Ex Parte 7096977 et al

Board of Patent Appeals and Interferences

Jan 11, 2012

95000162 (B.P.A.I. Jan. 11, 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.
95/000,162 10/17/2006 7096977 NOV-016:RE 7338
21897 7590 01/11/2012
THE MATTHEWS FIRM
2000 BERING DRIVE
SUITE 700
HOUSTON, TX 77057
EXAMINER
FOSTER, JIMMY G
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Varco I/P, Inc.
Patent Owner and Appellant

v.

Tesco Corporation
Requester
____________

Appeal 2011-012122
Reexamination Control 95/000,162
Patent 7,096,977 B2
Technology Center 3900
____________

Before FRED E. McKELVEY, JEFFREY B. ROBERTSON, and
JOSIAH C. COCKS, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012122
Reexamination Control 95/000,162
Patent 7,096,977 B2

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Patent Owner Varco I/P, Inc. (hereinafter “Patent Owner”) appeals
under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject
claims 1-28.1 Third-Party Requester Tesco Corporation (hereinafter
“Requester”) urges that the Examiner’s decision must be affirmed.2 We
have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). We affirm the
Examiner’s decision to reject claims 1-28.

STATEMENT OF THE CASE
United States Patent 7,096,977 B2 (hereinafter “the ‘977 Patent”),
which is the subject of the current inter partes reexamination, issued to
Daniel Juhasz et al. on August 29, 2006, based on Application 11/040,453
filed January 20, 2005. The ‘977 Patent is related to United States Patent
6,938,709 (hereinafter “the ‘709 Patent”), which is the subject of
Reexamination Control 95/000,184. (PO App. Br. 1-2; Req. Resp. Br. 1.)
We are also informed that the ‘709 Patent is the subject of litigation
styled Tesco Corporation (U.S.) v. Varco I/P, Inc., CIV-H-05-2118 (S.D.
TX), the proceedings of which, we understand have been stayed pending the
outcome of the ‘709 Patent reexamination. (PO App. Br. 2; Req. Resp. Br.
1.)

1 See Patent Owner’s Appeal Brief (filed August 6, 2010) (hereinafter “PO
App. Br.”) at 2.
2 See Requester’s Respondent Brief (filed September 3, 2010) (hereinafter
“Req. Resp. Br.”).
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Patent 7,096,977 B2

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The ‘977 Patent relates to well drilling operations, and more
particularly, to a device for assisting in the assembly of pipe strings. (Col. 1,
ll. 16-20.) Figure 1 of the ‘977 Patent is reproduced below:

Figure 1
Figure 1 is an elevated side view of a drilling rig 18, which includes,
inter alia, a top hoist 25, a top drive assembly 24 containing a top drive
motor 26 and drive shaft 28, a pipe running tool 10, pipe segment 11, and
drill string and/or casing string 34. (Col. 2, ll. 58-61; col. 3, ll. 16-51.) The
top drive motor is operative to rotate the drive shaft. (Col. 3, ll. 45-48.)
Pipe running tool 10 is designed for use in assembling pipe strings. (Col. 3,
ll. 16-20.)
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Patent 7,096,977 B2

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Figures 2 and 5A of the ‘977 Patent depict a side view of the pipe
running tool 10 and spider/elevator 74, respectively (Col. 2, ll. 62-63; col. 3,
ll. 1-3), and are reproduced below:

Figure 2 Figure 5A
The pipe running tool 10 depicted in Figure 2 (and also in Figure 1)
includes lower piper engagement assembly (LPEA) 16 (Figure 4), which
includes torque transfer sleeve 62, connected to bushing 60 for rotation
therewith. (Col. 4, ll. 41-45.) The torque transfer sleeve 62 connects at its
lower end to frame 72 made up of tubular members 73, which are coupled to
spider/elevator 74 (corresponding to the claimed powered pipe engaging
mechanism (PPEM)). (Col. 4, ll. 51-55.) The spider/elevator 74 depicted in
Figure 5A includes a pair of hydraulic or pneumatic cylinders 77 with
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displaceable piston rods 78 connected by pivotable linkages 79 to slips 80.
(Col. 4, ll. 58-66.) The slips 80 contain front gripping surfaces 82. (Col. 5,
ll. 1-2.)
In operation, the cylinders 77 drive the piston rods 78 downward such
that the gripping surfaces 82 of the slips 80 sandwich pipe segment 11
between them. (Col. 5, ll. 12-20; col. 6, ll. 25-39.) The top drive assembly
24 is then lowered to drive the lower end of pipe segment 11 into contact
with the threaded upper end of the pipe string 34, at which time the top drive
motor 26 is actuated to rotate the drive shaft 28, lower drive shaft 14, pipe
running tool 10, and spider/elevator 74 to cause the coupled pipe segment to
rotate and threadedly engage the pipe string. (Col. 6, ll. 40-52.)
Claims 1, 9, 14, 21, and 22, which are illustrative of the appealed
subject matter, read as follows (with underlining to indicate changes relative
to the original patent claims):
1. A pipe running tool mountable on a rig for use in
introducing pipe into a borehole, handling pipe segments and
for engaging the pipe segments to a string of pipe, the pipe
running tool comprising:
a top drive assembly adapted to be connected to the rig
for vertical displacement of the top drive assembly relative to
the rig, the top drive assembly including a drive shaft, the top
drive assembly being operative to rotate the drive shaft; and
a lower pipe engagement assembly including a powered
pipe engaging mechanism that is selectively driven into a pipe
engagement position to forcibly yet releasably engage the pipe
segment to support at least a portion of the weight of the string
of pipe and to substantially prevent relative rotation
therebetween, the lower pipe engagement assembly being in
communication with the drive shaft, whereby actuation of the
top drive assembly causes the lower pipe engagement assembly
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Patent 7,096,977 B2

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to rotate, such that the powered engaging mechanism imparts
vertical and rotational motion of the top drive assembly to the
pipe segment during operation.
9. A pipe running tool mountable on a rig for use in
introducing pipe into a borehole, handling pipe segments and
for engaging the pipe segments to a string of pipe, the pipe
running tool comprising:
a top drive assembly adapted to be connected to the rig
for vertical displacement of the top drive assembly relative to
the rig, the top drive assembly including a drive shaft, the top
drive assembly being operative to rotate the drive shaft, a lower
drive shaft coupled to the top drive output shaft and comprising
an adjustable segment that is selectively adjustable to adjust the
length of the lower drive shaft, a lower pipe engagement
assembly being operative to releasably grasp the pipe segment,
the lower pipe engagement assembly being connected to the
second drive shaft, whereby actuation of the top drive assembly
causes the lower pipe engagement assembly to rotate; and
means for applying a force to the lower drive shaft to
cause the length of the adjustable segment to be shortened.
14. A pipe running tool mountable on a rig and designed
for use in connection with a top drive assembly adapted to be
connected to the rig for vertical displacement of the top drive
assembly relative to the rig, the top drive assembly including a
drive shaft, the top drive assembly being operative to rotate the
drive shaft, the pipe running tool comprising:
a lower pipe engagement assembly comprising: a
powered elevator coupled to the top drive assembly for rotation
therewith having a plurality of slips sized for engagement with
a pipe segment, and displaceable between disengaged and
engaged positions; and
a powered system connected to the respective slips and
operative to selectively drive the slips between the disengaged
and engaged position to support at least a portion of the weight
of the string of pipe and to substantially prevent relative
rotation therebetween.
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21. The pipe running tool of Claim 20, whereby the mud
filling device forms a seal between the pipe segment and the
sealing device.
22. The pipe running tool of Claim 20, whereby the mud
filling device also permits mud to be circulated through the pipe
segment.
(PO App. Br., Claims App’x 1-4.)

