Ex Parte 6,732,817 B2 et al

Patent Trial and Appeal Board

Apr 29, 2016

90012912 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/012,912 07/03/2013
28765 7590 04/29/2016
WINSTON & STRAWN LLP
PA TENT DEPARTMENT
1700 K STREET, N.W.
WASHINGTON, DC 20006
FIRST NAMED INVENTOR
6,732,817 B2
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
170037-4500 9916
EXAMINER
WILLIAMS, CATHERINE SERKE
ART UNIT PAPER NUMBER
3993
MAILDATE DELIVERY MODE
04/29/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SMITH INTERNATIONAL, INC.,
J. JEFFREY GUNN, and TRASKBRITT, P.C. 1
Appeal2015-008323
Reexamination Control 90/012,912
Patent US 6, 732,817 B22
Technology Center 3900
Before DANIELS. SONG, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Smith International, Inc. is the real party in interest. App. Br. 2.
2 Issued to Dewey et al. on May 11, 2004 (hereinafter the '817 patent).
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Patent US 6,732,817 B2
STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from
the Examiner's final rejection of claims 28-3 6, 39--46, 50, 79-81, and 93-
99, which are the only claims subject to this appeal, of which claims 28, 43,
and 93 are the independent claims. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We are informed that the '817 patent is involved in pending litigation
styled Schlumberger Technology Corp., Smith International, Inc. and
Specialised Petroleum Services Group, Ltd. v. Baker Hughes Inc., Case No.
4: 12-cv-3573 in the Southern District of Texas. App. Br. 2.
We AFFIRM.
THE INVENTION
The Patent Owner's invention is directed generally to "underreamers
used for enlarging a borehole below a restriction to result in a borehole that
is larger than the restriction." Spec. col. 1, 11. 16-18. Claim 28, reproduced
below, is illustrative of the claimed subject matter:
28. An expandable downhole tool for use in a drilling
assembly positioned within a wellbore having an original
diameter borehole and an enlarged diameter borehole,
comprising: a body; and at least one non-pivotable, moveable
arm having at least one borehole engaging pad adapted to
accommodate cutting structures or wear structures or a
combination thereof and having angled surfaces that engage said
body to prevent said arm from vibrating in said second position;
wherein said at least one arm is moveable between a first position
defining a collapsed diameter, and a second position defining an
expanded diameter approximately equal to said enlarged
diameter borehole.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jewkes
Eddi son
Wardley
us 6,059,051
WO 00/31371
EP 0 246 789
May 9, 2000
June 2, 2000
Nov. 25, 1987
THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 28-36, 39, 40, 42, 79, 80, and 93-98 stand rejected
under 35 U.S.C §102(b) as being anticipated by Eddison. Ans. 2.
2. Claims 43--46 and 49 stand rejected under 35U.S.C§103(a) as
being unpatentable over Eddison and Jewkes. Ans. 6.
3. Claims 28, 40, 41, 43, 50, 80, 81, 93, and 99 stand rejected
under 35 U.S.C §103(a) as being unpatentable over Eddison, Wardley, and
Jewkes. Ans. 9.
ANALYSIS
According to the Patent Owner, the Examiner's rejections, all of
which rely upon Eddison as the sole or base reference, are improper because
they use an incorrect construction of the term "body" as used in the claims.
App. Br. 12. The Patent Owner provides two main arguments against the
Examiner's construction: 1) that it "overlooks the fact that a downhole
tool's 'body' is distinct from other parts of the downhole tool" and 2) that it
"overlooks the understanding of a person of skill in the art as evidenced by
various references of record as to the meaning of the term 'body' in the
relevant field." App. Br. 13-14.
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As to the first argument, the Patent Owner appears merely to argue
that its nomenclature should control because it describes in the patent an
item called a "body," whereas other components, such as a "mandrel," have
different names and are distinct elements. App. Br. 14. While it may be true
that the '81 7 patent describes a body as a discrete element separate from
other elements when discussing various embodiments, such does not in and
of itself proscribe the Examiner's construction. Nor has the Patent Owner
acted as its own lexicographer and defined the term "body" so as to preclude
the Examiner's interpretation. We agree with the Examiner that the term
"body" as used in the claims is essentially a generic term such as "member"
or "element" that by itself provides no structural specificity. See Ans. 14.
As to the Patent Owner's argument regarding how those of skill in the
art would understand "body," the only evidence provided is that other
patents also sometimes describe a "body" as a discrete element as compared
to other elements not called a body. See App. Br. 19-20. Similar to the
Patent Owner's own Specification, the fact that these other patents label
something a "body" does not define body within the art. Further, the Patent
Owner has not shown that the parts identified in the prior art as bodies are so
similar as to create a specific identity of what a body is. Each of the
elements in the prior art identified as a "body" by the Patent Owner has a
different structure and purpose within that specific tool. For example, we
note that Eddison describes a main body 60, while also referring to specific
elements such as body 18, mandrel 16, etc. See Eddison p. 11, 11. 15-18 and
p. 12, 1. 10. Neither the main body 60 nor the body 18 is the same as that
disclosed in the '81 7 patent. It would appear from the various descriptions
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that there can be various elements referred to as a "body" and that something
