Ex Parte Liu et al

Patent Trial and Appeal Board

Oct 11, 2017

13741192 (P.T.A.B. Oct. 11, 2017)

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.
13/741,192 01/14/2013 QINGYUAN LIU 07-ME 123-US-DIV 2218
10395 7590 10/13/2017
SMTTH TNTFRNATTONAT TNC EXAMINER
Patent Services WOOD, ELIZABETH D
1310 Rankin Rd.
HOUSTON, TX 77073 ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
10/13/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL
Ex parte QINGYUAN LIU, RUSSELL STEEL,
PACKER, and SCOTT HORMAN
BOARD
SCOTT
Appeal 2017-000786
Application 13/741,1921
Technology Center 1700
Before JEFFREY T. SMITH, JULIA HEANEY, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—3 and 19—34. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Smith International,
Inc. Appeal Br. 3.
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Application 13/741,192
STATEMENT OF THE CASE2
Appellants describe the invention as relating to tungsten rhenium
compounds and composites. Spec. 12. The composite could be used for
wear resistant tools. Id. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A polycrystalline composite material comprising:
a binder comprising,
tungsten, wherein the tungsten is within the range of
approximately 50% to approximately 99% of the volume of the
binder, and
at least one of molybdenum or lanthanum, wherein the at least
one of molybdenum or lanthanum is within the range of
approximately 1 % to approximately 50% of the volume of the
binder; and
a polycrystalline ultra hard material,
wherein said polycrystalline composite material is formed by
high pressure high temperature sintering tungsten, an ultra hard
material, and a powder material selected from the group
consisting of molybdenum, lanthanum, and combinations thereof
at a pressure in the range of approximately 20 to approximately
65 kilobars and temperature in the range of approximately 1000
°C to approximately 2300 °C.
Appeal Br. 9 (Claims App’x).
REFERENCE AND REJECTION
On appeal, the Examiner maintains the rejection of claims 1—3 and
19-34 under 35 U.S.C. § 103 as unpatentable over Twersky, et al., WO
2008/072180 A2, published June 19, 2008 (hereinafter “Twersky”).3
2 In this opinion, we refer to the Final Office Action dated February 26, 2015
(“Final Act.”), the Appeal Brief filed November 19, 2015 (“Appeal Br.”),
and the Examiner’s Answer dated June 15, 2015 (“Ans.”).
3 Appellants provide citations to the U.S. Publication of Twersky: U.S.
Patent Publication Number 2010/0132266 Al, published June 3, 2010. The
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Application 13/741,192
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identity reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellants do not separately argue the dependent claims on appeal.
We therefore limit our discussion to independent claims 1 and 25. Each
dependent claim on appeal stands or falls with the claim it depends from. 37
C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Twersky teaches a metallic binder employed
with an ultra hard material. Ans. 3. Twersky’s ultra hard material may be
polycrystalline cubic boron nitride (PCBN). Twersky 5. Cubic boron
nitride is also identified as an ultra hard material in Appellants’
Specification. Spec. 5:24—27. The Examiner finds that Twersky’s metallic
binder may consist of 60% tungsten, molybdenum, and/or lanthanum thus
overlapping the percentages recited in claims 1 and 25. Ans. 3; see also
Twersky 5. The Examiner further finds that Twersky teaches substantially
the same process steps as the recited claims such that a skilled artisan
Examiner refers to page numbers of the PCT Publication. We also refer to
the PCT Publication’s page numbers.
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Application 13/741,192
“would have the expectation of producing the same final product.” Ans. 3—
4; see also Twersky 2—3, 13—19 (teaching high pressure high temperature
production). The Examiner thus concludes that claims 1 and 25 are obvious
over the teachings of Twersky. Ans.
Appellants argue that Twersky does not suggest “wherein said
polycrystalline composite material is formed by high pressure high
temperature sintering tungsten, an ultra hard material, and a powder material
selected from the group consisting of molybdenum, lanthanum, and
combinations thereof’ (as recited in claim 1) and does not suggest “where
said binder is formed by another high pressure high temperature sintering of
tungsten and at least one of molybdenum powder or lanthanum powder” (as
recited in claim 25). Appeal Br. 5—6. Each of these two recitations are
written in a product-by-process format: the preamble recites “[a]
polycrystalline composite material comprising,” and the claimed composite
material is defined “at least in part in terms of the method or process by
which it is made.” Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1315 (Fed. Cir. 2006) (internal quotes and citation omitted).
Appellants do not dispute that these are product-by-process recitations.
Because claims 1 and 25 include product-by-process recitations,
