Ex Parte Lyons et alDownload PDFPatent Trial and Appeal BoardMay 30, 201813245102 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/245,102 09/26/2011 91524 7590 06/01/2018 Traskbritt, P.C. I Baker Hughes, Inc. Baker Hughes, Inc. P.O. Box 2550 Salt Lake City, UT 84110 FIRST NAMED INVENTOR Nicholas J. Lyons 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. 1684-Pl0149.l(CUT4-50699- 9920 EXAMINER MOORE, ALEXANDRA MARIE ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 06/01/2018 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): USPTOMail@traskbritt.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICHOLAS J. LYONS and DANNYE. SCOTT Appeal2017-003976 Application 13/245, 102 Technology Center 1700 Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and MONTE T. SQUIRE, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's April 6, 2016 decision finally rejecting claims 1-5 ("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We reverse. 1 Appellants identify the real party in interest as Baker Hughes Incorporated (Br. 2). Appeal2017-003976 Application 13/245,102 CLAIMED SUBJECT MATTER Appellants' disclosure is directed to cutting elements which include a substrate, a thermally stable polycrystalline table comprising a superhard material secured to the substrate, and a layer of metal interposed between and attaching the substrate and the thermally stable polycrystalline table (Abstract). Details of the claimed invention are set forth in claim 1, which is reproduced below from the Claims Appendix to the Appeal Brief: 1. A cutting element, comprising: a substrate; a thermally stable polycrystalline table compnsmg interbonded grains of a superhard material and interstitial spaces among the interbonded grains of the superhard material, the thermally stable polycrystalline table being at least substantially devoid of catalyst material used to form intergranular bonds among the interbonded grains of the superhard material; a substrate portion interposed between the thermally stable polycrystalline table and the substrate; and a metal material attaching the substrate to the substrate portion, the metal material extending from proximate the substrate, through the substrate portion, and partially into the thermally stable polycrystalline table, the metal material exhibiting a melting temperature of less than 1320°C. REJECTION Claims 1-5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Knemeyer2 in view of Kesha van. 3 2 Knemeyer, US 4,225,322, issued September 30, 1980. 3 Keshavan et al., US 2008/0302579 Al, published December 11, 2008. 2 Appeal2017-003976 Application 13/245,102 DISCUSSION In order for a claim in a patent application to be rejected under § 103(a), the examiner must show a prima facie case of obviousness, including the presence of each element of the claim. In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants contend that the combination of Knemeyer and Keshavan does not teach, suggest or otherwise render obvious the following claim limitation: "a metal material attaching the substrate to the substrate portion, the metal material extending from proximate the substrate, through the substrate portion, and partially into the thermally stable polycrystalline table" (Br. 9). Claim 1 recites that the metal material extends from the substrate, entirely through the substrate portion, and into the thermally stable polycrystalline table. The Examiner makes several findings in order to show that this claim limitation would have been obvious over the cited art. First, the Examiner finds that this limitation would inherently be met by the fabrication process of Knemeyer because "the metal material would necessarily infiltrate adjacent portions of the compact to some degree based upon the spatial orientation of the grains of materials, the degree of densification of the substrate and substrate portion, as well as the specific conditions of the high temperature high pressure fabrication process" (Final Act. 4). 3 Appeal2017-003976 Application 13/245,102 "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis[,] the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." PAR Pharm., Inc. v. TWI Pharms, Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014) (emphasis added). To properly rely on the doctrine of inherency in a rejection, "the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990). In this instance, the Examiner has found that, inter alia, under the specific conditions of the high temperature densification, the spatial orientation of the grains of material would control the degree of infiltration of the metal material throughout the cutting element components (Final Act. 4). Thus, the Examiner's findings contemplate that conditions could exist in which the metal does not extend from the substrate, entirely through the substrate portion, and into the thermally stable polycrystalline table, since the degree of infiltration is affected by various parameters. Accordingly, this limitation is not inherent in the combination of references. The Examiner also determines that a person of skill in the art would have optimized the process so that the metal material extends from the substrate, entirely through the substrate portion, and into the thermally stable polycrystalline table because Keshavan suggests incorporation of a metal to improve attachment of the diamond table to the substrate (Final Act. 5, citing Kesha van i-fi-120, 101, and 102). However, while Kesha van does, in fact, teach that a metal layer can improve attachment of the diamond table to 4 Appeal2017-003976 Application 13/245,102 the substrate, nothing in Keshavan or Knemeyer provides a teaching or suggestion that the metal layer should penetrate entirely through the substrate portion from the substrate to the thermally stable polycrystalline layer. The Examiner finds that "[t]here is no evidence or explanation ... that reasonably demonstrates that Knemeyer' s compact, made of a carbide material that Appellant describes to be suitable, would not be capable of permitting some degree of infiltration of the metal material through the carbide mass (21) and partially into the thermally stable polycrystalline diamond" (Ans. 7). However, Appellants do provide an explanation, with citations to descriptions in their Specification, as to what modifications are needed to the carbide material to achieve the necessary degree of infiltration (Br. 11-12, citing Spec. i-f 36). Accordingly, in view of all of the evidence and arguments adduced by Appellants and by the Examiner, we determine that a preponderance of the evidence does not support the Examiner's conclusion that claim 1 would have been obvious over the combination of Knemeyer and Kesha van. Accordingly, we reverse the rejection of claim 1, as well as the rejection of claims 2-5, each of which depends from claim 1. Appellants also request rejoinder of claims 6-8 and 10-20, which were previously withdrawn from consideration. The withdrawal of a claim from consideration pursuant to a restriction or election requirement is a petitionable matter not subject to review by the Board. See In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002) (petitionable issues are not subject to review by the Board). Accordingly, we cannot act on this request. 5 Appeal2017-003976 Application 13/245,102 CONCLUSION On the record before us, we conclude that Appellants have demonstrated the Examiner reversibly erred in rejecting claims 1-5 over Knemeyer in view ofKeshavan, and REVERSE that rejection. REVERSED 6 Copy with citationCopy as parenthetical citation