Ex Parte Payne et al

Board of Patent Appeals and Interferences

May 16, 2012

10617975 (B.P.A.I. May. 16, 2012)

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.
10/617,975 07/12/2003 David R. Payne 2380-561 4897
28839 7590 05/16/2012
Tomlinson Rust McKinstry Grable
Two Leadership Square
211 North Robinson, Suite 450
Oklahoma City, OK 73102
EXAMINER
ADDIE, RAYMOND W
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
05/16/2012 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
____________________

Ex parte DAVID R. PAYNE, GERALD A. STANGL,
NORMAN E. STEVENS JR., and MICHAEL F. GARD
____________________

Appeal 2009-014218
Application 10/617,975
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, JAMES P. CALVE, and BENJAMIN
WOOD, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
4-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2009-014218
Application 10/617,975
2
THE INVENTION
The claims are directed to a system and method for automatically
drilling and backreaming horizontal underground boreholes. Independent
claim 4, reproduced below, is demonstrative of the claimed subject matter:
4. A method for backreaming a horizontal borehole, the
method comprising:
automatically rotating and pulling a drill string having a
backreamer through the horizontal borehole;
automatically reducing a length of the drill string;
automatically reducing a rate of pullback if a rotation
pressure on the drill string is greater than a predetermined limit;
and
automatically reducing the rate of pullback if a rotation
speed of the drill string is less than a predetermined limit.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bischel
Hesse
Alft
US 5,746,278
US 5,833,015
US 6,308,787 B1
May 5, 1998
Nov. 10, 1998
Oct. 30, 2001

REJECTIONS
Claims 4-6 and 12 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Hesse and Alft. Ans. 3.
Claims 7-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hess, Alft, and Bischel. Ans. 5.

Appeal 2009-014218
Application 10/617,975
3
ANALYSIS
Claims 4-6 and 12—Obviousness—Hesse, Alft
Appellants argue claims 4-6 and 12 as a group. App. Br. 3-8. We
select claim 4 as representative, with claims 5, 6, and 12 standing or falling
with claim 4.
The Examiner found that Hesse teaches all of the limitations of claim
4 except automatically reducing a length of the drill string. Ans. 3-4. The
Examiner relies on Alft for this teaching:
Alft teaches a method of operating a horizontal boring machine
having an automated drill string (22), which can be lengthened
or shortened, by adding or removing a pipe section from the
drill string, either automatically or manually. Alft explicitly
recites “A pipe loading controller (141) may be employed to
control an automatic rod loader apparatus during rod
threading and unthreading operations.” See Col. 30, lns. 30-33.
Ans. 4 (emphasis added); see also Alft, Fig. 7.
Appellants do not dispute that Hesse teaches all of the claim 4
limitations except for automatically reducing a length of the drill string.
Appellants do dispute, however, that Alft teaches and enables this limitation.
Appellants argue that while the Alft reference “recognizes a need for
automatically reducing a length of drill string,” it “only recognizes the
problem and provides no enabling solution.” Reply Br. 3. Referring to Alft
Figure 7, Appellants acknowledge that “Alft teaches that a central processor
(72) sends control signals to a machine controller (74) [that is] operatively
linked to a rod loader unit (141) purportedly used to control an automatic rod
loader apparatus.” App. Br. 6. But Appellants allege that such disclosure is
insufficient because “Alft…. does not teach the sensors or control logic
needed to process information from the sensors and activate the mechanical
Appeal 2009-014218
Application 10/617,975
4
devices used to reduce a length of drill string.” App. Br. 7; see also Reply
Br. 3.
This argument fails for two reasons. First, as the Examiner notes at
Ans. 8, Appellants’ claims do not expressly require any particular structure
that Alft is required to teach. Second, it is not necessary under 35 U.S.C. §
112 ¶ 1 for Alft’s specification to provide structural details that may be
known in the art. See Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d
1524, 1534 (Fed. Cir. 1987) (holding that “[a] patent need not teach, and
preferably omits, what is already known in the art”). Appellants have not
provided any evidence indicating that a person of ordinary skill in the art
would not already have known how to make and use Alft’s automatic rod
loader apparatus to automatically reduce a length of the drill string as
required by the claims. Accordingly, we affirm the Examiner’s rejection of
claims 4-6 and 12 as obvious over Hesse in view of Alft.
Claims 7-11—Obviousness—Hess, Alft, Bischel
Claims 7-11 depend from claim 4. Appellants do not raise any
additional arguments as to these claims, and therefore, for the reasons stated
above, we affirm the Examiner’s rejection of claims 7-11 as obvious over
Hesse in view of Alft and Bischel.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 4-
12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).
AFFIRMED
mls