Ex Parte 6,392,190 et alDownload PDFBoard of Patent Appeals and InterferencesMar 16, 201190009341 (B.P.A.I. Mar. 16, 2011) Copy Citation 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. Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 2 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. Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 3 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 Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 4 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 Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 5 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 Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 6 “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, Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 7 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 Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 8 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 Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 9 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 Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 10 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 Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 11 “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. Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 12 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 Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 13 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. Appeal 2011-004214 Reexamination Control 90/009,341 Patent US 6,392,190 B1 14 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. 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