Ex Parte Lyons et al

Patent Trial and Appeal Board

Dec 21, 2017

13040921 (P.T.A.B. Dec. 21, 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.
13/040,921 03/04/2011 Nicholas J. Lyons 1684-10356(CUT4-51771-US) 3916
91524 7590 12/26/2017
Traskbritt, P.C. / Baker Hughes, Inc.
Baker Hughes, Inc.
P.O. Box 2550
Salt Lake City, UT 84110
EXAMINER
CHRISTIE, ROSS J
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
12/26/2017 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):
U S PTOMail @ 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, DANNY E. SCOTT,
ANTHONY A. DIGIOVANNI, and DEREK L. NELMS1
Appeal 2017-002186
Application 13/040,921
Technology Center 1700
Before DONNA M. PRAISS, AVELYN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7 and 9. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Baker Hughes Incorporated,
the assignee of the above-captioned application. Appeal Br. 2.
2 In our Decision we refer to the Specification filed March 4, 2011 (“Spec.”),
the Final Office Action appealed from dated January 15, 2016 (“Final
Act.”), the Appeal Brief filed June 6, 2016 (Appeal Br.), the Examiner’s
Answer dated September 22, 2016 (“Ans.”) and the Reply Brief filed
November 21, 2016 (“Reply Br.”).
Appeal 2017-002186
Application 13/040,921
STATEMENT OF THE CASE
The claims are directed to “polycrystalline elements having
polycrystalline tables with substantially fully leached region[s].” Spec. ^ 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A polycrystalline element, comprising:
a substrate; and
a polycrystalline table attached to an end of the substrate
and comprising a first region of superabrasive material having a
first permeability and at least a second region of superabrasive
material having a second, lesser permeability, the at least a
second region being interposed between the substrate and the
first region,
wherein the first region comprises a first volume
percentage of interstitial volumes among interbonded grains of
superabrasive material and the at least a second region comprises
a second, smaller volume percentage of interstitial volumes
among interbonded grains of superabrasive material.
Appeal Br. 25 (Claims App’x).
REJECTIONS
The Examiner maintains the following rejections:3
A. Claims 1-3, 6, and 9 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over Sani.4 Final
Act. 4.
3 The Examiner withdraws the rejection of claims 1-7 and 9 under 35 U.S.C.
§ 112(a) for failure to comply with the written description requirement.
Ans. 16.
4 Mohammad N. Sani, US 2009/0152018 Al, published June 18, 2009
(“Sani”).
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Application 13/040,921
B. Claim 7 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Sani and further in view of Vail.5 Id. at
11.
C. Claims 1, 2, 4-6, and 9 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Burhan.6 Id. at 12.
Appellants request our reversal of Rejections A-C. See generally
Appeal Br. Because our basis for reversal of Rejection A and Rejection C is
common to all claims, we focus our discussion below on claim 1.
OPINION
Rejection A — Anticipation or Alternatively Obviousness (claims 1—6)
The Examiner rejects claims 1-6 as anticipated, or alternatively
obvious, in view of Sani. Appeal Br. 4. The Examiner finds that Sani
teaches a poly crystalline element as claimed. Final Act. 5. The Examiner
explains that Sani teaches a first region that includes tungsten and/or
tungsten carbide and a second region that is substantially free of tungsten
and/or tungsten carbide. Id. The Examiner finds that the second region of
Sani necessarily exhibits a greater permeability compared to the first—due
to the lack of tungsten. Id. at 5-6. And, for the same reasons, the Examiner
finds that Sani teaches a first region comprising first and second regions
having first and second volume percentage of interstitial spaces where the
second region has a smaller volume than the first. Id. at 6-7; Ans. 20
5 Michael A. Vail, US 2008/0023231 Al, published January 31, 2008
(“Vail”).
6 Burhan et al., US 2010/0320005 Al, published December 23, 2010
(“Burhan”).
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Application 13/040,921
(because “there are fewer unoccupied interstitial volumes in [the] first region
310 than in the second region 312 [due to the presence of tungsten in the
first region], the volume percentage of interstitial volumes in the first region
310 is necessarily lower than the volume percentage of interstitial volumes
in the second region 312.”).
Appellants first argue that Sani does not disclose the volume
percentages of interstitial volumes as claimed. Appeal Br. 14. Appellants
criticize the Examiner’s definition of “interstitial volumes” as narrower than
the broadest reasonable construction. Reply Br. 3. According to Appellants,
the claims do not require the volumes to differ in state of occupation, but
rather, that the volumes exist among interbonded grains of superabrasive
material. Id. at 2. Thus, “a person of ordinary skill in the art at the time of
invention would understand the term ‘interstitial volumes’ to encompass
both those volumes that are full of occupying material and those that are
devoid of occupying material.” Id. Therefore, because the Examiner’s
rejection is based on an improper construction, the Examiner’s identification
of volume percentages of interstitial volumes as claimed is erroneous.
Appeal Br. 15; Reply Br. 3.
We find Appellants’ arguments persuasive of reversible error. It is
well-established that “during examination proceedings, claims are given
their broadest reasonable interpretation consistent with the specification.” In
re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); see also In re Am. Acad. Of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 1 expressly
requires “wherein the first region comprises a first volume percentage of
interstitial volumes among interbonded grains of superabrasive material and
the at least a second region comprises a second, smaller volume percentage
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Application 13/040,921
of interstitial volumes among interbonded grains of superabrasive
material.” Appeal Br. 25 (Claims App’x) (emphasis added). Therefore, the
claim itself suggests that interstitial volumes or spaces includes the volume
existing between the interbonded grains of superabrasive material. The
Specification is consistent with this understanding. For example, the
Specification describes
