Ex Parte Lockwood et al

Patent Trial and Appeal Board

Nov 30, 2016

11937969 (P.T.A.B. Nov. 30, 2016)

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.
11/937,969 11/09/2007 Gregory T. Lockwood 05516/359001 2859
59977 7590 12/02/2016
OSHA, LIANG LLP / SMITH
TWO HOUSTON CENTER
909 FANNIN STREET, SUITE 3500
HOUSTON, TX 77010
EXAMINER
DAVIS, SHENG HAN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
docketing@oshaliang.com
bergman @ oshaliang. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY T. LOCKWOOD and JONAN FULENCHEK
Appeal 2015-004047
Application 11/937,969
Technology Center 1700
Before JEFFREY T. SMITH, N. WHITNEY WILSON,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 2—21 and 25—29 of Application
11/937,969 under 35 U.S.C. § 103(a) as obvious. Final Act. (Feb. 3, 2014).
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Smith International, Inc. is identified as the real party in interest. Appeal
Br. 4.
Appeal 2015-004047
Application 11/937,969
BACKGROUND
The present application describes a drill bit having multiple ribs
impregnated with two or more types of abrasive particles each encapsulated
in a matrix. Spec. 6—7.
Claim 14 is representative of the pending claims and is reproduced
below:
14. A drill bit, comprising:
a bit body; and
a plurality of diamond impregnated ribs formed in the bit body
and separated by channels, wherein at least one diamond
impregnated rib comprises:
a plurality of first encapsulated particles, each first encapsulated
particle comprising a first abrasive particle encapsulated by a
first matrix material shell;
a plurality of second encapsulated particles, each second
encapsulated particle comprising a second abrasive particle
encapsulated by a second matrix material shell, wherein the first
encapsulated particles and the second encapsulated particles
comprise at least one property difference therebetween.
Appeal Br. 26—27 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 2—5, 7—11, 14, 15, 17, 25, and 28 are rejected under
35 U.S.C. § 103(a) as obvious over Wilder et al. (US 3,841,852, iss. Oct. 15,
1974) (“Wilder”) in view of Alsup (US 6,095,265, iss. Aug. 1, 2000)
(“Alsup”) and further in view of Boyce (US 6,138,779, iss. Oct 31, 2000)
(“Boyce”). Final Act. 8; Answer 2, 6.
2. Claims 6, 12, 13, 16, 21, and 27 are rejected under 35 U.S.C.
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§ 103(a) as obvious over Wilder in view of Alsup and further in view of
Smith et. al. (US 7,048,081 B2, iss. May 23, 2006) (“Smith”). Final Act. 14.
3. Claims 18 and 29 are rejected under 35 U.S.C. § 103(a) as
obvious over Wilder in view of Alsup and Mudholkar et al. (US
2004/0137229 Al, pub. Jul. 15, 2004) (“Mudholkar”), and further in view of
Viel et al. (US 2006/0283637 Al, pub. Dec. 21, 2006) (“Viel”). Final Act.
16.
4. Claims 19, 20 and 26 are rejected under 35 U.S.C. § 103(a) as
obvious over Wilder in view of Alsup, Mudholkar, and Viel, and further in
view of Boyce. Answer 23.
DISCUSSION
Rejection 1.
The Examiner rejected claims 2—5, 7—11, 14, 15, 17, 25, and 28 as
obvious over Wilder in view of Alsup and further in view of Boyce.2
On review, Appellants assert reversible error on several bases.
Appellants argue that one of skill in the art would not have combined the
teachings of Wilder and Boyce, Appeal Br. 8—9, nor the teachings of Wilder
and Boyce with Alsup, id. at 10. Appellants additionally argue that the cited
art does not teach each element of the claims. Specifically, they assert that
“none of the cited prior art teaches using two types of encapsulated
particles,” id. at 12, and that “none of the cited prior art teaches using two
different encapsulating matrix materials,” id.
2 This rejection originally included claims 19, 20, and 26 but was
subsequently amended. See Answer 2.
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Application 11/937,969
In support of their first argument, Appellants assert that one would not
combine Boyce, which teaches to coat a hard particle with a matrix material
so as to form a layer of hardfacing material, with Wilder, which teaches to
form a resin-set abrading structure. Id. at 9. In response, the Examiner
points out that there is no rejection based solely on these references and
indicates that “[t]he combination of these references is within the context of
Alsup and therefore the discussion of Wilder in view of Boyce . . . mis­
applies the intended combination.” Answer 18. The Examiner found Wilder
taught drill bits having various types of abrasives. The Examiner found
Wilder did not describe the rib feature which is taught by Alsup and Boyce
was cited to teach the combination of mixed-abrasive and mixed-coating
structure. Final Act. 8—10. Appellants’argument does not establish
reversible error in the rejection.
