Ex Parte RE37,127 et al

Board of Patent Appeals and Interferences

Jun 19, 2007

90006222 (B.P.A.I. Jun. 19, 2007)

This opinion is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BAKER HUGHES INCORPORATED
____________

Appeal 2007-0136
Reexamination Control 90/006,222
Patent RE37,127 E
Technology Center 1700
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Decided: June 19, 2007
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Before McKELVEY, Senior Administrative Patent Judge, and TORCZON
and DELMENDO, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.
DECISION ON APPEAL
Background
The invention on appeal broadly relates to compositions used in
restoring a hard face (hard-facing) of a surface subject to abrasive wear, such
as a rolling-cutter, earth-boring bit.1 Claims 1-27 are pending, but the
examiner has rejected only claims 1, 3-7, 19, 21, and 23-25.2 On appeal, all

1 Specification of the RE37,127 E patent (Spec.) 1:11-16.
2 Examiner's answer (Ans.) 2. Claims 2, 20, and 22 are under objection
because they depend from rejected claims.
Appeal 2007-0136
Application 90/006,222

of the rejected claims stand rejected under 35 U.S.C. §103 as having been
obvious.3 The appellant (BHI) has elected to contest only the rejection of
the independent claims, so the dependent claims stand or fall with claims 1
and 19.4 The examiner relies on a patent (Newman)5 as evidence of
obviousness in rejecting claims 1 and 19. We affirm the rejection.
CLAIM CONSTRUCTION
Claims 1 and 19 define the subject matter on appeal as follows:6
1. An improved, wear-resistant hardfacing composition
comprising the following materials in pre-application ratios:
at least 60% by weight of the composition being granules
including a quantity of sintered carbide pellets and a quantity of
cast carbide pellets, the cast and sintered carbides being
selected from one of the group of carbides consisting of
chromium, molybdenum, niobium, tantalum, titanium, tungsten,
and vanadium carbides and alloys and mixtures thereof, the
sintered carbide pellets and the cast carbide pellets being
generally spherical in configuration; and
the balance of the hardfacing composition being matrix
metal.

19. An improved, wear-resistant hardfacing composition
comprising the following materials in pre-application ratios:
a quantity of sintered carbide pellets and a quantity of
cast carbide pellets, the cast and sintered carbides being
selected from one of the group of carbides consisting of
chromium, molybdenum, niobium, tantalum, titanium, tungsten

3 Ans. 3; see the note at Ans. 4 explaining that basis of the rejection for
claims 1 and 6 has changed from 35 U.S.C. 102 to §103 in view of an
amendment.
4 Appeal brief (Br.) 5.
5 H.C. Newman and H.E. Kelley, "Arc Hardfacing Rod", U.S.
Patent 5,250,355 (granted 1993).
6 The claim language is reproduced from the claims appendix to the appeal
brief.
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Application 90/006,222

and vanadium carbides and alloys and mixtures thereof, the
sintered carbide pellets and the cast carbide pellets being
generally spherical; and
the balance of the hardfacing composition being matrix
metal, a portion of the matrix metal being in the form of a tube
filled with the sintered and cast carbide pellets.

The principal differences between the two claims is that claim 1
requires a specific weight-percentage for the carbide-pellet moiety, while
claim 19 requires that a portion of the matrix-metal moiety be in the form of
a tube filled with the carbide pellets.
An ambiguity exists between the preamble, which uses an open
formulation ("composition comprising"), and the last limitation, which
requires "the balance of the hardfacing composition [to be] matrix metal".
While claims are before the agency, they are given their broadest reasonable
construction.7 When there is a tension between an open and closed
construction, we must give the claim the broader construction absent some
clear indication to the contrary.8 Consequently, despite the "balance"
limitation, we understand the claimed compositions to be open to the
inclusion of other ingredients consistent with the purpose of the
composition.
The "granules" limitation (only in claim 1) is also open-ended. The
limitation begins "at least 60% by weight of the composition being granules