can also be a "main body," which is akin to the Examiner's broad, but
reasonable construction of the term.
The Patent Owner also takes issue with the Examiner noting that the
Patent Owner has not included other elements such as a mandrel or cam or
other such elements in the claim and asserts that "the fact that the disclosed
mandrel is unclaimed [does not] have any bearing on the proper construction
of the term 'body."' Reply Br. 12. The Patent Owner misses the point of
the Examiner's statement. Had the Patent Owner included other specific
elements in the claims to differentiate what is and is not a body in the claims
(i.e., if the claim also included a mandrel as a separate element from the
claimed body, then obviously a mandrel cannot be a body), then it would be
more clear that a body is merely an element of the overall tool rather than a
generic, all-encompassing term. The claims, however, essentially recite only
a body and the movable cutting arms, such that it is perfectly reasonable to
conclude, as the Examiner has done, that the term "body," when given its
broadest reasonable construction in the claims, merely refers to the overall
portion or portions of the downhole tool that define the bore and may
include one or more other elements.
We also disagree with the Patent Owner that the Examiner abandoned
the apt analogy of a human body, simply because it was not restated in the
Answer. See Reply Br. 7. As the Examiner previously stated, a human body
includes arms, legs, and many other components that are simply part of the
body. See Advisory Action 2. The term "body" is simply a generic
placeholder to encompass all of those various body parts. It is not at all
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unreasonable for the "body" as used in the claims, without reference to any
of the other specific components of the downhole tool, to be a generic term
used to encompass all of the various structures included in the downhole tool
other than those also specifically recited. Accordingly, we see no error in
the Examiner's broad, but reasonable construction.
The Patent Owner next asserts that, even if the Examiner's
construction were proper, Eddison still does not anticipate because the
Examiner has stated that the body is a housing and that the cam sleeve of
Eddison is not a housing. Again, the Examiner's interpretation of "body" is
merely that it is the overall generic term referring to the various components
of the downhole tool that form the bore hole as discussed supra. The
Examiner clearly states that the cam sleeve is merely a part of the generic
"body" of Eddison and otherwise meets the claim limitations: "the cam
works in conjunction with the other components structurally and
functionally as the body of the '817 patent." Ans. 15. Nor does it matter
that the cam sleeve may move within Eddison's tool. The fact that a
component moves relative to other components does not make it no longer
part of the overall generic body as construed by the Examiner.
The Patent Owner purports to separately argue claims 93-99, but this
argument only partially addresses the Examiner's rejection. App. Br. 27-28.
The Patent Owner focuses only on the Examiner's description of Eddison's
port 32 as providing the "surface that engages the body." Id. It is clear from
the Examiner's rejection, however that engagement with the body as recited
in claims 28 and 93 is met by the cutter arms engagement with the cam
sleeve, which is part of the body as construed by the Examiner. Ans. 3--4.
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The Examiner's reference to the port 32 is merely further to point out how
the claimed guiding in claim 93 is accomplished. Id.
As to claim 96, we find no error in the Examiner's interpretation. The
Patent Owner's reproduction of the Examiner's marked-up version of Figure
6 clearly shows how the Examiner is interpreting "opposite sides." See App.
Br. 29. The fact that the opposing sides as interpreted by the Examiner are
both on the backside/dovetail of the cutting arm does not take them outside
the language of the claims. The Examiner has clearly pointed to two
opposing sides that are angled surfaces that meet the claim language at issue.
In general, the Patent Owner argues in this case for a narrower
construction of various claim terms than the claims actually require. It does
not appear that the Examiner would dispute that Eddison and the other
references are different than the disclosed embodiments of the '817 patent.
The claims, however, do not recite these differences and the broad claim
language used therein allows the Examiner to maintain proper rejections of
the claims over the cited art. It appears that the Examiner has provided a
path to overcome the rejections at issue, but rather than adjust the claims
accordingly, the Patent Owner has merely argued for narrower constructions.
Because we conclude that the Examiner's constructions are not unreasonably
broad, we are not persuaded of any error in the Examiner's anticipation
rejections.
Regarding the remaining combinations of references with Eddison,
the Patent Owner relies on the arguments provided with respect to the
alleged deficiencies in Eddison and the Examiner's claim constructions but
does not argue that the combinations are improper. Accordingly, for the
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reasons stated above, we sustain the Examiner's obviousness rejections as
well.
DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 28-36, 39--46, 50, 79-81, and 93-99.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(±).
AFFIRMED
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