Ex Parte 7140443 et al

Patent Trial and Appeal Board

Nov 27, 2012

95000407 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,407 10/21/2008 7140443 069669-003 2662
35979 7590 11/27/2012
Bracewell & Giuliani LLP
P.O. Box 61389
Houston, TX 77208-1389
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
11/27/2012 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
____________

WEATHERFORD INTERNATIONAL, INC.
Requester

v.

TESCO CORPORATION
Patent Owner and Appellant
____________

Appeal 2012-008625
Reexamination Control 95/000,407
Patent 7,140,443 B21
Technology Center 3900
____________

Before DANIEL S. SONG, JOSIAH C. COCKS, and
MICHAEL R. ZECHER, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent involved in this reexamination proceeding (hereinafter the
“‘443 Patent”) issued to Beierbach et al. on November 28, 2006.
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A. STATEMENT OF THE CASE
Summary
Patent Owner Tesco Corporation (“Tesco”)2 appeals under 35 U.S.C.
§§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-17, 19-25,
27-37, 39-42, 51-59, and 61-70.3 Third-Party Requester Weatherford
International, Inc. filed a request for inter partes reexamination on October
21, 2008, but has filed no briefs in connection with this appeal. An oral
hearing was conducted on August 1, 2012. A transcript of that hearing was
made of record in this proceeding on September 20, 2012.4
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a).
We reverse the Examiner’s decision to reject claims 1-17, 19-25, 27-
37, 39-42, 51-59, and 61-70 over prior art.
We reverse the Examiner’s decision to reject claim 70 as indefinite
under 35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision to reject claims 1-13, 69, and 70
under 35 U.S.C. § 305 as having being impermissibly enlarged in scope.

2 See Patent Assignment Abstract of Title, Reel 015184 Frame 0875
which was entered into the record of this proceeding as “Title Report” on
October 28, 2008.

3 See Tesco’s Appeal Brief filed March 31, 2011 (“App. Br.”) and
Rebuttal Brief filed December 16, 2011 (“Reb. Br.”).

4 This appeal is related to 2012-008959 (inter partes reexamination
control 95/000,418).
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Related Proceedings
We are informed that the ‘443 patent is involved in litigation in the
U.S. Dist. Ct. for the Southern Dist. of Texas styled C.A. H-08-2531, Tesco
v. Weatherford et al. (App. Br., 1.)
The Invention
The invention relates to a pipe handling device used in connection
with the drilling or lining of a wellbore. (‘443 Patent, 1:6-9) Claim 1,
which is illustrative of the appealed subject matter, is reproduced below as it
appears in Tesco’s Appeal Brief (App. Br. Claims App’x.)5:
1. (Amended) A pipe handling device for mounting onto a pipe
engaging apparatus, the pipe engaging apparatus including a main
body and a pipe gripping mechanism to grip a pipe for rotational
and axial movement thereof and being connectable to a top drive,
the pipe handling device comprising:

a link arm having a first end pivotally connectable to the
[bracket] pipe engaging apparatus and an outboard end pivotally
connectable to a pipe elevator segment, the link arm being sized to
present a pipe lifted by the pipe elevator segment into a position to
be gripped by the pipe engaging apparatus; and

a connector for connection to an elevator control mechanism.

The Prior Art
Brown, deceased (“Brown”) 3,915,244 Oct. 28, 1975
Tessari et al. (“Tessari”) 5,433,279 Jul. 18, 1995
Seneviratne 6,276,450 Aug. 21, 2001
Kamphorst et al. (“Kamphorst”) 6,527,493 Mar. 4, 2003
Snider et al. (“Snider”) 6,536,520 Mar. 25, 2003

5 Claim 1 is reproduced in a format which complies with 37 C.F.R.
§ 1.75(i).
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York et al. (“York”) 6,679,333 Jan. 20, 2004
Shahin et al. (“Shahin”) 2004/0003490 Jan. 8, 2004
Pietras GB 2340859 Mar. 1, 2000

The Involved Rejections
Prior Art Rejections
(1) The Examiner rejected claims 1-3 and 9-11 under 35 U.S.C.
§ 102(b) as anticipated by Tessari.
(2) The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Seneviratne and York or Kamphorst or Tessari.
(3) The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over York and Shahin or Seneviratne or Tessari.
(4) The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1, 3, and 4 above
in view of Seneviratne, Tessari et al., York et al., or Kamphorst et
al.” (Ans., 9.) 6
(5) The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1, 3, and 4 above
in view of Tessari et al., York et al., or Kamphorst et al.” (Id. at
10.)
(6) The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1, 3, and 4 above

