Ex Parte Mirchandani et al

Board of Patent Appeals and Interferences

Jul 22, 2011

10848437 (B.P.A.I. Jul. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PRAKASH K. MIRCHANDANI, JIMMY W. EASON,
JAMES J. OAKES, JAMES C. WESTHOFF and GABRIEL B. COLLINS
____________

Appeal 2010-005926
Application 10/848,437
Technology Center 1700
____________
Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision
rejecting claims 1, 3-28, 31-38, 66-69, 75, and 76.1 We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
                                                            
1 Despite acknowledging that claim 77 is withdrawn from consideration as being
directed to a non-elected invention as a consequence of a restriction requirement
(App. Br. 3), Appellants state that claim 77 is a subject of the pending appeal (id.
at 4) and request that the restriction of this claim be overturned (id. at 29). We do
not consider claim 77 to be on appeal since it has not been examined and is not
under rejection. See 37 C.F.R. § 41.31 (2008). Correspondingly, we will not
consider Appellants' request to overturn the restriction requirement applied to
claim 77 since the proprietary of this requirement is a petitionable, not appealable,
matter. See the Manual of Patent Examining Procedure (MPEP) § 1201 (Rev. 3,
August 2005) and § 1002.02(c) (Rev. 2, May 2004).
Appeal 2010-005926
Application 10/848,437
 
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Appellants claim a composition comprising hard particles of, for example,
tungsten carbide and a binder comprising, for example, nickel and at least one
melting point reducing constituent such as tungsten carbide (claim 1).

Representative claim 1 reads as follows:
1. A composition for forming a bit body for an earth-boring bit, the
composition comprising:
hard particles comprising at least one of a carbide, a nitride, a boride, a
silicide, an oxide, and solid solutions thereof: and
a binder for combination with the hard particles, wherein the binder comprises:
at least one of cobalt, nickel, and iron; and
at least one melting point reducing constituent selected from at least one of a
transition metal carbide up to 60 weight percent, a transition metal boride up
to 60 weight percent, and a transition metal silicide up to 60 weight percent,
wherein the weight percentages are based on the total weight of the binder.
The references set forth below are relied upon by the Examiner in rejecting
the appealed claims:
Baker Hughes Inc. WO 03049889 Jun. 19, 2003
Sim 6,757,009 Jun. 29, 2004

The Examiner rejects the appealed claims as follows:
Appeal 2010-005926
Application 10/848,437
 
  3
claims 1, 3, 4, 12-14, 17-28, 31-38, 66-69, 75, and 76 are rejected under 35
U.S.C. § 102(a) as anticipated by, or alternatively under 35 U.S.C. § 103(a) as
unpatentable over, WO ‘889;
claims 5-8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over WO ‘889; and
claims 1, 3, 4, 9, 12-24, 26, 31-38, 66, 67, 69, 75, and 76 are rejected under
35 U.S.C. § 103(a) as unpatentable over Sim in view of WO ‘889.
As an initial matter, we observe that Appellants do not present separate
arguments against the dependent claim rejections (App. Br. 12-28). Accordingly,
the dependent claims will stand or fall with their parent independent claims 1, 20,
and 33.

We will sustain the above rejections for the reasons expressed in the Answer
and below.
The Examiner finds that each of WO ‘889 and Sim discloses a composition
comprising hard particles of tungsten carbide dispersed in a binder of, for example,
nickel (Ans. 4-9), and Appellants agree with this finding (see App. Br. 9-12). The
dispute in this appeal arises from the Examiner's additional finding that the
tungsten carbide particles of these prior art compositions satisfy not only the hard
particles limitation but also the melting point reducing constituent limitation of the
independent claims (Ans. 4-9). Appellants contend that this additional finding is
erroneous (App. Br. 12-28).
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Application 10/848,437
 
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For example, Appellants argue that "the hard particles of WO‘889, which
comprise a transition metal [e.g., tungsten] carbide material, do not serve as a
melting point reducing constituent of the binder" (Reply Br. 5). According to
Appellants, "[t]he Examiner has failed to identify anything in the disclosure of
WO‘889, or any other facts that would establish that the binder thereof has a
melting point that is lower than would be the case if the metal carbide particles
were not embedded in the binder" (id. at 6).
Appellants' argument is unpersuasive. As correctly explained by the
Examiner and not disputed by Appellants, both the hard particles and melting point
reducing constituent of the independent claims may be tungsten carbide (Ans. para.
bridging 9-11). For this reason, the tungsten carbide and nickel binder ingredients
encompassed by the independent claim compositions do not distinguish from the
tungsten carbide and nickel binder ingredients of the WO‘889 and Sim
compositions (id.). Moreover, the presence of tungsten carbide in the prior art
compositions necessarily would reduce the melting point of the nickel binder since
this same tungsten carbide ingredient is claimed by Appellants to perform such
melting point reducing function. Appellants' discovery of this melting point
reducing property cannot impart patentability to claims which define a known
composition. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Concerning independent claims 20 and 33, Appellants additionally argue
that the Examiner has ignored the binder melting point limitations of these claims
(Reply Br. para. bridging 8-9).
This argument is factually incorrect. The Examiner has not ignored the
melting point limitations of claims 20 and 33. Rather, the Examiner has expressly
addressed these limitations by finding that the binder of the prior art compositions
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necessarily would exhibit the claimed melting points since the prior art
compositions and the claimed compositions both contain the same materials (Ans.
para. bridging 16-17). See Spada, 911 F.2d at 708 ("Products of identical chemical
composition cannot have mutually exclusive properties."). The Examiner's
rationale has not been contested by Appellants with any reasonable specificity in
the record of this appeal. For the reasons stated above and in the Answer,
Appellants have failed to show error in the Examiner's determination that the
independent claims on appeal are not patentably distinguishable from the
compositions of WO‘889 and Sim. We sustain, therefore, each of the § 102 and §
103 rejections before us.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
The decision of the Examiner is affirmed.

AFFIRMED

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