Prior Art Relevant to the issues on Appeal:

Willis ‘833 US 5,297,833 Mar. 29, 1994
Willis ‘927 US 5,036,927 Aug. 6, 1991
Willis ‘228 US 5,294,228 Mar. 15, 1994
Brown ‘991 US 3,766,991 Oct. 23, 1973
Brown ‘244 US 3,915,244 Oct. 28, 1975
Odgers US 3,301,334 Jan. 31, 1967
Adamson US 3,708,020 Jan. 2, 1973
Loftis US 4,190,119 Feb. 26, 1980
Thornburg US 2,863,638 Dec. 9, 1958
Brown ‘675 US 3,747,675 July 24, 1973
Juhasz ‘241 US 6,443,241 B1 Sep. 3, 2002
Coone US 5,584,343 Dec. 17, 1996
Mullins US 5,971,079 Oct. 26, 1999

Weatherford/Lamb, Inc. (WO 96/18799, published June 20, 1996)
(“Weatherford”)
Kamphorst (G.H. Kamphorst, G.L. van Wechem, W. Boom, D.
Bottger, K. Koch, Case Running Tool, Presentation Paper, Society of
Petroleum Engineers, SPE/IADC 52770, 1999)

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Patent 7,096,977 B2

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Patent Owner contests the Examiner’s decision to reject the claims as
follows:3
Ground 1: Claims 1, 4, 5, 14, 17, and 19 under 35 U.S.C.
§ 102(b) as being anticipated by Willis ‘833;
Ground 2: Claims 6 and 8 under 35 U.S.C. § 103(a) as obvious
over Willis ‘833 in view of Willis ‘927;
Ground 3: Claims 7 and 18 under 35 U.S.C. § 102(b) as
anticipated by Willis ‘833 or 35 U.S.C. § 103(a) as obvious
over Willis ‘833 in view of Willis ‘927;
Ground 4: Claims 1, 4-8, 14, and 17-19 under 35 U.S.C.
§ 102(b) as anticipated by Willis ‘927 or 35 U.S.C. § 103(a) as
obvious over Willis ‘833 in view of Willis ‘228;
Ground 5: Claims 1, 4-8, 14, and 17-19 under 35 U.S.C.
§ 102(b) as being anticipated by Brown ‘991;
Ground 6: Claims 1, 4-8, and 17-19 under 35 U.S.C. § 102(b)
as being anticipated by Brown ‘244;
Ground 7: Claims 1, 4-6, 8, 14, 17, and 19 under 35 U.S.C.
§ 102(b) as being anticipated by or 35 U.S.C. § 103(a) as
obvious over Odgers;
Ground 8: Not involved in appeal.
Ground 9: Claims 1, 4-8, and 17-19 under 35 U.S.C. § 102(b)
as being anticipated by Adamson;

3 In order to avoid confusion, we have adopted the numbering scheme for
the grounds of rejection employed by the Examiner, Patent Owner, and
Requester. Thus, since some of the proposed grounds of rejection were not
adopted by the Examiner (and not appealed by Requester), such grounds of
rejection are listed below as not involved in the appeal.
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Ground 10: Claims 1, 4, 5, 14, 17, and 19 under 35 U.S.C.
§ 102(b) as being anticipated by Loftis;
Ground 11: Claims 7 and 18 under 35 U.S.C. § 103(a) as
obvious over Loftis;
Ground 12: Claims 9 and 13 under 35 U.S.C. § 102(b) as being
anticipated by Weatherford;
Grounds 13 & 14: Not involved in the appeal
Ground 15: Claims 1, 4, 5, 14, 17, and 19 under 35 U.S.C.
§ 102(b) as being anticipated by Thornburg;
Grounds 16, 17 & 18: Not involved in the appeal.
Ground 19: Claims 1, 4, and 14 under 35 U.S.C. § 102(b) as
being anticipated by Brown ‘675;
Ground 20: Not involved in the appeal.
Ground 21: Claims 7 and 18 under 35 U.S.C. § 103(a) as
obvious over Brown ‘675 in view of Brown ‘991;
Ground 22: Claims 1 and 14 under 35 U.S.C. § 102(b) as
anticipated by Kamphorst;
Ground 23: Claims 1-19 under 35 U.S.C. § 102(b) as
anticipated by Juhasz ‘241;
Grounds 24 & 25: Claims 21, 22, 25, and 28 under 35 U.S.C.
§ 112, first paragraph, for lack of written description and lack
of enablement, respectively;
Ground 26: Claims 21, 24, and 27 under 35 U.S.C. § 112,
second paragraph, as being indefinite;
Ground 27: Not involved in the appeal.
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Grounds 28-32 & 34-38: Claims 20-22 and 26-28 under 35
U.S.C. § 103(a) as obvious over any of Willis ‘833, Willis ‘927,
Brown ‘991, Brown ‘244, Brown ‘675, or Willis ‘927 in view
of Willis ‘228, further in view of Coone or Mullins; and
Grounds 33 & 39: Claims 23-25 under 35 U.S.C. § 103(a) as
obvious over Weatherford in view of Coone or Mullins.