6 The Examiner’s formulation of the rejection is reproduced here as it
appears in the Answer. The “rejections of paragraphs 1, 3, and 4” is a
reference to the prior art rejections numbered in this opinion as (1), (2), and
(3).
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in view of Shahin et al, Tessari et al., Seneviratne, York et al., or
Brown.” (Id. at 11.)
(7) The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1, 3, and 4 above
in view of Tessari et al. or York et al.” (Id. at 12.)
(8) The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 1, 3, and 4 above
in view of Tessari et al., Seneviratne, York et al. or Kamphorst et
al.” (Id. at 13.)
(9) The Examiner rejected claims 13, 14, and 21-25 under 35 U.S.C.
§ 102(b) as anticipated by Tessari.
(10) The Examiner rejected claims 13, 21, 23, and 25 under 35
U.S.C. § 102(b) as anticipated by Seneviratne.
(11) The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over York and Shahin, Seneviratne, or Tessari.
(12) The Examiner rejected claims 13-17, 19-23, and 25 under 35
U.S.C. § 102(b) as anticipated by Pietras.
(13) The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 13, 14, 16, and 17
above in view of Tessari et al., Pietras or York et al.” (Id. at 18.)7
(14) The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 19 above in view of
Pietras.” (Id. at 19.)8

7 The “rejections of paragraphs 13, 14, 16 and 17” is a reference to the
rejections numbered in this opinion as (9), (10), (11), and (12).

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(15) The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 13, 14, 16, and 17
above in view of Pietras.” (Id. at 20.)
(16) The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 21 above in view of
Shahin et al., Tessari et al., Seneviratne, Pietras, York et al. or
Kamphorst.” (Id. at 21.)9
(17) The Examiner rejected claims 19 and 20 under 35 U.S.C.
§ 103(a) as “unpatentable over the rejections of paragraphs 13, 14,
and 16 above in view of Pietras.” (Id. at 22.)10
(18) The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 13, 14, 16 and 17
above in view of Tessari et al., Seneviratne, York et al. or Brown.”
(Id.)
(19) The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 13, 14, 16 and 17
above in view of Tessari et al., Pietras, or York et al.” (Id. at 23.)
(20) The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 13, 14, 16 and 17

8 The “rejections of paragraph 19” incorporate the Examiner’s
statement of rejection numbered in this opinion as (13).

9 The “rejections of paragraph 21” is a reference to the rejection
numbered in this opinion as (15).

10 The “rejections of paragraphs 13, 14, and 16” is a reference to the
rejections numbered in this opinion as (9), (10), and (11).
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above in view of Tessari et al., Seneviratne, Pietras, or York et al.”
(Id. at 24.)
(21) The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 27 above in view of
Tessari et al., York et al., or Kamphorst et al.” (Id. at 25.)11
(22) The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 13, 14, 16 and 17
above in view of Tessari et al., Seneviratne, Pietras, York et al., or
Kamphorst et al.” (Id.)
(23) The Examiner rejected claims 27-29 under 35 U.S.C. § 102(b)
as anticipated by Seneviratne.
(24) The Examiner rejected claims 27-29 under 35 U.S.C. § 102(b)
as anticipated by York.
(25) The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Shahin and Tessari, Seneviratne, Pietras, York,
or Kamphorst.
(26) The Examiner rejected claim 27 under 35 U.S.C. § 102(b) as
anticipated by Snider.
(27) The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 30-33 above in

11 The “rejections of paragraph 27” refers to the rejection numbered in
this opinion as (20).

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view of Tessari et al., Seneviratne, York et al. or Brown.” (Id. at p.
28.)12
(28) The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 30-33 above in
view of Seneviratne, Pietras, York et al. or Kamphorst et al.” (Id.
at 29.)
(29) The Examiner rejected claims 30-32 under 35 U.S.C. § 102(b)
as anticipated by Seneviratne.
(30) The Examiner rejected claims 30-32 under 35 U.S.C. § 102(b)
as anticipated by York.
(31) The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Shahin and Tessari, Seneviratne, Pietras, York,
or Kamphorst.
(32) The Examiner rejected claim 31 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 36-38 above in
view of Tessari et al., Seneviratne, York et al. or Brown.” (Id. at
31.)13
(33) The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 36-38 above in
view of Tessari et al., Seneviratne, Pietras, York et al. or
Kamphorst et al.” (Id.)

12 The “rejections of paragraphs 30-33” refer to the rejections numbered
in this opinion as (23), (24), (25), and (26).

13 The “rejections of paragraphs 36-38” refers to the rejections
numbered in this opinion as (29), (30), and (31).
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(34) The Examiner rejected claims 33-37 under 35 U.S.C. § 102(b)
as anticipated by Tessari.
(35) The Examiner rejected claims 33-35 and 37 under 35 U.S.C.
§ 102(b) as anticipated by Seneviratne.
(36) The Examiner rejected claims 33 and 34 under 35 U.S.C.
§ 102(e) as anticipated by Shahin.
(37) The Examiner rejected claim 33 under 35 U.S.C. § 103(a) as
unpatentable over Pietras and Shahin, Tessari, or Seneviratne.
(38) The Examiner rejected claim 33 under 35 U.S.C. § 103(a) as
unpatentable over York and Shahin, Seneviratne, or Tessari.
(39) The Examiner rejected claim 33 under 35 U.S.C. § 103(a) as
unpatentable over Kamphorst and Shahin, Seneviratne, or Tessari.
(40) The Examiner rejected claim 34 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 41-46 in view of
Tessari et al., Seneviratne, Shahin et al., Pietras, or York et al.”
(Id. at 38.)14
(41) The Examiner rejected claim 35 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 41-46 in view of
Tessari et al., Seneviratne, Pietras, York et al., or Kamphorst et al.”
(Id.)

