Ex Parte Yong et al

Patent Trial and Appeal Board

Feb 11, 2013

11204753 (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte ZHOU YONG and SUJIAN HUANG
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Appeal 2010-008887
Application 11/204,753
Technology Center 2100
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Before ROBERT E. NAPPI, MIRIAM L. QUINN, and BARBARA A.
PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants’ appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-10, 13-14, 17, 21-25, and 27-31. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). Claims 11-12, 15-16,
18-20, 26, and 32-68 have been cancelled.
We AFFIRM.
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STATEMENT OF THE CASE
Appellants’ invention relates to methods of designing drilling systems
used to drill boreholes in subterranean formations. (Spec. ¶4, Abstract.)

CLAIMED SUBJECT MATTER
Claims 1 and 24 are the independent claims on appeal. Claim 1 is
representative of the subject matter on appeal, and recites:
1. A method for designing a drilling tool having at least one
design parameter, comprising:
selecting an earth formation to be drilled;
determining a desired pattern of at least one rock mechanics
strength parameter of the earth formation;
selecting an initial drilling tool based on the desired pattern of
at least one rock mechanics strength parameter;
simulating the initial drilling tool drilling the selected earth
formation;
graphically displaying to a design engineer at least one rock
mechanics effect of the drilling tool drilling in the earth
formation;
adjusting a value of a design parameter for the drilling tool
based on the desired pattern of at least one rock mechanics
parameter and the graphical display; and
repeating the graphically displaying to the design engineer for
observing any change in the at least one rock mechanics effect
caused by the adjusting the value of the design parameter.

REJECTIONS
Claims 1-5 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dekun Ma (The Operational Mechanics of The Rock Bit,
1996; “Ma 1996”) in view of Dekun Ma et al. (The Computer Simulation of
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the Interaction Between Roller Bit and Rock, Society of Petroleum
Engineers, Inc., Nov. 1995 at 309-317; “Ma 1995”). (Ans. 4-7.)1
Claims 6-10, 13-14, 17, 21-22, 24-25, and 27-31 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Ma 1996 in view of Ma 1995
and H.Y. Liu et al. (Numerical Simulation of the Rock Fragmentation
Process Induced by Indenters, International Journal of Rock Mechanics &
Mining Sciences, Apr. 2002 at 491-505; “Liu”). (Ans. 8-12.)

ISSUES
Appellants argue on pages 10 through 13 of the Appeal Brief that the
Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) is in
error.2 These arguments present us with the following issues:
a) Did the Examiner err in finding that the cited prior art teaches a
“pattern of at least one rock mechanics strength parameter,” as
recited in claim 1?
b) Did the Examiner err in rejecting claim 1 because the cited prior
art fails to teach “designing a drilling tool,” as recited in the
preamble of claim 1?
c) Did the Examiner err in finding that the cited prior art teaches
“graphically displaying to a design engineer at least one rock
mechanics effect,” as recited in claim 1?

