Ex Parte Singh et al

Board of Patent Appeals and Interferences

Nov 15, 2011

10329903 (B.P.A.I. Nov. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMARDEEP SINGH, YING XIANG,
and SUJIAN HUANG
____________

Appeal 2009-010513
Application 10/329,903
Technology Center 2100
____________

Before JOHN A. JEFFERY, THU A. DANG, and DENISE M. POTHIER,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner‟s
rejection of claims 31-136. Claims 1-30 have been withdrawn. Br. 5. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellants‟ invention relates to designing roller cone drill bits for
drilling earth formations. See generally Spec. ¶ 0001. Claim 31 is
reproduced below with the key disputed limitations emphasized:
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31. A method for designing a roller cone drill bit having a plurality of
roller cones and initial design parameters, comprising:
simulating drilling with the bit and determining for each of the
roller cones as a result of the simulating, a distribution of time that
each of a number of cutting elements is in contact with an earth
formation being simulated as drilled;
adjusting at least one of the initial design parameters;
repeating the simulating drilling; and
repeating the adjusting, the simulating and the determining until
the distribution of time is substantially the same for each one of the
roller cones.

The Examiner relies on the following as evidence of unpatentability:
Huang US 6,873,947 B1 Mar. 29, 2005
(filed Aug. 9, 2000)

Ma Dekun, The Operational Mechanics of The Rock Bit 1-238 (1996)
(“Ma”).

THE REJECTIONS
1. The Examiner rejected claims 31-136 under 35 U.S.C. § 101 as
claiming the same invention as that of claims 1-9 of Huang.
1
Ans. 11-12.
2

2. The Examiner rejected claims 31-136 under 35 U.S.C. § 102(b) as
anticipated by Ma. Ans. 4-11.

1
Although the Examiner refers to claims 10, 14, 15, 25, and 29-33 of U.S.
Application No. 09/635,116 in the rejection (see Ans. 11), U.S. Application
No. 09/635,116 had been issued as U.S. Patent No. 6,873,947 (Huang) with
claims 1-9 when the Examiner‟s Answer was written. Appellants refer to
claims 1-9 of Huang in the Appeal Brief (see App. Br. 9-10), and we
likewise will discuss claims 1-9 in Huang.
2
Throughout this opinion, we refer to (1) the Appeal Brief filed April 27,
2006 and (2) the Examiner‟s Answer mailed July 27, 2006.
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THE STATUTORY DOUBLE PATENTING REJECTION
Regarding independent claims 31, 46, 61, 76, 91, 106, and 121, the
Examiner finds that independent claims 1 and 4
3
of Huang are drawn to the
same invention. Ans. 11. Specifically, the Examiner finds that the
limitation, “a means for determining an axial force” in claims 1 and 4, is
supported by various passages of Huang‟s Specification and “would appear”
to encompass “all interrelated force elements” used to determine the axial
force, such as a time distribution, work performed, projected contact area,
and penetration depth recited in claims 31, 46, 61, 76, 91, 106, and 121.
Ans. 11-12.
Addressing each independent claim separately, Appellants contend
that the independent claims are not drawn to the identical invention as
claims 1-9 Huang. Br. 9-29. For example, Appellants argue that the “means
for determining an axial force” in claims 1 and 4 of Huang does not include
a time distribution that each of the cutting elements is in contact with the
earth being simulated as recited in claim 31. Br. 11-12.
The issues before us, then, are as follows:

ISSUES
Under § 101, has the Examiner erred by finding that claims 1-9 of
Huang discloses:
(1) “determining . . . a distribution of time that each of a number of
cutting elements is in contact with an earth formation being simulated as
drilled” as recited in claim 31?

