Henderson v. Grable

• Decision Date: 04 March 1965
• Docket Number: Patent Appeal No. 7236.
• Citation: 52 CCPA 920,339 F.2d 465
• Parties: Homer I. HENDERSON, Appellant, v. Donovan B. GRABLE, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

52 CCPA 920, 339 F.2d 465 (1964)

Homer I. HENDERSON, Appellant, v. Donovan B. GRABLE, Appellee.

Patent Appeal No. 7236.

United States Court of Customs and Patent Appeals.

December 23, 1964.

Rehearing Denied March 4, 1965.

Melvin R. Stidham, Edward B. Gregg, San Francisco, Cal. (Robert N. Roley, Washington, D. C., of counsel), for appellant.

R. Welton Whann, Los Angeles, Cal. (Eugene O. Heberer, Los Angeles, Cal., of counsel), for appellee.

Before RICH, Acting Chief Judge, and MARTIN, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

MARTIN, Judge.

This is an appeal from the Board of Patent Interferences awarding priority of invention in Interference No. 91,037 to Grable, the Senior party.

The issue for determination is whether Henderson is entitled to the date of his parent application for "Well Drilling Device and Method", serial No. 284,739 filed April 28, 1952. The answer hinges on the sufficiency of the Henderson parent application to support two limitations of the first count in interference.

Grable is involved in the proceedings on the basis of his patent 2,850,264, titled "Dual Passage Concentric Pipe Drill String Coupling", issued September 2, 1958 on an application serial No. 380,983 filed September 18, 1953. Henderson filed a continuation of his parent case titled "Method and Apparatus for Drilling Wells", serial No. 761,502 on September 17, 1958. The Grable patent was cited against this continuation application, and subsequently the interference was declared between them on April 15, 1960, with modified claims 1 and 3 of the Grable patent in issue.

The invention is directed to improvements in composite drill pipes consisting of a scavenger pipe concentrically spaced within a larger pipe such that drilling fluids may pass downwardly in the annular space between the two pipes and return up the inner scavenger pipe. The pipe "string" which reaches down into the well is composed of "stands" or sections, each about 20 to 30 feet long, of a pair of such inner and outer pipes assembled for handling as a unit. A drill bit it attached to the lower end of the string and the drilling is accomplished by rotating the entire composite pipe string, the drilling cuttings being removed by the drilling fluid returning upwardly in the inner scavenger pipe.

The improvement which is the subject of the invention is the manner of formation of joints by which sections or "stands" of a drill pipe string are connected together in use. As noted by referring to the vertical section view of Figure 2 in both the Grable patent and the Henderson parent application reproduced below,¹ the outer pipes (Grable 13; Henderson 1)² are threaded together while the inner pipes (G 12; H 5) are simultaneously joined by a telescoping joint of the packing sleeve type which is sealed by an O-ring (G 126 in groove 26; H 43 in groove 42). In each stand of composite pipe, both Grable and Henderson show upper axial lugs or fins (G 27; H 40) which are welded to the inner pipe (G 28; H W3)³ and serve to concentrically position the inner pipe within the outer. These upper axial fins or lugs are attached to the outer pipe to make a rigid unit construction and to obtain correct vertical positioning of the inner pipe. Grable attaches the axial fins to the outer pipe by forming a weld 30 through a precut slot 29, while Henderson employs fins, which rest on the upper end of the outer drill pipe, and which are threaded to engage the threads of coupling collar 38. Henderson also provides intermediate radial fins 39, for centering purposes.

Both Henderson and Grable show lower axial fins or lugs (G 31; H 44) welded as shown in Grable at 32 only to the inner pipe, and as shown in Henderson to the inner pipe at W1. The presence or absence of a weld at W2 in Henderson and the effect of a "tolerance gap" at 45, are in issue (as item 6 of count 1 set out in the margin) and will be discussed below in some detail.

The outer pipe (G 13; H 1) is "directly" connected together in Grable at 16 by threads at 21, while in Henderson a coupling collar 38 is first securely threaded onto one stand of outer drill pipe 1. When the string is made up, an entire composite stand is threaded into this collar on the next adjacent stand. This difference in coupling the outer pipes is also at issue (as item 4 of count 1) and will be discussed below in some detail.

