Ex Parte Yu et al

Board of Patent Appeals and Interferences

Apr 5, 2012

11291252 (B.P.A.I. Apr. 5, 2012)

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.
11/291,252 11/30/2005 Feng Yu 55452/M277 1406
23363 7590 04/05/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
SHEVIN, MARK L
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
04/05/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FENG YU, LOEL CORBETT, and RONALD K. EYRE
____________

Appeal 2010-011163
Application 11/291,252
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2010-011163
Application 11/291,252

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 23, 24, 26-29, 36, 38, and 40-52, the only claims pending
in the Application.2 We have jurisdiction under 35 U.S.C. § 6(b).
The invention “is directed to a method for controlling the relative quality of
polycrystalline ultra hard material layers formed over a plurality of substrates
which are formed from different batches of tungsten carbide powder and cobalt.”
(App. Br. 4.) “Tungsten carbide substrates are formed by cementing together
tungsten carbide particles in a cobalt binder matrix.” (Spec.3 8:33-34.) “Ultra hard
material is formed by sintering ultra hard material particles over a tungsten carbide
substrate at high pressure and high temperature where the ultra hard material is
thermodynamically stable.” (Spec. 8:17-20.)
During ultra hard material sintering, the cobalt in the substrate is
“squeezed” from the tungsten carbide substrate and infiltrates the ultra
hard material, e. g., diamond or cubic boron nitride. App[ell]ants
have discovered that the consistency in the cobalt infiltration kinetics
determines the consistency of the quality of the ultra hard material
sintering, and thus, the quality of the resulting polycrystalline ultra
hard material.
(Spec. 9:3-10.) Appellants are said to have further discovered that infiltration
kinetics of the cobalt can be controlled “by controlling the tungsten carbide particle
size distribution in the carbide substrate.” (Spec. 9:21-26.) According to
Appellants
[b]y tailoring the tungsten carbide particle size distribution,
[they] believe that a consistent sweep of cobalt into the ultra hard
material, i.e., a consistent amount of cobalt infiltrating the ultra hard

1 Final Office Action mailed Oct. 29, 2009 (“Final”).
2 Appeal Brief filed Apr. 2, 2010 (“App. Br.”), 2.
3 Specification filed Nov. 30, 2005.
Appeal 2010-011163
Application 11/291,252

3
material, can be achieved. Consequently, a consistent better quality of
polycrystalline ultra hard material will be formed over such substrates.

(Spec. 10:29-34.)
Independent claim 23 is representative of Appellants’ invention, and is
reproduced below from the Claims Appendix to the Appeal Brief:
23. A method for controlling the relative quality of polycrystalline ultra
hard material layers formed over a plurality of substrates formed from different
batches of tungsten carbide powder and cobalt, the method comprising:
forming by a high temperature and high pressure sintering process a first
polycrystalline ultra hard material layer over a first substrate formed from a first
batch of tungsten carbide powder, wherein cobalt from the first substrate infiltrates
said first ultra hard material via infiltration kinetics during said forming of said
first ultra hard material layer;
forming by a high temperature and high pressure sintering process a second
polycrystalline ultra hard material layer over a second substrate formed from a
second batch of tungsten carbide powder, wherein cobalt from the second substrate
infiltrates said second ultra hard material via infiltration kinetics during said
forming of said second ultra hard material layer;
controlling the infiltration kinetics of the cobalt through the first substrate by
selecting the first batch of tungsten carbide powder to have a first particle size
distribution for controlling the quality of the first ultra hard material layer; and
controlling the infiltration kinetics of the cobalt through the second substrate
by selecting the second batch of tungsten carbide powder to have a second particle
size distribution for controlling the quality of the second ultra hard material layer,
wherein each batch has a first percentage of its particles by volume having a size
less than a first particle size, a second percentage of its particles by volume having
a size less than a second particle size, and a third percentage of its particles by
volume having a size less than a third particle size, wherein the deviation between
corresponding particle sizes of the two batches is less than 30% for controlling the
relative quality of the two polycrystalline ultra hard material layers.
Appellants request review of the following grounds of rejection (App. Br. 3-
4):
Appeal 2010-011163
Application 11/291,252

4
1. claims 23, 24, 26-29, 36, 38, 40 and 44-52 under 35 U.S.C. § 103(a)
over Keshavan (US 2004/0016557 A1, issued Jan. 29, 2004) , in view of
Kembaiyan (US 6,287,360 B1, issued Sep. 11, 2001) (Ans.4 3-9); and
2. claims 41-43 under 35 U.S.C. § 103(a) over Keshavan in view of
Kembaiyan, in further view of Miller (US 5,467,837, issued Nov. 21, 1995) (Ans.
9-10).
Appellants rely solely on the arguments made in support of patentability of
claim 23 in traversing the rejection of claims 41-43. (App. Br. 11.) With respect
to the first ground of rejection, Appellants indicate the patentability of various
individual, or groups of, dependent claims is separately argued. (See id. at 7-10.)
We find these arguments amount to nothing more than statements of what each
claim recites.5 Therefore, we do not view the Appeal Brief as presenting
arguments for separate patentability of any particular claim or claim grouping. See
37 C.F.R. § 41.37(c)(1)(vii). In any event, the Examiner has fully addressed
Appellants’ contentions as to the rejections of dependent claims 24, 26-29, 36, 38,
and 40-52 in the Response to Argument. (See Ans. 15-17.)
We have fully considered Appellants’ arguments, but are not persuaded of
reversible error in the Examiner’s obviousness determination for the reasons
expressed in the Answer, which we adopt as our own in sustaining both grounds of
rejection. (See Ans. 3-17.) In general, as noted by the Examiner (see e.g. Ans.
11), Appellants’ arguments focus on alleged deficiencies in the individual
teachings of the references and fail to address the Examiner’s rejection which is

