Ex Parte 6,392,190 et al

Board of Patent Appeals and Interferences

Mar 16, 2011

90009341 (B.P.A.I. Mar. 16, 2011)

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.
90/009,341 11/24/2008 6,392,190 TRA0006XA 5916
22511 7590 03/16/2011
OSHA LIANG L.L.P.
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
EXAMINER
FOSTER, JIMMY G
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/16/2011 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 SMITH INTERNATIONAL, INC.
____________________

Appeal 2011-004214
Reexamination Control 90/009,341
Patent US 6,392,190 B11
Technology Center 3900
____________________

Before JAMESON LEE, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL2

1 The patent under reexamination (hereinafter the “‘190 Patent”) issued
to Sue et al. from Application 09/153,676 filed on Sept. 15, 1998.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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A. STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Timothy W. Hagan.
Smith International, Inc. (“Smith”), the real party in interest and
owner of the patent under reexamination,3 appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 1-5, 10-13, and 18-30.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.

References Relied on by the Examiner
Guest et al. (“Guest”) 3,892,882 July 1, 1975
Jackson 4,376,793 Mar. 15, 1983
Shubert 4,689,463 Aug. 25, 1987
Keshavan et al. (“Keshavan”) 4,836,307 June 6, 1989
Kanitani 5,254,923 Oct. 19, 1993

Howard B. Cary, Arc Welding Automation (Mfg. Eng’g & Material
Processing, Reference Book Series No. 43, 1995). (“Cary”)

The Rejections on Appeal
The Examiner rejected claims 1-5, 10-13, 18, 19, and 23-30 under 35
U.S.C. § 103(a) as unpatentable over Keshavan, Cary, and Shubert.
The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Keshavan, Cary, Shubert, and Kanitani.

3 See Patent Assignment Abstract of Title, Reel 009681, Frame 0044,
which was entered into the record of this proceeding as “Title Report” on
December 02, 2008.
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The Examiner rejected claims 20-22 under 35 U.S.C. § 103(a) as
unpatentable over Keshavan, Cary, Shubert, Guest, and Jackson.

The Invention
The invention relates to an automated system for depositing a wear
resistance coating onto the teeth of a roller cone of a drill bit (a process
termed in the art as “hardfacing”). (The ‘190 Patent 1:12-16.) The
hardfacing may be accomplished through a welding method termed a
pulsed-plasma transferred arc method. (Id. at 6:31-35.)
Claim 1 is reproduced below (App. Br. 35 Claims App’x.):
1. A method for hardfacing a roller cone of a drill bit comprising:

providing a roller cone having a protruding tooth and a
hardfacing torch;

moving the roller cone by using a first apparatus having m axis
(axes) of movement;

moving the hardfacing torch by using a second apparatus
having n axis (axes) of movement,

wherein m+n ≥ 5; and

depositing a hardfacing composition on the tooth of the roller
cone with the hardfacing torch by a pulsed plasma transferred arc
process.

