Ex Parte Buckingham et alDownload PDFPatent Trial and Appeal BoardSep 6, 201713768616 (P.T.A.B. Sep. 6, 2017) Copy Citation 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. 2 Appeal 2017-004555 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. 3 Appeal 2017-004555 Application 13/768,616 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. 4 Appeal 2017-004555 Application 13/768,616 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). 5 Appeal 2017-004555 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 6 Appeal 2017-004555 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: 7 Appeal 2017-004555 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."). 8 Appeal 2017-004555 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: 9 Appeal 2017-004555 Application 13/768,616 ‘•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: 10 Appeal 2017-004555 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. 11 Appeal 2017-004555 Application 13/768,616 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. 12 Appeal 2017-004555 Application 13/768,616 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 13 Appeal 2017-004555 Application 13/768,616 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 14 Appeal 2017-004555 Application 13/768,616 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. 15 Appeal 2017-004555 Application 13/768,616 "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. 16 Appeal 2017-004555 Application 13/768,616 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 17 Copy with citationCopy as parenthetical citation