Such a thermally stable polycrystalline diamond compact may be
formed by leaching catalyst material out from interstitial spaces
between the interbonded grains in the diamond table. However,
a conventional diamond table may require up to five weeks or
even longer to leach substantially all the catalyst material from
the interstitial spaces between interbonded grains, slowing down
production. [Spec. ^ 4 (emphasis added)].
When it is said that the interstitial spaces between the
interbonded grains of superabrasive material in the first region
106 of the poly crystalline table 102 may be at least substantially
free of catalyst material, it is meant that catalyst material is
removed from the open, interconnected network of spatial
regions among the grains within the microstructure of the first
region 106, although a relatively small amount of catalyst
material may remain in closed, isolated spatial regions between
the grains, as a leaching agent may not be able to reach volumes
of catalyst material within such closed, isolated spatial regions.
[Id. 45 (emphasis added)].
The larger grains 138 and the smaller grains 140 may be
interbonded to form a polycrystalline material. Catalyst material
130 may be disposed in the interstitial spaces among
interbonded grains 138 and 140 of superabrasive material. [Id.
T] 63 (emphasis added)].
Furthermore, the Examiner acknowledges that “[b]oth Appellant’s
‘interstices’ and Sani’s ‘interstices’ occupy a ‘volume’” and that “there is no
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Application 13/040,921
difference between Appellant’s claim term ‘interstitial volumes’ and the
interstitial regions taught by Sani.” Ans. 18. Sani, similar to the instant
Specification, describes that “[t]he pre-sintered PCD table includes bonded
diamond grains defining interstitial regionsSani, Abstract (emphasis
added); see also id. 11 5, 9, 14, 35, and 44. Thus, the broadest reasonable
interpretation of the term “interstitial volumes,” consistent with the claims
and Specification, includes the volume existing between the interbonded
grains of superabrasive material regardless of whether the spaces are filled
with an occupying material, such as tungsten, or not. Because the
preponderance of the evidence does not support the Examiner’s finding that
Sani teaches a smaller volume percentage of interstitial volumes in the
second region as compared to the first region, we cannot sustain the
Examiner’s rejection of claims 1-7 as anticipated, or alternatively rendered
obvious, in view of Sani.7
Rejection C —Obviousness (claims 1, 2, 4 6, and 9)
The Examiner rejects claims 1,2, 4-6, and 9 as obvious over Burhan.
Final Act. 12. The Examiner finds that Burhan teaches a poly crystalline
element having a substrate and polycrystalline table that comprises a first
region and second region of superabrasive material where the permeability
of the second region is less than that of the first region. Final Act. 12-13.
The Examiner also finds that “Burhan teaches materials may differ with
respect to composition, particle size distribution, hard particle content,
7 The rejection of claim 7 (depending from independent claim 1) additionally
relies upon Vail which does not cure the deficiencies of Sani identified
above.
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Application 13/040,921
abrasive particle content, metal binder content, hardness, erosion resistance,
abrasion resistance, and toughness,” within different regions and may be
adjusted to improve performance. Id. at 13-14. The Examiner reasons that
given the teachings of Burhan to adjust various parameters within different
regions, a person skilled in the art would have found it obvious that “Burhan
may comprise ‘a first region of superabrasive material having a first
permeability and at least a second region of superabrasive material having a
second, lesser permeability. Id. at 14. And, for the same reason, the
Examiner finds that the person skilled in the art would have found it obvious
to have a smaller volume percentage of interstitial spaces in the second
region as compared to the first region. Id. at 14-15.
Appellants contend, inter alia, that the definition of “polycrystalline
table” adopted by the Examiner is not the broadest reasonable construction
in light of the Specification. Appeal Br. 19. According to Appellants,
Burhan teaches a matrix material impregnated with abrasive particles formed
as compacts and disposed on blades, in contrast to the polycrystalline table
of the instant invention. Id. at 20. Therefore, no polycrystalline table is
taught by Burhan. Id.
Appellants’ arguments convince us of reversible error by the
Examiner. Appellants’ Specification expressly defines “polycrystalline
table” as “any structure comprising a plurality of grains (i.e., crystals) of
material that are bonded directly together by inter-granular bonds.” Spec.
Tf 28. The Specification continues to explain that by “inter-granular bonds,”
it is meant that there is a “direct atomic bond (e.g., covalent, metallic, etc.)
between atoms in adjacent grains of superabrasive material.” Id. 29. The
Examiner finds that the blades of Burhan equate to the polycrystalline table
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Application 13/040,921
as claimed. Final Act. 14. However, the blades of Burhan are formed of
matrix material impregnated with abrasive particles and infiltrated with a
binder to bind the matrix. See e.g., Burhan 59, 67, and 83. The Examiner
fails to show that Burhan teaches or suggests the requisite inter-granular
bonds required for the poly crystalline table as claimed.8 Therefore, on this
record, we are constrained to overrule the Examiner’s rejection.
CONCLUSION
Appellants have identified a reversible error in the Examiner’s
rejection of claims 1-3, 6, and 9 under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Sani.
Appellants have identified a reversible error in the Examiner’s
rejection of claim 7 under 35 U.S.C § 103(a) as unpatentable over Sani and
further in view of Vail.
Appellants have identified a reversible error in the Examiner’s
rejection of claims 1, 2, 4-6, and 9 under 35 U.S.C § 103(a) as unpatentable
over Burhan.
DECISION
For the above reasons, the Examiner’s rejection of claims 1-7 and 9 is
reversed.
REVERSED
8 The Examiner acknowledges Appellants’ argument relating to the
definition of “polycrystalline table” but fails to address the relevant claim
construction issues. Ans. 29.
8