Appeal No. 2006-2421
Application 10/346,773
disclosed therein. There is no dispute that one of ordinary skill in this art can place a
predetermined amount of lubricant into the collection area of drum or head 15 having ports 45 of
the apparatus of Bergeron, as shown in Bergeron Figs. 1 and 3, “while the drum is stationary
disposed within the bore of a pipe having internal pipe threads” as specified in representative
independent claim 17. Thus, the matter rests on whether head 15 disposed within threaded
section 12 of bore 11 of pipe 10, rotates with pipe 10 via a rotary table by means of swiveled
coupling 34, as shown in Bergeron Figs. 1, 1a and 3 (e.g., col. 3, l. 26, to col. 4, l. 2), such that
the lubricant is emitted through ports 45 and distributed to the internal pipe threads in a manner
that satisfies the claim limitation “rotating said drum at a predetermined speed effective to
distribute the lubricant onto the pipe threads through the plurality of holes” in the drum.
Appellant submits that the apparatus of Bergeron uses a “pressure of several hundred
pounds per square inch . . . to force the lubricant into threaded section 12” (Bergeron, e.g., col. 2,
ll. 45-48, and col. 4, ll. 18-39), which is a different principal of operation than using centrifugal
pressure resulting from rotating the drum to effectively distribute lubricant through the holes in
the drum to the pipe threads as claimed (brief, page 7). The Examiner essentially responds that
the rotation of drum 15 with pipe 10 would inherently result in centrifugal force in head 15
which would effectively distribute lubricant to the pipe threads through holes or ports 45 therein
(answer, page 5). We agree with Appellant.
The difficulty that we have with the Examiner’s position is that the teachings in Bergeron
which demonstrate the claim limitation have not been identified by the Examiner. In this
respect, we find that head 15 “is formed with a heavy body of non-sparking material which is
preferably of rubber-like composition” and shaped to provide “a close fit with thread crests of
threaded section 12” and to seal this section from bore 11, such that “lubricant forced outwardly
into threaded section 12 [through ports 45] cannot overflow and be spilled into pipe 11” (col. 3,
l. 53, to col. 4, l. 2; Bergeron Fig. 3). We fail to find from this disclosure that one of ordinary
skill in this art would have reasonably expected from the configuration of head 15 and its close
fit with threaded section 12 that lubricant would be effectively distributed onto the pipe threads
through ports 45 by reason of head 15 rotating with pipe 10 alone, and particularly since
Bergeron teaches that applied pressure is necessary for that purpose with the disclosed apparatus.
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Last modified: November 3, 2007