3
The Examiner discusses claims 10 and 25 of U.S. Application No.
09/635,116, which are presumably claims 1 and 4 of Huang.
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(2) “determining . . . a distribution of axial force on the bit” and
“repeating the . . . determining until the distribution of axial force is
optimized” as recited in claim 46?
(3) “determining . . . a work performed by each roller cone” as
recited in claim 61?
(4) “determining . . . a projected area of contact of cutting elements
on each roller cone with the earth formation” as recited in claim 76?
(5) “determining . . . a depth of penetration of cutting elements on
each roller cone with the earth formation” and “repeating the . . .
determining until the depth of penetration is substantially the same for each
one of the roller cones” as recited in claim 91?
(6) “determining . . . an axial force acting on each row of cutting
elements” as recited in claim 106?
(7) “determining . . . an axial force acting on each one of the cutting
elements” and “repeating the . . . determining until the axial force acting on
corresponding cutting elements on each of the roller cones is substantially
the same” as recited in claim 121?

FINDINGS OF FACT (FF)
1. Huang recites in claim 1 “determining, based on a means for
determining an axial force, an axial force acting on each of the cutting
elements,” “determining the axial force acting on each of the roller cones,
based on the axial force acting on the cutting elements,” and “adjusting until
a difference between the axial force on each one of the roller cones is less
than a difference between the axial force determined prior to adjusting the at
least one initial design parameter.” Huang, col. 17, ll.12-18, 24-28.
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2. Huang recites in claim 4, “determining an axial force on a cutting
element, based on a means for determining an axial force, determining an
axial force on the roller cones, based on the axial forces on the cutting
elements[.]” Huang, col. 18, ll. 5-9.
3. Huang discusses calculating the vertical force, fv,i, applied on
each cutting element at step 336. The vertical force is calculated based on
the calculated penetration depth, the projection area, and the cutting
element/earth formation interaction data 314.
4
The axial force acting on
each cutting element relates to the cutting element‟s penetration depth b and
the cutting element interference projection area A. Huang, col. 4, l. 64 – col.
5, l. 9; col. 6, ll. 22-32, 48-56; Figs. 3A-B, 8C.
4. Huang states the vertical force, fv,i, are summed to obtain a total
vertical force, Fv,i, on the bit. Huang, col. 6, ll. 59-61.

ANALYSIS
General Discussion
“The first question in [a statutory double patenting] analysis is: Is the
same invention being claimed twice?” In re Vogel, 422 F.2d 438, 441
(CCPA 1970). “By the „same invention‟ we mean identical subject matter.”
Id. We therefore focus on claims 1-9 of Huang and claims 31-136 of the
present invention to determine whether identical subject matter is being
claimed twice.
Claim 1 of Huang recites, “determining, based on a means for

4
Huang mistakenly refers to the data as “312.” Huang, col. 6, l. 52. Huang
discusses earlier the cutting element/earth formation interaction data using
reference numeral 314. See Huang, col. 4, l. 64 – col. 5, l. 10; Fig. 3A.
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determining an axial force, an axial force acting on each of the cutting
elements,” and claim 4 of Huang similarly recites, “determining an axial
force on a cutting element, based on a means for determining an axial
force[.]” See FF 1-2. Assuming that the “means for determining an axial
force” limitations in claims 1 and 4 invoke 35 U.S.C. § 112, sixth paragraph,
we look to the Specification for the corresponding structure, material, or acts
that perform the recited determining function. See In re Donaldson Co., 16
F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).
Huang discusses determining the vertical force (i.e., the axial force),
fv,i, for each cutting element based on the calculated penetration depth (e.g.,
b), projection area (e.g., A), and cutting element/earth formation interaction
data. See FF 3. The corresponding act to the “means for determining the
axial force” in the Specification thus includes using the cutting element‟s
penetration depth, projection area, and other interaction data. Claims 1 and
4 further recite determining an axial force on the roller cones based on the
cutting elements‟ axial forces, which as stated above is based on the “means
for determining the axial force.” Thus, determining an axial force on the
roller cones as recited in claims 1 and 4 also includes the corresponding acts
and their equivalents that perform the function of determining an axial force
on a cutting element. With this claim construction, we turn to the claims.

