Baker Hughes Incorporated

Patent Trials and Appeals Board

Apr 2, 2021

2020003559 (P.T.A.B. Apr. 2, 2021)

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.
15/067,910 03/11/2016 Wolfgang E. Herberg 1684-13059.1(XPR4-60098-
U
1122
91524 7590 04/02/2021
Traskbritt, P.C. / Baker Hughes, Inc.
Baker Hughes, Inc.
P.O. Box 2550
Salt Lake City, UT 84110
EXAMINER
PATEL, NEEL G
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte WOLFGANG E. HERBERG,
CHRISTOPHER JAKUBEIT, and
MICHELL SCHIMANSKI
__________

Appeal 2020-003559
Application 15/067,910
Technology Center 3600
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and SUSAN
L. C. MITCHELL, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5, 7–9, 11–20, and 22–25.2 We
have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Baker
Hughes Incorporated. Appeal Brief (“Appeal Br.”) 2, filed Dec. 13, 2019.
2 Claims 3, 4, 6, 10, and 21 have been canceled. Appeal Br. 4; see also id. at
(Claims App.) 1–2, 5.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to downhole tools
having radially extendable elements and, more specifically, to radially
extendable elements supported against rotational and tangential forces by a
supporting feature secured to the downhole tool.” Spec. ¶ 2.3 Claims 1, 18,
and 20 are independent.4
Claim 1 is illustrative of the claimed subject matter and recites:
1. An earth-boring tool, comprising:
a tool body configured to rotate in a wellbore;
at least one extendable element carried by the tool body, the at
least one extendable element configured to move between
a retracted position and an extended position projecting
radially beyond the tool body, the at least one extendable
element comprising a mating structure formed at an upper
end of the extendable element, the mating structure
defining a mating surface; and
a support structure secured to the tool body, the support structure
comprising a recess configured to receive the mating
structure, the recess defining a support surface facing a
rotationally forward direction of the earth-boring tool and
configured to abut against the mating surface of the mating
structure of the at least one extendable element when the
at least one extendable element is in the extended position,
wherein the mating surface extends substantially parallel to a
longitudinal axis of the tool body and is oriented
substantially parallel with the support surface of the
support structure, the support surface configured to bear at

3 Appellant’s Specification, filed Mar. 11, 2016.
4 We note that claims 5, 8, 9, and 11–14 are indicated as being dependent,
either directly or indirectly, from canceled claim 4. See Appeal Br. (Claims
App.) 1–3.
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least a portion of the tangential forces acting on the
extendable element during rotation of the earth-boring tool
in the well bore when the at least one extendable element
is in the extended position.

THE REJECTIONS
I. Claims 1, 2, 5, 7–9, 11–20, and 22–25 stand rejected under
35 U.S.C. § 112(b) as indefinite.
II. Claims 1, 2, 5, 7–9, 11, 15, 16, 18–20, and 22–255 stand rejected
under 35 U.S.C. § 103 as unpatentable over Radford ’236
(US 2014/0246236 A1, published Sept. 4, 2014) and Moyer
(US 2015/0252630 A1, published Sept. 10, 2015).
III. Claims 12–14 stand rejected under 35 U.S.C. § 103 as unpatentable
over Radford ’236, Moyer, and Leathers (US 3,757,877, issued Sept. 11,
1973).
IV. Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable over
Radford ’236, Moyer, and Radford ’717 (US 7,900,717 B2, issued Mar. 8,
2011).
ANALYSIS
Rejection I – Indefiniteness
The Examiner determines that the recitation of the term
“substantially” renders independent claims 1, 18, and 20 indefinite because
“one of ordinary skill in the art would have some confusion as to what
‘substantially parallel’ is limited to (e.g. almost parallel).” Non-Final Act. 3.

5 The Examiner lists claims 3 and 4 as being rejected (see Non-Final Office
Action (“Non-Final Act.”) 4, dated Aug. 21, 2019) although these claims
have been canceled (see Appeal Br. 4; see also id. at (Claims App.) 1).
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“Claim language employing terms of degree has long been found
definite where it provided enough certainty to one of skill in the art when
read in the context of the invention.” Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364, 1370 (Fed. Cir. 2014). “[W]e have rejected the proposition
that claims involving terms of degree are inherently indefinite. Thus, ‘a
patentee need not define his invention with mathematical precision in order
to comply with the definiteness requirement.’” Sonix Tech. Co., Ltd. v.
Publications Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (quoting
Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir.
2005)).
In describing Figure 4, the Specification discloses that “[t]he support
surface 50 at the blade end 44 of the stop block 30 and the mating surface 54
at the upper end 28 of the blade 6 may each be oriented substantially
parallel with the longitudinal axis L1 of the blade 6 and the stop block 30.”
Spec. ¶ 33 (emphasis added). In this case, Appellant does not need to define
the claimed subject matter with mathematical precision because claims 1,
18, and 20 provide at least some degree of certainty to one of skill in the art
when read in the context of the subject matter described in the Specification.
Stated differently, claims 1, 18, and 20 and the Specification are not required
to convey mathematical precision in regard to the degree of the mating
surface being parallel to the longitudinal axis of the tool body and to the
support surface, only that as per Appellant’s Specification, there is a
substantial, if not total, parallel disposition between these surfaces and the
longitudinal axis of the tool body. Further, by stating that “one of ordinary
skill in the art would have some confusion as to what ‘substantially parallel’
is limited to (e.g. almost parallel)” (Non-Final Act. 3), it appears the
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Examiner recognizes that a skilled artisan would at least understand the term
“substantially parallel” to mean “almost parallel.”
Accordingly, for the above reasons, we do not sustain the Examiner’s
rejection of claims 1, 2, 5, 7–9, 11–20, and 22–25 as indefinite.

