place and then pumped down the usual
cementing valve and then cemented the casing portion and the drill bit in
place.” Id.
Patent Owner contends that “[a]ny attempt to combine Brown with
Dismukes ‘856, Dismukes ‘719 and Scott would not be obvious because it
would destroy the intended functionality of Brown which is to have a
removable bit.” Appeal Br. 11. According to Patent Owner, “Brown’s
invention allowed worn out bits to be replaced without having to remove the
entire drill string each time replacement was necessary.” Id. at 11-12.

4 Cicero C. Brown, U.S. 3,552,508 (Jan. 5, 1971).
5 L.B. Scott, U.S. 3,159,219 (Dec. 1, 1964).
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The Examiner did not provide sufficient evidence or reasoning that
the subject matter of claim 4 is obvious over the cited publications. Brown
describes a casing which is used as a drill string to rotate the drill bit section.
Brown, col. 1, ll. 29-34; col. 4, ll. 71-74. The bit section can be made
removable or retractable to enable it to be easily withdrawn, without
removing the casing, when necessary to remove it. Brown, col. 1, ll. 14-16
& 60-65; col. 4, ll. 33-35. Dismukes ‘856 and ‘719, on the other hand, do
not use the casing to rotate the bit. The motor assembly and drill bit in the
Dismukes publications therefore operate differently from Brown, and as a
result, the combination is not simply a case of merely substituting one part
for another.6
Scott teaches methods and devices for cementing casing in a well
bore. The Examiner did not provide evidence or explain as to how Scott
teaches or renders obvious, “pumping the bonding material through the
casing portion and through passages in the earth removal member” as
required by the claim, and said by the Examiner to be missing from Brown.
Answer 8. Thus, Scott in combination Brown as applied by the Examiner
does not describe or suggest all the elements of the claim.
In sum, as the Examiner did not present sufficient evidence to
establish obviousness of claim 4 over Brown, Dismukes ‘856, Dismukes
‘719, and Scott, we reverse the rejection.

6 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)(“when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”)
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4. OBVIOUS: LETURNO IN VIEW OF DISMUKES ‘856,
DISMUKES ‘719, OR SCOTT
Claim 4 stand rejected under 35 U.S.C. § 103(a) as obvious over
Leturno7 in view of Dismukes ‘856, Dismukes ‘719, or Scott. Answer 8.
The Examiner found that the claimed invention “differs from Leturno
in leaving the earth removal member in the well bore and pumping bonding
material through the casing portion and through passages in the earth
removal member.” Answer 9. The Examiner found that each of Dismukes
‘856 and Dismukes ‘719 teach “the well known practice of cementing casing
and earth removal members in place after using a casing to drill a well bore.”
Id. Scott, according to the Examiner, “teaches of the use of cementing plugs
and float equipment that is pumped into the well casing for purposes of
cementing the casing into the wellbore.” Id. Based on these teachings, the
Examiner concluded “it would have been obvious to one of ordinary skill in
the art have allowed the drill bit 38 to remain in place and then pumped
down the usual cementing valve and then cemented the casing portion and
the drill bit in place.” Id. at 9-10.
Patent Owner contends that “Leturno is fundamentally different from
the other cited references. Leturno removes the drill bit after the wellbore is
drilled and before cement is introduced. Any attempt to combine Leturno
with Dismukes ‘856, Dismukes ‘719 and Scott would not be obvious
because it would destroy the intended functionality of Leturno, which is to
have a removable bit.” App. Br. 13 (emphasis omitted.) We agree.

