Ex Parte Bisel

Patent Trial and Appeal Board

Mar 24, 2017

13206170 (P.T.A.B. Mar. 24, 2017)

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.
13/206,170 08/09/2011 Neal O. Bisel 657.002 3286
30589 7590 03/28/2017
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
GRAY, GEORGE STERLING
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
docketing@dunlapcodding.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL O. BISEL
Appeal 2015-007046
Application 13/206,170
Technology Center 3600
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—8 under 35 U.S.C. § 103(a) as unpatentable over
1 Appellant identifies the real party in interest as Reciprocating Rod Lift
Systems, LLC. Br. 1.
2 Appeal is taken from the Final Office Action dated May 30, 2014 (“Final
Act.”).
Appeal 2015-007046
Application 13/206,170
APA,3 Langston,4 and API Specification 1 IB, Annexes A and B.5 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1 and 5 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claims on appeal.
1. A polished rod for supporting a sucker rod string,
comprising:
a one piece shank having an upper end and a lower end,
the upper end and the lower end each having a diameter;
a first connector formed on the upper end of the shank; and
a second connector formed on the lower end of the shank,
wherein the shank has a sealing section extending from the
lower end toward the upper end, the sealing section having a
polished surface and a uniform cylindrical diameter, the uniform
cylindrical diameter of the sealing section being a maximum
diameter of the shank and substantially equal to the diameter of
the upper end and the lower end of the shank,
wherein the shank has a latching section formed between
the sealing section and the upper end, the latching section of the
3 Appellant’s Admitted Prior Art, Spec. Fig. 3.
4 Well Servicing and Workover, The Lease Pumper’s Handbook, Chapter
17, Section B, 1st Ed. 2003, Commission on Marginally Producing Oil and
Gas Wells in Oklahoma.
5 “Specification for Sucker Rods, Polished Rods and Liners, Coupling,
Sinker Bars, Polished Rod Clamps, Sutffmg Boxes, and Pumping Tees,”
API Spec. 1 IB, May 2010, Annex A, pp. 16—26, Annex B, pp. 29—36, 27th
Ed., American Petroleum Institute.
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Application 13/206,170
shank having a diameter less than the diameter of the sealing
section and the upper end.
ANALYSIS
Appellant argues claims 1—8 as a group. Br. 6-10. We select claim 1
as representative. See 37 C.F.R. § 41.37(c)(l)(viii) (2011). Claims 2—8
stand or fall with claim 1.
The Examiner finds, inter alia, that Figure 3 of the Specification
discloses “a conventional polished rod,” as claimed, except that Figure 3
“does not disclose a latching section formed between the sealing section of
the shank and an upper end.” Final Act. 3^4. The Examiner relies on
Langston for disclosing, inter alia, “that it is known to use a short sucker rod
as a Tift pony rod’ for attachment to the threaded upper end of a polished
rod, and that the lift pony rod may be left in place during normal
operations.’ '’ Id. at 4 (emphasis added) (citing Langston, e.g., Fig. 2; see
also id. at 17B-6 (“The polished rod is installed last, and the lift pony on the
top may be left in position or removed.”). The Examiner determines that
[w]hen left in place, as disclosed by Langston, the combination
of [Figure 3 of the Specification] and Langston provides a
latching section formed between the sealing section of the shank
and the upper end (threaded) of the lift pony rod at the elongated
portion of the lift pony rod. In this regard, Langston uses a
coupling for attaching the lift pony, the coupling having the
largest OD in the assembly.
Id.
The Examiner reasons that it would have been obvious
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Application 13/206,170
to have eliminated the coupling and to have integrated the
Langston lift pony rod with the . . . polished rod [(depicted in
Figure 3 of the Specification)] in order to eliminate the need for
a coupling and to make permanent and unitary what was
suggested by Langston as a combination that could be left
together indefinitely. This would have achieved the predictable
result (a) that the reduced diameter portion of the Langston lift
pony rod would be readily available for attaching by the rod
elevator and then lifting the polished rod out of the way during a
workover in which downhole sucker rods were to be pulled,
without the necessity of ascending the well head to put a separate
lift pony rod on the polished rod, and (b) that the largest OD of
the shank assembly would be the polished rod, such that
compatibility with components, such as the carrier bar, etc.,
would remain optimally compatible with the integrated assembly
during re-assembly following the sucker rod maintenance.
Id. The Examiner determines that Langston’s configuration of leaving the
polished rod and pony lift rod coupled together, “serves no purpose other
than to avoid the time and labor to take apart what all know will be put back
together for the next rod job.” Final Act. 3. The Examiner determines that
[s]uch practical advantages of integrating separate conventional
parts into one (which is the effect of screwing two threaded
components together) make it simple to appreciate previous case