Rejection II – Obviousness over Radford ’236 and Moyer
Appellant does not offer arguments in favor of dependent claims 2, 5,
7–9, 11, 15, 16, 19, and 22–25 or independent claims 18 and 20 separate
from those presented for independent claim 1. Appeal Br. 15–24. We select
claim 1 as the representative claim, and claims 2, 5, 7–9, 11–20, and 22–25
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner finds that Radford ’236 discloses an earth-boring tool
(expandable reamer module 200) having most of the limitations of claim 1,
including a tool body (tubular body 202) and at least one extendable element
(reamer blade 204) carried by the tool body, in which the at least one
extendable element comprises a mating structure formed at an upper end of
the extendable element. Non-Final Act. 4–6 (citing Radford ’236 Figs. 2, 3,
8, 9). The Examiner further finds that Radford ’236 discloses a support
structure secured to the tool body, in which “the support structure is not
limited to only the stop block [214] within [Radford’s earth-boring tool6],
but [also includes] the surrounding elements as well (such as [tubular
body] 202 as shown in 3D view within figure 9 which surrounds the
extendable arm [(reamer blade 204)] from both sides).” Ans. 23 (emphasis

6 Unless indicated otherwise hereinafter, when discussing “Radford,” the
Examiner is referring to the Radford ’236 reference, rather than the Radford
’717 reference.
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added).7 The Examiner also finds that Radford ’236 discloses a recess
defining a support surface, in which “the recess [is] established within [the]
support [structure, which] allows for receiving the mating structure of the
extendable element [(reamer blade 204)] as shown in at least figure 8.” Ans.
23. The Examiner explains that “if [Radford’s earth-boring tool] is looked at
from a side view (i.e. facing the top of the extendable arm [(reamer blade
204)]), then the mating surface would be shown to extend parallel to the
longitudinal axis of the tool body.” Id. at 24.
According to the Examiner, “Radford appears to be silent in regards
to: [the] recess defining a support surface facing a rotationally forward
direction of the earth-boring tool.” Non-Final Act. 7. The Examiner relies
on the teachings of Moyer for this missing limitation. Id. In particular, the
Examiner finds that “Moyer teaches a supporting structure comprising of
supporting surface(s) to be surrounded about the extendable arm and stop
block (very end in which the extendable arm abuts to) as shown in at least
figures 9 & 14 which face a rotationally forward direction of the earth-
boring tool.”8 Ans. 24.
Regarding Radford ’236, Appellant contends that “[o]ne of ordinary
skill in the art would not consider the inclined surface of the stop block 214
to correlate to a ‘recess’ formed in the stop block 214, as required in the
claims” and that “the inclined surface of the stop block 214 is not configured

7 Examiner’s Answer (“Ans.”), dated Feb. 21, 2020.
8 It appears that in finding the corresponding support surface in Moyer’s
earth-boring tool, the Examiner meant to refer to the surfaces of the tool
body that surround Moyer’s shearable device 908 in Figure 9 or blade 1404
in Figure 14. See Ans. 24; see also Moyer Figs. 9, 14
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to ‘receive’ the alleged mating structure (an upper end of reamer blade 204),
as required in claim[] 1.” Appeal Br. 17; see also Reply Br. 3–5.9
Appellant’s contention is unpersuasive. Figure 9 of Radford ’236 is
reproduced below.

Figure 9 “shows a perspective view the middle portion of the expandable
reamer module of FIG. 2 in an activated position.” Radford ’236 ¶ 21. As
explained by the Examiner in the Answer, stop block 214 and parts of
tubular body 202 that surround the reamer blade 204 as depicted in Figure 9,
can be regarded as forming a recess configured to receive a mating structure
of an extendable element, as claimed. See Ans. 23.10
Appellant further argues that “Moyer does not teach or suggest
anything in regard to a ‘support structure secured to [a] tool body’ or ‘a

