COMMISSIONER'S DECISION
INSUFFICIENCY OF DISCLOSURE (Sec. 36) WELL DRILL
Apparatus to enable a hole to be drilled at 90.degree. to the vertical initial bore
is described in terms sufficient to meet the requirements of Section 36.
Final Action: Reversed
***************
Patent application 253047 (Class 255-6), was filed on May 21, 1976 for
an invention entitled "Method And Mechanisms For Drilling Transversely In
A Well." The inventors are George H. Bull et al. The Examiner in charge of
the application took a Final Action on May 25, 1979, refusing to allow it
to proceed to patent.
The subject matter of this application relates to a well drilling apparatus
and a method of drilling the well at right angles to the vertical well
passage. A series of interconnected spool and cylinder assemblies allow the
drill to rotate transversely to the vertical after the bottom of vertical
cylindrical housing is closed with an arcuate guide. Figure 1 of the applica-
tion is shown here.
(See formula 1)
Packer 14 holds the arcuate guide 15 to force drill 12 to the right angle position
Drill tubing string 18 drives the drill 12 via cylinders 21 and spools 19.
In the Final Action the Examiner rejected the application "due to insufficiency
of the disclosure," and cited the following references:
Canadian Patents
226,752 Dec. 5, 1922 Granville
652,417 Nov. 20, 1962 Grimm
United States
2,441,881 May 18, 1948 Hays
Each reference shows apparatus or an arrangement to enable a hole to be drilled
at 90ø to the vertical initial bore.
In the Final Action the Examiner stated, inter alia:
...
The disclosure of such conduit in this application is very
brief and incomplete.
Applicant's conduit is made of a plurality of hollow spools
(19), cylinders (21), coil springs (23) and O-rings (24).
For sealing of the conduit against leakage of the drilling
fluid and for holding parts of the conduit together, appli-
cant provides flanges, outwards from the spools and inwards
from the cylinders. The O-rings are placed between the
flanges of the neighbouring elements, and the springs hold
the O-rings in compression.
It is held that the O-rings between the flanges will not be
able to provide satisfactory sealing, especially at the change
of the direction of drilling. The deformation (compression)
of the O-ring is very small and pivoting of elements of the
conduit will cause loss of contact between the flanges and the
O-ring on one side of the conduit, and loss of pressure due
to outflow of fluid. Such loss of pressure and leakage of
drilling fluid will make operation of the hydrodrill impossible.
...
Section (36) of the Patent Act requires not only disclosure
of the principle of the invention but also the best mode in
which the applicant has contemplated the application of such
principle. The disclosure must correctly and fully describe
the invention. It is held that applicant has failed to
satisfy the requirements of Section (36) of the Patent Act.
As to applicant's arguments in his letter of December 14, 1978
indicating that the elements of the conduit are not free to
move, under load, axially, it is pointed out that applicant
himself calls the conduit "a compressible and telescopic hy-
draulic fluid conduit (underlined by the examiner). Obviously
elements such as the spools (19) or the cylinders (21) are
not compressible. But a whole structure is compressible and "tele-
scopic" so that the elements, under load, are free to move
axially relative to each other. There is nothing disclosed
that would prevent a cylinder to move relative to a spool
if the force is high enough to overcome the force of the
springs. The high pressure of the drilling fluid may add
axial force to that of the springs in a straight conduit,
but not at a part that is curved.
Furthermore, in the above letter, applicant states that "the
elements (spools and cylinders) of the conduit means are not
free to pivot relative to each other". In such a case, how
can the conduit change the direction of drilling, which is the
aim of this alleged invention? It is held that the spools and
the cylinders must pivot relative to each other, as is shown
in Fig. 1 of the drawings, to enable the conduit and therefore
the turbodrill to change the direction from vertical to a hori-
zontal.
...
