Ex Parte Holst et al

Patent Trial and Appeal Board

Dec 4, 2018

14639842 (P.T.A.B. Dec. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/639,842 03/05/2015
57600 7590 12/06/2018
HOLLAND & HART
222 South Main Street, Suite 2200
P.O. Box 11583
Salt Lake City, UT 84110
FIRST NAMED INVENTOR
Katherine J. Holst
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
59310.0021 1032
EXAMINER
KATCHEVES, BASILS
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
12/06/2018 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):
PA TENTDOCKET@HOLLANDHART.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHERINE J. HOLST, MICHAEL F. JONES,
TYSON ANDREW SPRINGER,
KRISTOPHER LANDON MURRAY BUTLER,
BRADLEY JAMES SCHROEDER, and CHRISTOPHER MEDLAND
Appeal2018-000724
Application 14/639,842 1
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
SEAN P. O'HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Katherine J. Holst et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision in the Final Office Action (dated
Nov. 21, 2016, hereinafter "Final Act.") rejecting claims 1-7 and 21. 2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 Patterson-UTI Drilling Company LLC is the applicant and is identified as
the real party in interest in Appellants' Appeal Brief (filed May 22, 2017,
hereinafter "Appeal Br."). Appeal Br. 2.
2 Claims 8-20 are cancelled. See Appeal Br. 25 (Claims App.).
Appeal2018-000724
Application 14/639,842
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION pursuant
to our authority under 37 C.F.R. § 4I.50(b).
INVENTION
Appellants' invention relates to a transportable unit for a drill rig
having a mast transport skid that is incorporated into the drill rig. Spec.
para. 25.
Claims 1 and 5 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A transportable unit forming a portion of a drill rig, the
transportable unit, comprising:
a mast transport skid of the transportable unit;
a drill rig mast of the transportable unit pivotally
attached to the mast transport skid;
a cylinder of the transportable unit with a first cylinder
end attached to the mast transport skid and a second cylinder
end attached to the drill rig mast;
the mast transport skid having a pivot connector attached
to a first mast leg of the drill rig mast;
the mast transport skid also comprising a support
connector to attach to a second mast leg support of the drill rig
mast; and
the mast transport skid also comprising a substructure
connector to attach to a substructure of the drill rig;
wherein the mast transport skid, the drill rig mast, and the
cylinder are connected as a single unit during transport.
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Application 14/639,842
REJECTIONS
I. The Examiner rejects claims 1, 4--7, and 21 under 35 U.S.C.
§ 102( a)( 1) as being anticipated by Trevithick et al. (WO
2012/092147 A2, pub. July 5, 2012 (hereinafter "Trevithick")).
II. The Examiner rejects claims 2 and 3 under 35 U.S.C. § 103 as being
unpatentable over Trevithick.
ANALYSIS
Rejection I
Claims 1, 4, and 21
Independent claim 1 requires, inter alia, a "mast transport skid also
comprising a support connector to attach to a second mast leg support of the
drill rig mast." Appeal Br. 24 (Claims App.) (emphasis added).
The Examiner finds that Trevithick discloses a transportable unit
including, inter alia, a drill rig mast 220 and a mast transport skid 310
having "a second connector 334" for attaching mast transport skid 310 to a
second leg of mast 220. See Final Act. 2-3 (citing Trevithick, Figs. 13, 17).
Appellants argue that the Examiner has "fail[ ed] to identify an
element in Trevithick that corresponds to the support connector" of claim 1.
Appeal Br. 10.
In the Examiner's Answer (dated Aug. 25, 2017, hereinafter "Ans.")
the Examiner responds that "the [O]ffice [ A ]ction recites a second connector
334 which is attached to the second mast leg (leg on other side of first)."
Ans. 3. Thus, the Examiner takes the position that element 334 of
Trevithick constitutes the claimed support connector because "there are no
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Application 14/639,842
structural limitations to this connector" and "it includes connection eyelets
and already connects an item." Id.
The disclosure of Trevithick does not support the Examiner's finding
that element 334 of Trevithick constitutes the claimed support connector.
See Final Act. 3. As noted above, the Examiner finds that Trevithick' s base
box 310 constitutes the claimed mast transport skid and drill floor 330
constitutes a substructure. Id. at 2-3. We appreciate that element 334 of
Trevithick appears to include "connection eyelets," "for receiving shoe