Claims 31-45 and 61-75
Claim 31 recites determining a time distribution that each of a number
of cutting elements is in contact with an earth formation being simulated;
claim 61 recites determining a work performed by each roller cone. As
discussed above, neither of these determined values (i.e., a time distribution
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that each of a number of cutting elements is in contact with the earth or a
work performed by each roller cone) corresponds to components of the
“means for determining an axial force” limitations (see FF 3) recited in
claims 1 or 4 of Huang. We therefore find that the limitations of
determining the time distribution and work in claims 31 and 61 are not
claiming identical subject matter to claims 1 and 4 in Huang.
Because claims 32-45 and 62-75 depend from claims 31 and 61
respectively, we additionally find that the Examiner has erred in rejecting
these claims under § 101.

Claims 46-60
Claim 46 recites determining an axial force distribution on a bit.
Claims 1 and 4 of Huang recite determining an axial force on each cutting
element and on each roller cone. See FF 1-2. Arguably, determining an
axial force on each cutting element and each roller also inherently
determines an axial force distribution on a bit. That is, by determining each
cutting element‟s and roller cone‟s axial force, which are components of the
bit, Huang‟s claim 1 discloses determining a distribution of axial forces
acting on the bit (i.e., each calculated cutting element‟s and each roller
cone‟s axial force creates a distribution of forces) as recited in claim 46 of
the present application. Even so, claim 46 also recites “repeating the . . .
determining until the distribution of axial force is optimized.”
Claim 1 in Huang recites an additional limitation of “adjusting until a
difference between the axial force on each one of the roller cones is less than
a difference between the axial force determined prior to adjusting the at least
one initial design parameter.” However, adjusting until the difference
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between the axial force on each roller cone is less than a difference between
the axial force previously determined does not necessarily determine the
axial force distribution on a bit until the distribution is “optimized.” That is,
the adjusting limitation in claim 1 of Huang does not limit the axial force
difference for each roller to within an optimal range. Whether an ordinary
skilled artisan would have found it obvious to optimize the axial force
distribution is not before us. We therefore find that recitation reciting,
“repeating the . . . determining until the distribution of axial force is
optimized” in claim 46, does not recite identical subject matter to claim 1 in
Huang. Moreover, any recitation to determining until the axial force
distribution on the bit is optimized is noticeably absent from claim 4 in
Huang.
We therefore find that claim 46 is not claiming identical subject
matter to claims 1 and 4 in Huang. Because claims 47-60 depend from
claim 46, we additionally find that the Examiner has erred in rejecting these
claims under § 101.