7 Richard E. Leturno, U.S. 5,197,553 (Mar. 30, 1993).
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In the “Summary of the Invention,” Leturno characterizes its
invention as “method of drilling well by utilizing a liner or casing as the
drillstem in combination with a retrievable bit . . .” Leturno, col. 1, ll. 53-55.
The use of a “retrievable bit” is described by Leturno as an “important
aspect of the present invention.” Leturno, col. 1, ll. 59-62; col. 2, ll. 3-5.
Leturno also states that the invention “provides a unique retrievable bit drive
motor and bit assembly which may be inserted in and retrieved from a
wellbore . . .” Leturno, col. 2, ll. 10-12. The retrievable bit is retrieved from
the drillstem after the drilling of the wellbore is completed. Leturno, col. 5,
ll. 48-57. In sum, the invention described by Leturno requires a retrievable
bit. In view of this requirement by Leturno of a retrievable bit, and the
express teaching of removing it upon completion of the wellbore, a person of
skill in the art would not have been led to leave the bit in the wellbore and
pump cement through it in “one single drilling pass” as required by the
claim. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A reference
teaches away when “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.”). The ‘710 Patent specifically distinguishes its claimed “one
single drill pass” from prior art in which a succession of removable bits are
used to drill a well bore. ‘710 Patent, col. 7, ll. 3-6 (in section titled
“Description of the Prior Art.”). The claim preamble reciting “one single
drilling pass” drilling reflects this distinction.
The rejection of claim 4 over Leturno in view of Dismukes ‘856,
Dismukes ‘719, or Scott is reversed.
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5 & 6. OBVIOUS: 5. DISMUKES ‘856 IN VIEW OF SCOTT OR
LANGER;
6. DISMUKES ‘719 IN VIEW OF SCOTT OR LANGER
Claims 1-3 and 5 stand rejected under 35 U.S.C. § 103(a) as obvious
over Dismukes ‘856 in view of Scott or Langer;8 and Dismukes ‘719 in view
of Scott or Langer. Answer 10-11.
The Examiner found:
The claimed invention differs from Dismukes ‘856 only
in the inclusion of commonplace elements of a latching float
collar valve and a top wiper plug, both of which are shown by
Scott and Langer.
It would have been obvious to one of ordinary skill in the
art to have utilized a latching float collar valve and a wiper plug
in Dismukes ‘856 as commonplace methods of cementing a
drill string into place in a well bore.
Answer 10. The Examiner made the same findings and conclusion for the
rejection involving Dismukes ‘719. Id. at 11. We thus treat the rejections
together.
Patent Owner contends that the Examiner erred because the
“combination of Dismukes ‘856 . . . in view of Scott or Langer does not
render claims 1-3 and 5 obvious for at least the reason that none of them
teaches drilling the well by rotating the casing string, which in turn rotates
the drill bit to accomplish single pass drilling.” App. Br. 15. Patent Owner
makes the same argument for rejection 6 in which Dismukes ‘719 is relied
upon instead of Dismukes ‘856.

8 Friedrich H. Langer et al., U.S. 4,589,495 (May 20, 1986).
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Independent claim 1 recites that
rotary drilling the well into the earth to a predetermined depth
by rotating the drill string which rotates the drill bit attached to
the drill string . . . and by circulating mud from the interior of
the drill string to the outside of the drill string during rotary
drilling so as to produce a wellbore.
The “drill string” is defined in the ‘710 Patent as the “casing”:
Accordingly, the field of invention relates to apparatus that uses
the steel drill string attached to a drilling bit during drilling
operations used to drill oil and gas wells for a second purpose
as the casing that is cemented in place during typical oil and gas
well completions.
‘710 Patent, col. 4, ll. 14-18.
Thus, as with independent claim 4, the drill string/casing is used to
rotate the drill bit. In the previous rejections over Dismukes ‘856 and ‘719,
alone, we determined that the latter patents do not describe using the casing
to rotate the drill bit. As this feature is not described in the Dismukes
patents, nor said to be taught in either Scott or Langer, we are compelled to
reverse the rejection of claims 1, 3 (“drilling the well by rotating the drill
string which rotates said drill bit attached to the drill string”), and 5 (which
depends on claim 4) for the same reasons as for Dismukes ‘856 and
Dismukes ‘719, alone.
Claim 2 is an independent claim directed to a “[r]otary drilling
apparatus.” The claim requires “a rotary rig for rotating the hollow drill
string.” As already discussed, neither Dismukes publication describes
rotating the drill string, i.e., the casing. We thus reverse the rejection of
claim 2.

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7. ANTICIPATION BY DOBSON
Claim 4 stands rejected by the Examiner under 35 U.S.C. § 102(b) as
anticipated by Dobson.9 Answer 11-12.
The Examiner found that Dobson describes the drilling method recited
in claim 4. Answer 11-12. Patent Owner contends that the Examiner erred
because “Dobson pumps cement through ports 224 which are in the radial
port collar 222, and are not in the earth removal member 18” as required by
claim 4. App. Br. 18.
Patent Owner’s argument is supported by the explicit disclosure of
Dobson. According to the Examiner, Dobson “shows leaving the earth
removal member 18 in the well bore and injecting a cement slurry into and
through the casing liner sections 216 and 218 and out of the cementing ports
224 of the earth removal member 18.” Answer 12. However, ports 224 are
not part of the drill 18 of Dobson, the part referred to by the Examiner as the
“earth removal member.” The ports 224 are described by Dobson as part of
the liner assembly of the well completion tool. Dobson, col. 7, ll. 6-15. The
Liner assembly 14 is described by Dobson as discrete part from the drill 18
and is shown that way. Dobson, col. 2, ll. 61-65; Fig. 2B (middle section)
and Fig. 2C (bottom section). Claim 4, on the other hand, expressly requires
“pumping the bonding material through the casing portion and through
passages in the earth removal member.” Dobson pumps cement through the
ports in the liner assembly, not the earth removal member. Because the
Examiner erred in finding this limitation met by Dobson, we reverse the
rejection of claim 4 as anticipated by Dobson.

Richard M. Dobson et al., U.S. 5,425,423 (Jun. 20, 1995).
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8. ANTICIPATION BY WO ‘211
Claim 4 stands rejected by the Examiner under 35 U.S.C. § 102(b) as
anticipated by WO ‘211.10 Answer 12. The Examiner found that WO ‘211
teaches that the casing string is attached to the drill pipe and drill bit, causing
the drill bit to rotate. Answer 12. Patent Owner contends:
a permanent guide base 45 connected to the top of the casing
string, and guide lines 55 that are connected to guide posts 56
on the guide base. This means that in order for the conductor to
rotate all this other equipment must be rotated, which is not
taught and which would be impractical if not impossible.
App. Br. 19.
WO’ 211 describes a device for running and cementing pipes, where
the device comprises larger and smaller pipes. The larger pipe serves as a
casing and has a jet shoe attached at its end, which is an earth removal
member as recited in claim 4. WO ‘211, p. 2, ll. 29-32. The larger casing
pipe is lowered over the smaller pipe:
The method in accordance with the invention includes the steps
of lowering the larger pipe string on the smaller pipe string
from the water's surface to the ocean floor and pumping fluid
through the smaller pipe string and out through the jet shoe
connected to the lower end of the larger pipe string while
lowering the pipe strings until the predetermined setting depth
for the larger pipe string is reached. Cement slurry is then
pumped through the smaller pipe string and the jet shoe to
cement the larger pipe string in place. The smaller pipe string is
then disconnected from the upper end of the larger pipe string
and removed to the water's surface.
WO ‘211, page 3, ll. 23-35.

10 Christopher Gaines et al., WO 82/01211 (pub. Apr. 15, 1982).
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The Examiner stated that “[d]uring operation, any degree of rotation
of the drill pipe 25 causes a rotation of the casing string 31 and the earth
removal member 10 attached thereto.” Answer 12-13. However, as
indicated in the quoted passage, rotation is not disclosed in WO ‘211.
The Examiner did not provide sufficient evidence or an explanation as
to how rotation necessarily occurs in lowering the casing over the drill pipe.
The Examiner stated that it is “well known and commonplace in the art that
running drill string and/or casing typically involves rotation of the string as
part of the make up process,” but the Examiner did not provide
substantiating evidence of this or that such a “well known” event would take
place under the conditions in WO ‘211. As the Examiner did not meet the
burden of establishing prima facie anticipation, we are compelled to reverse
the rejection of claim 4 over Dobson.

9. OBVIOUS: DOBSON IN VIEW OF SCOTT AND LANGER
Claims 2, 3, and 5 stand rejected under 35 U.S.C. § 103(a) as obvious
over Dobson in view of Scott or Langer. Answer 13-14.
The Examiner relied upon Scott and Langer for their teaching of
specific limitations in claims 2, 3, and 5. However, as to claim 5, since we
found that Dobson did not describe “pumping the bonding material through
the casing portion and through passages in the earth removal member” as
recited in claim 4, we reverse the rejection of claim 5, which depends on
claim 4.

