Ex Parte Glenn et al

Patent Trial and Appeal Board

Jun 11, 2013

11182259 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT GLENN, LARS R. HALVORSEN, and
KIRBY JON WALKER
____________

Appeal 2011-004582
Application 11/182,259
Technology Center 3600
____________

Before LINDA E. HORNER, BRETT C. MARTIN, and NEIL A. SMITH,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Scott Glenn et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1, 7-9, 17-21, and 29-31.
Claims 2-6, 10-16, 23, and 25 are canceled, and claims 22, 24, 26-28, and
Appeal 2011-004582
Application 11/182,259

2
32-34 are withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ claimed invention relates to a system of facilitating
completion of well-related projects using modules comprising equipment
used for various procedures in well projects loaded on a support vehicle,
such as a crane truck. Spec., para. [0003]. “Modules for a given procedure
can be interchanged to enable performance of the specific procedure, thereby
eliminating the need for a separate vehicle and crew dedicated to each
procedure.” Id. Claims 1 and 17 are independent. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A well support vehicle system, comprising:
a modular crane truck having a chassis, a crane mounted
on the chassis;
a pair of docking units supported by the chassis to
interchangeably receive modules related to well procedures;
and
a cement bulk module, a wire line module, and an acid
bulk module, each module being mountable to one docking unit
of the pair of docking units.
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1, 7, 9, 17-21, and 29-31 under 35 U.S.C. § 103(a) as
unpatentable over Jacob (US 6,547,506 B1; iss. Apr. 15, 2003); and
Appeal 2011-004582
Application 11/182,259

3
2. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Jacob and
McLoughlin (US 5,467,827; iss. Nov. 21, 1995).
The Final Office Action, from which this appeal is taken, includes a
provisional obviousness-type double patenting rejection of claims 1, 7-9, 17-
21, and 29-31 as unpatentable over claims 1, 3-10, 13-18, 21, 22, and 25-28
of Application 11/132,568. Final Office Action 3, dated Apr. 1, 2010. Since
the date of the Final Office Action, the claims of the ‘568 application have
been canceled, new claims have been added, and the ‘568 application has
issued as US 8,137,051. Appellants do not present arguments in the Appeal
Brief concerning this rejection. App. Br. 9. The Examiner has not altered
the rejection in light of the canceled claims. We decline to reach this
provisional rejection because the claims originally considered by the
Examiner at the time of the rejection have been canceled, and we have no
analysis by the Examiner as to whether the issued claims of the ‘051 patent
raise an obviousness-type double patenting issue.
ISSUES
Appellants argue the claims subject to the first ground of rejection
(claims 1, 7, 9, 17-21, and 29-31) as a group. App. Br. 10-14. We select
claim 1 as representative, and claims 7, 9, 17-21, and 29-31 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants assert that the field of endeavor relates to “a well support
and completion vehicle for use in the oil and gas exploration and production
industry” and that one of skill in the art would not look to Jacob or
McLoughlin for teachings in the field of well completion. App. Br. 14-15.
Appeal 2011-004582
Application 11/182,259

4
The Examiner responded that “both the Jacob and McLoughlin references
are in the same field of endeavor as the instant application, namely multi-
module trucks. The applicant does not claim to have invented the individual
modules, rather the claims are directed to a modular crane truck.” Ans. 8.
Appellants further argue that because Jacob does not describe a well support
vehicle system, a system for completing wells, or the claimed modules
related to well procedures, the claimed invention would not have been
obvious to one of ordinary skill in the art. App. Br. 10-14.
The issues presented by this appeal are:
Are Jacob and McLoughlin analogous art?
Would the claimed well support vehicle system have been obvious to
one of ordinary skill in the art at the time of the invention in light of the
teachings of Jacob?
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. The Specification describes that well projects may require numerous
types of equipment for different well procedures, “[t]ypically, each
type of equipment is mounted on its own vehicle or set of vehicles and
operated by a crew dedicated to that particular type of equipment,”
each vehicle and crew must have sufficient room at the well site to
access the well, and “downtime can occur while waiting for the arrival
of crews to handle specific procedures in a desired sequence during
the well construction project.” Spec., paras. [0001]-[0002].
Appeal 2011-004582
Application 11/182,259