Claims 76-105
Claim 76 recites determining a projected contact area of cutting
elements on each roller cone with the earth; claim 91 recites determining a
penetration depth of cutting elements on each roller cone with the earth. As
stated above, claims 1 and 4 in Huang recites determining an axial force on
each cutting element and each roller (see FF 1-2), which includes calculating
the penetration depth and using a penetration contact area of a cutting
element to calculate the axial force of each cutting elements. See FF 3. Yet,
“a projected contact area of cutting elements” with the earth in claim 76 is
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not necessarily the same as a penetration contact area of a cutting element.
For example, a cutting element may contact the same part of the earth
multiple times with no penetration in the earth, and thus a projected contact
area of cutting elements with the earth may be much larger than the contact
area penetrated by the cutting elements. We therefore find that
determining a projected contact area of cutting elements on each roller cone
with the earth in claim 76 is not claiming identical subject matter as claims 1
and 4 in Huang.
Regarding claim 91, as stated above in the General Discussion
section, claims 1and 4‟s limitations that include determining an axial force
on each cutting element based on “a means for determining an axial force”
and determining an axial force on each roller cone based on the axial force
of each cutting element in claims 1 and 4 of Huang involves determining a
penetration depth of cutting elements, and thus the penetration depth of
cutting elements on each roller cone as recited in claim 91. Arguably, claim
91‟s recitation to “determining . . . a depth of penetration of cutting element
on each roller cone” therefore contains identical subject matter to
determining an axial force on each roller cone as recited in claims 1 and 4 of
Huang.
Yet, claim 91 also recites “repeating the . . . determining until the
depth of penetration is substantially the same for each one of the roller
cones.” Claim 1 in Huang recites an additional limitation of “adjusting until
a difference between the axial force on each one of the roller cones is less
than a difference between the axial force determined prior to adjusting the at
least one initial design parameter.” Adjusting until the difference between
the axial force on each roller cone is less than a difference between the axial
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force previously determined does not necessarily determine whether the
penetration depth for each roller cone is substantially the same. First, claim
91 compares penetration depths, while claim 1 in Huang examines an axial
force. Second, adjusting until the difference between the axial force on each
roller cone is less than a difference between the axial force previously
determined may involve determining a substantially large difference that is
not considered “substantially the same.” We therefore find that recitation
reciting “repeating the . . . determining until the depth of penetration is
substantially the same for each one of the roller cones” in claim 91 does not
recite identical subject matter to claim 1 in Huang. Moreover, any recitation
to determining until the penetration depth is substantially the same for each
roller cone is noticeably absent from claim 4 in Huang.
Because claims 77-90 and 92-105 depend from claims 76 and 91
respectively, we additionally find that the Examiner has erred in rejecting
these claims under § 101.

Claims 106-120
Claim 106 recites determining an axial force on each row of cutting
elements. While claims 1 and 4 of Huang recite determining an axial force
on each cutting element and the axial force on each roller cone (see FF 1-2),
these claims do not recite determining an axial force on each row of cutting
elements. Whether an ordinary skilled artisan would have found it obvious
to determine an axial force on each row of cutting element as recited in
claim 106, based on Huang‟s recitations and teachings (see FF 3-4), is not
before us. We therefore are constrained to find that determining an axial
force on each row of cutting elements as recited in claim 106 does not claim
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identical subject matter to claims 1 and 4 in Huang. Because claims
107-120 depend from claim 106, we additionally find that the Examiner has
erred in rejecting these claims under § 101.

Claims 121-136
On the other hand, claim 121 recites determining an axial force on
each one of the cutting elements. Both Claims 1 and 4 of Huang also recite
determining an axial force acting on each cutting element (see FF 1-2), and
we agree with the Examiner that claim 121‟s recitation to determining the
axial force on each cutting element is claiming identical subject matter to
determining an axial force on each cutting element recitations in claims 1
and 4 of Huang. However, we must consider claim 121 in its entirety to
decide whether this claim recites identical subject matter to claims 1 and 4 of
Huang.
Claim 121 additionally recites “determining until the axial force
acting on corresponding cutting elements on each of the roller cones is
substantially the same.” Claim 1 in Huang recites an additional limitation of
“adjusting until a difference between the axial force on each one of the roller
cones is less than a difference between the axial force determined prior to
adjusting the at least one initial design parameter.” Adjusting until a
difference between the axial force on each roller cone is less than a
difference between the axial force previously determined may involve
determining a substantially large difference that is not considered
“substantially the same.” We therefore find that recitation “determining
until the axial force acting on corresponding cutting elements on each of the
roller cones is substantially the same” in claim 121 does not recite identical
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subject matter to claim 1 in Huang. Moreover, any recitation to determining
whether the axial forces on the cutting elements on each roller cone are
substantially the same is noticeably absent from claim 4 in Huang.
We therefore find that the “determining until” recitation in claim 121
does not claim identical subject matter to claims 1 and 4 in Huang. Because
claims 122-136 depend from claim 121, we additionally find that the
Examiner has erred in rejecting these claims under § 101.

General Summary
For the foregoing reasons, Appellants have persuaded us of error in
the § 101 rejection of: (1) independent claims 31, 46, 61, 76, 91, 106, and
121, and (2) dependent claims 32-45, 47-60, 62-75, 77-90, 92-105, 107-120,
and 122-136 for similar reasons.