7 In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1210-11 (Fed. Cir.
2004) (generally); In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934,
936 (Fed. Cir. 1984) (reexamination); accord In re Morris, 127 F.3d 1048,
1057, 44 USPQ2d 1023, 1030 (Fed. Cir. 1997) (burden of precise claim
drafting lies with applicant); see also Amgen Inc. v. Chugai Pharm. Co. Ltd.,
927 F.2d 1200, 1218, 18 USPQ2d 1016, 1031 (Fed. Cir. 1991) (noting that
the closer the prior art is, the greater the need for precision).
8 In re Crish, 393 F.3d 1253, 1257, 73 USPQ2d 1364, 1367 (Fed. Cir. 2004).
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Application 90/006,222

including a quantity of sintered carbide pellets and a quantity of cast carbide
pellets". The "at least 60% by weight" refers to the "granule", which
"include[s]" quantities of sintered and cast carbide pellets. The word
"including" is an open-ended term in claim construction.9 Thus, while the
composition must be 60% by weight granules, the granules themselves must
include but are not limited to sintered and cast carbide pellets.
BHI defines "pellet" to mean—10
particles [sic] of carbide that are generally spherical in
configuration. Pellets are not true spheres, but lack the corners,
sharp edges, and angular projections commonly found in
crushed an other non-spherical carbide grains or particles.

From this definition, one skilled in the art would have understood pellets to
be generally spherical carbide particles.
BHI gives great weight to "spherical" as a limitation–to the point that
the qualifying adverb "generally" is often ignored in the briefing.11 In claim
construction, "generally" in this context permits a some deviation from
"spherical" consistent with the purpose of the invention.12 BHI's
specification provides some insight into the degree of deviation permitted in

9 Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1345,
65 USPQ2d 1385, 1408 (Fed. Cir. 2003) (equating "including" with
"comprising").
10 Spec. 3:32-37.
11 Br. 6-8; Reply 2-4.
12 Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298,
1311, 67 USPQ2d 1865, 1873-74 (Fed. Cir. 2003); accord Howmedica
Osteonics Corp. v. Tranquil Prospects, Ltd., 401 F.3d 1367, 1373,
74 USPQ2d 1680, 1686 (Fed. Cir. 2005) (relying on the described function
to deviate from "uniform").
4
Appeal 2007-0136
Application 90/006,222

its discussion of the prior-art Findeisen patent.13 According to BHI,14
Findeisen—
discloses a method of manufacturing cast carbide pellets that
are generally spherical in shape and have improved mechanical
and metallurgical properties over prior-art carbide pellets.
These cast pellets are not truly spherical, but are sufficiently
symmetrical that residual stresses in the pellets are minimized.
Also, the generally spherical shape of these pellets eliminates
corners, sharp edges, and angular projections, which are present
in conventional crushed particles, that increase residual stresses
in the particles and tend to melt as the hardfacing composition
is applied to the surface.

In view of BHI's disclosure, one skilled in the art would have understood
"generally spherical" to be functionally driven to mean substantially free of
corners, sharp edges, and angular projections that might promote melting.
In claim 19, a portion of the matrix metal is used to form a tube that is
"filled" with the carbide pellets. Since only "a portion" of the metal forms
the tube, the claim is open to the remaining metal being used as additional
filler for the tube or as external excess (i.e., the composition is tubes plus
excess metal). Similarly, the claim requires the tube to be filled with the
pellets, but does not require the capacity of the tube to exactly match the
volume of pellets. Consequently, the pellets could be part or all of the fill,
and also form an external excess (i.e., tubes plus excess carbide).
OBVIOUSNESS
In analyzing obviousness, the scope and content of the prior art must
be determined, the differences between the prior art and the claims

13 E. Findeisen et al., "Process of manufacturing cast tungsten carbide
spheres", U.S. Patent 5,089,182 (granted 18 February 1992).
14 Spec. 2:1-12.
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Appeal 2007-0136
Application 90/006,222

ascertained, and the ordinary level of skill in the art resolved. Objective
evidence of the circumstances surrounding the origin of the claimed subject
matter (so-called secondary considerations) may also be relevant. Such
secondary considerations guard against the employment of impermissible
hindsight.15
Scope and content of the prior art
Newman discloses an arc hardfacing tube with filler including metal
carbide particles. Newman places some of the carbide particles inside an
insulating coating and uses additional carbide particles outside the insulation
to increase "carbide survivability" during the melting involved in applying
the hardfacing composition.16 Other components of the filler might be flux
and bonding agents blended with the carbides. The carbides may be
tungsten, titanium, tantalum, niobium, zirconium, vanadium, hafnium,
molybdenum, chromium, silicon, and boron carbides, or mixtures or cement
composites of these.17 Filler carbide particles may be macrocrystalline,
crushed-sintered, and cast.18 Cast carbide particles used for coatings may be
crushed or spherical.19
The examiner found that read together, the specification teaches in
excess of 60% by weight carbide.20 Newman's Table 5 shows the