5
2. The Specification describes that “[a] modular well construction
approach is utilized to provide flexibility that enables a reduction in
the amount of equipment and number of crews, thus creating greater
efficiency in well projects.” Spec, para. [0003]; see id. (“Modules for
a given procedure can be interchanged to enable performance of the
specific procedure, thereby eliminating the need for a separate vehicle
and crew dedicated to each procedure.”).
3. The Specification describes that “[t]he equipment used for various
procedures in well projects is constructed in modules that can be
loaded on a support vehicle, such as a crane truck.” Spec.,
para. [0003].
4. Jacob relates to “a multi-task truck that can be configured with
various combinations of features and capabilities so that
municipalities and other users of the truck can achieve economic and
operational efficiencies.” Jacob, col. 1, ll. 7-10.
5. Jacob discloses using a “multi-purpose crane assembly” to load
removable containers into compartments on the multi-task truck. Id.
at col. 2, ll. 15, 51-52; fig. 1.
6. Jacob discloses a modular system for use with a truck that “allows
municipalities or other users to make better use of their investment in
the multi-task truck.” Id. at col. 3, ll. 32-33.
7. While Jacob discloses a truck intended for use by municipalities for
maintaining and cleaning municipal water facilities, garbage
collection, snow removal, etc., Jacob discloses that the truck “can be
Appeal 2011-004582
Application 11/182,259

6
adapted for many other uses, such as cleaning and maintaining
petroleum transportation and distilling equipment.” Id. at col. 4,
ll. 1-3.
8. Jacob teaches that “[b]ecause the present truck can handle multiple
tasks, it is not necessary to provide separate trucks, with separate
crews, for a single project, thus resulting in economies of equipment
and manpower.” Id. at col. 4, ll. 4-7.
9. McLoughlin discloses that firefighting companies may own many
different fire trucks, each being reserved for a particular type of fire or
smaller companies may own one or just a few multi-purpose vehicles
outfitted to be used in any situation. McLoughlin, col. 1, ll. 28-33.
10. McLoughlin relates to “firefighting vehicles having a number of
removable modules which are interchangeable for different
applications.” Id. at col. 1, ll. 10-13.
11. McLoughlin discloses a truck 10 with a rear hoist 16 “which can be
used to lift modules on and off the truck bed 14.” Id. at col. 4, ll. 35-
42.
ANALYSIS
Analogous Art
At the outset, we address Appellants’ argument that neither Jacob nor
McLoughlin1 is analogous art. App. Br. 14-15. “The analogous-art test
requires that the Board show that a reference is either in the field of the

1 McLoughlin is relied upon by the Examiner only in the rejection of
dependent claim 8.
Appeal 2011-004582
Application 11/182,259

7
applicant’s endeavor or is reasonably pertinent to the problem with which
the inventor was concerned in order to rely on that reference as a basis for
rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). Appellants’ arguments as to
Jacob and McLoughlin address only the first part of this test, and for this
reason alone, fail to demonstrate that the references relied upon are not
analogous to the claimed subject matter. Nonetheless, we address each part
of the test infra.
The “field of endeavor” test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
the art because of the similarity to the structure and function of the claimed
invention as disclosed in the application. In re Bigio, 381 F.3d 1320, 1325-
27 (Fed. Cir. 2004). The claimed system and the systems of Jacob and
McLoughlin are each systems for performing multiple tasks with a single
truck having docking units and a crane and using modules containing
equipment and supplies necessary for the intended tasks. Facts 3-5, 10, 11.
As such, we find that the structure of the systems of Jacob and McLoughlin,
i.e., a truck having docking units and a crane, and modules, and the function
of these systems, i.e., for performing multiple tasks with a single truck, are
such that they would be considered by a person of ordinary skill in the art
because of the similarity to the structure of the claimed system, i.e., a truck
having docking units and a crane, and modules, and the function, i.e., to
perform multiple tasks with a single truck.
Appeal 2011-004582
Application 11/182,259

8
Appellants assert that Jacob “is directed to a utility truck for
municipal uses, while the current application is directed to a well support
and completion vehicle for use in the oil and gas exploration and production
industry.” App. Br. 14. While Jacob discloses a truck adapted for municipal
uses, Jacob suggests that such a multi-task truck could be adapted for use in
the petroleum industry. Fact 7. As such, contrary to Appellants’ assertion,
Jacob’s truck is not limited to municipal uses.
Appellants assert that McLoughlin “is drawn to a firefighting truck for
municipal uses, while the current application is directed to a well support
and completion vehicle for use in the oil and gas exploration and production
industry.” App. Br. 15. Appellants have not persuasively explained how the
intended environment in which Appellants’ truck is to be used distinguishes
the structure and function of the claimed system, as discussed infra, when
compared to the structure and function of McLoughlin’s system such that
McLoughlin is not in the same field of endeavor. In other words, because
both systems relate to multi-purpose crane trucks that use interchangeable
equipment modules, the structures and functions are in the same field of
endeavor.
Even if one were to find that Jacob and/or McLoughlin are not in the
field of Appellants’ endeavor, these references are reasonably pertinent to
the problem with which Appellants were concerned. “A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, it is one which, because of the matter with which
Appeal 2011-004582
Application 11/182,259

9
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
The problem facing Appellants was the room required and downtime
incurred from using different vehicles for each piece of equipment at the
well site and from each truck being operated by different crews. Fact 1.
Jacob teaches that a multi-task crane truck and interchangeable modules can
be used to avoid the need to provide separate trucks with separate crews for
a single project. Fact 8. McLoughlin likewise teaches using a crane truck
with interchangeable modules to provide a multi-purpose vehicle for
different applications. Facts 9-10. As such, both Jacob and McLoughlin are
directly related to the problem facing Appellants and logically would have
commended themselves to Appellants’ attention in considering Appellants’
problem, and thus are analogous art.
Obviousness
The Examiner found:
Jacob fails to disclose the modules are explicitly for well
completing procedures, and that the last of the three modules is
a wireline module that has a wireline winch and a wireline;
however, it would have been obvious to someone having
ordinary skill in the art to use known modules on the truck
depending on the intended use.
Ans. 5.
We agree that Jacob does not disclose the modules are for well
completing procedures. However, while Jacob does not disclose a well
support vehicle system, it does disclose a modular system for a multi-task
truck to allow the truck to be used to perform multiple tasks, so that it is not
Appeal 2011-004582
Application 11/182,259

10
necessary to provide separate trucks with separate crews for a single project.
Facts 4-8. Jacob teaches that such a system provides for economies of
equipment and manpower. Fact 8.
The Specification describes that it was conventional in the art to
mount different types of known well-related equipment on its own vehicle or
set of vehicles and operated by a crew dedicated to that particular type of
equipment. Fact 1. The Specification acknowledges that a known problem
in the art was the downtime that occurs while waiting for the arrival of each
vehicle type and corresponding crew to complete the next procedure at the
well. Fact 1. The Specification also acknowledges that another known
problem in the art was the room required around the wellhead to
accommodate the number and size of equipment required for a given project.
Fact 1.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
One of ordinary skill in the art, facing the problems and needs known
in the well construction industry, would have recognized that the technique
Appeal 2011-004582
Application 11/182,259

11
disclosed in Jacob of creating a multi-task truck to perform multiple tasks
without a need for separate trucks with separate crews would improve well
support systems in the same way. As such, the use of a multi-task truck, as
disclosed in Jacob, for well support, using modules comprising conventional
well-related equipment, is nothing more than the predictable use of prior art
elements according to their established functions.
Appellants argue that the Examiner erred in failing to give patentable
weight to the preamble. App. Br. 10-12. Even giving weight to the
preamble, however, we nonetheless determine that given the known
problems in the well construction art discussed supra and the fact that the
modules specifically recited in claim 1 are all conventional well-related
equipment, the use of a multi-task crane truck with docking units and
modules would have been a predictable solution to the known problem in
light of the teachings of Jacob.
Appellants also argue that the Examiner erred in finding that Jacob
discloses a wireline module. App. Br. 12-13. These arguments are not
persuasive because the Examiner does not rely on Jacob as disclosing a
wireline module. See Ans. 5 (“Jacob fails to disclose . . . that the last of the
three modules is a wireline module that has a wireline winch and wireline.”).
Rather, the Examiner’s rejection is based on the fact that wireline modules
were known well-related equipment and that it would have been obvious in
light of the teaching of a multi-task truck in Jacob, to adapt such a truck to
perform well-related tasks, as a simple substitution of one known
Appeal 2011-004582
Application 11/182,259

12
construction module for another. Ans. 7. We find this reasoning to be based
on rational underpinnings.
Appellants assert that Jacob does not disclose an acid bulk module
and the inclusion of such a module on the truck of Jacob would render the
truck unsuitable for its intended purpose of municipal utility maintenance
and repair. App. Br. 14. The Examiner interpreted “acid bulk module” as “a
bulk container capable of holding an acid of whatever Ph [sic, pH]” and
found that the modules in Jacob are capable of holding an acid. Ans. 8. As
to the first point, the Specification does not define “acid bulk module.”2
Appellants have not provided us with a definition different from that
provided by the Examiner, and the Examiner’s definition is reasonable in
light of the plain meaning of the claim language when read in view of the
Specification. As to the second point, the Examiner made a finding that
Jacob’s module is capable of holding an acid. Appellants’ argument that
modifying Jacob’s truck to hold acid would render it unsuitable for
municipal uses is not persuasive in light of the fact that Jacob teaches that its
truck can be adapted for use in other environments, including use in the
petroleum field. Fact 7.
Appellants further argue that modifying existing dedicated trucks with
removable modules and cranes would “introduce more complexity to the
system and add extra expenses to the manufacture or maintenance of the

2 The Specification describes that “[i]n the example illustrated, module 38
comprises an acid bulk module having an acid tank 68 for holding acid that
is used in acid treatment procedures within well 22.” Spec., para. [0024].
Appeal 2011-004582
Application 11/182,259

13
truck” and “may cause practical issues such as exceeding the weight limit
authorized by the Department of Transportation.” Reply Br. 9. This
attorney argument is not supported by objective evidence, and without
evidence, we are not persuaded that using a crane truck with removable
modules would be more expensive than using multiple dedicated trucks for
each piece of equipment. “Attorney’s argument in a brief cannot take the
place of evidence.” In re Pearson, 494 F.3d 1399, 1405 (CCPA 1974)
(citation omitted). In fact, Jacob teaches the opposite, viz, that a multi-task
crane truck creates efficiencies and is more economical than using dedicated
trucks and crews. Fact 8. For these reasons, we agree with the Examiner’s
conclusion that the subject matter of claim 1 would have been obvious to
one of ordinary skill in the art at the time of the invention in light of the
teachings of Jacob and the knowledge of one of ordinary skill in the art.
As to claim 8, which is subject to the second ground of rejection,
Appellants argue that “at least for the reasons stated above with respect to
claim 1, claim 8 is non-obvious in view of Jacob and McLoughlin” and
further argue that McLoughlin is not analogous art. App. Br. 15. We find
these arguments not persuasive for the reasons discussed supra.
CONCLUSIONS
Jacob and McLoughlin are analogous art.
The claimed well support vehicle system would have been obvious to
one of ordinary skill in the art at the time of the invention in light of the
teachings of Jacob.
Appeal 2011-004582
Application 11/182,259

14
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 7-9, 17-
21, and 29-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

mls