Ex Parte Huang

Patent Trial and Appeal Board

Apr 29, 2013

10888354 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte SUJIAN HUANG
_____________

Appeal 2010-005985
Application 10/888,354
Technology Center 2100
______________

Before, DAVID M. KOHUT, JASON V. MORGAN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005985
Application 10/888,354

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection
of claims 1-47 and 49-50.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method for designing and determining wear of
a fixed cutter drill bit. Spec. 3-4. Claims 1 and 17 are representative of the
invention and are reproduced below:
1. A method for determining wear of a fixed cutter drill bit,
comprising:
(a) simulating the fixed cutter drill bit drilling an earth
formation;
(b) determining a cutter-formation interaction force and a
relative sliding velocity of a selected area on a cutting
surface on a cutter of the fixed cutter drill bit during the
drilling, wherein the selected area comprises an interface
between the cutting surface on the cutter and the earth
formation;
(c) calculating a wear rate of the selected area based on the
cutter-formation interaction force and the relative sliding
velocity;
(d) converting the wear rate into a visual representation;
(e) applying the calculated wear rate to at least one cutter of
the simulated fixed cutter drill bit; and
(f) continuing to simulate the fixed cutter drill bit with the at
least one worn cutter drilling the earth formation; and
(g) ending the simulation and displaying output data.

17. The method of claim 16, wherein the calculating the wear rate is
according to:
WR = a1 × 10a2 × da3 × va4 × Ta5

1 Claim 48 was previously cancelled.
Appeal 2010-005985
Application 10/888,354

3

where WR is the wear rate, d is the depth of cut, v is the relative
sliding velocity, T is the temperature, and a1 – a5 are constants.

REFERENCES

Taylor US 6,151,960 Nov. 28, 2000

Chen US 6,412,577 B1 July 2, 2002

Matthias US 6,435,058 B1 Aug. 20, 2002

Warren, et. al., “Drag-Bit Performance Modeling,” SPE Drilling
Engineering, June 1989, pp. 119-127.2

Sinor, et al., “Drag Bit Wear Model,” SPE Drilling, Engineering, June 1989,
pp. 128-136.3

REJECTIONS AT ISSUE
Claims 1, 2, 5, 9, 16-18, and 19-22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Warren, Matthias, Taylor, and Sinor. Ans. 4-7.
Claims 3, 4, 6-8, 10-15, 23-47, and 49-50 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Warren, Matthias, Taylor, Sinor and Chen. Ans.
8-12.

ISSUES
Did the Examiner err in finding that the combination of Warren, Matthias,
Taylor, and Sinor teaches or suggests:

2 Hereinafter referred to as Warren.
3 Hereinafter referred to as Sinor.
Appeal 2010-005985
Application 10/888,354

4

(a) “[A]pplying the calculated wear rate to at least one cutter of the simulated
fixed cutter drill bit”;
(b) “[D]etermining a cutter-formation interaction force and a relative sliding
velocity of a selected area”;
(c) “[C]alculating a wear rate of the selected area”; and
(d) “[C]ontinuing to simulate the fixed cutter drill bit with the at least one worn
cutter drilling the earth formation”?
Did the Examiner err in finding that the combination of Warren, Matthias,
Sinor, and Chen would have been obvious to one of ordinary skill in the art?
Did the Examiner err in finding that the combination of Warren, Matthias,
Taylor, and Sinor teaches or suggests calculating the wear rate using the depth of
the cut?
ANALYSIS
Claims 1-6, 19-22, and 49.
Appellant selects claim 1 as representative of the group comprising claims 1-
16, 19-22, and 49. App. Br. 16. First, Appellant argues that none of the references
teach or suggest “applying the calculated wear rate to at least one cutter of the
simulated fixed cutter drill bit,” as required by claim 1. The Examiner cites to
Sinor to meet this particular limitation. Ans. 6. However, Appellant argues that
Sinor, in column 1 (page 128), explicitly states that the model presented in Sinor
does not predict performance or wear. App. Br. 11; Reply Br. 6. As a result,
Appellant argues that Sinor cannot be used to teach the disputed limitation. App.
Br. 11; Reply Br. 6. We disagree.
We agree with the Examiner (Ans. 15) that Appellant takes the cited
statement out of context. The portion of the reference cited by Appellant is
discussing the effects of balanced and unbalanced bits. Sinor, pg. 128, “Types of
Appeal 2010-005985
Application 10/888,354