We are thus presented with a picture of the individual stands as composed of an outer drill pipe within which is concentrically spaced an inner scavenger pipe, the spacing being accomplished by radial fins. The inner pipe is rigidly secured at the upper end since the fins are secured to both pipes, but the lower fins, being welded only to the inner pipe, in combination with the telescoping joint of the inner pipe, permit axial and/or radial expansion of the inner pipe to compensate for differences in temperature between the downflowing drilling fluid and the up-flow of fluid and cuttings. The outer pipes of the string are rigidly connected through their threaded interengagement and thus provide for the transmission of rotation to the bit secured to the lower end of the string.

Count 1 of the interference is directed to the entire string of pipe stands made up as described above and may be broken down into nine basic items or limitations.⁴ In its decision, the board stated:

"It is the position of Grable that the Henderson parent application as originally filed did not disclose the limitations of items 4 and 6 of the foregoing analysis, and that Henderson is accordingly not entitled to the benefit of the filing date of that application. Before considering his argument, we will discuss some of the more general aspects of the disclosures of the parties. These disclosures are concededly alike in their support of each of items 1-3, 5, 7 and 8, and Grable\'s only argument with respect to item 9 is that it was not illustrated in Henderson\'s parent application drawing."

Thus, as acknowledged by the board, and by appellee here, the single issue is whether Henderson's parent application provides support for the limitations in items 4 and 6 of count 1.⁵ These will be discussed separately below. Neither party took testimony and appellant Henderson relies solely on his parent application to show priority.

Item 4 The Outer Joint

Item 4 of count 1 reads:

"each of said outer pipes having integral threaded end portions directly threadedly interengageable with the end portions of the outer pipes of successive stands to form a joint between said outer pipes and to secure successive stands together ,"

The board, holding that the Henderson parent application does not support this item, first referred to the structure in that application as follows:

"Henderson\'s parent application does not describe or illustrate a joint between the successive outer pipe sections in which each of these sections is provided at one end with an external screw thread and the other with an internal screw thread, so that adjacent ends of successive sections can be directly threadedly interconnected, as illustrated in Figure 2 of Grable\'s drawing. Instead, Henderson\'s interconnection between such sections was an indirect one, achieved through internally threaded coupling collars threadedly secured to externally threaded ends of successive sections of pipe to be coupled, as illustrated at 38 in Figure 2 of his drawing."

After then recognizing that the article produced and the method of assembly of the Henderson application "are very closely similar to Grable's article and method, insofar as the limitation of item 4 is concerned" the board concluded:

"In spite of the above-noted close similarity, it must also be noted that the language of Count 1 calls for "each of said outer pipes having integral threaded end portions directly threadedly interengageable with the end portions of the outer pipes of successive stands" (emphasis ours). On no reasonable interpretation of language can we hold that Henderson\'s collars 38 are integral threaded end portions of the pipes to which they are attached, or that any end portion of one pipe is directly interengageable with an end portion of the next. Priority will be awarded to Grable on the ground that the Henderson parent application does not support this count limitation. If this result is one which creates a hard case in order to avoid bad law, it will be necessary for Henderson to find some other recourse to solution of the problem, for as noted above, we may not ignore a specific claim limitation."

We are unable to agree with the board's conclusion therein.

The Henderson application teaches that a collar 38 is first tightly screwed onto one end of each outer pipe section before the individual sections are assembled to form a string. In fact, the collar is so secured before the inner scavenger pipe section is assembled in the outer section. The latter operation involves inserting the scavenger pipe section with its upper fins 40 into the outer section so that the fins engage the threads on the collar 38 on the latter and then screwing the scavenger pipe section down until the fins rest against the upper end of pipe 1. Once the collars 38 are secured on the individual pipe sections the structure and method of assembly are effectively the same as Grable insofar as the item 4 limitations are concerned. Moreover, it is plain that there is no relationship necessary to the patentable concept of the subject matter of the counts that requires a strict interpretation of the term "integral." Rather it is our opinion that the circumstances here require that the unambiguous term "integral" be given the broadest construction the language will reasonably bear without resort to the specification from which it originated,⁶ In re Kelley, 305 F.2d 909, 913, 49 CCPA 1359, 1363; Cusano v. Decepoli, 214 F.2d 134, 135, 41 CCPA 968, 970; Wirkler v. Perkins et al., 245 F.2d 502, 44 CCPA 1005, and cases cited...