In response to the Final Action the Applicant argued that the Examiner has failed
to establish a prima facia case of inoperativeness. Also, that the basis, upon
which the rejection was made under Section 36 of the Patent Act,was erroneously
established by failure of the Examiner to consider what the disclosure teaches
as a whole in combination with the simple schematic sketches used in the draw-
ings of the application. An Affidavit from the inventors was also submitted as well as
amended claims 1 to 14 of which claim I reads:
A method for conveying high pressure drilling fluid through a
compressible and telescopic hydraulic fluid conduit to a
turbodrill mounted on the end of the conduit and to apply axial
forces to the drill comprising the steps of,
(a) lowering in the well to the desired depth an elongated
cylindrical housing having a transverse opening adjacent the
bottom the roof and an opening in the top thereof,
(b) positioning a compressible and telescopic hydraulic fluid
conduit of axially aligned spools inter-connected with a
cylindrical spring biasing means in the elongated cylindrical
housing,
(c) supplying a high pressure hydraulic drilling fluid through
a drill pipe string to the top of the compressible and telescopic
hydraulic fluid conduit in the elongated cylindrical housing
for operating the turbodrill means at the bottom thereof,
(d) extending the lower end of the compressible and telescopic
hydraulic fluid conduit with the turbodrill means on the end
thereof down into the elongated cylindrical housing, and
(e) extending said compressible and telescopic hydraulic fluid
conduit lower end with the turbodrill means thereon out from
the transverse opening in the elongated cylindrical housing for
drilling transversely of the well at the desired depth under
high compressive and torque loads.
The consideration before the Board is whether or not the requirements of Section
36 of the Patent Act have been complied with.
It was pointed out in the Final Action that the sealing of the elements of the
conduit is of utmost importance during bending of the conduit and that the
disclosure of such structure is incomplete and the disclosed system is inoperative
It adds that there is nothing "disclosed that would prevent a cylinder to move
relative to a spool if the force is high enough to overcome the force of the
springs...." According to the Applicant his disclosure adequately describes
a flexible drill string comprising a plurality of spools and cylinders, wherein
each cylinder connects two spools together with compression springs therein
"strongly urging each spool flange firmly against rubber o-rings at the end of
the cylinder...." He adds that the seven figures of drawings show a
"schematic" view of the various parts, which, in his view, are adequate for
illustrating the principles of construction and operation of the flexible
drill string but that they are only illustrative. Obviously a much larger
turning radius than shown would be required, or larger o-rings employed in
actual use.
Section 36 of the Patent Act requires that the applicant shall "correctly and
fully describe the invention" and its operation and use. Thus, the consideration
here is whether the Applicant in drafting his specification has left out some-
thing which a competent person in the art should not be expected to real into
it or understand. This is clearly set out in Mineral Separation v Noranda
Mines Ltd. (1947) Ex. C.R. 306 at page 317 wherein Thorson P. states:
When it is said that a specification should be so written
that after the period of monopoly has expired the public
will be able, with only the specification, to put the
invention to the same successful use as the inventor him-
self could do, it must be remembered that the public means
persons skilled in the art to which the invention relates,
for a patent specification is addressed to such persons
[underlining added].
After careful review of the specification of this application we believe that
it contains sufficient description to enable a person skilled in the art
to make the invention. Because of the extremely high pressures required for
this type of equipment we can understand the Examiner questioning the oper-
ability of o-ring sealing elements between the flexible components of the
conduit. We agree with the Examiner that the sealing of the elements of the
conduit is of great importance, but we do not agree with his analysis of the
disclosure when he states that it is incomplete and that the disclosed system
is inoperative. There is no doubt that the applicants sealing arrangement
is capable of handling some pressure thereby enabling the device to be operated,
as directed, by skilled persons in the art.
Further, an Affidavit from the inventors, stating that they have built a full
sized embodiment of the right angled drilling mechanism described in this
application, was received with the response to the Final Action. The Affidavit
states that "the tests proved successful with no leakage of internal fluid
while operating the drill through 90· in the hydraulic laboratory."
To summarize, we are not prepared to make a recommendation to the Commissioner
of Patents which would justify a refusal of a patent on this application under
Section 36 of the Patent Act.
We therefore recommend that the decision in the Final Action to refuse the
application be withdrawn.
J.F. Hughes S.D. Kot
Assistant Chairman Member
Patent Appeal Board, Canada
I have carefully reviewed the prosecution of this application and consid-
ered the recommendation of the Patent Appeal Board. I concur with the
reasoning and findings of the Board. Accordingly, I withdraw the Final
Action and return the application to the Examiner for resumption of
prosecution.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 27th. day of June, 1980
Agent for Applicant
Smart & Biggar
Box 2999, Stn. D
Ottawa, Ont.