15 Graham v. John Deere Co., 383 U.S. 1, 17, 36 (1966), cited with approval
in KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007). The
record on appeal does not contain objective evidence of secondary
considerations.
16 Newman 3:10-39.
17 Newman 4:34-42.
18 Newman 5:6-44 and 13:21-26.
19 Newman 6:33-42.
20 Ans. 5.
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Appeal 2007-0136
Application 90/006,222
composition is approximately 40-50%, preferably 45%, by weight filler.21
Newman provides examples in which the total weight percentage of the filler
that is carbide ranges from 85-99.5%.22 External carbides form 19-23%,
preferably 21%, by weight of the total.23 The examiner calculates:24
Total carbide = (45%filler · 95.06%carbide) + 21%coating = 63.77%
The same calculation applied to the ranges produces a range of 53- 72.75%
by weight for total carbide in Newman's composition.25
Alternatively, in Table 5, the filler makes up exactly 60% by weight
of the combined weight of the filler and tube:
45%filler
45%filler + 30%tube
= 60%filler+tube

Differences
For claim 1, BHI argues that Newman fails to teach "at least 60% by
weight of the composition [is] sintered and cast carbide pellets".26 This
difference misstates the actual limitation, which is really about granules
sandwiched between two open-ended transitional phrases. Claim 1 uses
comprising language, which means that the 60% limitation refers to 60%

21 Newman 7:19-30.
22 Newman 5:6-42.
23 Although our construction of claim 19 permits external carbides, the 60%
limitation appears in claim 1, which does not have a tube-filling limitation.
24 Ans. 4-5. The 95.06%carbide is the sum of the preferred carbide percentages
in Newman's Table 2: 70.57%macrocrystalline + 24.49%crushed/cemented).
25 Although in the reply (at 4), BHI appears to concede that Newman teaches
the 60% by weight limitation, the concession is very narrow since it does not
concede that the 60% relates to relevant carbides.
26 Br. 5.
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Application 90/006,222

granules out of the combined weight of the granules and the matrix metal
(i.e., not necessarily including any coatings, etc.). Moreover, the granules
themselves need only include carbide pellets, leaving room for binders,
fluxes, etc., to contribute to the granule weight. When considered in light of
a proper construction of claim 1, the total carbide content may be less than
60% by weight and still satisfy the requirements of claim 1.
Newman does not provide a specific example with a mixture of cast
and sintered carbides, but does teach a sintered/macrocrystalline mixed
carbide embodiment and a cast carbide embodiment. Newman does not
indicate that these particular embodiments are preferred (although
preferences are expressed within the embodiments).27
BHI also argues that Newman does not teach generally spherical
carbide pellets.28 While Newman does teach spherical cast carbide
particles,29 it does not teach spherical sintered carbide particles. Indeed, the
sintered particles are, if anything, crushed,30 which Findeisen advises against
using. BHI notes that Newman only teaches spherical cast carbide particles
in the context of coatings.31
In its reply, BHI observes that Newman uses "pelletized" to describe
cemented carbides rather than cast spherical carbides. From this
observation, BHI argues that in Newman "pellets" and " spherical" are
mutually exclusive. The problem for BHI is that it defined "pellet" to mean

27 Newman 5:6-42.
28 Br. 5-6.
29 Newman 6:33-42.
30 Newman 6:31.
31 Br. 6-7.
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Application 90/006,222

"particle". Newman uses "spherical" in its discussion of "[c]ast tungsten
carbide particles".32
Level of skill
We look to the evidence of record—the applicant's disclosure, the
cited references, and any declaration testimony—in resolving the ordinary
level of skill in the art.33 In this appeal no testimony is cited. We focus on
what a person having ordinary skill in the art would know and be able to do.
According to BHI, the hardfacing is a "long-standing practice in the
design and manufacture" of surfaces subjected to abrasive wear.34 Thus,
those of skill in the art had long-standing interest in, and experience with,
the problems associated with hardfacing.
Cast carbide particles were conventional, but sintered carbide particle
had been taught to provide greater fracture toughness.35 The art also
understood that mixed sintered and macrocrystalline carbides provided
advantages over sintered carbides alone (hardness) and cast carbides alone
(less brittleness).36 Newman provides embodiments for macrocrystalline,
mixed macrocrystalline and sintered, and cast carbide particles without any
discussion of there relative advantages, which suggests a confidence that
those in the art would know how to choose the form of carbide or carbide
mixtures best suited to their needs.