THE ANTICIPATION REJECTION OVER MA
Regarding independent claims 31, 46, 61, 76, 91, 106, and 121, the
Examiner discusses Ma calculating various parameters to optimize a bit
design and argues that these parameters includes determining: (1) the time
distribution that each of a number of cutting elements is in contact with the
earth (claim 31); (2) an axial force distribution on the bit (claim 46);
(3) work performed on each roller cone (claim 61); (4) a projected contact
area of cutting elements on each roller cone with the earth (claim 76); (5) the
penetration depth of cutting elements on each roller cone with the earth
(claim 91); (6) an axial force acting on each row of cutting elements (claim
106); and (7) an axial force acting on each one of the cutting elements (claim
121). Ans. 7, 9, 15-20. Additionally, the Examiner finds that Ma‟s
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parameters are adjusted and optimized using a simulator and teaches
properly matching parameters, thus disclosing determining the recited
determining until specific parameters are substantially the same or optimized
steps recited in the claims. Ans. 6-8, 10, 14, 16, 18-20.
Appellants argue, among other things, that each independent claim‟s
recited steps of repeating “determining until” the parameters are
substantially the same or optimized are not disclosed in Ma. Br. 31-46.
The issues before us, then, are as follows:

ISSUES
(1) Under § 102, has the Examiner erred by finding that Ma discloses
repeating determining until:
(a) the time distribution is substantially the same for each one of the
roller cones as recited in claim 31?
(b) the work performed by each roller cone is substantially the same
for each one of the roller cones as recited in claim 61?
(c) the projected contact area of cutting elements is substantially the
same for each one of the roller cones as recited in claim 76?
(d) the penetration depth is substantially the same for each one of the
roller cones as recited in claim 91?
(e) the axial force acting on corresponding rows of cutting elements
on each of the roller cones is substantially the same as recited in claim 106?
(f) the axial force acting on corresponding elements on each of the
roller cones is substantially the same as recited in claim 121?
(2) Under § 102, has the Examiner erred by finding that Ma discloses
“determining . . . a distribution of axial force on the bit” and “repeating the
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. . . determining until the distribution of axial force is optimized” as recited
in claim 46?

ADDITIONAL FINDINGS OF FACT
5. Ma discloses optimizing bit performance design to make the bit
performance better. The preliminary design includes programs about the
contacting teeth that provide the optimum arrangement of the cutting
structure, and the crater depth on the bottomhole and the load on the teeth
can be “evened up.” Ma further discusses a program that optimizes the tooth
crest direction and tooth deflection angle. Ma 230-31.
6. Ma discusses adjusting the cutting structure, surveying crater
formations as discussed in
§ 5.4 (Ma 207-16), and predicting the rate of penetration (ROP), the side
cutting wearability, and wearability for a specific bit-formation set. When
the results are not “fully satisfactory,” related factors will be adjusted and an
optimum design will be approached. Ma 231-32.
7. Ma states that “[t]he main approach to improving bit performance
is that the performance and life of the parts should be properly matched [to]
each other.” Ma 232. Prerequisites for this approach include evaluating the
size, load, motion, stress, and strain of every part. This approach can also
calculate tooth velocity, roller/bit speed ratio, the rock breakage by a single
tooth row, and the number of teeth in contact with the bottomhole at any
time, as well as survey the craters and bottomhole patterns. Ma 232-34.
8. Based on the calculations, Ma describes a designer manufacturing
a bit on a trial basis. Ma further states that that “[i]f the trial product is not
satisfactory, the above steps will be repeated again and again.” Ma 234.
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9. Ma discloses other information provided to the designer, including:
a load spectrum on teeth and bearings and the stress and strain fields on
rollers. Ma further states these kinds of information relate to the bit‟s
performance and changes in bit structure (e.g., adding or subtracting a tooth
in a row) will affect the bit‟s performance. Ma also states loads on the teeth
of every row are measured and are important to bit design. Ma 230, 234.
10. Ma discusses a test process that measures data, such as angle
speed and average speed of the cone, penetration depth of the rock, the bit
weight or mutual vertical load between the teeth and rock, and the torque
with which the holder is driven by the rotary plate. Ma 202.
11. Ma states the input energy of the drilling column and the output
energy for breaking the rock and consumed in friction “should be [in]
balance [for] a fairly long period.” Ma 92.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Calif., 814 F.2d 628, 631
(Fed. Cir. 1987).
If the prior art reference does not expressly set forth a particular
element of the claim, that reference still may anticipate if that element
is inherent in its disclosure . . . Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal citations and
quotation marks omitted).