law holding that forming in one piece an article which has
formerly been formed in two pieces and put together involves
only routine skill in the art.
Ans. 3 (citing Howard v. Detroit Stove Works, 150 U.S. 164 (1893)).
Appellant argues that the Examiner has engaged in impermissible
hindsight. Indeed, rejections based on obviousness must rest on a factual
basis; in making such a rejection, the Examiner has the initial burden of
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Application 13/206,170
supplying the requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded assumptions, or
hindsight reconstruction to supply deficiencies in the factual basis. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). However, as explained infra,
we conclude that the Examiner has supplied the requisite factual basis in
support of the Examiner’s conclusion that claim 1 is obvious, because the
Examiner has provided support from Langston that discloses that the
polished rod and pony lift rod may be left coupled together, as set forth
supra. Moreover, although there are no per se rules of obviousness in the
application of Howard v. Detroit Stove Works, the facts in the record support
the Examiner’s conclusion of obviousness; in view of Langston’s suggestion
to leave the rods coupled, integrating the latching section of the lift pony rod
with the polished rod would be an obvious alternative.
Appellant argues that Langston “clearly discloses a removable pony
lift rod with a coupling attachment to the polished rod.” Br. 8. Appellant
submits that because Langston discloses that the lift pony may be removed
from the polished rod and because Langston is silent with respect to
integrating the lift pony and polished rod into one piece, Langston “only
suggests the long time industry standard of installing a pony rod at the upper
end of a polished rod.” Id. at 9. However, Appellant’s argument does not
address the rejection as articulated by the Examiner, which acknowledges
that Langston teaches a pony lift rod removably coupled to the polished rod,
but relies on Langston’s teaching that the removable pony lift rod may be
left attached to the polished rod during normal operation, which fact the
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Examiner reasons supports the rationale that one of ordinary skill would
further integrate the pony lift rod and the polished rod to save time during a
workover.
Third, Appellant argues that “[t]here is no suggestion that it would be
preferable to integrate the lift pony rod with the polished rod.” Br. 8; see
also id. at 9 (citing Langston p. 17B-6 (“[Langston] describes ‘the lift pony
on the top may be left in position or removed.”)). Appellant contends that
even if it is readily known how to integrate one component with
another component, [Langston] is silent with respect to why
someone would have wanted to integrate a removable pony rod
into a polished rod. Lurther, the mere knowledge of how to
integrate components does not constitute, by itself, a reason to
modify Appellant’s prior art to integrate the pony rod of
[Langston],
Id. at 9. However, Appellant’s argument is foreclosed by KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid
requirement of a teaching or suggestion or motivation to combine known
elements in order to show obviousness. Id. at 415. The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418.
Appellant also argues that
one of ordinary skill in the art would not be motivated to modify
the polished rod of [the APA] by forming an area of reduced
diameter into the uniform, polished surface of a polished rod.
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Application 13/206,170
Such a modification would interfere with the ability of the
polished rod to form a seal with the stuffing box.
Br. 10. Appellant submits that from the teaching of Langston, “one of
ordinary skill in the art would find that the solution for latching to a polished
rod would be to attach a lift pony rod using a coupling designed for use with
polished rods” and that “[such] a coupling is more than sufficient to provide
an area for an elevator to latch.” Id. The Examiner responds that “[t]he
possibility of the reduced diameter portion encountering the sealing area (the
stuffing box) would be eliminated by choosing the respective lengths of the
polished rod section and the now integrated latching section to appropriately
space the latching section away from (above) the stuffing box.” Ans. 3.
“[Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418. Here, we determine that the Examiner
has provided adequate factual underpinning to support the Examiner’s
proposed modification, in that Langston suggests leaving the pony lift rod in
place on the polished rod, as stated supra, such that a person of ordinary
skill in the art would have been led to modify Langston’s polished rod to
include a pony lift rod (and latching section) with a reasonable expectation
of success. In reDroge, 695 F.3d 1334, 1338 (Fed. Cir. 2012).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 2—8 fall with claim 1.
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DECISION
The decision of the Examiner to reject claims 1-8 is AFFIRMED.
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)(l)(iv).
AFFIRMED
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