B. ISSUES
1. Did the Examiner correctly determine that Keshavan, Shubert,
and Cary collectively teach a method for hardfacing a tooth of a roller cone
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of a drill bit involving the coordinated motion of the roller cone and
hardfacing torch using a pulsed plasma transferred arc process?
2. Did the Examiner correctly determine that the prior art teaches
the step of controlling a stand-off distance between the hardfacing torch and
a surface of the tooth as set forth in claim 20?
C. PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
A person of ordinary skill is a person of ordinary creativity, not an
automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
D. ANALYSIS
The Examiner rejected claims 1-5, 10-13, 18, 19, and 23-30 over
Keshavan, Cary, and Shubert. The Examiner rejected claims 19-22 over
those references taken along with one or more of Kanitani, Guest, and
Jackson. Smith argues the claims in two groupings; (1) claims 1-5, 10-13,
18, 19, and 23-30, and (2) claims 20-22.
Claims 1-5, 10-13, 18, 19, and 23-30
Claims 1, 10, 11, and 18 are independent claims. Each of those
claims includes the feature of depositing a hardfacing composition onto the
roller cone teeth of a drill bit through the coordinated motion of a first
apparatus which moves the roller cone and a second apparatus which moves
a hardfacing torch. In claims 1, 11, and 18, the process by which the
hardfacing composition is applied is termed a “pulsed plasma transferred arc
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process.” (App. Br. 35-37 Claims App’x.) Claim 10 does not use that term
but recites steps of forming a “plasma column” and “pulsing” electrical
current to deposit the hardfacing composition. According to Smith, claim 10
also requires a “pulsed plasma transferred arc process.” (Id. at 23:13-15.)
In rejecting claims 1, 10, 11, and 18, the Examiner determined that
Keshavan discloses a process in which a hardfacing composition is applied
to the surface of the roller cone of a drill bit. (Ans. 4:2-6.) In Keshavan,
however, the hardfacing is applied “by oxyacetylene or atomic hydrogen
welding” and not by the claimed “pulsed plasma transferred arc process.”
(Keshavan 1:34-36.) The Examiner also determined that Keshavan does not
describe automating the application of the hard facing using two separate
apparatuses. According to both the Examiner and Smith, Keshavan’s
teachings are directed to manually applying the hardfacing coating. To
make up for the deficiencies in Keshavan, the Examiner relied on the
teachings of Shubert and Cary.
Shubert discloses that the use of a “plasma transferred arc technique
coupled with pulsing of the transferred arc” is a known welding technique
for depositing wear resistance material onto the surface of a substrate.
(Shubert 2:25-30.) The Examiner determined, and Smith does not dispute,
that the welding technique described in Shubert is the “pulsed plasma
transferred arc process” set forth in the claims. (Ans. 6:16-17.)
Cary discloses procedures for automating processes associated with
welding through the introduction of automatic and robotic control of
welding equipment. Cary provides for the automation of a variety of such
processes including those termed “thermal spray processes,” and particularly
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“plasma spraying,” which involve the deposition of material onto the surface
of a substrate. (Cary pp. 108-110, Section 5.4; see also Ans. 4:14-17.) As a
part of the automation procedures, Cary describes that automated arc
welding involves control of the relative movement between the welding arc
or torch and the part being welded. (Cary p. 197, Section 9.1.) In particular,
in one example, the motion of the welding torch is illustrated as controlled in
each of the X, Y, and Z directions with the part that is welded controlled
through each of “rotating motion” and “tilt motion.” (Id. at p. 198, Figure
9.1.) Cary also teaches that coordinated control of the “arc motion” and the
“work motion” for as many as “six axes of coordinated motion” is desirable.
(Id. at p. 216, Section 9.4.) As explained in Cary, the benefits of automating
welding processes includes reducing fatigue of an operator by transferring
necessary tasks to the automation system or robot, and improving the control
and speed of the welding process as compared with manual operation of
welding equipment. (Id. at pp. 20-23, Section 1.5.)
In light of the teachings of Keshavan taken with Shubert and Cary, the
Examiner reasoned that one with ordinary skill in the art would have
recognized that hardfacing of the teeth of a drill bit may be accomplished
through a pulsed plasma transferred arc process involving the control of the
arc generating torch and the roller cone of drill bit through at least five axes
of movement. (Ans. pp. 4-7; pp 8-11.) The Examiner concluded that
Smith’s claims would have been obvious. (Id.)
Smith challenges the Examiner’s reasoning and conclusion on the
theory that a person of ordinary skill in the art would have not have had a
reasonable expectation of success in combining the teachings of Keshavan,
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Shubert, and Cary. According to Smith, the process of “welding” is the
joining of metals through the application of heat to create a monolithic
structure. (App. Br. 13:17-20.) Smith characterizes the pulsed plasma
transferred arc process for hardfacing a component as a practice more
complicated than mere welding and likens that practice to the thermal
spraying process described in Cary’s Chapter 5. (Id. at 13:16-14:7.) Smith
points to Cary’s assessment that the automation of its disclosed thermal
spraying processes is “extremely complex” and further characterizes the
specific claimed “pulsed plasma transferred arc process” as being even more
complex than the thermal spraying processes disclosed in Cary. (App. Br.
pp. 18-19; Reply Br. 8:2-6.) Smith urges that the bulk of Cary’s disclosure
is directed to automating welding processes and that the single chapter
devoted to automation of thermal spraying processes is insufficient to
establish that a person of ordinary skill in the art would have reasonably
expected to automate the sophisticated claimed pulsed plasma transferred arc
process.
Smith also relies on the declaration testimony of one of its employees,
Cary Roth (“Roth Decl.”), as evidence allegedly supporting its position that
a skilled artisan would not have had a reasonable expectation of success in
combining the teachings of Keshavan, Shubert, and Cary. We focus first on
Roth’s declaration testimony.
The Declaration Evidence
We have carefully considered Roth’s declaration and conclude that
Smith is misplaced in asserting that the declaration supports Smith’s
contention that one of ordinary skill in the art would not have reasonably
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expected success in combining the teachings of Keshavan, Shubert, and
Cary.
As a whole, Roth’s testimony demonstrates that the automation of
material thermal processes in general is recognized in the art as complicated
and requires consideration of multiple variables during the course of the
automation. With respect to combining the teachings of Keshavan, Shubert,
and Cary, Roth offers the following testimony (Roth Decl. p. 3, ¶ 9):
The proposed combination of Keshavan, Cary, and Shubert, as
outlined by the Examiner, therefore involves an automation that
requires selection of numerous variables and would be expected to
take up to several years with many iterations in technique and
equipment development to determine the appropriate variable
selection to achieve success in hardfacing the milled tooth roller cone
by a pulsed plasma transferred arc process.