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ANALYSIS
Claims 31-45 and 61-136
At the outset, we assume, without deciding, that Ma discusses
determining the various parameters recited in independent claims 31, 61, 76,
91, 106, and 121, including: (1) a time distribution of a number of cutting
elements; (2) work performed by each roller cone; (3) a projected contact
area of cutting elements on each roller cone; (4) a depth penetration for each
roller cone; (5) an axial force acting on each row of cutting elements; and (6)
an axial force acting on each one of the cutting elements. Even with this
assumption, Ma does not disclose the recitations of repeating the
determining limitations set forth in these corresponding claims.
The Examiner relies on Ma‟s discussion of optimizing design
parameters, balancing bit energy, and properly matching parts to disclose
repeating the “determining until” limitations. Ans. 6-8, 10, 14, 16, 18-20.
Ma discloses optimizing design parameters for a bit. See FF 5-6. However,
with the exception of evening up the crater depth and load on the teeth (see
FF 5), Ma fails to discuss that optimization involves determining if a specific
parameter is substantially the same with another parameter. See FF 5- 6.
Additionally, Ma describes repeatedly determining parameters when not
fully satisfied (see FF 6, 8), but provides no details as to what “fully
satisfactory” means (see id.), including whether this phrase means when the
calculated parameters are substantially the same to each other.
Regarding Ma describing evening up the load on the teeth (see FF 5),
Ma does not further discuss evening up loads acting on corresponding rows
of cutting elements (claim 106) or corresponding cutting elements on each of
the roller cones (claim 121). That is, Ma does not further discuss if this
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“evened up” determination is made from the perspective of the examining
the bit as a whole or some other part of the bit. FF 5. Thus, Ma does not
necessarily disclose that evening up the load on teeth relates to
corresponding row of cutting elements or the cutting elements on each roller
cone.
Ma also states that the performance and life of “parts” should be
properly matched to each other, but provides no more details related to the
parts. FF 7. Ma thus fails to state which “parts” of the bit (e.g., e.g., a row
of cutting elements as recited in claim 106 or each cutting element on each
roller cone as recited in claim 121) are to be matched. See id. Ma also states
that the “performance” for these parts is matched, and a prerequisite for this
approach includes evaluating the load or stress (e.g., axial force) on every
part. See id. However, Ma does not disclose which part‟s performance (e.g.,
a time distribution or work performed as recited in claims 31 and 61) are to
be matched or substantially the same. Ma further discloses calculating a
depth penetration, rock breakage, position and velocity of teeth in contact
with a bottomhole, and teeth patterns on the bottomhole. FF 7, 10. But
there is no further discussion of repeating the calculations for any of these
parameters until the parameter is substantially the same for each roller cone,
for example. See id.
Also, the Examiner discusses balancing bit energy (Ans. 14) to
disclose the limitations of repeating the “determining until” various
parameters are substantially the same as recited in claims 31, 61, 76, 91,
106, and 121. However, these claims do not recite determining bit energy
until the bit energy is substantially the same. Also, Ma discusses balancing
the input energy of the drilling column with the output energy for breaking
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the rock and consumed in friction (FF 11) and not balancing the parameters
recited in claims 31, 61, 76, 91, 106, and 121 (e.g., time distribution of a
number of cutting elements, work performed by each roller cone, the
projected contact area of cutting elements on each roller cone, depth
penetration for each roller cone, axial forces acting on corresponding rows
of cutting elements, axial force acting on corresponding cutting elements on
each of the roller cones) until they are substantially the same.
Lastly, Ma‟s optimum design teachings (see FF 5-10) may possibly or
even probably include determining whether the parameters recited in claims
31, 61, 76, 91, 106, and 121 are the same. Yet, based on an anticipation
rejection, we cannot say that Ma optimizing or evening up necessarily
corresponds to repeating the determining steps until the following
parameters are substantially the same: (1) time distribution of a number of
cutting elements as recited 31; (2) work performed by each roller cone as
recited in claim 61; (3) the projected contact area of cutting elements on
each roller cone as recited in claim 76; (4) the depth penetration for each
roller cone as recited in claim 91; (5) the axial forces acting on
corresponding rows of cutting elements as recited in claim 106; and (6) the
axial force acting on corresponding cutting elements on each of the roller
cones as recited in claim 121. See Robertson, 169 F.3d at 745.
We are therefore constrained to find that Ma does not disclose
repeating determining the parameters recited in claims 31, 61, 76, 91, 106,
and 121 until they are substantially the same. For similar reasons, we also
will not sustain the rejection for dependent claims 32-45, 62-75, 77-90,
92-105, 107-120, and 122-136.