ISSUES
Rejections over Prior Art (Grounds 1-7, 9-12, 15, 19, 21-23, and 28-39)
LPEA and PPEM
In arguing the Examiner’s rejections on appeal, Patent Owner makes
several similar arguments with respect to each ground of rejection. In
particular, Patent Owner contends that Willis ‘833 (Grounds 1-3, 28, 34),
Willis ‘927 (Grounds 4, 29, 35), Loftis (Grounds 10, 11), and Thornburg
(Ground 15) fail to disclose an LPEA that includes a PPEM in its entirety,
which Patent Owner argues is a necessary requirement of the claims. (PO
App. Br. 9-10, 12-14, 30, 32-34.)
Requester contends that Patent Owner is impermissibly importing
limitations from the Specification of the ‘977 Patent into the claims, and that
each of Willis ‘833, Willis ‘927, Loftis, and Thornburg discloses systems
where the pipe engaging mechanism is supplied with power. (Req. Resp.
Br. 4-5, 13.)
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Top drive assembly
Patent Owner also argues that Brown ‘991 (Grounds 5, 30, 36),
Brown ‘244 (Grounds 6, 31, 37), Odgers (Ground 7), Adamson (Ground 9),
Loftis (Grounds 10, 11), and Brown ‘675 (Grounds 19, 21, 32, 38) fail to
disclose the “top drive assembly” recited in the claims as those claims would
be interpreted by one of ordinary skill in the art. (PO App. Br. 16-19, 22,
26, 28, 29, 35.)
Requester contends that Patent Owner has provided no arguments to
show that the prior art structures are different than the limitations for the top
drive assembly recited in the claims, where Brown ‘991, Brown ‘244,
Odgers, Adamson, Loftis, and Brown ‘675 disclose top drives located above
pipe running tools and/or pipe segments. (Req. Resp. Br. 6-7.)
PPEM supports portion of string of pipe
Patent Owner further argues that Brown ‘991 (Grounds 5, 30, 36),
Brown ‘244 (Grounds 6, 31, 37), Thornburg (Ground 15), and Brown ‘675
(Grounds 10, 11), do not disclose that the PPEM supports a least a portion of
the string of pipe. (PO App. Br. 20-21, 23-24, 32, 35-37.)
Requester counters that the prior art PPEM structures necessarily
support or are capable of supporting a least a portion of the pipe string
weight. (Req. Resp. Br. 8-9, 10-11, 13, 14-15.)
Adjustable segment
With respect to the rejection of claims 9 and 13 (Ground 12) based on
Weatherford, Patent Owner argues that Weatherford fails to disclose that the
lower drive shaft comprises an adjustable segment as claimed. (PO App. Br.
31-32.)
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Requester argues that Weatherford discloses a telescopic drive shaft
that is selectively adjustable to address the drive shaft length, which meets
the claims. (Req. Resp. Br. 12-13.)
Prior art status of Kamphorst and Juhaz ‘241
Finally, regarding the rejections based on Kamphorst and Juhasz ‘241
(Grounds 22 and 23), Patent Owner contends that neither reference is prior
art to the ‘977 Patent. (PO App. Br. 41, 47-52.)
Requester argues that Patent Owner has failed to provide adequate
evidence to support its priority claim under 35 U.S.C. § 120. (Req. Resp.
Br. 15-18.)

Rejections based on 35 U.S.C. § 112, First Paragraph (Grounds 24 & 25)
Regarding Ground 24, Patent Owner contends that one of ordinary
skill in the art would have understood from the disclosure of the ‘977 Patent
that the inventors were in possession of the limitation “whereby the mud
filling device forms a seal between the pipe segment and the sealing device”
at the time the ‘977 Patent was filed sufficient to satisfy the written
description requirement. (PO App. Br. 42-45.)
Regarding Ground 25, Patent Owner contends that both the Examiner
and Requester acknowledge that mud-filling devices are conventional, and
that coupled with the knowledge of one of ordinary skill in the art, one of
ordinary skill would know how to make and/or use a conventional mud-
filling device to form a seal between the pipe segment and the device. (PO
App. Br. 45-46.)
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Requester contends that nothing in the ‘977 Patent shows a
conventional mud-filling device is adapted for sealing, and that the art of
record distinguishes between filling devices and circulation tools. (Req.
Resp. Br. 18-19.) Requester contends that the description of the prior art
devices relied on by Patent Owner either is based on un-entered evidence,
and/or attorney argument, or that the prior art does not show that the mud
filling devices are adapted for sealing. (Req. Resp. Br. 19-20.) Requester
argues that the ‘977 Patent fails to show a flow path from the top drive
output shaft to the mud filling device, and as such the claims are not enabled
for this reason. (Req. Resp. Br. 20.)

Rejection based on 35 U.S.C. § 112, Second Paragraph (Ground 26)
Regarding this rejection, Patent Owner only states that claim 21
should read “the mud filling device” instead of “the sealing device.” (PO
App. Br. 47.)
Requester states that Patent Owner admits the propriety of the
rejections. (Req. Resp. Br. 20.)

Accordingly, the dispositive issues on appeal are:
1. Did the Examiner err in finding that Willis ‘833, Willis ‘927,
Loftis, and Thornburg disclose an LPEA that includes a PPEM or powered
elevator as claimed?
2. Did the Examiner err in finding that Brown ‘991, Brown ‘244,
Odgers, Adamson, Loftis, and Brown ‘675 disclose a “top drive assembly”
as recited in the claims?
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3. Did the Examiner err in finding that Brown ‘991, Brown ‘244,
Thornburg, and Brown ‘675 disclose that the PPEM supports a least a
portion of the string of pipe?
4. Did the Examiner err in finding that Weatherford discloses a lower
drive shaft comprising an adjustable segment as claimed?
5. Did the Examiner err in determining that Kamphorst and Juhasz
‘241 are prior art to the ‘977 Patent?
6. Did the Examiner err in finding that Patent Owner was not in
possession of a mud filling device that forms a seal between the pipe
segment and the sealing device or permits mud to be circulated through the
pipe segment at the time the ‘977 Patent was filed sufficient to satisfy the
written description requirement?
7. Did the Examiner err in concluding that one of ordinary skill
would not know how to employ a mud filling device that forms a seal
between the pipe segment and the sealing device or permits mud to be
circulated through the pipe segment at the time the ‘977 Patent was filed in
light of the Specification and the knowledge of one of ordinary skill in the
art without undue experimentation?

PRINCIPLES OF LAW
“‘During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.’” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010) (quoting In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007)). Nevertheless, “such construction [must] be ‘consistent
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with the specification, . . . and that claim language should be read in light of
the specification as it would be interpreted by one of ordinary skill in the
art.’” Id. at 1260.

35 U.S.C. § 112
As explained in Regents of the Univ. of Cal. v. Eli Lilly & Co., 119
F.3d 1559, 1566 (Fed. Cir. 1997),
[t]o fulfill the written description requirement, a patent
specification must describe an invention and do so in sufficient
detail that one skilled in the art can clearly conclude that "the
inventor invented the claimed invention." Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 10
USPQ2d 1614, 1618 (Fed. Cir. 1989) ("[T]he description must
clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed."). Thus, an
applicant complies with the written description requirement "by
describing the invention, with all its claimed limitations, not
that which makes it obvious," and by using "such descriptive
means as words, structures, figures, diagrams, formulas, etc.,
that set forth the claimed invention." Lockwood, 107 F.3d at
1572, 41 USPQ2d at 1966.

In other words, the disclosure must convey with reasonable clarity to
those skilled in the art that the inventor was in possession of the invention.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Compliance with the written description requirement is a question of fact.
Id. at 1562-63.
“To satisfy the enablement requirement of § 112, ¶ 1, a patent
application must adequately disclose the claimed invention so as to enable a
person skilled in the art to practice the invention at the time the application
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was filed without undue experimentation.” In re Swartz, 232 F.3d 862, 863
(Fed. Cir. 2000) (citation omitted).
The scope of the claims must not be broader than the scope of the
enabling description in the specification. See Nat’l Recovery Tech., Inc. v.
Magnetic Separation Systems, Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999).
“The scope of enablement, in turn, is that which is disclosed in the
specification plus the scope of what would be known to one of ordinary skill
in the art without undue experimentation.” Id. (citation omitted).