Thus, it is not Roth’s testimony that one with ordinary skill in the art
would not have had a reasonable expectation of success in combining the
teachings of Keshavan, Cary, and Shubert. Rather, Roth’s testimony is that
success in combining the teachings of those references would be expected to
be achieved after “several years with many iterations in technique and
equipment.”
To the extent Smith is actually arguing that requiring years of effort to
succeed equates to no reasonable expectation of success, the argument is
rejected. Roth offers insight as to what the standard is in the art as to the
expected challenges in an automation project. Roth explains that over the
course of his thirty-one year career he has performed numerous automations
of thermal processes. (Roth Decl. pp. 1-2, ¶¶ 3-5.) In his experience, such
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automations routinely require several iterations of technique and equipment
development and take several years to achieve success. (Id. at p. 2, ¶ 7.)
In light of Roth’s testimony, although it may be expected to take
“several years with many iterations” to develop an automation procedure
involving a pulsed plasma transferred arc process based on the combined
teachings of Keshavan, Cary, and Shubert, that expectation is in-line with
what is recognized and expected in the industry. Roth’s testimony reflects
that “many iterations” and “several years” are within the normal bounds of
what one of ordinary skill in this art would have reasonably expected in
developing a new automation procedure in this field.
The Teachings of the Prior Art
Turning to the teachings of the prior art, Cary describes that the
thermal spraying processes of its Chapter 5 are “allied” processes to welding
involving the use of equipment similar to that used for welding. (Cary p. 33,
Section 2.4; p. 108, Section 5.4.) Cary explains that one known thermal
spraying process is “plasma spraying” in which a “nontransferred arc”
technique is used for depositing material onto the surface. (E.g., Id. at p.
108.) Cary further explains that automation of such a technique using a
robot is known in the art. (E.g., Id. at p. 109; see also Ans. 4:17-18.) Cary
describes the automation of such processes as “extremely complex.” (Cary
p. 110.) However, contrary to Smith’s assertions, that does not mean that
one with ordinary skill in the art would have been unable to appreciate the
complexities involved and implement automation practices that account for
them. Indeed, Chapter 5 of Cary was relied on by the Examiner and
describes and illustrates in Figures 5.14 and 5.15 photographs of an
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operational automated robot engaged in the performance of thermal
spraying, and specifically plasma spraying (Figure 5.15). (Ans. 4:18-20.)
Even if “extremely complex,” automation of thermal spraying procedures is
disclosed in Cary as already accomplished in the art. Prior art includes that
which is simple or complex.
Smith also contends that Cary refers only to a thermal process
involving a “nontransferred arc” as opposed to the “pulsed transferred arc”
process set forth in the claims. Smith urges that a pulsed transferred arc
process is even more complex than a nontransferred arc process due to the
intricacies involved with the pulsing operation and the transference of the
arc to the component that is undergoing the thermal spraying process, which
is a characteristic particular to a “transferred arc” process.
Smith’s argument is unpersuasive. Although Cary refers only to the
use of a “nontransferred arc” process instead of a “pulsed transferred arc” in
describing the automation of plasma spraying procedures, in the context of
welding practices, Cary recognizes that each of a pulsed welding process
and a transferred arc process is known in the art as suitable for and capable
of automation. (E.g. Cary p. 126, Section 6.3 -- describing the automation of
a “pulsed” spray mode depositing material onto a surface; and p. 55, Section
3.6 -- describing the automation of a plasma “transferred arc” process.)
Thus, the complexities arising from any additional variables associated with
automating processes involving pulsing and transferred arc were already
recognized and understood by Cary. That disclosure refutes Smith’s
assertion that the automation of procedures specific to “pulsed” and
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“transferred arc” techniques presents challenges previously unknown to one
with ordinary skill in the art.
A person of ordinary skill is a person of ordinary creativity, not an
automaton. KSR Int’l Co., 550 U.S. at 421. One with ordinary skill and
creativity in the art would have reasonably appreciated from the teachings of
Cary that the automation factors particular to the techniques of pulsing and
transferring arc in welding practices would also be applicable when