“determination of patentability is based on the product itself,” not on “its
method of production.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985).
“If the product in a product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” Id.
For product-by-process claims, the Examiner “bears a lesser burden of
proof in making out a case of prima facie obviousness for product-by-
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Application 13/741,192
process claims because of their peculiar nature than would be the case when
a product is claimed in the more conventional fashion.” Application of
Fessmann, 489 F.2d 742, 744 (CCPA 1974). Thus, “when the prior art
discloses a product which reasonably appears to be either identical with or
only slightly different than a product claimed in a product-by-process claim,
a rejection based alternatively on either section 102 or section 103 of the
statute is eminently fair and acceptable.” Id. (quote and citation omitted).
Once the examiner establishes a prima facie case of anticipation or
obviousness, the burden “to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product”
shifts to the Appellants. Thorpe, 111 F.2d at 698 (citation omitted).
Here, as explained above, the Examiner makes findings supported by
a preponderance of the evidence establishing that Twersky teaches a
composite made of the same materials as those recited in claims 1 and 25
and formed using the same or similar high temperature and high pressure
process. The Examiner thus provides an adequate basis for establishing that
Twersky discloses a product identical or only slightly different than the
product of claims 1 and 25, and Appellants’ attempt to distinguish Twersky
from claims 1 and 25 based on process (Appeal Br. 5—6) is unpersuasive.
Cf. In re Thorpe, 111 F.2d at 697.
Appellants also argue that, based on the October 1, 2014, Declaration
of Dr. Madapusi Keshavan (“the Keshavan Deck”), the material of claims 1
and 25 are different than the material taught by Twersky. Appeal Br. 6—7.
We agree with the Examiner, however, that the Keshavan Declaration is
unpersuasive because it provides no evidence supporting a difference
between the materials. Appeal Br. 6—7.
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Moreover, the statements made by the Keshavan Declaration do not
persuasively distinguish between the teachings of Twersky and claims 1 and
25. The Declaration emphasizes that Twersky teaches the use of superalloys
and states that it has a “highest intensity diffraction peak, (other than CBN).
. . corresponding to the dominant Co, Fe or Ni alloy component.” Keshavan
Deck 14. The Declaration, however, does not relate diffraction peak to
volumetric percentages as recited in claims 1 and 25 and does not address
the portion of Twersky teaching that the binder may be more than 50%
tungsten, molybdenum, and lanthanum. Twersky 5. In other words, the
Declaration’s point of emphasis does not serve to distinguish Twersky from
the claims.
The Declaration also emphasizes that high pressure high temperature
(HPHT) sintering as claimed will result in distinct phases such that “[t]he
materials as claimed will have a distinctly different chemical identity from
the materials taught by Twersky et al.” Keshavan Deck | 5. Aside from
lacking direct evidence to prove this point (as emphasized by the Examiner,
Ans. 6—7), the Declaration also does not explain how the claimed HPHT
process results in products different from Twersky given that Twersky also
teaches high pressure and high temperature, does not explain why the
“alloy” of Twersky is different than the powders of claims 1 and 25, and
does not explain why any of these differences matter to the end product.
Meanwhile, the Examiner finds that the Appellants’ Specification supports
that there is no distinction in final product based upon use of metal powders
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Application 13/741,192
versus alloy powders4 (Ans. 6—7 citing Spec. Tflf 3, 4, 45, 46), and Appellants
do not dispute this finding. The Examiner also finds that Twersky teaches
its binder remains in metallic form (indistinguishable from metal powders)
(Ans. 5), and Appellants also do not dispute this finding.
In sum, the Keshavan Declaration is conclusory and insufficient to
outweigh the evidence cited by the Examiner indicating that the Twersky
product and product of claims 1 and 25 would be the same. Cf. Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to
prior publications than to subsequent conclusory statements by experts, the
Board acted well within [its] discretion.”).
Because Appellants do not identify reversible error, we sustain the
Examiner’s rejection.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1-3 and 19-34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
4 Based on our review of the evidence presented in this Appeal, we, like the
Examiner, have no reason to consider “the provision of powders of
individual metals distinct from provide particulate alloy material.” Ans. 5.
7