32 Newman 6:32-39.
33 Ex parte Jud, 2006 WL 4080053 at *2 (BPAI) (rehearing with expanded
panel).
34 Spec. 1:13-16.
35 Spec. 1:45-56.
36 Spec. 1:56-67.
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Appeal 2007-0136
Application 90/006,222

Although the specification, the brief, and the reply mention optimum
performance,37 the comparison in question is between sintered carbide
versus sintered and cast carbide. The art, however, appreciated that mixtures
could provide advantages over just one form of carbide alone. BHI has not
shown that there is anything unexpected about the result reported.38
As previously discussed, the art also knew that generally spherical
carbide particles were better than conventional crushed carbide particles.39
While the cited reference (Findeisen) described cast carbide particles,
Findeisen's reason for preferring a generally spherical shape (corners, edges,
and projections melt more easily) would be true for any carbide particles.
Newman teaches the use of spherical cast carbide particles in the tube
coating, but the external and internal carbides both contribute to the
hardfacing. There is nothing in Newman that would discourage those skilled
in the art from using the same cast spherical carbides in the filler as well as
the coating. Indeed, the art appeared to appreciate the value of spheres
already.
Synthesis
All of the elements of the claims existed in Newman: matrix-metal
tubes, sintered and cast carbides, and generally spherical shaped particles.
The advantages of sintered carbides versus cast carbides versus other
carbides were already understood in the art. From Newman, we see that

37 E.g., Reply 4, citing Spec. 6:19-67.
38 KSR Int'l, 127 S. Ct. at 1742, 82 USPQ2d at 1397 (discussing the
obviousness of trying combinations of finite options to solve known
problems).
39 Spec. 2:1-12.
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Application 90/006,222

those in the art understood the options available in carbide choices and could
be relied upon to choose appropriate combinations without guidance.
Newman also shows an appreciation of spherical particles. Although
Newman does not expressly teach sintered spheres or cast-spherical filler,
the value of a reference is not limited to what it expressly teaches.40 BHI
has certainly not demonstrated that Newman teaches away from the use of
spherical particles. Indeed, in view of BHI's own characterization of the art
as appreciating the virtues of cast spherical carbides, such an argument is
scarcely possible. Moreover, those with actual skill in the art would have
appreciated that the reasons for casting generally spherical particles could be
generalized to carbides formed other ways, such as by sintering.
Newman used the carbides in combination with a matrix-metal tube.
Newman preferred using carbides in a coating as well, but the claims
properly construed do not exclude such coatings. As long as some carbides
are used to fill the tube, excess carbides may be outside the tube and still be
part of what comprises the overall hardfacing composition.
Similarly, the weight-percentage limitation depends on the claim
construction. It literally applies to granules, not the carbide subcomponents.
Moreover, it applies to one of two defined, balanced components said to
comprise the composition. Construing the ambiguity in the claim broadly,
the weight-percentage applies only to the balanced components, not to other
components of the overall composition. While Newman's examples suggest
that the weight-percentage of filler is the sort of variable that skilled artisans
optimize without much guidance, it so happens that the preferred ranges in

40 In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1782 (Fed. Cir.
1992) (observing that it is well-settled that a reference is good for all that it
would have taught those of skill in the art).
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Application 90/006,222
Newman's Table 5 provide exactly 60% by weight of filler compared to the
combination of filler and component.
CONCLUSION
The subject matter of claims 1 and 19 would have been obvious to a
person having ordinary skill in the art in view of the teachings and
suggestions of the Newman patent. Consequently, the rejection of claims 1
and 19, and of the other rejected claims not separately argued, must be—
AFFIRMED

lp

JAMES E. BRADLEY
BRACEWELL & PATTERSON, L.L.P.
PO BOX 61389
HOUSTON TX 77208-1389
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