4 Examiner’s Answer mailed May 20, 2010.
5 In this regard, we note the Examiner has identified a teaching or suggestion of the
features recited in each of the dependent claims (see Ans. 6-9) and has provided
sufficient fact finding and reasoning to support a prima facie case of obviousness
as to claims 24, 26-29, 36, 38, 40 and 44-52.
Appeal 2010-011163
Application 11/291,252

5
based on modification of Keshavan’s method in view of the teachings of
Kembaiyan. We provide a brief discussion of Appellants’ principal argument,
which is that the Examiner failed to establish a prima facie case of obviousness
because the disclosures of Keshavan and Kembaiyan are limited to correlations
between grain size and substrate properties and do not teach or suggest adjusting
particle size distribution in the substrate for controlling the quality of the
polycrystalline ultra hard material layer formed over the substrate as required by
appealed claim 23. (See App. Br 6; Rep. Br.6 5.)
The Examiner finds (Ans. 4-5), and Appellants do not dispute (see
generally, App. Br. 4-7), that both Keshavan (see e.g. ¶¶ [0024] & [0097]) and
Kembaiyan (see e.g. col. 5, l. 62-col. 6, l. 2; col. 7, ll. 58-61) disclose methods of
forming substrates (e.g., a bit body) for cutting elements by heating tungsten
carbide and a binder material, such as cobalt, causing the binder to infiltrate and
cement the tungsten carbide. The Examiner further finds, and Appellants do not
dispute (see generally, App. Br. 4-7), that Keshavan teaches “particle size
distribution [is] a result effective variable effective in [controlling] the thermal
fatigue resistance and fracture toughness” of tungsten carbide substrates (Ans. 5-6)
and Kembaiyan teaches “tungsten carbide with a desired particle size distribution
is used to effect better infiltration of large-grain tungsten carbide (Col. 6, lines 24-
30)” (Ans. 5) in the formation of a bit body (Rep. Br. 6).
Based on these findings, the Examiner maintains (Ans. 5-6), and Appellants
do not refute (see generally, App. Br. 4-7; Rep. Br. 4-6) that one of ordinary skill
in the art would have been motivated to optimize grain size and particle
distribution in Keshavan’s substrates in order to achieve the desired substrate
properties disclosed by both Keshavan and Kembaiyan. (Ans. 5-6.)

6 Reply Brief filed Jul. 20, 2010.
Appeal 2010-011163
Application 11/291,252

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Keshavan discloses that when forming an ultra hard material layer such as
polycrystalline diamond on a tungsten carbide substrate, metal binder (e.g., cobalt)
in the cemented carbide substrate “migrates from the substrate and passes through
the diamond grains to promote a sintering of the diamond grains. As a result, the
diamond grains become bonded to each other to form the diamond layer, and the
diamond layer is subsequently bonded to the substrate.” (¶ [0096], cited in Ans.
4.) “[T]he substrate becomes integral with the cutting layer creating a single
cutting element piece.” (Id.)
As argued by Appellants, Keshavan does not explicitly teach that controlling
particle size distribution in the tungsten carbide substrate will result in migration of
a more consistent amount of cobalt into the diamond grains, thereby resulting in a
more consistent quality of the ultra hard material layer. (See App. Br. 6.)
However, it was reasonable for the Examiner to conclude that this feature would
have necessarily resulted from optimization of grain size and particle distribution
in Keshavan’s substrates. (See Ans. 13-14.)
Where the Examiner establishes a reasonable assertion of inherency and
thereby evinces that a claimed process appears to be identical to a process
disclosed by the prior art and/or that the products claimed by the applicant and
disclosed in the prior art appear to be the same, the burden is properly shifted to the
applicant to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977). Cf. In re Crish, 393 F.3d
1253, 1259 (Fed. Cir. 2004) (“[W]hen the prior art evidence reasonably allows the
PTO to conclude that a claimed feature is present in the prior art, the evidence
‘compels such a conclusion if the applicant produces no evidence or argument to
rebut it.’” (quoting In re Spada, 911 F.2d at 708 n.3)).
Appeal 2010-011163
Application 11/291,252

7
Appellants have not directed us to any evidence in support of their
contention that the Examiner’s proposed combination would not have resulted in
Appellants’ process as claimed in appealed claim 13. In this regard, we note the
Specification describes “an ultra hard material having consistent quality, as for
example, [a material having] consistent strength and consistent minimum interface
deformities, i.e., deformities at the interface between the ultra hard material and the
substrate, such as cobalt eruptions.” (Spec. 1:21-25.) Appellants have not
provided evidence which demonstrates that the ultra hard material of Keshavan, as
modified by Kembaiayan, would not have possessed these properties.
In sum, for the reasons expressed in the Answer and above, we find a
preponderance of the evidence favors the Examiner’s conclusion of obviousness as
to appealed claims 23, 24, 26-29, 36, 38, and 40-52.

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).
AFFIRMED

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