14 The “rejections of paragraphs 41-46” refers to the rejections
numbered in this opinion as (35), (36), (37), (38), and (39).

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(42) The Examiner rejected claim 36 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 48 above in view of
Tessari et al., Pietras, or York et al.” (Id. at 39.)15
(43) The Examiner rejected claim 37 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 41-46 above in view
of Tessari et al., Seneviratne, York et al., or Kamphorst et al.” (Id.
at 40.)
(44) The Examiner rejected claims 39-42 under 35 U.S.C. § 102(b)
as anticipated by Seneviratne.
(45) The Examiner rejected claim 39 under 35 U.S.C. § 102(e) as
anticipated by Shahin.
(46) The Examiner rejected claim 39 under 35 U.S.C. § 103(a) as
unpatentable over York and Shahin or Seneviratne.
(47) The Examiner rejected claim 40 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 51-53 above in
view of Tessari et al., Seneviratne, York et al. or Brown.” (Id. at
42.)16
(48) The Examiner rejected claims 41 and 42 under 35 U.S.C.
§ 103(a) as “unpatentable over the rejections of paragraphs 51-53
above in view of Seneviratne or York et al.” (Id.)

15 The “rejection of paragraph 48” refers to the rejection numbered in
this opinion as (41).

16 The “rejections of paragraphs 51-53” refers to the rejections
numbered in this opinion as (44), (45), and (46).
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(49) The Examiner rejected claims 51 and 52 under 35 U.S.C.
§ 103(a) as unpatentable over Tessari and Pietras.
(50) The Examiner rejected claims 51-54 under 35 U.S.C. § 102(b)
as anticipated by Pietras.
(51) The Examiner rejected claim 53 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 63 above in view of
Shahin et al., Tessari et al., Seneviratne, Pietras, and York et al.”
(Id. at 48.)17
(52) The Examiner rejected claim 54 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 57 and 60 above in
view of Tessari et al., Seneviratne, York et al. or Brown.” (Id.)18
(53) The Examiner rejected claims 55-58 under 35 U.S.C. § 102(b)
as anticipated by Tessari.
(54) The Examiner rejected claims 55-58 under 35 U.S.C. § 102(b)
as anticipated by Pietras.
(55) The Examiner rejected claims 55-58 under 35 U.S.C. § 102(e)
as anticipated by York.
(56) The Examiner rejected claim 56 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 66, 69, and 70

17 The “rejections of paragraph 63” evidently refers to the rejections
numbered in this opinion as (49) and (50).

18 The “rejections of paragraphs 57 and 60” also refers to the rejections
numbered in this opinion as (49) and (50).

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above in view of Tessari et al., Seneviratne, York et al. or Brown.”
(Id. at 53.)19
(57) The Examiner rejected claim 58 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 73 above in view
of Shahin et al., Tessari et al., Seneviratne, Pietras, and York et al.”
(Id. at 54.)20
(58) The Examiner rejected claims 59, 61, 67, and 68 under 35
U.S.C. § 102(b) as anticipated by Tessari.
(59) The Examiner rejected claims 59, 61, 67, and 68 under 35
U.S.C. § 102(b) as anticipated by Seneviratne.
(60) The Examiner rejected claims 59, 61, 67, and 68 under 35
U.S.C. § 102(e) as anticipated by York.
(61) The Examiner rejected claim 61 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 75, 76, and 78
above in view of Tessari et al., Seneviratne, Pietras, York et al., or
Kamphorst et al.” (Id. at 58)21
(62) The Examiner rejected claim 62 and 65 under 35 U.S.C.
§ 103(a) as “unpatentable over the rejections of paragraphs 75, 76,
and 78 above in view of Pietras.” (Id. at 59.)

19 The “rejections of paragraphs 66, 69, and 70” refers to the rejections
numbered in this opinion as (53), (54), and (55).

20 The “rejections of paragraph 73” evidently refers to the rejection
numbered in this opinion as (53), (54), and (55).

21 The “rejections of paragraphs 75, 76 and 78” refers to the rejection
numbered in this opinion as (58), (59), and (60).

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(63) The Examiner rejected claim 63 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 82 above in view of
Pietras.” (Id. at 60.)22
(64) The Examiner rejected claim 64 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 83 above in view of
Tessari et al., Pietras or York et al.” (Id. at 61.)23
(65) The Examiner rejected claim 66 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraph 85 above in view of
Shahin et al., Tessari et al., Seneviratne, Pietras, and York et al.”
(Id. at 62.)24
(66) The Examiner rejected claim 67 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 75, 76 and 78
above in view of Tessari et al., Seneviratne, York et al. or Brown”
(Id.)
(67) The Examiner rejected claim 68 under 35 U.S.C. § 103(a) as
“unpatentable over the rejections of paragraphs 75, 76 and 78
above in view of Tessari et al., Seneviratne, York et al. or
Kamphorst et al.” (Id.)

22 The “rejections of paragraph 82” refers to the rejection numbered in
this opinion as (62).

23 The “rejections of paragraph 83” refers to the rejection numbered in
this opinion as (63).

24 The “rejections of paragraph 85” evidently refers to the rejection
numbered in this opinion as (62).
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(68) The Examiner rejected claims 5-8 under 35 U.S.C. § 103(a) as
unpatentable over Tessari and Pietras.
Rejection under 35 U.S.C. § 305
(69) The Examiner rejected claims 1-13, 69, and 70 under 35 U.S.C.
§ 305 as enlarging the scope of the claims of the ‘443 Patent.
Rejection under 35 U.S.C. § 112, second paragraph
(70) The Examiner rejected claim 70 under 35 U.S.C. § 112, second
paragraph as indefinite.
B. ISSUES
1. Does the recitation of “an anti-rotation bracket” in claim 70
render the claim indefinite?
2. Do claims 1-13, 69, and 70 violate 35 U.S.C. § 305 as having
been improperly enlarged in scope?
3. Does a threaded connection for a pipe as is disclosed in each of
Tessari, Seneviratne, and York constitute the “pipe gripping mechanism”
required by independent claims 1, 13, 33, 51, 55, 59, and 69?
4. Do Tessari, Seneviratne, Pietras, York, Snider, Kamphorst and
Brown disclose the pivotal connection of a pipe handling component to a
pipe engaging apparatus as required by independent claims 1, 13, 27, 30, 39,
51, 55, 59, and 69?
5. Does the record establish that the Declaration of Warren P.
Schneider is adequate to antedate the Shahin reference in accordance with 37
C.F.R. § 1.131?
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C. ANALYSIS
The Examiner has rejected Tesco’s claims under 35 U.S.C. §§ 102
and 103 over prior art, under 35 U.S.C. § 305 as being impermissibly
broadened in scope, and under 35 U.S.C. § 112, second paragraph as
indefinite.
THE REJECTION UNDER 35 U.S.C, § 112
The Examiner rejected dependent claim 70 as indefinite. The
Examiner’s reasoning in that regard is as follows (Ans., 67):
In claim 70, line 2, ‘an anti-rotation guide slot’ is positively recited for
a second time. It is unclear if it is in the same guide slot as the one
previously recited in claim 69.

Claim 70 sets forth that a bracket introduced in independent claim 69
“is fitted for anti-rotation by including a key for fitting into an anti-rotation
guide slot extending from the top drive.” (App. Br. Claims App’x.) While
claim 69 also introduced “an anti-rotation bracket,” we do not share the
Examiner’s view that the recitation in claim 70 of “an anti-rotation bracket”
renders the claim indefinite. Claim 70 simply encompasses within its scope
that the “anti-rotation guide slot” set forth in that claim into which a key is
fitted for anti-rotation of the associated bracket need not be the same anti-
rotation guide slot introduced in claim 69. In other words, whereas claim 69
is directed to the bracket and the guide slot, claim 70 is directed to the key of
the bracket which fits into “an anti-rotation guide slot extending from the top
drive,” whether that slot is the same slot introduced in claim 69 or another
slot. That is an issue of claim breadth, not indefiniteness.
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Accordingly, we do not sustain the Examiner’s rejection of claim 70
as indefinite.
THE REJECTIONS UNDER 35 U.S.C. § 305
The Examiner rejected claims 1-13, 69, and 70 as violating the tenets
of 35 U.S.C. § 305 in enlarging the scope of those claims via amendment.
With respect to independent claim 1, the amendment at issue pertains to the
substitution of the term “pipe engaging apparatus” for the existing term
“bracket.” (Ans., 66.) In connection with independent claim 69, the
pertinent change involves the replacement of the term “bracket” with the
term “guide slot.” (Id.) The Examiner explains the rejections as follows
(Id.):
In claim 1, replacing ‘bracket’ with ‘pipe engaging apparatus’
enlarges the scope of the claims as the bracket is a part of the pipe
engaging apparatus. As the claim now permits for the connection to
be anywhere on the pipe engaging apparatus, it is broader in this
respect.
Regarding claim 69, changing ‘bracket’ to ‘guide slot’ changes
the scope of the claim so that a guide slot would not have infringed
the original patent. As no bracket is now required, the scope of the
claims is broader in this respect.

Tesco takes two approaches in challenging the Examiner’s rejection.
First, Tesco characterizes the relevant recitation of the term “bracket” in
each of claims 1 and 69 as a “typographical error” which arose during
original prosecution of the application which became the ‘443 Patent and
should be corrected. (App. Br., 23-25.) Alternatively, Tesco contends that
the term “bracket” does not “add a meaningful limitation” to the claims such
that its removal and substitution with other terms, i.e., “pipe engaging
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apparatus” and “guide slot,” does not alter the scope of claims 1 and 69.
(Id.)
With respect to Tesco’s “typographical error” argument, we observe
that the alleged error is stated to have occurred in an amendment filed on
March 2, 2006. (App. Br., 23-24.) The thrust of Tesco’s argument is that
although the claims corresponding to the current claims 1 and 69 were
presented in the context of that amendment, a general summary of the
amendment does not specifically reference such a change to the claims. (Id.)
Tesco is evidently of the view that the omission in the summary of a
reference to the pertinent claim change demonstrates that the insertion of the
term “bracket” was made in error. We have considered Tesco’s argument
but do not discern that the record conveys that the wholesale substitution of
one term for another in the context of an amendment, as occurred for each of
claims 1 and 69 as now numbered, which is not accompanied further by
additional specific explanation, is suitable evidence of mistake or error. It is
simply not apparent that incorporation of the term “bracket” in claims of
the‘443 Patent in lieu of other terms may be attributed to a “typographical
error.”
With regard to Tesco’s alternative theory that the term “bracket” as it
appears in claims 1 and 69 does not vary the scope of those claims as
compared with the terms “pipe engaging apparatus” and “guide slot,” we do
not agree. In connection with claim 1, we observe that in the context of the
‘443 Patent, a “bracket” is not the same as the “pipe engaging apparatus”
and the bracket is described as constituting a structural component “through”
which a pipe handling device is mounted to the pipe engaging apparatus.
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(‘443 Patent, 6:55-61.) The “bracket” and the “pipe engaging apparatus” are
thus understood as encompassing different structural components. Hence,
we agree with the Examiner that Tesco’s amendment to claim 1 expands the
scope of the claim’s coverage so as to exclude the requirement of a
“bracket.”
In conjunction with claim 69, we do not discern why the recitation in
that claim of an anti-rotation “bracket” presents a claim of equivalent scope
as one reciting an anti-rotation “guide slot” as is urged by Tesco. We
observe that a “guide slot” and a “bracket” are not disclosed in the ‘443
Patent as the same structure. (E.g., see ‘443 Patent, 6:57-61.) Neither does
Tesco offer any reasoning in support of its position other than contending
that the “same reasons” urged with respect to claim 1 also apply to claim 69.
(App. Br., 25.) As discussed above with respect to claim 1, we do not agree
with Tesco’s reasoning in that regard. As amended, claim 69 omits any
requirement that a structure regarded as a “bracket” must be present as the
anti-rotation feature set forth in the claims.
Accordingly, for the foregoing reasons, we conclude that claims 1 and
69 as amended during this reexamination proceeding are not in accord with
the requirements of 35 U.S.C. § 305 which prohibits enlarging the scope of a
claim of an involved patent. We, therefore, sustain the Examiner’s rejection
of claims 1 and 69 under that section. We also sustain the rejection of
claims 2-13 which ultimately depend from claim 1 and the rejection of claim
70 which depends from claim 69.
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THE PRIOR ART REJECTIONS
By our count, the Examiner has applied sixty-eight grounds of
rejection to Tesco’s claims based on the disclosures of eight separate
references. Of the claims so rejected, Tesco’s claims 1, 13, 27, 30, 33, 39,
51, 55, 59, and 69 are independent claims involved in this reexamination
appeal proceeding. Tesco’s challenge to the Examiner’s prior art rejections
primarily focuses on the subject matter of those independent claims. We
observe that Tesco also relies on declaration testimony styled “Declaration
of Warren P. Schneider under 37 C.F.R. 1.132” in challenging the
Examiner’s rejections.25
Having reviewed the record, we observe that the following features,
which appear in various portions of the independent claims, are at issue in
this appeal: (1) “a pipe gripping mechanism”; and (2) a pipe handling device
pivotally mounted or connected to a pipe engaging apparatus.
(1) “a pipe gripping mechanism”
Each of claims 1, 13, 33, 51, 55, 59, and 69 includes recitation of “a
pipe gripping mechanism” as a required feature. In accounting for that
feature, the Examiner relied, in various instances, on the content of each of

25 Mr. Schneider’s declaration was entered into the record on February
19, 2010. It is evident that Tesco views that declaration as evidence to be
evaluated in resolving this appeal. (E.g., App. Br., 26-29.) It is also
apparent that the Examiner was aware of, and has considered, the
declaration. (E.g., Ans., 71-72.) We note, however, that Tesco failed to list
the declaration in the evidence appendix of its Appeal Brief as is required.
See 37 C.F.R. § 41.67(b)(1)(ix). We admonish Tesco for failing to comply
with proper procedure, however, we regard the declaration of Mr. Schneider
as before us in this appeal.
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several of the prior references to Tessari, Seneviratne, and York. Tesco
challenges the Examiner’s rejections of claim 1 with respect to disclosure in
those references of “a pipe gripping mechanism.”
In rejecting Tesco’s claims based on Tessari, Seneviratne, and York,
the Examiner has taken the position that a threaded connection associated
with a pipe for connecting the pipe to a drive assembly of a well drilling
assembly constitutes a pipe gripping mechanism. In particular, the
Examiner characterizes “threads” which correspond to threads on a pipe in
each of Tessari, Seneviratne, and York as forming “a pipe gripping
mechanism.” (E.g., Ans., 5, 7, and 8.) Tesco argues that in the context of
the ‘443 Patent, threads which interact with corresponding threads of a pipe
do not constitute a pipe gripping mechanism. (App. Br., 19; Reb. Br., 6-10.)
Specifically, Tesco submits that the ordinary meaning of the term “grip” or
“gripping” is “to grasp and hold” and conveys the application of gripping
forces in a radial direction with respect to a gripped pipe and does not
include threads. (Reb. Br., 9:14-23.)
We are in agreement with Tesco. The ‘443 Patent does not give the
term “pipe gripping mechanism” a special meaning. In construing that term,
we therefore look to its ordinary and customary meaning. See Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir.
2003)(“In the absence of an express intent to impart a novel meaning to the
claim terms, the words are presumed to take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art.”)
The ordinary meaning of “grip” is “to secure and keep a tight hold on:
GRASP.” Webster’s II New Riverside Dictionary, 549 (1988). The ordinary
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meaning of “mechanism” is “[a] mechanical device: MACHINE.” Id. at
737. In reciting “a pipe gripping mechanism,” the claims thus require a
mechanical device or machine which operates to keep hold on or grasp a
pipe. In our view, one with ordinary skill in the art would not have regarded
individual threads of a threaded connection as reasonably forming such a
device. We note that such a view is also supported by the declaration
testimony of Mr. Schneider, who characterizes a “gripping tool” for a pipe
as something that is distinct from, and an improvement upon, a “threaded”
coupling for a pipe. (See Schneider Decl., p. 9, ¶ 22.)
We further observe that in connection with claim 1, 55, 59, and 69 the
pipe gripping mechanism must be operable “to grip a pipe for rotational and
axial movement thereof.” (App. Br., Claims App’x.) It is not apparent to us
how the threads of a threaded connection between a pipe and another
component operate to perform that function.
We have carefully considered the Examiner’s assessment of Tessari,
Seneviratne, and York. However, for the foregoing reasons, we do not
sustain the Examiner’s rejections involving those references in which thread
portions of a threaded connection are regarded as constituting “a pipe
gripping mechanism.”
(2) a pipe handling device pivotally mounted or connected to a pipe
engaging apparatus

Each of claims 1, 13, 27, 30, 39, 51, 55, 59, and 69 requires the
feature of a pipe handling component that is mounted or connected to a pipe
engaging apparatus. For instance, claim 1 sets forth a “pipe handling device
for mounting onto a pipe engaging apparatus” where the pipe handling
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device incorporates a “link arm” that is “pivotally connectable” to the pipe
engaging apparatus. (App. Br., Claims App’x.) Each of claims 13, 27, 30,
39, 51, 55, 59, and 69 recites a similar pivotal connection or coupling
relationship between a pipe handling component and a pipe engaging
apparatus.
Tesco urges that when the above-noted claims are interpreted in the
context of the disclosure of the ‘443 Patent, the connection of a pipe
handling device to a pipe engaging apparatus distinguishes such a
relationship from that disclosed throughout the prior art in which the pipe
handling device is only connected directly to a separate top drive
component. In particular, Tesco draws distinction between its claims and
the mounting of pipe handling components in each of Tessari, Seneviratne,
Pietras, York, Snider, Kamphorst, and Brown. (App. Br., 17-18.)
The Examiner takes position that the claims do not exclude mounting
to a top drive and generally encompass within their scope any mounting of a
pipe handling component to a pipe engaging device even if such mounting is
something characterized as “partially” mounted. (Ans., 68-69.) Relying on
responses from the third party requester filed during the course of this
reexamination proceeding, the Examiner submits that the mounting required
by the claims is set forth in the prior art. (Id.)
Even assuming the Examiner is correct that the involved claims do not
exclude attachment of a pipe handling device to a component regarded as a
top drive, what is expressly required is for a pipe handling component to
include structure which is pivotally mounted to, or form a pivotal connection
with, a pipe engaging apparatus. After careful review of the record, we are
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not persuaded that the above-noted prior art references disclose such a
pivotal mounting arrangement of a pipe handling assembly to a pipe
engaging apparatus. We share Tesco’s view that any such pivotal
connection in those references arises between a pipe handling component
and a top drive assembly rather than a pipe engaging apparatus.
Having reviewed the corresponding rejections, we are not persuaded
that the pivotal mounting features required by claims 1, 13, 27, 30, 39, 51,
55, 59, and 69 are disclosed in, or would have been obvious in view of, any
of Tessari, Seneviratne, Pietras, York, Snider, Kamphorst or Brown.
Accordingly, we do not sustain the rejections which are premised on the
disclosure of those references as setting forth the required pivotal mounting
arrangement.
The Schneider Declaration
Tesco has introduced into the record a declaration from one Warren P.
Schneider. Tesco contends that, while the title of the declaration makes
explicit reference only to “37 C.F.R. 1.132,” the declaration was intended to
operate as combined declaration under each of sections 1.132 and 1.131.
(Reb. Br., 2.) To that end, Tesco urges that while the declaration and its
accompanying exhibits were offered as evidence of long felt need,
commercial success, and copying of others, i.e., evidence typically
associated with a 1.132 declaration, the declaration also contains evidence
establishing reduction to practice of the claimed invention prior to the
effective filing date of the Shahin reference. (Id. at 2-5.) Tesco thus submits
that the declaration and its exhibits also met the requirements of 37 C.F.R.
§ 1.131 and operated to remove Shahin as an available prior art reference
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even if no explicit reference to §1.131 was set forth in the declaration. (Id.
at 5:8-10.)
Title 37 C.F.R. § 1.131(a) provides that the owner of a patent under
reexamination may submit an oath or declaration to establish invention of
the subject matter of a rejected claim prior to the effective date of a prior art
reference unless:
(1) The rejection is based upon a U.S. patent of U.S. patent application
publication of a pending or patented application to another or
others which claims the same patentable invention as defined in
§ 41.203(a) of this title, in which case an applicant may suggest an
interference pursuant to § 41.202(a) of this title; or

(2) The rejection is based upon a statutory bar.

Neither of those provisions operates here to preclude Shahin from
being antedated. Part (b) of § 1.131 establishes the quality of the evidentiary
proof associated with a declaration which is necessary to make a showing of
prior invention:
(b) The showing of facts shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference or conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.

One avenue available to a patent owner so as to antedate a given
reference is to “comply with the substantive requirements of Rule 131[.]”.
In re Costello, 717 F.2d 1346, 1349 (Fed. Cir. 1983). The above-noted
sections (a) and (b) lay out substantive requirements of Rule 131. The
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question before this panel is if, in addition to those express substantive
requirements, there is also an implicit requirement that an explicit reference
to Rule 131 must be made as a part of the declaration itself.
We observe that during prosecution of this involved reexamination
proceeding, Tesco characterized the Schneider Declaration as “its Rule 131
Declaration” and urged that the declaration was offered under that section to
show an actual reduction to practice prior to the effective date of Shahin.26
We also discern that the Examiner, although stating that the declaration was
“not under 1.131,” assessed the content of the declaration and concluded that
it was deficient to swear behind Shahin because of an inadequate showing of
“due diligence.” (E.g., Right of Appeal Notice (“RAN”) mailed September
28, 2010, p. 6.) We, however, agree with Tesco that establishing diligence is
not a requirement where, as here, the fact sought to be proved is that the date
of actual reduction to practice precedes the effective date of the involved
reference, in this case Shahin. (See Reb. Br., 3.)
Where evidence is offered by a patent owner in an attempt to antedate
a reference and where that evidence is urged by the patent owner to
constitute evidence submitted under 37 C.F.R. 1.131, we think it is an
elevation of form over substance to discount that evidence without due
consideration simply because the C.F.R. regulation number “1.131” is
lacking from the declaration. In our view, the lack of the particular number
“1.131” appearing in connection with a declaration does not end the inquiry
as to whether the declaration was submitted in compliance with 37 C.F.R.