9 Reply Brief (“Reply Br.”), filed Apr. 7, 2020.
10 It appears that throughout the Appeal Brief, Appellant’s reference to the
inclined surface under Radford ’236’s reamer blade 204 arises from the
Examiner’s language discussing “the bottom of surface of extendable
element 204” (see Non-Final Act. 5) when identifying Radford ’236’s
corresponding mating surface of a mating structure.
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recess’ defined in the ‘support structure’ and configured to ‘receive [a]
mating structure,’ as recited in claim[] 1.” Appeal Br. 18.
This argument is also unpersuasive because, Radford ’236’s Figure 9
as replicated above, already discloses a support structure (stop block 214 and
parts of tubular body 202 that surround both sides of the upper end of reamer
blade 204), which forms a recess to receive a mating structure.
Appellant argues that
the retention slots of Moyer could not teach or suggest anything
in regard to a support structure comprising a recess configured to
receive the mating structure (which is formed on the upper end
of the extendable element), the recess defining a support surface
facing a rotationally forward direction of the earth-boring tool,
as recited in claim[] 1.
Appeal Br. 19–20; see also Reply Br. 5–8. According to Appellant, “at best,
the retention slots of Moyer would only suggest to modify a correlating part
of Radford (i.e., the track of Radford) and would not suggest modifying the
stop block 214 of Radford.” Appeal Br. 20.
These arguments are also unavailing. As noted above, Radford ’236’s
Figure 9 already discloses a support structure comprising a recess configured
to receive a mating structure that is formed on the upper end of an
extendable element (204 as depicted in Figure 9). Additionally, we note that
as evident from Radford ’236’s Figure 9, either side of reamer blade 204 has
a surface (corresponding to the claimed mating surface), that is opposite to
the surface (corresponding to the claimed supporting surface) of tubular
body 202, which forms the claimed recess. Thus, when Radford ’236’s
earth-boring tool is rotated in either direction, at least one of those opposite
surfaces that corresponds to the claimed supporting surface, faces a
rotational forward direction of the earth-boring tool, much in the same
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manner as supporting surface 50 as depicted in Appellant’s Figures 2 and 4
and described in paragraph 30 of the Specification. See Spec. ¶ 30
(disclosing “a support surface 50 (FIG. 2) generally fac[es] a rotationally
forward direction (i.e., generally fac[es] the direction of rotation of the tool
body 4 in a wellbore during an earth-boring operation)”).11
Appellant argues that “in FIG. 2 of Radford, at best, the bottom
surface of the extendable element 204 extends in a direction oblique or
orthogonal to the longitudinal axis of the tool body.” Appeal Br. 21 (italics
added); see also Reply Br. 8–10.
This argument is unpersuasive because as pointed out above, the
Examiner correctly responds that “if [Radford’s earth-boring tool] is looked
at from a side view (i.e. facing the top of the extendable arm [(reamer blade
204)], then the mating surface would be shown to extend parallel to the
longitudinal axis of the tool body.” Ans. 24.
Appellant argues that
due to the orientation of the bottom surface of the reamer blade
204 depicted in the above in FIG. 2, the inclined surface abutting
the bottom surface (i.e., alleged support surface) would not “bear
at least a portion of the tangential forces acting on the extendable
element during rotation of the earth-boring,” as recited in
claim 1.
Appeal Br. 23 (italics added); see also Reply Br. 11–12.

11 We note that Moyer can be regarded as disclosing the corresponding
mating surface and support surface because, like the earth-boring tool of
Radford ’236, Moyer’s stabilizer blade 304 has side surfaces (i.e., support
surfaces) that abut to surfaces of stabilizer blade slot 306 (i.e., mating
surfaces). See Moyer Fig. 3A; see also id. at Figs. 9A, 11B.
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Once again, Appellant’s argument fails to address the Examiner’s
rejection because the Examiner finds the surface opposite to the side surface
of Radford ’236 reamer blade 204––rather than the inclined surface abutting
the bottom surface of reamer blade 204––corresponds to the claimed support
surface. As such, Appellant does not apprise us of Examiner error.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Radford ’236 and Moyer. Accordingly, we sustain the Examiner’s rejection
of claims 1. We further sustain the rejection of claims 2, 5, 7–9, 11, 15, 16,
18–20, and 22–25, which fall with claim 1.

Rejections III and IV – Obviousness over Radford ’236, Moyer and either
Leathers or Radford ’717
For these rejections, Appellant relies on similar arguments as those
presented above for independent claim 1. See Appeal Br. 24–25. As we
find no deficiencies in the Examiner’s rejection of claim 1 as unpatentable
over Radford ’236 and Moyer, for the reasons discussed above, we likewise
sustain the Examiner’s rejections of claims 12–14 and 17 as unpatentable
over the variously indicated combinations of cited prior art.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 7–9,
11–20, 22–25
112(b) Indefiniteness 1, 2, 5, 7–9,
11–20, 22–
25
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 7–9,
11, 15, 16,
18–20, 22–25
103 Radford ’236,
Moyer
1, 2, 5, 7–
9, 11, 15,
16, 18–20,
22–25

12–14 103 Radford ’236,
Moyer, Leathers
12–14
17 103 Radford ’236,
Moyer, Radford
’717
17
Overall
Outcome
1, 2, 5, 7–
9, 11–20,
22–25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED