Ex Parte Cariveau et al

Patent Trial and Appeal Board

Oct 31, 2012

11041910 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER THOMAS CARIVEAU,
BALA DURAIRAJAN, and SUJIAN J. HUANG
____________

Appeal 2010-006162
Application 11/041,910
Technology Center 2100
____________

Before SCOTT R. BOALICK, BRUCE R. WINSOR, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4-8, and 10. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

Invention
Appellants’ invention relates to a method for designing a fixed cutter
drill bit, including simulating the fixed cutter drill bit drilling in an earth
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formation, determining a dynamic centerline trajectory of the drill bit,
graphically displaying the dynamic centerline trajectory pattern, and
adjusting at least one design parameter based upon the graphical display of
at least the dynamic centerline trajectory pattern. The method includes
repeating simulating the fixed cutter drill bit and determining a dynamic
centerline trajectory of the drill bit, during the adjusting of at least one
design parameter. Further, the method includes outputting a fixed cutter
drill bit design. See generally Spec., Abstract.
Claim 1 is reproduced below with the disputed term emphasized:
1. A method for designing a fixed cutter drill bit, comprising:
calculating a dynamic response of a drilling tool assembly comprising
a fixed cutter drill bit disposed at a distal end thereof;
determining a dynamic centerline trajectory of the fixed cutter drill bit
based on the dynamic response;
displaying a dynamic centerline trajectory pattern;
adjusting a value of at least one design parameter for the fixed cutter
drill bit based upon at least the dynamic centerline trajectory pattern
and repeating the calculating and determining to modify a dynamic
centerline trajectory for the fixed cutter drill bit; and
outputting a fixed cutter drill bit design through use of a computer.
Claim 1 is illustrative of claims 4-8 and 10.
The Examiner relies on the following as evidence of unpatentability:
Brett EP 0 467 580 B1 Jan. 22, 1992
J.M. Hanson & W.R. Hansen, Dynamics Modeling of PDC Bits, SPE/IADC
DRILLING CONF. 589-604 (1995).

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The Rejections
The Examiner rejected claims 1, 4-8, and 10 under 35 U.S.C. § 103(a)
as unpatentable over Hanson and Brett. Ans. 3-7.1

THE OBVIOUSNESS REJECTION OVER HANSON AND BRETT
Regarding claim 1, the Examiner finds that Hanson generally
discloses a method of modeling a fixed cutter drill bit to predict the
performance of a PDC drill bit. Ans. 3. In particular, the Examiner finds
that Hanson discloses calculating, e.g., simulating, a dynamic response of a
drilling tool assembly comprising a fixed cutter drill bit disposed at a distal
end thereof. Ans. 3-4 (citing Hanson at 590, 595; Figs. 11, 12). Further, the
Examiner finds that Hanson discloses determining a dynamic centerline
trajectory of the fixed cutter drill bit based on the calculated dynamic
response. Ans. 4 (citing Hanson at 590, 595; Figs. 11, 12). Hanson also
discloses displaying a dynamic centerline trajectory pattern for the fixed
cutter drill bit. Ans. 4 (citing Hanson at 596; Figs. 9, 10).
Although Hanson discloses the availability of a “numerical dynamics
simulator,” the Examiner acknowledges that Hanson
does not expressly teach the numerical bit dynamics simulator
used for designing a fixed cutter drill bit wherein the value of at
least one design parameter for the fixed cutter drill bit is
adjusted based on the dynamic centerline trajectory pattern and
repeating the calculating and determining to modify a dynamic
centerline trajectory for the fixed cutter drill bit and outputting a
fixed cutter drill bit design through the use of a computer.

1 Throughout this decision, we refer to (1) the Appeal Brief filed August 24,
2009 (“Br.”); and (2) the Examiner’s Answer mailed January 7, 2010
(“Ans.”).
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Ans. 4. The Examiner, however, finds that Brett teaches a method of
manufacturing a drill bit, wherein the drill bit is designed on a computer. In
particular, the Examiner finds that Brett discloses adjusting the value of at
least one design parameter for a fixed cutter drill bit based on the dynamic
centerline trajectory pattern. Ans. 4-5 (citing Brett, p. 12 (Table 1); p. 13
(Table 2); p. 20, ll. 4-18, 42-48; Fig. 17A). Further, referring to iterative
loops 320 and 321 in Figure 17A, Brett discloses that the adjustment of the
at least one design parameter for the fixed cutter drill bit may be repeated to
improve the bit design. Ans. 5 (citing Brett, p. 20, ll. 12-37). Moreover,
Brett discloses outputting the adjusted drill bit design through the use of a
computer. Ans. 5 (citing Brett, p. 5, ll. 12-16; Fig. 17A). Consequently, the
Examiner concludes that a person of ordinary skill would employ the
“numerical dynamic simulator” taught by Hanson in the iterative method
taught by Brett to adjust at least one design parameter for a fixed cutter drill
and, thereby to output a drill bit design. Ans. 5-6.
Appellants argue the pending claims separately in five groups: Group
I (Claims 1 and 10),2 Group II (Claim 4), Group III (Claims 5 and 6), Group
IV (Claim 7), and Group V (Claim 8). Br. 6. With respect to independent
claim 1, Appellants argue that the proposed combination of Hanson and
Brett fails to teach or suggest all of the limitations of the pending claims. Id.
In particular, Appellants raise three arguments regarding the alleged
deficiencies in the combination of Hanson and Brett. First, Appellants argue
that Hanson fails to calculate a dynamic response of a drilling tool assembly,
as that term is defined by Appellants. Br. 7. Second, Appellants argue that,
because Hanson does not calculate the same dynamic response described in

2 Appellants do not argue claim 10 separately from claim 1.
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Appellants’ claim 1, Hanson does not teach or suggest (1) determining a
dynamic centerline trajectory based on the dynamic response or (2)
displaying a dynamic centerline trajectory pattern based on the determined
dynamic centerline trajectory.3 Br. 10. Third, Appellants argue that,
because Brett does not teach or suggest calculating a dynamic response of a
drilling tool assembly, Brett fails to teach or suggest the limitations of claim
1 that allegedly are missing from Hanson. Br. 11-12.
Appellants also argue that the additional limitations recited in claims
4-8 are missing from the combination of Hanson and Brett. Br. 13-19.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Hanson and Brett would have disclosed or suggested
“calculating a dynamic response of a drilling tool assembly comprising a
fixed cutter drill bit disposed at a distal end thereof” (emphases added)?
(2) Under § 103, has the Examiner erred by finding that Hanson and
Brett would have disclosed or suggested “adjusting”:
(a) “the at least one parameter to decrease the maximum deviation of
the dynamic centerline trajectory,” as recited in claim 4?
(b) “the at least one parameter to produce a dynamic centerline
trajectory pattern having a forward whirl,” as recited in claim 5?
(c) “the at least one parameter to eliminate a reward [sic; rearward]
whirl in the dynamic centerline trajectory,” as recited in claim 6?

3 We note that, in claim 1, Appellants fail to describe precisely how the
dynamic centerline trajectory “pattern” displayed relates to the dynamic
centerline trajectory determined.
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(d) “the at least one parameter to decrease the maximum deviation of
a triangular pattern of the dynamic centerline trajectory,” as recited in claim
7?
(e) “the at least one parameter to eliminate inner looping in the
dynamic centerline trajectory,” as recited in claim 8?

ANALYSIS
1. Claim Construction.
We begin by construing the disputed term of claim 1 which calls for, in
pertinent part, “calculating a dynamic response of a drilling tool assembly
comprising a fixed cutter drill bit disposed at a distal end thereof” (emphasis
added).
[The USPTO] applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
A pertinent definition of “assembly” is “parts of a machine etc. put
together to form a unit.” OXFORD AMERICAN DICTIONARY 47 (Heald
Colleges ed. 1980). Thus, the ordinary and customary meaning of a drilling
tool assembly is parts of a drilling tool put together to form a unit. This,
however, is only the starting point of claim construction. We must consider
the claim term in the context of the written description of the invention
provided by the Specification, Morris, 127 F.3d at 1054, without importing
limitations from the Specification into the claims, SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
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Appellants do not provide an express definition of the term "drilling
tool assembly" in the Specification. Referring to their Figure 1, Appellants
state that
FIG. 1 shows one example of a drilling tool assembly that
may be designed, modeled, or optimized in accordance with
one or more embodiments of the invention. The drilling tool
assembly includes a drill string 16 coupled to a bottomhole
assembly (BHA) 18. The drill string 16 includes one or more
joints of drill pipe. A drill string may further include additional
components, such as tool joints, a kelly, kelly cocks, a kelly
saver sub, blowout preventers, safety valves, and other
components known in the art. The BHA 18 includes at least a
drill bit. A BHA 18 may also include one or more drill collars,
stabilizers, a downhole motor, MWD tools, and LWD tools,
jars, accelerators, push the bit directional drilling tools, pull the
bit directional drilling tools, point stab tools, shock absorbers,
bent subs, pup joints, reamers, valves, and other components.
Spec. ¶ [0053] (emphases added). In Figure 1, however, Appellants merely
describe “one example” of a drilling tool assembly, and, consequently, we
do not limit the term to that meaning associated with that depiction. Instead,
we construe the term drilling tool assembly as limited only by the presence
of “a fixed cutter drill bit disposed at [its] distal end.”
Referring to the portions of the Specification that Appellants identify
as providing support for this clause (Br. 5), we find that, in one or more
embodiments, calculating a dynamic response to a drilling tool assembly
may take into account interactions between the entire drilling tool assembly
and the drilling environment. Spec. ¶ [0060]. Nevertheless, “[t]he
interactions may include the interaction between the drill bit at the end of the
drilling tool assembly and the formation at the bottom of the wellbore.” Id.
Moreover, the interactions may include interactions between the drill tool
assembly and the side (or wall) of the wellbore. Id. Thus, we broadly
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construe the first clause of claim 1 as describing calculating a simulated
dynamic response or simulating the dynamic response of drilling tool
assembly, including, but not necessarily limited to a drill string, i.e., a drill
pipe, and a fixed cutter drill bit disposed on its distal end. See Spec. ¶
[0068]. We do not, however, construe the claim language as requiring (1) a
particular drilling tool assembly or (2) a particular interaction between the
drilling tool assembly and the drilling environment.
2. Obviousness Rejections.
a. Claims 1 and 10.
As noted above, Appellants raise three arguments regarding the
alleged deficiencies in the combination of Hanson and Brett. First,
Appellants argue that Hanson fails to calculate a dynamic response of a
drilling tool assembly, as that term is defined by Appellants. Br. 7. In
particular, Appellants argue that their Figure 1 discloses a full scale-drilling
simulator including a drilling tool assembly. Id. Thus, Appellants argue that
“Hanson[’s] test device is not capable of measuring dynamic conditions
affecting a drilling tool assembly because the Hanson device does not
include drill pipe capable of responding to actual downhole conditions.”
Br. 9.
As noted above, however, Appellants’ Figure 1 is merely “one
example” of a drilling tool assembly and does not establish the definition of
that term within Appellants’ claims. Spec. ¶ [0053]. Further, Appellants’
Figure 1 does not disclose a full scale-drilling simulator including a drilling
tool assembly. Instead, Figure 1 depicts a schematic of a “conventional”
drilling assembly (Spec. ¶ [0022]) of the type that may be designed,
modeled, or optimized according to methods described in the Specification.
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Referring to Figure 1, Hanson depicts a diagram of the full-scale
drilling simulator used to test the vibration and the stability of bits. Hanson
at 590; see also Ans. 7. In particular, Hanson’s drilling simulator includes a
drill pipe having a fixed cutter drill bit at one end of the drill pipe; Hanson’s
fixed cutter drill bit is seated in a bottom hole formed in a limestone block.
Hanson at Fig. 1. Moreover, Hanson explains that, “[b]ecause its current
application is to simulate full scale drilling simulator tests, the model also
includes the influence of vertical vibration of the drilling simulator structure
and rock support platform and torsional vibration of the drill pipe in its
predictions.” Hanson at 599; see also Ans. 7. Thus, the Examiner correctly
concludes that the teachings of Hanson describe a drilling tool assembly, as
that term is used in the first clause of Appellants’ claim 1, and that Hanson’s
simulator model calculates a dynamic response, including the torsional
vibration, of the drilling tool assembly, comprising a fixed cutter drill bit.
Ans. 8-9.
Hanson notes that, in certain runs of the numerical bit dynamics
simulator, “[s]tiffness of the crosshead beam, drill pipe, and rock support
system were taken to be infinite.” Hanson at 598. Appellants argue that, if
the model assumes that if these parameters were taken to be infinite, the drill
pipe would be prevented from moving and the simulator could not take
lateral, longitudinal, or torsional movement into account. Br. 8-9. As the
Examiner correctly notes, however, these conditions apply to Hanson’s
validation runs (Hanson at 598-99), rather than to Hanson’s testing scenarios
(Hanson at 594-97). Ans. 9-10. Therefore, we agree with the Examiner that
Hanson teaches or suggests “calculating a dynamic response of a drilling
tool assembly comprising a fixed cutter drill bit disposed at a distal end
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thereof,” as that limitation is recited in Appellants’ claim 1 (emphasis
added).
Second, Appellants argue that, because Hanson does not calculate the
same dynamic response described in Appellants’ claim 1, Hanson does not
teach or suggest (1) determining a dynamic centerline trajectory based on the
dynamic response or (2) displaying a dynamic centerline trajectory pattern
based on the determined dynamic centerline trajectory. Br. 10. Because we
find that Hanson teaches calculating a dynamic response of a drilling tool
assembly, as described in claim 1, Appellants do not persuade us that the
Examiner erred in finding that Hanson also teaches or suggests the
subsequent steps of determining a dynamic centerline trajectory based on the
dynamic response or displaying a dynamic centerline trajectory pattern, as
recited in claim 1.
Third, Appellants argue that, because Brett does not teach or suggest
calculating a dynamic response of a drilling tool assembly, Brett fails to
teach or suggest the limitations of claim 1 that allegedly are missing from
Hanson. Br. 11-12. Referring to Figure 17A, Appellants argue that Brett
discloses “a method for generating a geometric model representing cutter
coordinates on a bit, and makes no mention of calculating a dynamic
centerline in a trajectory.” Id. (emphasis added). Further, Appellants argue
that Brett’s geometric model or description of a drill bit is not a “dynamic
model of a bit drilling in an earth formation.” Br. 12. Appellants
misunderstand the Examiner’s combination of the teachings of Hanson and
Brett.
As noted above, the Examiner relies on Hanson to teach the
calculation of a dynamic response and the determination of a dynamic
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centerline trajectory. Ans. 3-4, 7-12. As the Examiner correctly explains,
“[i]t is the Examiner’s position that the calculation of a dynamic centerline
trajectory is clearly taught by the teachings of Hanson as cited (as shown for
example in Figures 9-12).” Ans. 12; see also Ans. 13. We agree with the
Examiner’s finding that, because Brett describes the determination of drill
bit design parameters based on offsets or disturbing displacements to the
drill bit, Brett teaches that these offsets or displacements affect the ability of
the drill bit to maintain contact with the borehole wall and change or affect
the centerline trajectory of the drill bit. Ans. 12-13. The Examiner correctly
finds that Hanson teaches calculating of a dynamic response, determining a
dynamic centerline trajectory from that dynamic response, and displaying a
dynamic centerline trajectory (Ans. 12) and that Brett teaches the design and
simulation of drill bits and the importance of dynamic centerline trajectory,
e.g., avoiding offsets or disturbances, in bit design (Ans. 12-13). Thus,
because Brett also teaches the use of iterative steps in producing a drill bit
design and the output of a drill bit design, Hanson and Brett teach or suggest
all of the limitations of Appellants’ claim 1. Ans. 6 (citing Brett, Fig. 17A
(loops 320 and 321)); see also Ans. 15-16.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 or of claim 10, which is not argued
separately, and we sustain these rejections.
b. Claim 4.
With respect to claim 4, Appellants argue that Brett does not discuss
adjusting a bit design parameter to decrease maximum deviation of a
dynamic centerline trajectory. Br. 14. In particular, Appellants argue that
Brett only teaches disposing a cutter devoid region and bearing means on a
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drill bit to body to decrease a net radial imbalance force vector. Id. As
noted above, however, the Examiner finds that Brett teaches the advantages
of reducing offsets or displacements in bit design and that such offsets or
displacements affect the dynamic centerline trajectory of the bit. Ans. 18-
19. Moreover, Appellants fail to demonstrate why the reduction in radial
imbalance force vectors and the return of the drill bit to an equilibrium
position in response to offsets or disturbing displacements does not achieve
the function recited in Appellants’ claim 4, namely, the decrease maximum
deviation of a dynamic centerline trajectory. For the foregoing reasons,
Appellants have not persuaded us of error in the rejection of claim 4, and we
sustain that rejection.
c. Claims 5 and 6.
Claims 5 and 6 recite adjusting the at least one parameter “to produce
a dynamic centerline trajectory pattern having a forward whirl” or “to
eliminate a reward [sic; rearward] whirl in the dynamic centerline
trajectory,” respectively. Appellants argue that, regarding the Examiner’s
rejection of these claims, the portion of Brett cited by the Examiner fails to
mention bit whirl, and the portions of Hanson cited by the Examiner do not
describe how a bit design parameter may be adjusted to produce a particular
dynamic centerline trajectory producing forward bit whirl or eliminating
rearward bit whirl. Br. 15.
With respect to the alleged absence of a mention of bit whirl in Brett,
we do not agree with Appellants. In support of the rejection, the Examiner
cites page 4, lines 20-33, of Brett. Ans. 6, 19. Brett there describes that
“[t]he center of rotation of the drill bit remains at a substantially fixed
location on the drill bit body during drilling, and backward whirling and its
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damaging effects can be avoided.” Brett, p. 4, ll. 31-33 (emphasis added).
Thus, Brett clearly describes the damaging effects of backward or rearward
whirling and suggests the advantages of its elimination. Further, Brett states
that
by designing the drill bit to control the magnitude and direction
of the radial imbalance force vector, and by disposing a cutter
devoid region and a bearing means on a selected location on the
drill bit body corresponding to the direction of the net radial
imbalance force vector, stable drill bit rotation . . . can be
achieved.
Brett, p. 4, ll. 28-31. Thus, contrary to Appellants’ argument, we agree with
the Examiner that Brett describes at least rearward whirling and parameters
that may be adjusted to eliminate it.
As noted above, the Examiner does not rely on Hanson to teach or
suggest how a bit design parameter may be adjusted to produce a particular
dynamic centerline trajectory producing forward bit whirl or eliminating
rearward bit whirl. Ans. 12, 20. Nevertheless, referring to Figures 11 and
12, the Examiner correctly notes that Hanson describes that the depicted bit
trajectories show the transition of the bit from unstable (rearward whirling)
drilling to stable (forward whirling) drilling. Ans. 18-19 (citing Hanson at
596). Thus, we agree with the Examiner that Hanson and Brett teach or
suggest all of the limitations of claims 5 and 6.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of claims 5 and 6, and we sustain these rejections.
d. Claims 7 and 8.
With respect to claim 7, the Examiner acknowledges that “Brett does
not specifically describe or show in figures a ‘triangular’ pattern” of the
dynamic centerline trajectory. Ans. 20. Similarly, the Examiner
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acknowledges that “Brett does not specifically describe or show in figures an
‘inner looping’ pattern” in the dynamic centerline trajectory pattern. Ans.
21. Moreover, the Examiner does not contend that this deficiency in Brett is
satisfied by Hanson. The Examiner’s reliance on Brett’s general teaching
regarding the avoidance of “unstable” bit designs is insufficient to
demonstrate the obviousness of the subject matter of Appellants’ claims 7
and 8.4
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of claims 7 and 8, and we do not sustain these rejections.5

CONCLUSION
The Examiner did not err in rejecting claims 1, 4-6, and 10 under
§ 103. The Examiner, however, erred in rejecting claims 7 and 8 under
§ 103.
DECISION
Accordingly, we affirm the Examiner’s rejection of claims 1, 4-6, and
10 and reverse the Examiner’s rejection of claims 7 and 8.

4 We note that Hanson appears to depict an “inner looping” pattern in
Figure 11.
5 If prosecution is reopened to consider further claim 7 or 8, the Examiner
may consider whether either of these claims satisfies the requirements of 35
U.S.C. § 112, fourth paragraph. We note that Appellants fail to identify bit
design parameters which would satisfy claim 7 or claim 8. Alternatively,
claims 7 and 8 appear only to differ in the result achieved by the claimed
invention. See MPEP§ 2173.05(g).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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