26 See “Response of the Patent Owner to the Office Action Closing
Prosecution Mailed 1/20/2010” filed October 6, 2012, pp. 74-75.
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§ 1.131. In that regard, we do not discern that a declaration which complies
with the requirements of 37 C.F.R. § 1.131(a) and (b), cannot be considered
under that section simply because a reference to Rule 131 is omitted from
the declaration itself.
There is no dispute that Mr. Schneider is a representative of the patent
owner, Tesco, who is authorized to submit a declaration on its behalf under
§ 1.131. Given the evidentiary content of the declaration (and its associated
exhibits) and Tesco’s representations made during the course of this
reexamination proceeding, we conclude that the record adequately conveys
that the declaration should be evaluated in determining whether it satisfies
the substantive requirements laid out in § 1.131(a) and (b) and thereby
antedates Shahin.
To antedate a prior art reference, an applicant, or as here, a patent
owner, submits an oath or declaration alleging acts that establish a
completion of the invention before the effective date of the prior art. See In
re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). Tesco contends that the
Schneider Declaration establishes completion of the invention corresponding
to the claimed subject matter through an actual reduction to practice.
Accordingly, we evaluate the Schneider declaration and its supporting
exhibits to ascertain if their content demonstrates an actual reduction to
practice prior to the effective date of Shahin. In order to establish actual
reduction to practice, an inventor must have: (1) constructed an embodiment
or performed a process that met all the claims limitations; and (2)
determined that the invention would work for its intended purpose. Teva
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Pharmaceutical Industries Ltd. V. AstraZeneca Pharmaceuticals LP, 661
F.3d 1378, 1383 (Fed. Cir. 2011).
Here, Mr. Schneider testifies that Tesco had developed a product
called the “CDS Product” which constituted a pipe handling device and that
it operated according to Tesco’s claimed invention. (Schneider Decl., p. 9,
¶ 20.) Mr. Schneider also explains, along with citation to various
photocopied exhibits, where features corresponding to those claimed in
connection with this reexamination proceeding were present in the CDS
Product. (Id. at pp. 4-8.) Mr. Schneider further testifies that the CDS
Product was an improvement over prior art pipe handling devices and was
operable to handle piping associated with wellbore operations. (Id. at p. 13,
¶ 34.) Finally, the Schneider Declaration provides evidence that the CDS
Product was commercialized and sold in December of 2002 and January of
2003, i.e., prior to the March 5, 2003 filing date of the Shahin reference. (Id.
at pp. 11-14.) There is no dispute that March 5, 2003 constitutes the
effective date of Shahin.
Having duly considered the Schneider Declaration and its
accompanying exhibits, along with Tesco’s arguments, we conclude that
Tesco has set forth a sound evidentiary showing that an invention according
to Tesco’s claims was reduced to practice prior to the filing date of the
Shahin reference. Accordingly, we are in agreement with Tesco that the
record before us is sufficient to antedate Shahin and disqualify it as available
prior art. Accordingly, we do not sustain the pertinent rejections advanced
by the Examiner which require incorporation of the teachings of Shahin.
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The Schneider Declaration was also offered as evidence directed to
secondary considerations of non-obvious. As discussed above, we have
determined that features required by each of the involved independent
claims are absent from the disclosures of Tessari, Seneviratne, Pietras, York,
Snider, Kamphorst and Brown. We have also determined that, on the record
before us, Tesco has suitably demonstrated that Shahin is unavailable as
prior art in rejecting the claims. As a result of our determinations, we do not
sustain any of the prior art rejections numbered 1-68 in this opinion.
Accordingly, we need not further consider the additional evidence of non-
obviousness which forms part of the Schneider Declaration.
D. CONCLUSION
1. The recitation of “an anti-rotation bracket” in claim 70 does not
render the claim indefinite.
2. Claims 1-13, 69, and 70 violate 35 U.S.C. § 305 as having been
improperly enlarged in scope.
3. A threaded connection for a pipe as is disclosed in each of
Tessari, Seneviratne, and York does not constitute “a pipe gripping
mechanism” as a required by independent claims 1, 13, 33, 51, 55, 59, and
69.
4. Tessari, Seneviratne, Pietras, York, Snider, Kamphorst and
Brown do not disclose the pivotal connection of a pipe handling component
to a pipe engaging apparatus as required by independent claims 1, 13, 27, 30,
39, 51, 55, 59, and 69.
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5. The record before us suitably establishes that the Declaration of
Warren P. Schneider is adequate to antedate the Shahin reference in
accordance with 37 C.F.R. § 1.131.
E. ORDER
The Examiner’s decision to reject claims 1-17, 19-25, 27-37, 39-42,
51-59, and 61-70 over the prior art of record (the rejections numbered 1-68
in this opinion) is reversed.
The Examiner’s decision to reject claim 70 as indefinite under 35
U.S.C. § 112, second paragraph is reversed.
The Examiner’s decision to reject claims 1-13, 69, and 70 under 35
U.S.C. § 305 as having being impermissibly enlarged in scope is affirmed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
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2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).

AFFIRMED-IN-PART; REVERSED-IN-PART

PATENT OWNER:
BRACEWELL & GIULIANI LLP
P.O. BOX 61389
HOUSTON, TX 77208-1389

THIRD-PARTY REQUESTER:
MORGAN LEWIS & BOCKIUS LLP
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004

cu