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
Mar. 19, 2010.
2 Throughout this opinion were refer to Appellants’ Appeal Brief filed on
Dec. 23, 2009.
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Appellants argue on pages 14 through 15 of the Appeal Brief that the
Examiner’s rejection of dependent claim 2 under 35 U.S.C. § 103(a) is in
error. These arguments present us with the following issues:
d) Did the Examiner err in finding that the cited prior art teaches “a
failure mode in the earth formation,” as recited in claim 2?
Appellants argue on pages 16 through 18 of the Appeal Brief that the
Examiner’s rejection of dependent claim 17 under 35 U.S.C. § 103(a) is in
error. These arguments present us with the following issues:
e) Did the Examiner err in finding that the cited prior art teaches
“uniform distribution comprises distribution of the same or a
higher value for the rock mechanics effect over 40% of the area of
the surface view of the chart,” as recited in claim 17?
Appellants argue on pages 19 through 20 of the Appeal Brief that the
Examiner’s rejection of dependent claim 24 under 35 U.S.C. § 103(a) is in
error. These arguments present us with the following issues:
f) Did the Examiner err in finding that the cited prior art teaches “an
initial point force loading,” as recited in claim 24?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusion. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief. However, we highlight and address specific findings and
arguments regarding claims 1, 2, 17, and 24 for emphasis as follows.
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The rejection of claims 1, 5, and 23 under 35 U.S.C. 103(a)
a) Did the Examiner err in finding that the cited prior art teaches a
“pattern of at least one rock mechanics strength parameter,” as
recited in claim 1?
Appellants contend that the prior art excerpts identified by the
Examiner fail to disclose a “pattern of at least one rock mechanics strength
parameter,” as recited in claim 1. (App. Br. 11.) As the Examiner correctly
noted, Appellants’ Specification provides examples of rock mechanics
strength parameters including, for example, stress, strain, energy,
displacement, and fracture/fragmentation. (Ans. 13-14.) The prior art
excerpts of Ma 1996 that the Examiner identified are consistent with
Appellants’ Specification and disclose a “pattern of at least one rock
mechanics strength parameter,” as recited in claim 1. (Ans. 4-5, 13-14.)
Accordingly, we are not persuaded by Appellants’ arguments and agree with
the Examiner that this limitation is met by Ma 1996.
b) Did the Examiner err in rejecting claim 1 because the cited prior
art fails to teach “designing a drilling tool,” as recited in the
preamble of claim 1?
Appellants contend that the Examiner failed to show that the cited
prior art teaches “an inverse design of a drilling tool,” as recited in claim 1.
(App. Br. 12.) Claim 1 recites “designing a drilling tool,” not “an inverse
design of a drilling tool” as argued by Appellants. Thus, Appellants’
arguments are not commensurate with the scope of claim 1. Additionally,
the Examiner identified excerpts of, for example, Ma 1995, that teach
drilling tool design (Ans. 4, 15 (pointing to a disclosed roller bit design).
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Accordingly, we are not persuaded by Appellants’ arguments and agree with
the Examiner that this limitation is disclosed by Ma 1995.
c) Did the Examiner err in finding that the cited prior art teaches
“graphically displaying to a design engineer at least one rock
mechanics effect,” as recited in claim 1?
Appellants contend that the Examiner failed to show that the cited
prior art discloses “graphically displaying to a design engineer at least one
rock mechanics effect,” as recited in claim 1. (App. Br. 12.) The Examiner
correctly identifies excerpts of Ma 1995 that disclose graphically displaying
(Ans. 5, 16 (citing, e.g., Ma 1995, 317, Fig. 3)) at least one rock mechanics
effect (Ans. 5, 16 (citing, e.g., Ma 1995, 312-13)). Additionally, evidence in
the record supports the Examiner’s finding, including, for example, that the
BRIAS simulation software reflects “shape and size” of a tooth and a bottom
hole using “3-D compound coordinates.” (Ma 1995, 309.) Thus, we are not
persuaded by Appellants’ arguments and agree with the Examiner that this
limitation is disclosed by Ma 1995.
Additionally, Appellants contend that Ma 1995 is silent with respect
to “repeating the displaying and adjusting,” as required in claim 1. (App. Br.
12-13.) We agree with the Examiner that Ma 1995 discloses an iterative
process for simulation of a drill bit (Ans. 5, 16) and, therefore, teaches
“adjusting the value of the design parameter” and “repeating the graphically
displaying,” as recited in claim 1.
As explained with respect to issues (a) through (c), we agree with the
Examiner’s findings and stated conclusions that the limitations of claim 1
are met by Ma 1995 and Ma 1996. Accordingly, we sustain the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a).
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Regarding Appellants’ contentions with respect to claims 5 and 23
(App. Br. 10-13), Appellants do not provide additional arguments with
sufficient specificity, so these claims fall with claim 1. For the same
reasons, we agree with the Examiner’s findings and stated conclusions; and,
therefore, we sustain the rejection of claims 5 and 23.

The rejection of claim 2 under 35 U.S.C. 103(a)
d) Did the Examiner err in finding that the cited prior art teaches “a
failure mode in the earth formation,” as recited in claim 2?
Appellants contend that the Examiner failed to show that the cited
prior art discloses a “failure mode in the earth formation,” as recited in claim
2. (App. Br. 14.) Appellants’ Specification provides exemplary failure
modes, “[a]n improved failure mode model is pursued, whether the failure
mode is in terms of critical rock stresses, critical energies, rock stress
distributions, energy distributions, combinations of such rock strength
failure modes, or other failure mode predictor parameters.” (Ans. 17-18
(citing Spec. ¶ 28).) We agree with the Examiner that ductile breakage and
fragile breakage are failure modes disclosed by Ma 1995. (Ans. 6, 17-18
(citing Ma 1995, 311-12).) Thus, we are not persuaded by Appellants’
arguments and agree with the Examiner that this limitation is disclosed by
Ma 1995. Accordingly, we sustain the Examiner’s rejection of claim 2
under 35 U.S.C. § 103(a).