CLAIM INTERPRETATION
Many of the issues on appeal identified above center around the
interpretation of several limitations recited in the claims. Accordingly, we
begin by interpreting the claim limitations (1) “top drive assembly,”
(2) “lower pipe engagement assembly including a powered pipe engaging
mechanism,” and (3) the powered pipe engaging mechanism “support[s] at
least a portion of the weight of the string of pipe.”

LPEA Including a Powered Pipe Engaging Mechanism
Patent Owner contends that because the lower pipe engagement
assembly (LPEA) recites that it “includes” the PPEM, and because the pipe
engaging mechanism is “powered,” that the entirety of the mechanism used
to power the pipe engaging mechanism must be contained within the LPEA.
(PO App. Br. 6-8.)
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Requester contends that the claim terms only require that the pipe
engaging mechanism “is supplied with pipe-engaging power from a powered
system.” (Req. Resp. Br. 4-5.)
In applying the prior art to the claims, the Examiner appears to agree
with Requester. (See the Right of Appeal Notice (RAN) 8-9, 11, 18.)
We first turn to the Specification of the ‘977 Patent for guidance in
interpreting the disputed term. There is no dispute that the spider/elevator
74 described in the ‘977 Patent corresponds to the PPEM. (PO App. Br. 2;
Req. Resp. Br. 3-4.) The ‘977 Patent states that the spider/elevator 74 “is
preferably powered by a hydraulic or pneumatic system, or alternatively by
an electric drive motor or any other suitable powered system.” (Col. 4, ll.
58-60.) The ‘977 Patent describes the spider/elevator 74 as including
hydraulic or pneumatic cylinders 77 and piston rods 78. (Col. 4, ll. 60-66;
Figs. 5A and 5B.) However, as Requester points out, such components must
also be necessarily connected to fluid or current-supplying components in
order to supply power. (Req. Resp. Br. 4-5.) Accordingly, we do not
subscribe to Patent Owner’s view that the LPEA “includes” all of the
components necessary to “power” the pipe engaging mechanism. The
disclosure of the ‘977 Patent does not support Patent Owner’s view. Rather,
we interpret “powered” to mean that the pipe engaging mechanism engages
the pipe through a powered mechanism. In this regard and consistent with
the above discussion, we do not interpret the claims to require that all the
components necessary to power the PPEM be included in the LPEA.
Regarding claim 14, Patent Owner presents a similar argument that
the LPEA must include a powered elevator in its entirety. (PO App. Br. 10.)
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For the reasons discussed above, we do not agree. In addition, as Requester
points out (Req. Resp. Br. 5), claim 14 recites a “powered system” in a
separate clause apart from the LPEA comprising a powered elevator.
Accordingly, our interpretation of the claims is consistent with the plain
wording of claim 14.

Top Drive Assembly
Patent Owner contends that the term “top drive” in the claims, when
viewed in light of the Specification, is distinguished from prior art swivels
and other common drive assemblies. (PO App. Br. 17-18.) Specifically,
Patent Owner contends that the top drive as claimed must be “disposed
above the tool 10 and/or pipe segment 11.” (PO App. Br. 17.) Patent Owner
points to the certain parts of the Specification to support its position that the
recited “top drive” provides certain mechanical and functional benefits as a
result of its position in the drilling rig. (PO App. Br. 17-18.)
Requester contends that the only characteristic of the top drive
assembly is that it is disposed above the pipe running tool and/or pipe
segment. (Req. Resp. Br. 6.) Requester argues that other than this
characteristic, Patent Owner is arguing limitations that are not in the claims.
(Req. Resp, Br. 6.) Requester also argues that the person of ordinary skill in
the art considers the terms “top drive” and “power swivel” to be
interchangeable. (Req. Resp. Br. 7.)
In applying the prior art to the claims, the Examiner appears to agree
with Requester as to the interpretation of “top drive assembly”. (See RAN at
25, 30, 38-39, 44-46, 53, 58, 64, 75)
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In interpreting the recited “top drive assembly,” we first look to the
Specification of the ‘977 Patent for a specific definition of the term. The
‘977 Patent generally describes the top drive assembly as including a “drive
motor” and “a drive shaft” as well as “being operative to rotate the drive
shaft.” (Col. 2, ll. 26-30; col. 3, ll. 45-51.) The ‘977 Patent also states that
the top drive assembly is “preferably a conventional top drive” as described
in U.S. Patent No. 4,605,077 to Boyadjieff, which is incorporated by
reference. (Col. 3, ll. 41-45.)
Thus, the Specification of the ‘977 Patent provides no particular
definition as to the specific structural requirements of the top drive assembly
other than it contains a drive motor and drive shaft, and is operative to rotate
the drive shaft.
In light of the plain meaning of the word “top” advanced by Patent
Owner as “the upper part of anything; be at the top of or constitute the top or
highest point” (PO App. Br. 17), which has not been disputed by Requester,
we agree with the Patent Owner that the top drive assembly must be
disposed above (though not necessarily “directly” above) the pipe running
tool and/or pipe segment. We discern no other required features of the top
drive assembly as recited in the claims.
Regarding the reference to Boyadjieff, the top drive assembly
disclosed therein is clearly indicated in the ‘977 Patent as simply a preferred
embodiment. (The ‘977 Patent, col. 3, ll. 41-45.) As such, it would be
inappropriate to import any particular structural requirements of the top
drive assembly disclosed in Boyadjieff into the present claims on appeal.

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Patent 7,096,977 B2

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The PPEM Supports at Least a Portion of the Weight of the String of
Pipe
Patent Owner makes several arguments that the prior art references
fail to disclose that the PPEM supports the weight of the pipe string. In this
regard, we note that the claims only require that “a portion” of the weight of
the string of pipe be supported by the PPEM. Thus, we agree with
Requester that, by virtue of the engagement of the pipe engaging mechanism
on the pipe segment, once the pipe segment is threaded to the string of pipe,
the pipe engaging mechanism would support a portion of the pipe string by
operation of slips of the pipe engaging mechanism being engaged with the
pipe string on the original pipe segment prior to disengaging the pipe
engaging mechanism. (See Req. Resp. Br. 9.)

FINDINGS OF FACT (“FF”)
Willis ‘833

1. Willis ‘833 describes an apparatus for gripping a down hole
tubular for support and rotation. (Col. 1, ll. 11-19.)
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2. Figure 1 of Willis ‘833 is reproduced below:

Figure 1 depicts an elevational view of a lifting/rotating tool
(Col. 2, ll. 58-60) including a non-rotating frame 78, which is
controlled by four actuators 80 (two of the four actuators being
shown in Figure 1). (Col. 5, ll. 5-10.) Extension of the
actuators 80 lowers the non-rotating frame 78, which in turn
lowers links 60 and gripping elements 28 until cylindrical
surfaces 37 (Figure 4) come into contact with the body B of the
Tubular T. (Col. 5, ll. 11-35; Fig. 4.)
3. Willis ‘833 discloses that hydraulic cylinders may be used as
actuators 80. (Col. 6, ll. 8-12.)

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Willis ‘927
4. Willis ‘927 discloses an apparatus for gripping a down hole
tubular for rotation. (Col. 1, ll. 9-13.)
5. Figure 1 of Willis ‘927 is reproduced below:

Figure 1 depicts an elevational view of a portion of an earth
drilling machine including wrench assembly 24 mounted
beneath load beam 14 to move vertically on guides 26, and two
or more hydraulic cylinders 28 interposed between the wrench
assembly 24 and load beam 14 to control the vertical position of
wrench assembly 24.. (Col. 2, ll. 28-31, 48-65.)
6. Figure 2 of Willis ‘927 is reproduced below:
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Figure 2 depicts a longitudinal view of tubular engaging apparatus
30. (Col. 2, ll. 28-33.) Willis ‘927 discloses that in order to engage
apparatus 30 with the tubular T, the wrench assembly 24 is lowered,
which in turn presses actuating members 62 downward moving
engaging members 50 to the lower converging ends of T-shaped
slots 48 causing toothed cylindrical faces 52 to engage the exterior
surface of the tubular T for rotation. (Col. 4, ll. 25-33.)
Brown ‘991
7. Brown ‘991 discloses an electric power drive swivel supported
from a travel block and a connector for connecting the swivel to
the drive pipe sections. (Col. 1, ll. 22-38.)
8. Brown ‘991 discloses that the power swivel includes an electric
motor M (Figures 1B and 8), and a hollow drive shaft 16, and a
tubular swivel stem 17 (Figure 3), where the Swivel stem 17 is
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rotatably driven by motor shaft 164 and is located above lugs 99
(Figure 3). (Col. 2, ll. 12-18, 40-50; Figs. 1B, 3, 8.)
9. Figure 3 of Brown ‘991 is reproduced below:

Figure 3 depicts a vertical sectional view of a connector device
(col. 1, ll. 50-53) including a set of annular spaced lugs 99,
which through the introduction of pressure fluid, forces piston

4 It should be noted that Willis ‘927 refers to element 16 as “a hollow drive
shaft” and also as a “motor shaft”.
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103 downward such that skirt 104 (Fig. 4) will force lugs 99
inwardly against pipe P preventing “the connector device from
being pulled off the end of the pipe, “thus performing the
functions of more conventional elevators.” (Col. 4, ll. 19-39.)
Figure 3 depicts cam shoes 107, which grip pipe sections P,
when the swivel is rotated. (Col. 5, ll. 17-20.)
10. Brown ‘991 discloses that after the section of pipe has been
added, “the well string including the added pipe section held in
slips in the well head, lugs 99 will be retracted.” (Col. 5, ll. 18-
26.)
Brown ‘244
11. Brown ‘244 discloses a derrick-mounted driving apparatus for
rotating a drill string and for manipulating pipe members being
run into or removed from a well. (Col. 1, ll. 10-17.)
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12. Figure 1A of Brown ‘244 is reproduced below:

Figure 1A depicts a front elevation scheme where a drive
connector assembly 10 is suspended below a rotary power
assembly PA including a motor M, gear assembly G and rotary
output shaft O, which transmits rotary movement to the drive
connector assembly. (Col. 2, ll. 37-39, col. 3, ll. 19-34.)
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13. Figure 2 of Brown ‘244 is reproduced below:

Figure 2 depicts an exemplary embodiment of the drive
connector assembly (Col. 2, ll. 46-48) including elevator 12
which grips pipe string PS (Fig. 1 A) such that rotary and
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vertical movements of the drive head are transmitted to the pipe
string. (Col. 3, ll. 38-42; col. 4, ll. 1-5.) Figure 2 also depicts
plate 74, which when located at the top of housing 57, forces
cam shoes 73 and slip mounts 68 downward such that slip dies
71 engage the tapered section Pc (Figure 2) of pipe P providing
vertical support for the pipe. (Col. 8, ll. 31-43.) Upon rotation,
slip bowl 66 rotates relative to housing 57 causing camming
surfaces 98 to move rotationally relative to rollers 94 whereby
dies 91 engage pipe section Pb, reducing slippage between the
dies and the pipe. (Col. 8, ll. 43-54.)
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Odgers ‘334
14. Figure 2 of Odgers is reproduced below:

Figure 2 depicts a drill rig with drill head in its lowermost
position (Col. 1, ll. 39-43) including motor 40, which is
connected through a gear train 42 to rotary spindle 43 (Fig. 8)
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and located above drill rod 68. (Col. 3, ll. 9-16, Col. 4, ll. 41-
43.) Rotary spindle 43 is part of a chucking system including
housing 44. (Col. 3, ll. 17-21.)
Adamson ‘020
15. Adamson discloses a drill assembly adapted for drilling.
(Col. 1, ll. 4-6.) Figure 4 of Adamson is reproduced below:

Figure 4 depicts an enlarged view of the main portion of the
drill assembly (Col. 2, ll. 40-41), including hydraulic motor 39,
which rotates gear 40, which in turn rotates gear 41 secured to
sleeve 37 such that the motor rotates sleeve 37 and chuck 36.
(Col. 3, ll. 44-52.) Figure 4 also depicts a motor 39’, which is
similarly coupled to sleeve 37’, where both components are
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located above chuck 36’. (See col. 3, l. 59 – col. 4, l. 1, col. 4,
ll. 24-41.).
Loftis ‘119
16. Loftis discloses a drill assembly (Col. 1, ll. 4-7) in Figure 2,
reproduced below:

Figure 2 depicts an enlarged fragmentary cross-sectional view
of a rotary drive means 30 with an engaging means in the
engaged position (Col. 3, ll. 9-11), including a housing 50, rotor
gear 94, transmission gear 96, drive shaft 90, rotor 52, axial
extending bore 56, where drive shaft 90 is connected at its
lower end to a suitable power means (not shown). (Col. 4, ll.
30-55.) Figure 2 also depicts a drill pipe engaging means 32,
including chuck 60, with annular actuating ring 66, latches 64
and base portion 62, which is affixed to rotor 52. (Col. 4, ll. 55-
65.)
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17. Loftis discloses that in operation, when actuators 74 are
released, compressed springs 72 force ring 66 downward
whereby the inner surface 67 slides over surface 65 of latch 64
to force lower portion of latch 64 to engage notches 46 of drill
string 40. (Col. 5, ll. 36-45.)
Thornburg ‘638
18. Thornburg discloses a drill string apparatus including a rotary
power unit, rotary drive coupling, and a tool wrench on the
rotary drive coupling. (Col. 1, ll. 13-15, 49-51.)
19. Figure 1 of Thornburg is reproduced below:

Figure 1 depicts motor 31, rotatable shaft 99, gears 97a-97c, gear
98, which is splined to shaft 99 of rotary drive unit 32, where the
lower end of shaft 99 is connected to the upper end of the drill
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string by coupling 33, which includes flange 33a, downwardly
projecting teeth 33b, upwardly projecting teeth 33c, and socket
33d. (Col. 2, ll. 27-43.) Figure 1 also depicts a drill pipe
engaging mechanism including two pawls 151 mounted on either
sides of the rotary-drive coupling socket 33d, where pawls 151 are
actuated by plungers 154 (Figure 2), rotating pawls 151 inwardly
at the lower ends to engage the top section of drill pipe 34. (Col.
3, ll. 48-64.)
20. Thornburg discloses that coupling 33 contains threads 21
(Figure 2), which is said to aid in tightening the joint between
coupling 33 and drill pipe 34 while pawls 151 are engaged.
(Col. 4, ll. 31-36.)
Brown ‘675
21. Brown ‘675 discloses a rotary drive connection that is used for
“releasably connecting the power source to the casting drill
string, as when adding or removing sections therefrom, or when
inserting or receiving the bit assembly.” (Col. 1, ll. 22-23, 38-
42.)
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22. Figure 1 of Brown ‘675 is reproduced below:

Figure 1 depicts a part sectional view of a drive connection
(Col. 1, ll. 50-53), including rotary power unit 45 carried on
swivel 46, tubular drive spindle 44, and mandrel 11. (Col. 3, ll.
53-64.)
Weatherford
23. Weatherford discloses a method and apparatus for connecting
and disconnecting tubulars. (P. 1, ll. 3-4.)
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24. Figure 1 of Weatherford is reproduced below:

Figure 1 depicts a perspective view of a drilling rig 1 with a top
drive assembly 2 with a telescopic drive shaft 6 including an
upper section 7 and a lower section 8, provided with inter-
engaging internal and external splines respectively. (P. 4, ll.
15-23.)

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ANALYSIS
Issue #1 – LPEA Including a PPEM or Powered Elevator
In view of our claim interpretation above, we are not persuaded that
Willis ‘833, Willis ‘927, Loftis, and Thornburg fail to disclose a LPEA
including a PPEM as recited in claim 1. As discussed above, claim 1 does
not require that all the components necessary to power the PPEM be
included in the LPEA. Patent Owner does not dispute that Willis ‘833,
Willis ‘927, Loftis, and Thornburg all disclose a powered mechanism for
engaging pipe as interpreted above. (PO App. Br. 8, 12, 30, 33.) Indeed,
each of Willis ‘833 (actuators 80), Willis ‘927 (wrench assembly 24), Loftis
(cylinders 74, springs 72, and actuating ring 66), and Thornburg (plungers
154 and supply conduit 100), are used in order to engage the pipe. (FF 2, 3,
5, 6, 16, 17, 19.)
In addition, because we have determined that all components
necessary to supply power to the pipe engaging mechanism need not be
located within the LPEA, we do not find persuasive the Patent Owner’s
arguments that certain components of the prior art used to supply power to
the pipe engaging mechanism do not rotate with the pipe engaging
mechanism. (See PO App. Br. 9-10, 12, 30, 33.) Accordingly, we discern
no error in the Examiner’s position.
Patent Owner presents similar arguments regarding the powered
elevator recited in claim 14. (PO App. Br. 10, 15, 31, 34.) We find these
arguments unpersuasive for similar reasons.

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Issue #2 – Top Drive Assembly
We agree with Requester that Patent Owner has not provided
sufficient evidence that the top drive assembly recited in the claims
distinguishes over the drive assemblies described in Brown ‘991, Brown
‘244, and Brown ‘675 as the term “top drive assembly” has been interpreted
above. Each of the prior art references discloses a drive motor and drive
shaft located above either the pipe running tool and/or pipe segment, or both,
where the drive assembly is operative to rotate the drive shaft.
Brown ‘991 discloses a power swivel having components including an
electric motor, drive shaft and swivel stem that is rotated by a motor shaft.
(FF 7, 8.) The components are depicted in Brown ‘991 as being located
above the pipe running tool and pipe segment. (FF 8, 9.) Accordingly,
Brown ‘991 discloses a top drive assembly as recited in the claims.
Similarly, Brown ‘244 and Brown ‘675 also disclose a “top drive”
assembly having the features recited in the claims, namely, a rotary power
unit and a drive shaft, where such components are located on top of the pipe
running tool and/or pipe segment. (FF 12, 13, 22.)
However, Adamson, Odgers, and Loftis stand on different footing.
Odgers discloses a drill rig disclosed including a motor 40 and rotary spindle
43. (FF 14.) Motor 40 and the drive shaft (unnumbered dashed lines
extending from base of the motor, see RAN 38), are not necessarily located
at the top of the pipe running tool as required by the claims as that the term
has been interpreted above. (FF 14.) Likewise, Adamson discloses a motor
39 or 39’ that rotates sleeves 37 and 37’. (FF 15.) Figure 4 depicts that
motors 39 and 39’ are disposed on the side, and not the top of the drill
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assembly (FF 15.) Finally, Loftis discloses a drive shaft 90 located to the
side of the rotary engaging means and a power means connected to the lower
end of the drive shaft in Figure 2. (FF 16.)
Accordingly, we agree with the Patent Owner that Adamson, Odgers,
and Loftis fail to disclose a top drive as recited in the claims.