employed in the automation of a known similar allied process to welding,
such as the plasma pulsed transferred arc process taught in Shubert.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Young, 927 F.2d at 591. Keshavan discloses a process associated with
welding in which a wear resistant hard facing composition is applied to
surfaces on the roller cone of a drill bit. Shubert discloses that the claimed
“pulsed plasma transferred arc process” is a known process for transferring
wear resistant material onto a substrate. Cary discloses that automation of
similar processes is in known in the art. Cary further sets forth the
procedures that one with ordinary skill in the art would know to take into
account when developing an automation technique for a plasma spraying
process in which material is deposited onto a component. One with ordinary
skill in the art would have appreciated from the combined teachings of
Keshavan, Shubert, and Cary that a pulsed plasma transferred arc process
may be automated to deposit wear resistant material onto the roller cone of a
drill bit.
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On this record, we conclude that the Examiner correctly determined
that the subject matter of claims 1, 10, 11, and 18 would have been obvious.
We sustain the rejection of those claims.
The patentability of dependent claims 2-5, 12, 13, 19, and 23-30 is not
argued apart from claims 1, 10, 11, and 18. We also sustain the rejection of
claims 2-5, 12, 13, 19, and 23-30.
Claims 20-22
Claims 20-22 are ultimately dependent on claim 1. The Examiner
rejected claims 20-22 over Keshavan, Cary, Shubert, Guest, and Jackson.
Smith challenges the Examiner’s rejection, first contending that the
arguments it made in connection with claim 1 are also applicable to claims
20-22. For the same reasons given with respect to claim 1, we reject Smith’s
arguments as applied to claims 20-22.
Smith also argues claims 20-22 collectively based on a feature added
by claim 20. That feature reads: “controlling a stand-off distance between
the hardfacing torch and a surface of the tooth.” (App. Br. 37 Claims
App’x.) In accounting for the above-quoted feature, the Examiner relied
primarily on the teachings of Cary, Guest, and Jackson. (Ans. pp. 15-16.)
Smith contends that none of those references indicate that the stand-off
distance should be controlled. We reject Smith’s contention.
In connection with welding processes, Cary discloses that the “Z
motion” between a torch and the component being welded i.e., the stand-off
distance, may be controlled. (E.g., Cary p. 198, Figure 9.1.) More
specifically, Cary provides that with respect to such welding techniques as
plasma arc welding the “arc-to-work distance must be very closely
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controlled,” and that control of the “work-to-torch distance” allows for
“quality work.” (Id. at p. 203.) Guest also discloses that with respect to
plasma flame spray coating processes, the “stand-off distance” between a
torch and a substrate is understood to impact characteristics of a coating
applied to the substrate. (Guest 1:64-2:2.) Similarly, Jackson describes that
in hardfacing surfaces using a “plasma transferred arc” (Jackson 1:49-51)
the distance between the torch and substrate being hardfaced should
generally be maintained within a specific range of 0.30 to 0.75 inches (id. at
2:53-57).
In light of the teachings of each of Cary, Guest, and Jackson, a person
of ordinary skill in the art would have readily recognized that it is desirable
to control the stand-off distance between a hardfacing torch and the
component that is being acted on by the torch. We reject Smith’s argument
to the contrary.
We sustain the rejection of claims 20-22 as unpatentable over
Keshavan, Cary, Shubert, Guest, and Jackson.
E. CONCLUSION
1. The Examiner correctly determined that of Keshavan, Shubert,
and Cary collectively teach a method for hardfacing a tooth of a roller cone
of a drill bit involving the coordinated motion of the roller cone and
hardfacing torch using a pulsed plasma transferred arc process.
2. The Examiner correctly determined that the prior art teaches the
step of controlling a stand-off distance between the hardfacing torch and a
surface of the tooth as set forth in claim 20.
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F. ORDER
The rejection of claims 1-5, 10-13, 18, 19, and 23-30 under 35 U.S.C.
§ 103(a) as unpatentable over Keshavan, Cary, and Shubert is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable
over Keshavan, Cary, Shubert, and Kanitani is affirmed.
The rejection of claims 20-22 under 35 U.S.C. § 103(a) as
unpatentable over Keshavan, Cary, Shubert, Guest, and Jackson is affirmed.

AFFIRMED

KMF

OSHA LIANG L.L.P.
TWO HOUSTON CENTER
909 Fannin Street, Suite 3500
Houston, TX 77010

Third Party Requester:
DINSMORE & SHOHL LLP
One Dayton Centre
One South Main Street, Suite 1300
Dayton, OH 45402-2023