connectors 236 of front legs 232 and rear legs 234, respectively," of mast
220. Trevithick, para. 92, Figs. 5, 13. However, as further depicted in
Figure 5 of Trevithick, element 334 (rear shoe )3 is positioned on element
330 (drilling floor), which the Examiner finds to be a substructure, and not
on mast transport skid 310 (base box), as required by claim 1. See id.
As such, Trevithick's element 334 (rear shoe) does not constitute a
"support connector," as called for by claim 1. Accordingly, because
Trevithick does not disclose at least one limitation of independent claim 1,
we do not sustain the rejection of claims 1, 4, and 21 under§ 102(a)(l) as
anticipated by Trevithick.
Claims 5-7
We also do not sustain Examiner's rejection of claims 5-7 under 35
U.S.C. § 102(a)(l). For the reasons expressed below, independent claim 5
and dependent claims 6 and 7 are indefinite. Therefore, the prior art
rejection must fail because it is necessarily based on speculative assumptions
3 Parenthetical nomenclature refers to Trevithick.
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Application 14/639,842
as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63
( CCP A 1962 ). 4 It should be understood, however, that our decision in this
regard is proforma and based solely on the indefiniteness of the claimed
subject matter, and does not reflect on the adequacy of the prior art evidence
applied in support of the rejections.
Re} ection II
The Examiner's modification of Trevithick' s transportable drilling rig
system does not remedy the deficiency of Trevithick discussed supra. See
Final Act. 4.
Therefore, for the same reasons discussed above, we likewise do not
sustain the rejection under 35 U.S.C. § 103 of claims 2 and 3 as unpatentable
over Trevithick.
NEW GROUND OF REJECTION
Claims 5-7 are rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the invention which
applicant regards as the invention.
Independent claim 5 recites "wherein the skid, the drill rig mast, and
the cylinder are connected as a single unit during transport." As the phrase
"the cylinder" is not recited anywhere else in the claim, it lacks antecedent
basis and, furthermore, it is not clear whether "the cylinder" constitutes an
4 See also In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011) ("because 'a
claim cannot be both indefinite and anticipated,' ... this court does not
reach the ground relied on by the Board-that claims 11 and 21 are
unpatentable as anticipated in view of Yang.").
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Application 14/639,842
element of the claimed "transportable unit" or is a separate element that is
connected with the skid and the drill rig mast only during transport.
Hence, claim 5 "do[es] not define the invention (i.e., the subject
matter which the applicant regards as his invention) with a reasonable degree
of particularity." In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970).
Accordingly, the phrase "the cylinder" as used in claim 5, lacks sufficient
precision so that one endeavoring to practice the invention could not
determine the metes and bounds thereof.
The limitation in claim 6 of "a first end of a cylinder" and the
limitation in claim 7 of "a cylinder with a first cylinder end" are indefinite
because it is not clear whether they refer to the cylinder recited in
independent claim 5, from which these claims depend, or they refer to a
separate and distinct cylinder. See Appeal Br. 25 ( emphasis added).
SUMMARY
The Examiner's decision to reject claims 1-7 and 21 under 35 U.S.C.
§ § 102 and 103 is reversed.
We enter a new ground of rejection of claims 5-7 under 35 U.S.C.
§ 112(b) as being indefinite.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b ). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides ( emphasis added):
When the Board enters such a non-final decision, the
appellant, within two months from the date of the
decision, must exercise one of the following two options
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Application 14/639,842
with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the [E]xaminer, in which event
the prosecution will be remanded to the [E]xaminer. The
new ground of rejection is binding upon the examiner
unless an amendment or new Evidence not previously of
Record is made which, in the opinion of the [E]xaminer,
overcomes the new ground of rejection designated in the
decision. Should the [E]xaminer reject the claims,
appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding
be reheard under§ 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01 (9th ed.
2018).
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).
REVERSED; 37 C.F.R. § 4I.50(b)
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