Ex Parte Buckingham et al

Patent Trial and Appeal Board

Sep 6, 2017

13768616 (P.T.A.B. Sep. 6, 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.
13/768,616 02/15/2013 Stuart BUCKINGHAM 20516.0001US01 1096
52835 7590 09/08/2017
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
EXAMINER
IJAZ, MUHAMMAD
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
09/08/2017 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):
PTOMail @hsml. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STUART BUCKINGHAM, MATT J. MICHEL,
DMITRY SPIVAK, and TIM BERG
(Applicant: Black Hawk Energy Services, Ltd.)
Appeal 2017-004555
Application 13/768,6161
Technology Center 3600
Before THU A. DANG, LARRY J. HUME, and JOSEPH P. LENTIVECH,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1—6, 9-16, and 19-21. Appellants have canceled
claims 7, 8, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Black Hawk Energy
Services, Ltd. App. Br. 2.
Appeal 2017-004555
Application 13/768,616
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
apparatus and methods of stably supporting self-propelled derrick rigs such
as workover rigs, drilling rigs, cranes and the like, using a portable base
beam." Spec. 1,11. 6-8.
Exemplary Claims
Claims 1,12, and 13, reproduced below, are representative of the
subject matter on appeal (emphases added to contested limitations):
1. A base beam used to support a self-propelled
derrick rig, comprising:
a longitudinally extending metal main beam having first
and second opposite ends, a front side, a back side, a top and a
bottom, the bottom is substantially planar, the front side is
parallel to a longitudinal axis of the main beam;
the main beam includes a central section approximately
midway between the first and second ends thereof, the central
section is reinforced between the top and the bottom, and the
top of the central section is substantially planar;
first and second swing arms pivotally attached to the
main beam on the front side thereof, the swing arms are
pivotable relative to the main beam between a retracted position
where the first and second swing arms are generally parallel to
the main beam and overlap the front side of the main beam, and
a fully extended position where the first and second swing arms
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
June 20, 2016); Examiner's Answer ("Ans.," mailed Oct 20, 2016); Non-
Final Office Action ("Non-Final Act.," mailed Jan. 21, 2016); and the
original Specification ("Spec.," filed Feb. 15, 2015). We note Appellants
did not file a Reply Brief in response to the factual findings and legal
conclusions in the Examiner's Answer.
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Application 13/768,616
are not parallel to the main beam and the first and second swing
arms extend from the front side, and the first and second swing
arms are each pivotable relative to the main beam in a plane
that is parallel to the bottom; and
at least one guy attachment point on each of the first and
second swing arms.
12. A base beam as recited in claim 1, wherein each of
the first and second swing arms has a length, and the combined
length of the first and second swing arms is less than the
longitudinal length of the main beam.
13. A base beam that in use is disposed on the ground
and that supports a derrick structure of a self-propelled derrick
rig, the base beam is a structure that is physically separate
from the self-propelled derrick rig, comprising:
a longitudinally extending metal main beam having first
and second opposite ends, a front side, a back side, a top and a
bottom, the bottom is substantially planar,
the main beam includes a central section approximately
midway between the first and second ends thereof, the central
section is reinforced between the top and the bottom, and the
top of the central section is substantially planar;
the main beam has a longitudinal length;
first and second stabilizer arms pivotally attached to the
front side of the main beam for pivoting movement relative to
the main beam in a plane that is parallel to the bottom, the
stabilizer arms extend from the front side of the main beam at
an angle to a longitudinal axis of the main beam, and the
stabilizer arms have a combined longitudinal length that is less
than the longitudinal length of the main beam', and
at least one guy attachment point on each of the first and
second stabilizer arms.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Gustafsson et al. ("Gustafsson") US 5,531,419
Saunders
Santoro
Karp et al. ("Karp")
Mau et al. ("Mau")
US 6,425,558 B1
US 2008/0135713 Al
US 2009/0107946 Al
US 2011/0079568 Al
July 2, 1996
July 30, 2002
June 12, 2008
Apr. 30, 2009
Apr. 7,2011
Rejections on Appeal3
Rl. Claims 1—4, 6, 10-16, and 19-21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Mau,
Gustafsson, and Saunders. Non-Final Act. 4.
R2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Mau, Gustafsson, Saunders and Karp.
Non-Final Act. 13.
R3. Claims 1, 9, 13, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Santoro. Non-Final Act. 14.
