Ex Parte Mallis et alDownload PDFPatent Trial and Appeal BoardAug 8, 201311614655 (P.T.A.B. Aug. 8, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID LLEWELLYN MALLIS and HARRIS A. REYNOLDS, JR. ____________________ Appeal 2011-008078 Application 11/614,655 Technology Center 3600 ____________________ Before: JAMES P. CALVE, SCOTT A. DANIELS, and JEREMY M. PLENZLER, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008078 Application 11/614,655 2 STATEMENT OF CASE David Llewellyn Mallis and Harris A. Reynolds, Jr. (Appellants) appeal under 35 U.S.C. § 134 from a rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a threaded connection, for example in a drill casing joint, the threads having perturbations defining a reduced clearance gap between the pin thread and box thread.1 Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A threaded connection comprising: a pin member comprising a pin thread having a pin thread crest, a pin thread root, a pin load flank, and a pin stab flank; a box member comprising a box thread having a box thread crest, a box thread root, a box load flank, and a box stab flank, wherein at least one of the pin thread crest, the pin load flank, the pin stab flank, the box thread crest, the box load flank, and the box stab flank has at least one perturbation formed thereon, wherein upon a selected make-up of the pin member with the box member, a reduced clearance gap exists between the pin thread and the box thread at the at least one perturbation. 1 “Perturbation” refers to a deviation in an original path of the load flank, the stab flank, the root, or the crest on the thread such that a bump is formed thereon. After the perturbation, the path returns at least partially towards the original path prior to the perturbation. Spec. 11, para. [0036] Appeal 2011-008078 Application 11/614,655 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Frame US 2,177,100 Oct. 24, 1939 REJECTIONS2 The Examiner made the following rejections: Claims 1-16 stand rejected under 35 U.S.C §102(b) as being anticipated by Frame. Ans. 3. ANALYSIS Appellants argue claims 1-16 as a group. App. Br. 6. We select claim 1 as representative of the group where claims 2-16 stand or fall with claim 1. See 37 C.F.R. 41.37(c)(1)(vii) (2011). The Examiner found that each element of independent claim 1 is disclosed by Frame. Ans. 3-4. The Examiner clearly explained that Frame illustrates that “a reduced clearance gap exists between the pin thread and the box thread at the at least one perturbation” as called for in claim 1. Ans. 7 citing Frame Fig. 5. Appellants’ arguments that claim 1 requires “a reduced clearance gap between the pin thread and the box thread at the at least one perturbation” and that contrary to Frame, in the present invention “a gap 308 or void remains between the perturbations,” fail to explain why Frame’s perturbations, or ribs 26, do not define a reduced clearance gap 2 The Examiner withdrew the other anticipation rejections of claims 1-16 in view of Conner (US patent 2,827,313); and Church (US patent 6,254,146). Ans. 3. Appeal 2011-008078 Application 11/614,655 4 between the respective threads. See App. Br. 7; Spec. Fig. 10; Frame Figs. 2-7 and col. 4, ll. 16-45. Appellants dispute that Frame discloses a gap or void between the perturbations, or ribs 26, and maintain that the current claims “require[] that a gap remain between the perturbations in the threads.” App. Br. 8. This argument is not commensurate in scope with the claims. Claim 1 requires that “a reduced clearance gap exists between the pin thread and the box thread at the at least one perturbation.” Clms. Appx., emphasis added. The claim does not require a gap between the perturbation and an adjacent thread. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). The Examiner’s finding that Frame, for example in the Examiner’s annotated Fig. 5 of Frame, discloses a reduced clearance gap between the pin thread and the box thread at the perturbations is a reasonable one where Frame discloses that female threads 22c are formed with ribs 26c that engage with opposed flat or substantially flat surfaces on the male thread 24c such that gaps exist between the threads 22c, 24c at the ribs 26c. Ans. 7-8. Additionally, Appellants’ Specification explains that once a desired torque is applied, the perturbation is in direct contact with the opposing thread flank which facilitates elimination of the gap: As the connection in Figure 4B is made-up past the initial contact at the perturbation, the gap between the load flanks 225 and 226 and the stab flanks 231 and 232 will disappear as the contact pressure at the perturbations locally deforms the thread. After the connection has been made-up to a desired torque or Appeal 2011-008078 Application 11/614,655 5 relative position of the pin member and the box member, greater contact pressure will exist between the load flanks 225 and 226 and the stab flanks 231 and 232 at the perturbations in Figure 4B between points A1, A2 and points Dl, D2 than the remaining portions of the threads. Spec. 13, and see Frame Fig. 4B. Appellants point to Figure 10 of the Specification which shows adjacent box thread 310 and pin thread 311 with clearance between the threads and the perturbations 312, 313. However, Figure 10 does not disclose the pin and box threads at “selected make-up” as recited in claims 1 and 11. The Specification describes expressly that “‘make-up’ refers to merely initially threading a pin member and a box member together”, whereas, “‘selected make-up’ refers to threading the pin member and the box member together with a desired amount of torque, or based on a relative position (axial or circumferential) of the pin member with the box member.” Spec. para. [0008]. Appellants’ Figure 10 shows the threads only at make- up, not at the claimed “selected make-up” where a desired amount of torque has been added to produce contact between a perturbation and an opposing thread.3 See Spec. para. [0055]. Giving the claim term its express definition as provided in Appellants’ Specification, the Examiner has provided a sound basis explaining why Frame meets the fundamental elements of claim 1. Accordingly, we sustain the anticipation rejection of claim 1 and claims 2-16 fall therewith. 3 Whether the connection is claimed as “selected make-up” or not, Frame discloses a gap between the pin thread and box thread as called for in each of independent claims 1, 11 and 12 and discloses that clearance is reduced between crests and roots due to deformation resulting from the high contact pressure during the makeup of the joint. Frame, p. 2, col. 2, ll. 24-32. Appeal 2011-008078 Application 11/614,655 6 DECISION For the above reasons, the Examiner’s rejection of claims 1-16 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)(1)(iv) (2009). AFFIRMED Klh Copy with citationCopy as parenthetical citation