Ex Parte Yong et al

Patent Trial and Appeal Board

Sep 20, 2017

12773164 (P.T.A.B. Sep. 20, 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.
12/773,164 05/04/2010 Zhou Yong 09-STll-US-NP 5395
10395 7590 09/22/2017
SMTTH TNTFRNATTONAT TNC EXAMINER
Patent Services BAREFORD, KATHERINE A
1310 Rankin Rd.
HOUSTON, TX 77073 ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
09/22/2017 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 Docketing @ sib. com
jalverson@slb.com
smarckesoni @ slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ZHOU YONG and SIKE XIA
Appeal 2016-007066
Application 12/773,164
Technology Center 1700
Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and
JEFFREY R. SNAY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007066
Application 12/773,164
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1—16, 48, and 51—60. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to methods and structures for
improving the performance and/or cost effectiveness of roller cone drill bits
(Spec. 12).
Claim 1 is illustrative:
1. A method for manufacturing a roller cone for mounting on a drill bit
comprising:
- obtaining a cone having a body which comprises a plurality of parent
cutting elements spaced about the exterior surface of the body;
- applying a layer of hardfacing material to a portion of at least one of the
parent elements, said hardfacing material comprising a carbide phase
comprising a primary carbide of cemented carbide and a secondary carbide
of cast tungsten carbide, wherein the cast carbide is at least 10% of the total
weight of the carbide phase preapplication and comprises particles having
sizes in the range of 30 to 80 mesh;
- applying a layer of wear resistant material to said at least a portion of at
least one of the parent elements over said layer of hardfacing material
utilizing a thermal spray process for improving the wear resistance of said at
least a portion of said at least one of the parent elements, wherein the layer
2
Appeal 2016-007066
Application 12/773,164
of hardfacing material is applied by a process different than the process of
applying the layer of wear resistant material;
and
- sintering the layer of wear resistant material at a temperature in the range
of 800 °C to 1600 °C and at a pressure in the range of 100 mPa to 11 MPa.
Appellants appeal the following rejections:
1. Claims 1—16, 48, 51—58, and 60 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
2. Claims 1, 4—13, 48, 51, 52, 56, 59, and 60 are rejected under 35
U.S.C. § 103(a) as unpatentable over Langford (US 5,755,298) in
view of Coulas (US 2008/0069715 Al), Kembaiyan (US
2006/0185908 Al) and Liang (US 6,659,206 B2), either alone, or
optionally in further view of Kreider (US 3,984,043) as evidenced by
Foley (US 3,838,981).
3. Claims 1—13, 15, 48, 51—53, and 56—60 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Langford in view of Keshavan (US
2008/0164070 Al), Kembaiyan, Liang, either alone or optionally in
further view of Kreider and Foley.
4. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Langford in view of Coulas, Kembaiyan, Liang either alone or
optionally further in view of Kreider as evidenced by Foley and
Lazarz (US 6,227,435 Bl).
3
Appeal 2016-007066
Application 12/773,164
5. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Langford in view of Coulas, Kembaiyan, Liang, in further view of
Kreider, as evidenced by Foley.
6. Claims 15, 16, and 57 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Langford in view of Coulas, Kembaiyan, Liang,
either alone, or optionally, further in view of Kreider, as evidenced by
Foley and further in view of Sue (US 6,124,564).
7. Claims 15, 57, and 58 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Langford in view of Coulas, Kembaiyan, Liang,
either alone, or optionally in view of Kreider, as evidenced by Foley,
and further in view of Keshavan.
8. Claim 53 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Langford in view of Coulas, Kembaiyan, Liang, either alone or
optionally in view of Kreider, as evidenced by Foley and further in
view of either Evans (US 6,234,261 Bl) or Regan (US 4,762,028).
9. Claim 54 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Langford in view of Coulas, Kembaiyan, Liang, either alone or
optionally in view of Kreider, as evidenced by Foley and further in
view of either Solanki (US 5,352,526) or Raghu (US 5,935,350).
10. Claim 55 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Langford in view of Coulas, Kembaiyan, Liang, either alone or
optionally in view of Kreider, as evidenced by Foley and further in
view of either Dumm (US 2006/0246275 Al).
11. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Langford in view of Keshavan, Kembaiyan, Liang in view of Kreider,
as evidenced by Foley.
4
Appeal 2016-007066
Application 12/773,164
12. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Langford in view of Keshavan, Kembaiyan, Liang, either alone or
optionally in view of Kreider, and further in view of either Sue.
13. Claim 54 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Langford in view of Keshavan, Kembaiyan, Liang, either alone or
optionally in view of Kreider, as evidenced by Foley and further in
view of either Solanki or Raghu.
14. Claim 55 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Langford in view of Keshavan, Kembaiyan, Liang, either alone or
optionally in view of Kreider, as evidenced by Foley and further in
view of Dumm.
Appellants argue independent claim 1 only with regard to rejections (1)
and (2) (App. Br. 5). Any claims not argued separately in the rejections of
record will stand or fall with claim 1.
FINDINGS OF FACT & ANALYSIS
REJECTION (1): WRITTEN DESCRIPTION
The Examiner finds that the scope of the claim limitation “wherein the
layer of hardfacing material is applied by a process different than the process
of applying the layer of wear resistant material” lacks written descriptive
support (Final Act. 3). The Examiner finds that | 65 of the Specification
exemplifies using a welding process to apply the hardfacing material and a
thermal spray method to apply the wear resistant layer (Ans. 4). The
Examiner finds that 164 exemplifies using a thermal spray technique to
form the hardfacing layer and the wear resistant layer (Ans. 5). The
5