CFAIM GROUPING
Based on Appellants' arguments (Br. 5—13), we decide the appeal of
obviousness Rejection Rl of claims 1—4, 6, 10, and 11 on the basis of
representative claim 1; we decide the appeal of obviousness Rejection Rl of
separately argued claim 12, infra', and we decide the appeal of obviousness
3 We note the Examiner has withdrawn the rejection of clam 3 under pre-
AIA 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 2.
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Rejection R1 of claims 13—16, 19, and 21 on the basis of representative
claim 13.
Further, we decide the appeal of obviousness Rejection R3 of
claims 1,9, 13, and 19 on the basis of illustrative claim 1.
Remaining claim 5 in Rejection R2, not argued separately, stands or
falls with independent claim 1 from which it depends.4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to Rejection R3 of claims 1, 9, 13, and 19 for the specific reasons
discussed below. However, we disagree with Appellants' arguments with
respect to Rejections R1 and R2 of claims 1—6, 10-16, and 19—21 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 13/768,616
and address specific findings and arguments regarding claims 1,12, and 13
for emphasis as follows.
1. $103 Rejection R1 of Claims 1—4, 6, 10, and 11
Issue 1
Appellants argue (Br. 5—7) the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as being obvious over the combination of Mau,
Gustafsson, and Saunders is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] base beam used to support a self-propelled derrick rig" that
includes, inter alia, "a longitudinally extending metal main beam having a
. . . substantially planar [bottom]" as recited in claim 1?
Analysis
"In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Absent an express intent to
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Application 13/768,616
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
Appellants "describe^ its base beam as an improved base beam" and
contend the phrase "base beam" is defined in the Specification as "a heavy,
portable structure that is intended to be placed on the ground during use."
App. Br. 5 (citing Spec. 1,1. 28 to 2,1. 2)(emphasis added). "As a result, the
meaning of the term 'base beam' as used in the claims must be defined in
terms of the definition provided in Appellant's specification, namely a
heavy, portable structure that is placed on the ground during use." App.
Br. 5-6.
We find Appellants reliance upon a purported definition of "base
beam" in the Specification (App. Br. 5) is misplaced, because the
Specification instead discloses, as a discussion of conventional, prior art
solutions in the Background section:
Solutions have been sought to solve the problem of a
workover rig not being able to be supported by permanent
anchors. One solution has been to utilize one or more base
beams that are heavy, portable structures placed on the ground
and to which the workover rig is guyed. Existing base beams
have a relatively small footprint as well as set locations with
which to attach guy wires, which makes set-up easier and faster.
Spec. 1,1. 27—2,1. 3. On this record, we do not find this background
discussion of the prior art qualifies as an express, limiting, or art-recognized
definition of the phrase "base beam." Moreover, lacking an explicit
definition of "base beam" in the Specification, the Examiner finds:
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Application 13/768,616
[T]he specification is consistent to describe the intended
function of how the base beam is used. However, the
specification does not set forth any special meaning of the base
beam. Therefore, the Examiner has broadly and reasonably
interpreted the term "base beam" as "a long piece of material
for use as rigid member or parts of structures or machines"
serving as a base see i.e. http://www.dictionary.com/browse/
beam. Additionally, it should be noted that the base beam (56)
of Mau is placed on the ground by virtue of wheels.
Ans. 3. We agree with the Examiner's broad but reasonable interpretation of
the phrase "base beam," and note the claim is silent regarding the base beam
necessarily being in direct contact with or arranged on the ground, as argued
by Appellants. App. Br. 5; see also Ans. 5.5
Even assuming, arguendo, our reviewing court were to more narrowly
construe the phrase "base beam" as Appellants urge, we note with respect to
the statement of intended use in the preamble, i.e., "[a] base beam used to
support a self-propelled derrick rig," our reviewing court holds, "[generally
. . . the preamble does not limit the claims." Allen Eng'g Corp. v. Bartell
Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Nonetheless, the
preamble may be construed as limiting "if it recites essential structure or
steps, or if it is 'necessary to give life, meaning, and vitality' to the claim."
Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808
(Fed.Cir.2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed.Cir.1999). A preamble is not regarded as limiting,
however, "when the claim body describes a structurally complete invention
5 The importation of a narrow embodiment into the broader independent
claim 1 is improper. See SuperGuide Corp. v. DirecTV Enters., Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) ("For example, a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment.").
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Application 13/768,616
such that deletion of the preamble phrase does not affect the structure or
steps of the claimed invention." Catalina, 289 F.3d at 809. Furthermore,
the preamble has no separate limiting effect if, for example, "the preamble
merely gives a descriptive name to the set of limitations in the body of the
claim that completely set forth the invention." IMS Tech., Inc. v. Haas
Automation, Inc., 206 F.3d 1422, 1434-35 (Fed.Cir.2000). See also Am.
Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010.)
In this case, and on this record, we find the limitations in the claim
body recite a structurally complete invention without consideration of the
preamble which we also find, under the broadest reasonable interpretation,
does not recite structure essential to claiming a complete invention.
With respect to the Appellants' contention the cited prior art
combination does not teach or suggest the claimed "longitudinally extending
metal main beam having ... [a] bottom [that] is substantially planar,"
Appellants further allege:
[T]here is simply not enough disclosure in Mau to
conclude that the bottom of the intermediate section 68 in Mau
is planar. None of the drawing views in Mau appear to provide
a clear view of the bottom of the intermediate section 68 to
allow one to conclude that the bottom is substantially planar.
App. Br. 7.
We agree with the Examiner's finding that Mau teaches or suggests
the contested limitation. See Non-Final Act, 4 (citing Mau ]Hf 68, 76). We
agree with the Examiner because Figure 5C and paragraph 35 of Mau clearly
disclose intermediate section 68, which is part of carrier bumper 64, is
substantially planar on the bottom surface thereof, as seen in the elevation
view below:
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‘•is'* A
Annotated FIG. 5C is an enlarged bottom view of the carrier bumper and
rear outrigger brace frame of the guy less service rig of FIG. 2 A.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2—4, 6, 10, and 11 which fall therewith. See
Claim Grouping, supra.
2. $103 Rejection R1 of Claim 12
Issue 2
Appellants argue (Br. 8—9) the Examiner's rejection of claim 12 under
35 U.S.C. § 103(a) as being obvious over the combination of Mau,
Gustafsson, and Saunders is in error. These contentions present us with the
following issue:
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Application 13/768,616
Did the Examiner err in finding the cited prior art combination teaches
or suggests the base beam of claim 1, wherein "the combined length of the
first and second swing arms is less than the longitudinal length of the main
beam," as recited in claim 12?
Analysis
Appellants contend "[i]n Mau, the arms 160 are clearly sized such that
the combined length of the arms 160 greatly exceeds the length of the
bumper 64 and the intermediate portion 68 of the bumper." App. Br. 8.
Further, "[t]he combined length of the legs in Gustafsson either is or is not
less than the length of the base 10. It is beyond doubt that in Gustafsson the
combined length of the two legs 16 clearly is greater than the length of the
base 10." Id.
Appellants further argue Saunders is non-analogous art, "and there is
no reason why a person of ordinary skill in the art, given the teachings of
Mau and Gustafsson, would look to Saunders." Id. Appellants allege
Saunders is non-analogous art to the claimed invention because "Saunders is
not directed to a base beam used to support a self-propelled derrick rig.
Therefore, Saunders is not directed to the same field of endeavor as
claim 12." App. Br. 9. Along these lines, Appellants additionally contend:
Saunders is not from the same field of endeavor, and is
directed to a problem that is not reasonably pertinent to the
claimed invention. As a result, there is no reason why a person
of ordinary skill in the art, given Mau and Gustafsson, would
turn to Saunders. The only reason for such a modification
comes solely from Appellant's disclosure which is
impermissible hindsight.
Id.
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In response to Appellants' contentions, the Examiner finds:
Alternatively, Saunders teaches the combined length of the
swing arms (Saunders; 15a, 15c) is less than the length of the
main beam (Saunders; 11a). Providing swing arms having
combined length less than the length of the main element is old
and well known in the art as evidenced by Gustafsson and
Saunders.
Ans. 8.6
Upon inspection of Saunders Figures 1 and 2, we agree with the
Examiner's findings that the combined length of Saunders swing arms (15a,
15c) is less than Saunders' main beam length (11a), thus teaching or at least
suggesting the contested limitation.
With respect to Appellants' argument that Saunders is non-analogous
art, our reviewing court held "[t]wo separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved." In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
"In this case, Saunders is analogous because it is from a similar
problem solving area i.e. providing a supporting structure having swingable
arms." Ans. 10—11. We agree with the Examiner's finding, and note
6 We do not it necessary to adopt the Examiner's findings regarding the
combined length of Gustafsson's supporting legs 16 compared to main
beam 15 (Ans. 7—8) to affirm the rejection because we find Saunders
provides the requisite teaching of the contested limitation as set forth as an
alternative by the Examiner. Ans. 8.