The rejection of claims 3 and 4 under 35 U.S.C. 103(a)
Appellants’ contentions with respect to claims 3 and 4 (App. Br. 15-
16), present us with the same issues as discussed with respect to claim 2.
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Thus, for the same reasons stated with respect to claims 1 and 2, we agree
with the Examiner’s findings and stated conclusions for claims 3 and 4.
Also, we agree with the Examiner’s additional findings and conclusions
regarding claims 3 and 4 (Ans. 6, 18-19). Accordingly, we sustain the
rejection of claims 3 and 4.

The rejection of claims 6-10, 13 and 14 under 35 U.S.C. 103(a)
Regarding Appellants’ contentions with respect to claims 6-10, 13,
and 14 (App. Br. 13-14), Appellants do not provide additional arguments
with sufficient specificity, so these claims fall with claim 1. For the same
reasons, we agree with the Examiner’s findings and stated conclusions; and,
therefore, we sustain the rejection of claims 6-10, 13 and 14.

The rejection of claims 17, 21, and 22 under 35 U.S.C. 103(a)
e) Did the Examiner err in finding that the cited prior art teaches
“uniform distribution comprises distribution of the same or a
higher value for the rock mechanics effect over 40% of the area of
the surface view of the chart,” as recited in claim 17?
Appellants contend that because “Liu expressly indicates that the
resultant stress field in Figure 3 is not uniform,” the Examiner erred in
finding that Liu teaches a “uniform distribution comprises distribution of the
same or a higher value for the rock mechanics effect over 40% of the area of
the surface view of the chart,” as recited in claim 17. (App. Br. 17.) Claim
17 requires uniform distribution “over 40% of the area of the surface view of
a chart,” but not over the entire area, as Appellants imply. The Examiner
correctly identifies excerpts of Liu showing this limitation. (Ans. 10, 20.)
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Additionally, Appellants did not respond to Examiner’s identification of
Figure 6 of Liu showing this limitation. (Ans. 20.) Thus, we are not
persuaded by Appellants’ arguments and agree with the Examiner that this
limitation is disclosed by Liu. Accordingly, we sustain the Examiner’s
rejection of claim 17 under 35 U.S.C. § 103(a).
Regarding Appellants’ contentions with respect to claims 21 and 22
(App. Br. 17-18), Appellants do not provide additional arguments with
sufficient specificity, so these claims fall with claim 17. For the same
reasons, we agree with the Examiner’s findings and stated conclusions with
respect to claims 21 and 22; and, therefore, we sustain the rejection of claims
21 and 22.

The rejection of claims 24, 25, and 27-31 under 35 U.S.C. 103(a)
f) Did the Examiner err in finding that the cited prior art teaches “an
initial point force loading,” as recited in claim 24?
Appellants contend that Liu does not teach “an initial point force
loading,” as recited in claim 24, and that Liu is “completely silent with
respect to the relationship between point force loading and failure mode.”
(App. Br. 19-20.) The Examiner correctly identified excerpts of Liu that
teach point force loading. (Ans. 10-11, 21-22.) Additionally, the Examiner
correctly identified excerpts of Liu that disclose simulating that certain types
of pressure will lead to specific types of failures. (Ans. 10-11, 21-22.)
Accordingly, we are not persuaded by Appellants’ arguments and agree with
the Examiner that this limitation is disclosed by Liu.
Regarding Appellants’ contentions with respect to claims 25 and 27-
31 (App. Br.20), Appellants do not provide additional arguments with
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sufficient specificity so these claims fall with claim 24. For the same
reasons, we agree with the Examiner’s findings and stated conclusions; and,
therefore, we sustain the rejection of claims 25 and 27-31.
CONCLUSION
Based on the record before us, we conclude that the Examiner did not
err in rejecting claims 1, 2, 17, and 24 as being unpatentable under 35 U.S.C.
§ 103(a) over Ma 1995, Ma 1996, and Liu. Therefore, we sustain the
rejection under 35 U.S.C. § 103(a) of claims 1, 2, 17, and 24, and of claims
3-10, 13-14, 21-23, 25, and 27-31, falling therewith.

DECISION
We affirm the Examiner’s rejection of claims 1-10, 13-14, 17, 21-25,
and 27-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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