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Claim 2
Claim 2 is an independent claim directed to a “[r]otary drilling
apparatus.” Patent Owner contends that the claim differs from Dobson in
that “the rotary drill bit cement is not pumped through the passages in
Dobson,” but rather through the liner elements which are not part of the
earth removal member. App. Br. 21. This argument is not persuasive.
Claim 2 is an apparatus claim, the apparatus comprising “a rotary drill
bit having at least one passage for passing the drilling mud from within the
hollow drill string to the borehole.” The claim does not require a step in
which cement is pumped through passages of the earth removal member
because the claim is drawn to the apparatus, not the method of drilling.
Patent Owner attempts to distinguish the claim based on method steps, when
the claim is directed to an apparatus.
We interpret the phrase “passage for passing the drilling mud from
within the hollow drill string to the borehole” to encompass not only
passages in which the drilling mud is ejected through the drill bit directly
into the borehole, but also to include passages which allow the drilling mud
to circulate through the bit for ejection elsewhere in the apparatus. Dobson
describes allowing the drilling mud (“drilling foam”) to pass through the
drill bit, indicating the presence of passageways:
This results in drilling foam passing through the drill pipe and
the tool to the under reamer 20 and the drill bit 22. No drilling
foam passes directly from the drill pipe to the liner assembly 14
without first passing through the under reamer 20 and the drill
bit 22.
Dobson, col. 5, ll. 35-40 (emphasis added).
Appeal 2012-008948
Reexamination Control 95/001,118
Patent 7,100,710 B2

20
To the extent the narrower interpretation is warranted where the
passages are openings in the drill bit that facilitate ejection of a fluid directly
into the borehole, we note that the ‘710 Patent admits that a typical prior art
drill bit comprised mud passages. ‘710 Patent, col. 4, ll. 22—24; Fig. 1F;
col. 11, ll. 37.
For the foregoing reasons, we affirm the rejection of claim 2.

Claim 3
Claim 3 is an independent claim to a method of drilling comprising
the use of a “bit having at least one mud passage to convey drilling mud
from the interior of the drill string to the wellbore. ” As with the apparatus
claim 2, Patent Owner distinguishes the claim from Dobson by arguing that
“the rotary drill bit cement is not pumped through the passages in Dobson.
Instead, cement is introduced into the annulus through ports 224 located
above the drill bit which are in the radial port collar 222, and are not in the
earth removal member 18.” App. Br. 21. However, Patent Owner has not
identified where this limitation appears in the claim. Patent Owner is thus
attempting to distinguish the claim from the prior art based on a limitation
that does not appear in the claim. We thus affirm the rejection of claim 3.

10. OBVIOUS: CLAIM 6 OVER MULTIPLE REFERENCES
Claim 6 stands rejected under 35 U.S.C. § 103(a) as obvious over any
of Dismukes '856, Dismukes '719, Dobson or WO ‘211 in view of the
Admitted Prior Art disclosed in steps (12) and (13) in column 17, line 50 -
Appeal 2012-008948
Reexamination Control 95/001,118
Patent 7,100,710 B2

21
column 18, line 9 of Vail '710. Answer 14. Claim 6 depends on claim 4,
and incorporates all its limitations. The Examiner found that claim 6 differs
from [ ] Dismukes '856, Dismukes '719, Dobson or WO
82/01211 only in the commonplace steps of applying pressure
to the physically alterable bonding material for substantially
displacing the physically alterable bonding material from the
interior passageway through the one-way valve and into the
annulus and thereafter reducing pressure from the interior
passageway and allowing the one-way valve to close.
Id.
The Examiner found these steps disclosed in Vail ‘710 and concluded
it “would have been obvious to one of ordinary skill in the art to have
utilized these steps to cure the cement under ambient hydrostatic pressure.”
Id.
As we reversed all rejections of claim 4 over Dismukes '856,
Dismukes ‘719, Dobson or WO ‘211, and the admitted prior art was not said
by the Examiner to remedy the deficiencies, we are compelled to reverse the
rejection of claim 6, as well.

SUMMARY
The rejections of claims 1, 4, 5, and 6 are reversed. The rejections of
claims 2 and 3 are affirmed.

Appeal 2012-008948
Reexamination Control 95/001,118
Patent 7,100,710 B2

22
TIME PERIOD FOR RESPONSE
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See also 37 C.F.R. § 41.79

AFFIRMED-IN-PART

ack

cc:
Patent Owner:
Morgan Lewis & Bockius LLP (WA)
1111 Pennsylvania Ave. NW
Washington, DC 20004

Third Party Requester:
Bracewell & Guiliani LLP
P.O. Box 61389
Houston, TX 77208-1389