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Claims 46-60
Based on the record before us, we find no error in the Examiner‟s
anticipation rejection of claim 46 which calls for, in pertinent part,
determining an axial force distribution of a bit and determining until the
axial force distribution is optimized. Appellants have not defined or argued
the phrase, “determining . . . a distribution of axial force on the bit” or
“determining until the distribution of axial force is optimized” has particular
meaning in the art. See Br. 34 (citing to Spec. ¶¶ 0050-54). We therefore
construe the phrase, “distribution of axial force,” to include determining
numerous axial forces and thus a distribution of axial forces. As the
Examiner explains (Ans. 16), Ma discloses measuring loads (e.g., axial
forces) on the teeth of every row or a load spectrum. FF 9. Appellants also
admit that loads are measured. See Br. 35. Ma thus discloses determining
an axial force distribution on the bit as recited.
Contrary to Appellants‟ contentions (see Br. 35), claim 46 does not
specifically recite simulating an axial load or adjusting the axial load, but
rather simulating drilling the earth with a bit and adjusting at least one initial
design parameter. Also, Appellants have not defined the term, “optimize,”
or argued that the term has a special meaning in the art. See generally
Specification. As a result, we will construe “optimized” in claim 46 broadly
but reasonably to include finding a satisfactory axial force distribution for
the bit. Ma describes a preliminary design of the bit (FF 5) and programs
used to adjust parameters to provide an optimum design for the bit (FF 5, 6,
8, 9). By adjusting parameters (see FF 8-9), the axial distribution force is
adjusted (see FF 9). Ma also state that the factors are adjusted to find the
optimum design for the bit when the results are fully satisfactory or until the
Appeal 2009-010513
Application 10/329,903

20
design for the bit is optimized. See FF 5, 6, 8. That is, when the bit design
is optimized, Ma finds an appropriate and satisfactory axial force
distribution on the bit. Thus, Ma also discloses “repeating the . . .
determining until the distribution of axial force is optimized” as recited in
claim 46 when optimizing the bit design.
We therefore will sustain the rejection of claim 46 and dependent
claims 47-60 not separately argued (Br. 33-35).

CONCLUSION
Under § 101, the Examiner erred in rejecting claims 31-136.
Under § 102, the Examiner did not err in rejecting claims 46-60 but
erred in rejecting claims 31-45 and 61-136.

ORDER
The Examiner‟s decision rejecting claims 31-136 is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

ELD