Issue 3-PPEM Supports a Portion of the Weight of the String of Pipe
As we discussed above, the claims do not specify what portion of the
weight of the string of pipe that the PPEM must support. Brown ‘991
discloses that the pipe engaging mechanism is engaged to the pipe string
after joining the pipe segment to the pipe string prior to disengaging the pipe
engaging mechanism. (FF 10.) Accordingly, as a result of such
engagement, the PPEM would support a portion of the weight of the pipe
string.
Regarding Patent Owner’s argument that the lugs 99 securing the
overshot connector to a pipe P disclosed in Brown ‘991 is akin to a fireman
securing himself to a pole, such that the PPEM would be incapable of
supporting the weight of the pipe string, is not supported by a preponderance
of the evidence. (App. Br. 20.) We agree with Requester, that Patent
Owner’s arguments do not distinguish the claims. (Req. Resp. Br. 8.) In
addition to lugs 99, the PPEM disclosed in Brown ‘991 includes cam shoes
107, which Patent Owner does not dispute grips pipe section P. (PO App.
Br. 20; FF 9.) In addition, Brown ‘991 discloses that cam shoes 107 and
lugs 99 perform the function of conventional elevators and remain present
for a time after the pipe connection is made. (FF 9, 10.) Thus, consistent
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with our claim interpretation above, Brown ‘991 discloses that a portion of
the weight of the string of pipe is supported by the PPEM. Accordingly, we
are not persuaded by Patent Owner’s arguments.
Similarly, with respect to Brown ‘244, we are not persuaded by Patent
Owner’s arguments that Brown ‘244 only discloses a conventional
mechanism, where it is not necessary for the weight of the drill string to be
supported by elevator 12. (PO App. Br. 23-24.) Brown discloses that in
elevator 12, slip dies 71 engage the pipe to provide vertical support and
camming surfaces have dies 91 engaging pipe section Pb. (FF 13.)
Patent Owner’s arguments with respect to Brown ‘675 are also not
persuasive. Patent Owner’s argument is that Brown ‘675 does not disclose a
tool used to engage a pipe segment with a string of tubulars. (PO App. Br.
35.) However, we agree with Requester, that the preamble amounts to
nothing more than intended use. (Req. Resp. Br. 14-15.) Patent Owner has
not provided any persuasive argument that the actual structure disclosed in
Brown ‘675 would be incapable of performing the recited intended use.
Thus we discern no error on the part of the Examiner.
Regarding Thornburg, we agree with Requester, that Patent Owner’s
arguments directed to pawls 151 ignore threads 21, which the Examiner also
found as constituting part of the PPEM. (RAN 63-65; PO App. Br. 32-34;
Req. Resp. Br. 13.) We further add that in view of our interpretation above
and Thornburg’s disclosure that the pawls 151 prevent threads 21 from
rotating, pawls 151 would be able to support a portion of the weight of the
pipe string before disengaging. (FF 19, 20.) Accordingly, we are not
persuaded by Patent Owner’s argument.
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Issue 4-Ground 12-Weatherford-Drive Shaft Comprising an
Adjustable Segment
We do not agree with Patent Owner’s argument that Weatherford’s
disclosure with respect to section 8 of the drive shaft does not read on a
“lower drive shaft . . . comprising an adjustable segment that is selectively
adjustable to adjust the length of the lower drive shaft” as recited in claim 9.
Patent Owner contends that section 8 of Weatherford’s drive shaft is itself an
adjustable segment, rather than “comprising an adjustable segment” as
recited in the claims. (PO App. Br. 41-42.) However, Weatherford
discloses that the lower section 8 is provided with an external spline for
engaging a corresponding internal spline on upper section 7 and thereby
forming an adjustable connection allowing telescoping of the lower and
upper sections. (FF 23, 24.) The external spline makes up a portion or
“segment” of section 8. Thus, we agree with the Examiner that the lower
section 8 comprises an adjustable segment as part of a lower drive shaft as
recited in claim 9. (See RAN 58.) Therefore, we affirm the Examiner’s
rejection.

Issue 5-Grounds 22 & 23 – Rejections based on Kamphorst and
Juhasz ‘241
The only argument advanced by Patent Owner with respect to the
rejections based on Kamphorst and Juhasz ’241, is that neither Kamphorst
nor Juhasz ‘241 qualifies as prior art to the ‘977 Patent. (PO App. Br. 41,
47-52.)

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The ‘977 Patent states:
This application is based on U.S. patent application Ser.
No. 10/189,355, filed Jul. 3, 2002, which itself is based on U.S.
patent application Ser. No. 09/518,122, filed Mar. 3, 2000, now
U.S. Pat. No. 6,443,241, which claims priority to provisional
patent application Ser. No. 60/122,915, filed Mar. 5, 1999, the
disclosures of which are incorporated herein by reference.
(Col. 1, ll. 5-12.)
The statement that the ‘977 Patent “is based on” certain applications is
ambiguous and does not define the relationship between the ‘977 Patent and
the named applications as required in 37 C.F.R. § 1.78 (a)(2)(i) (“any
nonprovisional application . . . must contain or be amended to contain a
reference to each such prior-filed application . . . indicating the relationship
of the applications.”). (Italics added) Therefore, we agree with the
Examiner that Patent Owner may not rely on the filing date of provisional
patent application 60/122,915 to disqualify Kamphorst as prior art or that the
‘977 Patent is “based on” Juhasz ‘241 to disqualify Juhasz ‘241 as prior art.
Although Patent Owner argues that the amendment filed during prosecution
of the ‘977 Patent, which resulted in the above quoted language, was filed by
mistake and/or improperly amended, such matters are not within our
jurisdiction. In this regard, Patent Owner has filed a petition for certificate
of correction, which has not yet been decided. Thus, with the current status
of the ‘977 Patent, we agree with Requester that Patent Owner has not filed a
proper claim for priority. Therefore, since Patent Owner provides no
substantive arguments regarding the merits of the Examiner’s rejection, we
affirm the Examiner’s rejection of the claims.

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Issue 6 -Ground 24-Rejections of claims 21, 22, 25, and 28 under 35
U.S.C. § 112, First Paragraph, Written Description

ADDITIONAL FINDINGS OF FACT
Patent Owner Figure 7
25. Figure 7 of the ‘977 Patent is reproduced below:

Figure 7 depicts is a side view of an embodiment of a pipe
running tool, including mud-filling device 206. (Col. 3, ll. 8-9,
col. 7, ll. 39-60.)
26. Referring to Figure 7, the ‘977 Patent states:
A lower drive shaft 204 is provided and connects at its
lower end to a conventional mud-filling device 206
which, as is known in the art, is used to fill a pipe
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segment, for example, a casing segment with mud during
the assembly process. In one illustrative embodiment,
the mud-filling device is a device manufactured by
Davies-Lynch Inc. of Texas.
(Col. 7, ll. 43-49.)

Coone

27. Coone, which is indicated on the front of the patent to be
assigned to Davis-Lynch, Inc., discloses filling tools and
circulations tools, and that “filling and circulation tools can be
combined in multi-purpose tools.” (Col. 1, ll. 15-40.)
28. Coone discloses a combined filling/circulation tool with a self-
energizing sealing element made out of an elastomeric material,
where the sealing element is not inserted into the casing during
filling operations, but is subsequently lowered into the casing
for circulation, where the sealing element is compressed to from
a seal. (Col. 2, ll. 18-36, 64-65, col. 3, ll. 56-64.)
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29. Figure 1 and 2 of Coone are reproduced below:

Figure 1 of Coone depicts a side view of the Coone invention in
position for filling operations where sealing element 19 is in the non-
compressed position and is located above the drill casing and Figure 2
depicts a side view of the Coone invention in position for circulating
operations, where sealing element 19 is compressed forming a seal.
(Col. 2, ll. 39-44.)