5

Wear.” The statement recited by Appellant indicates that the unbalanced force and
direction is calculated, but that the force and direction of the unbalanced bit is not
used to predict wear. Id. However, that statement does not mean that the entire
publication does not predict wear. Especially in light of the fact that the Examiner
has cited to figures and several other portions of Sinor which indicate that the wear
rate is calculated. Ans. 14-15; See also Sinor, pg. 128-130 and Fig. 1.
Second, Appellant argues that Warren does not teach or suggest determining
a relative sliding velocity of a selected area and a cutter-formation interaction
force, as required by claim 1, because Warren “assumes that the entire wear flat
area is in contact with the formation” instead of “determining the geometric
position of the cutter.” App. Br. 13. However, we agree with the Examiner (Ans.
17) that Appellant’s argument is not commensurate in scope with the claim.
Nowhere in the claim is it required that the geometric position of the cutter is
determined. Additionally, we agree with the Examiner (Ans. 17) that the claim
does not preclude the interpretation that the “selected area” includes the entire
wear flat area.
Third, Appellant argues that Sinor does not teach or suggest using the wear
rate calculation in the simulation in order to predict the performance of the bit as it
wears because Sinor’s rate of penetration (ROP) is kept constant and a new cutter
profile is not generated until after the simulation is completed, as seen in Figure 1.
App. Br. 13. We disagree. We do not agree that the constant ROP precludes the
use of the wear rate calculation. Additionally, the Examiner finds, and we agree,
that Figure 1 of Sinor suggests that the cutter wear is included in the simulation
wear rate as it is calculated after every rotation and advancement of the bit during
the simulation. Ans. 18-19.
Appeal 2010-005985
Application 10/888,354

6

Fourth, Appellant argues that Matthias does not teach “calculating a wear
rate of a selected area,” as required by claim 1, because Matthias is not enabling.
App. Br. 13-14. We disagree, as the Examiner finds (Ans. 19-20) that Matthias
explicitly discloses determining wear rate and one of ordinary skill in the art would
know how to make that calculation.
Fifth, Appellant argues that one of ordinary skill in the art would not
combine the references and the combination is based upon improper hindsight.
App. Br. 15. We disagree and add the following for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes
into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of ordinary
skill at the time of the Appellant’s invention and does not include knowledge
gleaned only from the Appellant’s disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 4-6. To the
extent that the Examiner relies on the knowledge of one of ordinary skill in the art
to combine the teachings of the references, this practice is consistent with current
case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated teachings
of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all
Appeal 2010-005985
Application 10/888,354

7

in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at
issue. To facilitate review, this analysis should be made explicit. See
In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the analysis
need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art
would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by the
references of record. See Ans. 4-6. Additionally, although not required, the
Examiner finds a specific motivation to combine the references. Specifically, the
Examiner finds that it would have been obvious to combine Warren and Matthias
because “it is desirable when designing a drill bit[] to be able to make a
reasonably accurate prediction of the rate of wear” (citing Taylor, col. 1, ll. 45-
49). Ans. 5. Additionally, the Examiner finds that it would have been obvious to
combine Warren and Sinor “to gain a better understanding of the interaction of the
variables that determine the success or failure of a particular bit run” (citing Sinor,
Introduction). Ans. 6. We find the Examiner’s motivation to be reasonable, and
Appellant fails to address the Examiner’s specific findings. Thus, we agree with
the Examiner.
For all of the reasons stated supra, we sustain the Examiner’s rejection of
claim 1 and claims 2-16, 19-22, and 49.
Appeal 2010-005985
Application 10/888,354

8

Claims 17 and 18.
Appellant argues that the references do not teach the formula for calculating
wear rate which includes depth of the cut, as required by claims 17 and 18, because
none of the references discuss the use of depth in a wear rate calculation. App. Br.
17-18; Reply Br. 4-6. In response, the Examiner cites to Sinor, on page 134, which
describes Figure 19. Ans. 23. The Examiner finds that this figure and portion of
the reference shows that depth is involved in the calculation of the wear rate. Ans.
23. We disagree. Figure 19 charts depth, but the Examiner does not direct our
attention to any place in the reference or figure that states that wear rate is
calculated using the depth. Additionally, the Sinor reference, on page 128,
indicates that the wear rate is a function of contact stress and temperature, but
makes no mention of depth. As a result, we cannot sustain the Examiner’s
rejection of claims 17 and 18.
Claims 23, 24, 27-47, and 50.
Appellant makes the same arguments with respect to claims 23, 24, 27-47,
and 50 as with claim 1. App. Br. 19-20. As such, we sustain the Examiner’s
rejection of claims 23, 24, 27-47, and 50 for the same reasons discussed supra with
respect to claim 1.
Claims 25 and 26.
Appellant makes the same arguments with respect to claims 25 and 26 as
with claims 17 and 18. App. Br. 21-22. As such, we cannot sustain the
Examiner’s rejection of claims 25 and 26 for the same reasons discussed supra
with respect to claims 17 and 18.

Appeal 2010-005985
Application 10/888,354

9

CONCLUSION
The Examiner did not err in finding that the combination of Warren,
Matthias, Taylor, and Sinor teaches or suggests:
(a) “[A]pplying the calculated wear rate to at least one cutter of the simulated
fixed cutter drill bit;”
(b) “[D]etermining a cutter-formation interaction force and a relative sliding
velocity of a selected area;”
(c) “[C]alculating a wear rate of the selected area;” and
(d) “[C]ontinuing to simulate the fixed cutter drill bit with the at least one worn
cutter drilling the earth formation.”
The Examiner did not err in finding that the combination of Warren, Matthias,
Sinor, and Chen would have been obvious to one of ordinary skill in the art.
The Examiner erred in finding that the combination of Warren, Matthias,
Taylor, and Sinor teaches or suggests calculating the wear rate using the depth of
the cut.

SUMMARY
The Examiner’s decision to reject claims 1-16, 19-24, 27-47 and 49-50 is
affirmed.
The Examiner’s decision to reject claims 17, 18, 25, and 26 is reversed.
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
tj