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Appellants have not rebutted the Examiner's specific findings in this regard
by filing a Reply Brief.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 12, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of dependent
claim 12.
3. $ 103 Rejection R1 of Claims 13—16, 19, and 21
Issue 3
Appellants argue (Br. 5—7) the Examiner's rejection of claim 13 under
35 U.S.C. § 103(a) as being obvious over the combination of Mau,
Gustafsson, and Saunders is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] base beam that in use is disposed on the ground and that
supports a derrick structure of a self-propelled derrick rig, the base beam is a
structure that is physically separate from the self-propelled derrick rig" that
includes, inter alia, "a longitudinally extending metal main beam having . . .
a bottom [that] is substantially planar," and "first and second stabilizer arms
. . . hav[ing] a combined longitudinal length that is less than the longitudinal
length of the main beam," as recited in claim 13?
Analysis
Appellants contend, similar to Rejection R1 of claim 1, Issue 1, supra,
the reference combination does not teach or suggest a base beam, a planar
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bottom, or a combined length of stabilizer arms that is less than the length of
the main beam, as recited. For the same reasons as in Issue 1, we are not
persuaded the Examiner erred.
In addition, Appellants contend the base beam of Mau is further
distinguishable from the claimed invention because it is not "a structure that
is physically separate from the self-propelled derrick rig," as recited in
claim 13.
In response, the Examiner finds:
The Examiner asserts that the invention as presently
claimed in claim 13 requires the base beam to be a structure that
is physically separate from the self-propelled derrick rig. As
noted by the Applicant the invention of Mau is part of the
vehicle and not the part of the derrick rig. I.e., Fig. 3 of Mau
clearly discloses the base beam (56) or main beam (68 and/or
76) as being part of the vehicle and the derrick rig (i.e. 120) is
the separate structure that is separately connected to the base
beam and the main beam via points (102). Additionally, it is
noted that the recitation occurs in the preamble.
App. Br. 12.
We agree with the Examiner's finding for the reasons quoted above
that Mau teaches or suggests "the base beam is a structure that is physically
separate from the self-propelled derrick rig" as recited in claim 13.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 13, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
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claim 13, and grouped claims 14—16, 19, and 21 which fall therewith. See
Claim Grouping, supra.
4. $103 Rejection R3 of Claims 1,9, 13, and 19
Issue 4
Appellants argue (Br. 10—13) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over Santoro is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] base beam used to support a self-propelled derrick rig" that
includes, inter alia, the limitation of "at least one guy attachment point on
each of the first and second swing arms," as recited in claim 1?
Analysis
Appellants contend, "Santoro does not teach or suggest at least one
guy attachment point on each of the legs 30. The rejection simply asserts
that any point on the top of the legs 30 can be a guy attachment point.
However, the top surfaces of the legs 30 are smooth without any structure
suitable for attaching a guy wire." App. Br. 11,7
The Examiner cites to Santoro "any reference point on top surface of
the arms SI" as teaching or suggesting "at least one guy attachment point on
each of the first and second swing arms," as recited. We disagree with the
Examiner's finding in this regard.
7 Appellants make further arguments (App. Br. 10—12), but we find this
issue to be dispositive to Rejection R3 of claims 1 and 13.
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"A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art." In re Bell, 991 F.2d 781, 783
(Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA
1976))(emphasis added).
On this record, as argued by Appellants, and contrary to the
Examiner's findings, we do not see where the prior art combination teaches
or suggests a guy attachment point in the cited portions (App. Br. 11). Thus,
we reverse the Examiner's rejection of independent claim 1, and also the
rejection of independent claiml3, which recites the disputed limitation in
commensurate form. For the same reasons, we also reverse the rejections of
claims 9 and 19 that depend from claims 1 and 13.
5. Rejection R2 of Claim 5
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claim 5 under § 103, we sustain the
Examiner's rejection of this claim. Arguments not made are waived.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
and R2 of claims 1—6, 10-16, and 19-21 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections.
The Examiner erred with respect to obviousness Rejection R3 of
claims 1,9, 13, and 19 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we do not sustain the rejection.
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DECISION
We affirm the Examiner's decision rejecting claims 1—6, 10—16,
and 19-21.
We reverse the Examiner's decision rejecting claim 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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