Appellants further argue that it would not have been obvious for one
of skill in the art to employ the composition of Wilder and/or Boyce in
forming the drill bit rib structure taught by Alsup. Appeal Br. 9—12. They
assert that, while Alsup relates to “impreg bits” with two types of abrasive
particles, it specifies that the different particles are placed so that they form
different segments of the rib. Id. at 9—10. This permits one part of the rib to
wear preferentially to form a channel for liquids to pass through. Id.
Appellants offer the Declaration of Yuri Burhan in support of the view that
one consulting the teachings of Alsup would likely adopt its full teachings
such that the different abrasive particles would be separated into their own
segments. Id. at 9—10; Burhan Decl. | 8. The Declaration further indicates
that one of skill in the art “would consider the teachings of Alsup more
relevant than the teachings of Wilder and Boyce to forming an impreg bit, as
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Application 11/937,969
impreg bits are uniquely designed for abrading an earthen formation in
downhole conditions.” Burhan Decl. | 8.
The Examiner determined this reasoning inadequate and stated further
that it “does not distinguish why Alsup's segmented abrasives would be
preferred over Wilder or Boyce.” Answer 19. The Examiner also notes
Burhan’s statement that “particularly, the ribs of an impreg bit are designed
to perform the majority of the cutting action by preferentially wearing away
supporting matrix material to expose diamond particles, or other ultrahard
particles, which are impregnated within the supporting matrix material" and
finds such statement generally descriptive of the compositions of Wilder and
Boyce. Id. at 19-20; see, e.g., Wilder, 1:20-23 (“The purpose of the
secondary abrasive particles is to wear away preferentially thus exposing
new abrasive faces of the primary abrasive particles.”)
“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Wilder teaches that it is
broadly applicable to “abraders” which may include “oil well drill bits.”
Wilder, 2:29-30. It further specifies that “[w]e prefer to employ, because of
their physical properties . . . one of the following abrasive material,
preferring among them diamonds, either natural or synthetic.” Id. at 2:41—
45. This would seem to fall within the definition of “diamond impregnated”
set forth in the Specification. Spec. 2—3. Thus, Wilder teaches a diamond
impregnated drill bit, though not with a rib structure. At a minimum, Wilder
teaches the use of encapsulated diamonds and a second encapsulated
abrasive particle in an oil well drill bit. Alsup teaches the use of abrasives
on a rib in a drill bit. Answer 18. Substituting the composition of Wilder
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(having multiple encapsulated particles) for the segmented compositions of
Alsup yields a predictable result. Accordingly, Appellants’ arguments do
not establish reversible error in the Examiner’s rejection.
We have considered the Burhan Declaration, but do not find it
persuasive of establishing patentability of the appealed subject matter.
Although factual evidence is preferable to opinion testimony, such testimony
is entitled to consideration and some weight so long as the opinion is not on
the ultimate legal conclusion at issue. While an opinion as to a legal
conclusion is not entitled to any weight, the underlying basis for the opinion
may be persuasive. In re Chilowsky, 306 F.2d 908, 916 (CCPA 1962).
Some weight ought to be given to a persuasively supported statement of one
skilled in the art as to what was not obvious to him (see In re Lindell, 385
F.2d 453, 456 (CCPA 1967) and In re Weber, 341 F.2d 143 (CCPA 1965)).
Here, Mr. Burhan has provided his opinion as to what a person of ordinary
skill in the art would have understood based upon consideration of the
present Specification and the prior art cited in the present record.
(Declaration || 4—9). Mr. Burhan, at paragraph 8 of his declaration, states,
“[ajfter reading the cited references, I would not have thought it obvious to
use at least two types of encapsulated hard particles to form the rib of an
impreg bit.” However, Mr. Burhan does not direct us to evidence from the
cited references or other documents to support this statement. Moreover, as
established on the present record, Wilder teaches drill bits having two
different abrasives and different encapsulation material. See Wilder,
Example 5. Alsup is directed to diamond impregnated drill bits comprising
diamond and/or other super-hard materials distributed within a supporting
material; and Boyce discloses drill bits having coated particles or coated
particles of superabrasive.
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Application 11/937,969
Appellants further argue that the cited prior art references do not teach
or suggest all elements of the claims. They allege that “none of the cited
prior art teaches using two types of encapsulated particles,” Appeal Br. 12,
and that “none of the cited prior art teaches using two different
encapsulating matrix materials,” id.
The Examiner finds that “Wilder in fact does teach use of two
different abrasives and different encapsulation material.” Answer 17.
Wilder’s specification provides support for such finding. Wilder 12:50-61.
Further, Appellants seem to acknowledge “Wilder's teachings that two types
of particles can be coated with different metal coatings to equalize their
densities.” Appeal Br. 13. Accordingly, Appellants’argument does not
establish reversible error in the Examiner’s finding that Wilder teaches the
use of two different abrasives having different encapsulation materials.
Rejection 2.
The Examiner rejected claims 6, 12, 13, 16, 21, and 27 as obvious
over Wilder in view of Alsup and further in view of Smith. Final Act. 14.
Appellants incorporate their previous argument that one of skill in the art
would not combine the teachings of Wilder and Alsup, id. at 15, and further
contend that Smith does not teach or suggest the use of a third encapsulated
abrasive, id. at 15—17. The first argument is not persuasive for the reasons
articulated above.
In regard to their second argument, Appellants argue that Smith is
inapposite as it teaches a “conglomerate of superabrasive particles.” Appeal
Br. 15—17. That is, rather than a composition of abrasive particles,
encapsulant, and a continuous phase, Smith teaches a cutting element
formed by diamonds bound directly to other diamonds. Further, Appellants
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assert that the different wear rates taught by Smith arise from different
bonding strength in the direct diamond-to-diamond bonds rather than from
the relative hardness of the abrasives of Wilder. Id. at 17.
It is known in the art to use diamond abrasives in drill bits, see, e.g.,
Wilder, 2:41—45; Alsup, 1:16—17; and Viel 12, and to encapsulate multiple
abrasives in different matrices, Wilder 12:50—61. Smith teaches the use of
diamond feedstocks of two or more different strengths, Smith 7:35—39, as
well as three or more size ranges, id. at 6:32—35. Smith further teaches
exemplary ratios of diamonds of varying wear characteristics that include a
ratio of 1:1. Id. at 6:59-63. Moreover, the Specification concedes that “one
of ordinary skill in the art would appreciate the particular combination of
encapsulated particle types and amounts may be varied depending on the
particular application.” Spec. 16. Accordingly, taken as a whole, the
teachings of the cited references tend to show that the use of multiple
diamond feedstocks that vary in characteristics such as size and wear rate in
the rib of a diamond impregnated drill bit would have been obvious to a
person of ordinary skill in the art.
Rejection 3.
The Examiner rejected claims 18 and 29 as obvious over Wilder in
view of Alsup and Mudholkar and further in view of Viel. Final Act. 16.
Appellants seek review on two bases. First, they argue that one of skill in
the art would not look to Mudholkar to determine the appropriate diamond
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concentration in the rib of a drill bit.3 Appeal Br. 18—20. Second,
Appellants argue that the cited prior art does not teach the claimed height to
width ratio. Id. at 20-23.
The Examiner finds that Mudholkar teaches the claimed diamond
concentration (“a minimum diamond concentration of 100”). Final Act. 17;
see also Mudholkar, 132. Mudholkar provides that “[concentration of
coated diamond and fabrication of tools comprising coated superabrasive
particles is conventional and well known in that art.” Mudholkar, 132.
Mudholkar further provides that “[i]n one embodiment, the concentrations
range from about 5 to 200.” Id. Appellants argue that one of skill in the art
would know that Mudholkar does not relate to materials for downhole
drilling and therefore not look to its teachings. Appeal Br. 19. In support,
Appellants note Mudholkar’s use of a metal, metal alloy or resin binder,
Mudholkar 129, rather than “a hard matrix material, such as tungsten
carbide,” Appeal Br. 19. Appellants assert that the binder of Mudholkar
“would not be able to withstand the downhole conditions encountered by the
diamond impregnated drill bits taught in the present application.” Id. The
Examiner, however, notes that Alsup, which the Appellants acknowledge to
be relevant to downhole drilling, teaches a metallic binder phase of copper
3 In their Reply Brief, Appellants seek to put forth a new argument regarding
whether the range disclosed by Mudholkar adequately teaches the claimed
range. Under regulations governing appeals to the Board, a new argument
not timely presented in the Appeal Brief will not be considered when filed in
a Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Appeal Brief. See Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative) as well as 37 C.F.R. §
41.37 and § 41.41. Because the record contains no such showing, we will
not consider the new argument in the Reply Brief.
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or other non-ferrous alloys. Answer 25; see also Alsup, 2:19-22. Thus, the
materials taught by Mudholkar are known to be used in downhole drilling.
Moreover, the claims at issue are to a “drill bit,” without limitation as to use
or suitability for downhole conditions. Accordingly, Appellants have not
adequately explained why one of skill in the art would not look to the
teachings of Mudholkar regarding diamond concentration.
Appellants also argue that Mudholkar differs from the present
application in that it teaches to use the relevant concentration only on
abrasive or grinding surfaces. Appeal Br. 18. This however, is consistent
with the application before the Board which provides that “the encapsulated
particles disclosed herein may have localized placement in a drill bit” and
further that the particles may be confined to the leading side of a rib or
blade. Spec. 21.
Accordingly, Appellants have not established reversible error in the
Examiner’s determination that one of skill in the art would look to
Mudholkar to determine an appropriate diamond concentration for a drill bit.
Appellants additionally argue that the cited prior art does not teach the
claimed height to width ratio. Appeal Br. 20-23. Claims 18 and 29 require
that “a portion of at least one rib has a height to width ratio of greater than
about 1.75.”
The Examiner relies on Viel to supply the teaching of a rib with such
a ratio: “Viel explains that the blades can be about 2mm wide and 4.8mm in
length (para. 0071) and that they can be at the center of the drill bit (Fig. 12,
394 and 393).” Final Act. 18. Appellants assert that this teaching is
inadequate as height, in the present claims, is distance from the body of the
drill rather than length. Appeal Br. 21; see also Spec., Fig. 6B (rib height
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Application 11/937,969
shown as 640). Therefore, Appellants assert, there is no teaching of the
requisite height to width ratio.
Appellants further rely upon the Declaration of Hems Mada. Mr.
Mada testifies as follows:
As a person with considerable experience in designing
impreg bits, I am aware that, generally, as a rib height increases
and width decreases and with all other design parameters
remaining the same, the rib may be more prone to breakage. I
am also aware that, generally, increasing the concentration of
diamond in a diamond impregnated bit rib may result in the rib
having increased hardness, but decreased toughness, and thus
may also be more prone to breakage. Thus, when designing an
impreg bit rib, I consider the effects of increasing a height to
width ratio of the rib in combination with the type of material
used to form the rib.
Mada Declaration | 8. Thus, the relationship between the height and width
of the rib of a drill bit is known to be a result-effective variable.
“[WJhere the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” Application of Alien, 220 F.2d454, 456 (C.C.P.A. 1955).
It is apparent from the Mada Declaration that the relationship between rib
height and width are known in the prior art. See also, Alsup 1:53—57
(discussing “raised ribs” on a drill bit). Accordingly, as in Allen, it is not
inventive to discover the optimum relationship of the relevant variables
(here, rib height and width).
Rejection 4.
The Examiner issued a new rejection for claims 19, 20 and 26 in the
Answer. Answer 2—5, 23. These claims depend from claim 18, requiring,
inten alia, a rib having a height to width ratio greater than 1.75. Claim 19
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further requires a second type of encapsulated particle and a second matrix
material. Claim 20 requires that the first and second matrix materials have
different wear properties. Claim 26 depends from claim 19 and requires that
the particles or matrix materials differ in one of several specified ways.
Appellants argue that the rejection is erroneous on several bases.
First, they reiterate their argument that one of skill in the art would not
combine the teachings of Wilder, Boyce and Alsup. Reply 4—8. Second,
Appellants reiterate their argument that one of skill in the art would not look
to the teaching of Mudholkar regarding diamond concentration. Id. at 8—9.
Third, they reiterate their argument regarding the required height to width
ratio. Id. at 9-11.4
These arguments are each addressed above and are found
unpersuasive for the reasons set forth above.
CONCLUSION
The rejection of claims 2—21 and 25—29 is affirmed.
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 Appellants briefly assert that the number of references suggests that the
Examiner engaged in hindsight reconstruction. Reply Br. 11. This
contention, however, is insufficiently supported by argument or citation to
evidence to present an issue for appeal. See 37 CFR 41,37(c)(iv).
12