ANALYSIS
We agree with the Examiner and Requester that the portions of the
’977 Patent Specification relied on by Patent Owner are insufficient to
provide support that Patent Owner was in possession of a mud filling device
that acts as a sealing device such that the mud filling device permits mud to
be circulated through the pipe segment. Regarding the mud filling device,
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the entirety of the disclosure in the ‘977 Patent is with reference to the
particular embodiment disclosed in Figure 7, where the mud-filling device is
described as being “used to fill a pipe segment,” but is silent as to whether a
seal is formed. (FF 25, 26.) Although Patent Owner points to the depiction
of the mud-filling device 206 in Figure 7 to indicate that a seal is formed
between the mud-filling device and the pipe segment 11, there is no
indication that Figure 7 is drawn to scale such that one of ordinary skill in
the art have appreciated that a seal is formed. (PO App. Br. 43; FF 25.)
Moreover, Patent Owner’s argument that the device depicted in Figure
7 bears a resemblance to the device disclosed in Coone, which is assigned to
Davies-Lynch, is also not persuasive. As discussed above, Patent Owner
points to Figure 7 to indicate that a seal is formed. However, Figure 7 of the
‘977 Patent is most similar to the embodiment depicted in Figure 1 of
Coone. (FF 25, 29.) In Figure 1 of Coone, the device is in filling mode, and
located above the pipe segment, whereas Patent Owner contends that the
position of the device in Figure 7 of the ‘977 Patent is within the pipe
segment. Accordingly, given the position of the device in Figure 7 of the
‘977 Patent, the appearance of the device 206, if forming a seal, should be
similar to the sealing element 19 depicted in Figure 2 of Coone, where
Coone depicts a sealing element 19 that has been compressed and has a flat
surface, as opposed to the pointed surface of the device 206 depicted in
Figure 7 of the ‘977 Patent. (FF 25, 29.) That is, device 206 in Figure 7 of
the ‘997 Patent includes no corresponding compressed or flattened surface
indicative of sealing. Accordingly, the evidence relied on by Patent Owner
does not establish by a preponderance of the evidence that Patent Owner was
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in possession of a mud filling device that also was capable of providing a
seal and therefore permitting circulation of mud through the pipe segment.
Assuming arguendo that it may have been obvious to use the
filling/sealing device disclosed in Coone as the filling device in the
apparatus of the ‘977 Patent, obviousness is not the test for written
description support under §112, first paragraph. Ariad Pharmaceuticals,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)("[A]
description that merely renders the invention obvious does not satisfy the
[written description] requirement."). Thus, there is insufficient evidence on
the record to support Patent Owner’s position that a mud-filling device that
acts as a sealing device and permits mud to be circulated through the pipe
segment was described in the Specification as understood by one of ordinary
skill in the art. Accordingly, we affirm the Examiner’s rejection under 35
U.S.C. § 112, first paragraph.

Issue 7 -Ground 25-Rejections of claims 21, 22, 25, and 28 under 35
U.S.C. § 112, First Paragraph, Enablement
Although we have found that claims 21, 22, 25, and 28 lack written
description support, the Examiner’s rejection of claims 21, 22, 25, and 28
under 35 U.S.C. § 112, first paragraph, for lack of enablement stand on
different footing. The test of enablement under 35 U.S.C. § 112, first
paragraph, is whether one skilled in the art could make or use the invention
from the disclosure in the specification taken with information known in the
art without undue experimentation. See Nat’l Recovery Tech., Inc., 166 F.3d
at 1196.
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Here, the Examiner and Requester have failed to provide a sufficient
explanation of why undue experimentation would have been required in
order to provide a mud filling device that is also capable of sealing and
permitting mud to be circulated through the pipe segment. Both the
Examiner and Requester point to Coone in order to show that different
methods are available for filling, sealing, and circulating mud in pipe
segments. (RAN 90; Req. Resp. Br. 18-20.) However, because Coone
discloses alternative methods that are known in the art, including those in
which a mud filling device is also capable of sealing and permitting mud to
be circulated through the pipe segment, we are of the opinion that Coone
provides evidence that undue experimentation would not have been required
in order to practice the invention as claimed. (See FF 28.) Additionally,
Requester’s argument that there is no flow path through which mud can flow
based solely on the cross-hatching in Figure 3 is not convincing. (Req.
Resp. Br. 20.) We have been directed to no persuasive disclosure in the ‘977
Patent that supports Requester’s position. Accordingly, we reverse the
Examiner’s rejection of claims 21, 22, 25, and 28 as lacking enablement.

Ground 26- Rejection of Claims 21, 24, and 27
Regarding claim 21, Patent Owner does not provide any persuasive
arguments against the Examiner’s rejection. Rather, Patent Owner appears
to acknowledge that claim 21 should read “the mud filling device” instead of
“the sealing device.” (PO App. Br. 47.) Accordingly, we affirm the
Examiner’s rejection of claim 21 and claims 24 and 27, which depend
thereon.
Appeal 2011-012122
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Patent 7,096,977 B2

48
Grounds 28-39
Because Patent Owner has not provided separate arguments with
respect to the dependent claims subject to Grounds 28-39 (PO App. Br. 41),
we affirm these grounds of rejection for reasons given above with respect to
the independent claims.

CONCLUSION
On this record:
The Examiner did not err in finding that Willis ‘833, Willis ‘927,
Loftis, and Thornburg disclose an LPEA that includes a PPEM or powered
elevator as claimed;
The Examiner did not err in finding that Brown ‘991, Brown ‘244,
Odgers, Adamson, Loftis, and Brown ‘675 disclose a “top drive assembly”
as recited in the claims;
The Examiner did not err in finding that Brown ‘991, Brown ‘244,
Thornburg, and Brown ‘675 disclose that the PPEM supports a least a
portion of the string of pipe;
The Examiner did not err in finding that Weatherford discloses a
lower drive shaft comprising an adjustable segment as claimed;
The Examiner did not err in determining that Kamphorst and Juhasz
‘241 are prior art to the ‘977 Patent;
The Examiner did not err in finding that Patent Owner was not in
possession of a mud filling device that forms a seal between the pipe
segment and the sealing device, or permits mud to be circulated through the
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Patent 7,096,977 B2

49
pipe segment at the time the ‘977 Patent was filed sufficient to satisfy the
written description requirement;
The Examiner erred in finding that Odgers, Adamson, and Loftis
disclose a “top drive assembly” as recited in the claims; and
The Examiner erred in determining that one of ordinary skill would
not know how to employ a mud filling device that forms a seal between the
pipe segment and the sealing device or permits mud to be circulated through
the pipe segment at the time the ‘977 Patent was filed in light of the
Specification and the knowledge of one of ordinary skill in the art without
undue experimentation.

DECISION
The Examiner’s decision to reject claims 1-28 (Grounds 1-6, 12, 15,
19, 21-24, 26, and 28-39) is affirmed. However, we reverse Grounds 7, 9,
10, and 11. We do not reach Ground 25.

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
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Patent 7,096,977 B2

50
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
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. 7, July 2008).

AFFIRMED

cu

PATENT OWNER:
THE MATTHEWS FIRM
2000 BERING DRIVE
SUITE 700
HOUSTON, TX 77057

THIRD-PARTY REQUESTER:
ANDREWS KURTH LLP (3RD PTY REQ)
600 TRAVIS
SUITE 4200
HOUSTON, TX 77702