Appeal 2016-007066
Application 12/773,164
Examiner finds that the disputed claim limitation includes techniques other
than welding to form the hardfacing layer, which is broader in scope than the
disclosure in the Specification (Ans. 6).
Appellants argue that the 165 disclosure of welding to form the
hardfacing layer and thermal spraying to form the wear resistant layer
describes using a process different than the process used to form the wear
resistant layer to form the hardfacing layer (Br. 6).
The Examiner’s rejection is based on the finding that the claim
limitation includes a genus of processes to apply the hardfacing material that
differ from the process used to apply the layer of wear resistant material
whereas the written description only includes a single embodiment of
differing processes where welding is used to apply the hardfacing material
and thermal spraying is used to apply the wear resistant material. In other
words, the Examiner finds that the single disclosure of welding as a species
of processes to apply the hardfacing material is insufficient to support the
breadth of the claim.
To satisfy the written description requirement, a specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d
1306, 1319 (Fed. Cir. 2003). The written description requirement for a
claimed genus may be satisfied through sufficient description of a
representative number of species by actual reduction to practice, reduction to
drawings, or by disclosure of relevant, identifying characteristics, i.e.,
structure or other physical and/or chemical properties, by functional
characteristics coupled with a known or disclosed correlation between
6
Appeal 2016-007066
Application 12/773,164
function and structure, or by a combination of such identifying
characteristics, sufficient to show the applicant was in possession of the
claimed genus. See, Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559,
1568 (Fed. Cir. 1997). A "representative number of species" means that the
species which are adequately described are representative of the entire
genus. Thus, when there is substantial variation within the genus, one must
describe a sufficient variety of species to reflect the variation within the
genus. See, AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.,
759 F.3d 1285, 1300 (Fed. Cir. 2014). "[A] patentee will not be deemed to
have invented species sufficient to constitute the genus by virtue of having
disclosed a single species when ... the evidence indicates ordinary artisans
could not predict the operability in the invention of any species other than
the one disclosed." In re Curtis, 354 F.3d 1347, 1358 (Fed. Cir. 2004).
In the present case, Appellants disclose a single embodiment where
different processes form the hardfacing and wear-resistant layers.
Specifically, the Specification discloses (165) that welding forms the
hardfacing layer and thermal spraying forms the wear-resistant layer. Claim
1 requires that the process used to form the hardfacing layer differs from the
process of applying the wear-resistant material layer. The Examiner makes
no findings that the operability in the invention of any species other than the
one disclosed would have been unpredictable (Ans. 4—6). See Curtis, 354
F.3d at 1358. Indeed, the Examiner carries the initial burden of showing the
inadequacy of the written description. In re Wertheim, 541 F.2d 257, 263
(CCPA 1976).
Rather, Appellants’ disclosure of the embodiment where welding is
used to form the hardfacing and thermal spraying is used to form the wear-
7
Appeal 2016-007066
Application 12/773,164
resistant layer suffices to show that Appellants possessed the use of differing
coating application processes for the hardfacing and wear resistant layers.
The use of coating processes has not been shown to be unpredictable by the
Examiner. On this record, we reverse the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection for lack of written description.
REJECTIONS (2) TO (14)
The Examiner’s findings and conclusions regarding Langford, Coulas,
Keshavan, Kembaiyan, and Liang are located on pages 4 to 10 and 26 to 32
of the Final Office Action.
Appellants argue that none of the references used by the Examiner
teach or suggest sintering a layer of wear resistant material over a layer of
hardfacing material as recited in claim 1 (Br. 7). Regarding rejection (2),
Appellants argue that Coulas teaches applying the hardfacing material over a
roughened metal surface and thus does teach applying and sintering a metal
surface layer over a hardfacing layer (Br. 7). Regarding rejection (3),
Appellants argue that Keshavan teaches thermally spraying and fusing each
layer and thus teaches applying the same process to form the hardfacing and
wear resistant layers (Br. 8).
Appellants’ arguments are unpersuasive because they fail to establish
reversible error with the Examiner’s stated rejections. The Examiner finds
that Coulas teaches that the hardfacing material may be applied over a bond
coating (i.e., not directly on a roughened metal surface) so that Coulas
teaches forming and sintering a layer onto coated surface (Ans. 8).
Appellants do not respond this finding of the Examiner. Moreover, the
8
Appeal 2016-007066
Application 12/773,164
Examiner relies on Kembaiyan to teach applying two hardfacing layers
(Final Act. 6; Ans. 8).
Regarding rejection (2), Appellants’ argument with respect to
Keshavan fails to address the Examiner’s reliance on Keshavan and
Kembaiyan for teaching forming hardfacing layers on top of one another
where Kembaiyan teaches using different processes to form the layers (Final
Act. 27—28; Ans. 11—12). In other words, the Appellants’ arguments address
the teachings of the references individually instead of addressing what the
combined teachings would have suggested to the ordinarily skilled artisan.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants’ arguments have
not shown reversible error in the Examiner’s determination that the
combined teachings of the applied prior art would have suggested sintering
the wear resistant layer applied over the hardfacing material layer. On this
record, we affirm the Examiner’s § 103 rejections (2) to (14).
DECISION
The Examiner’s decision is affirmed.
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).
ORDER
AFFIRMED
9