Ex Parte Weaver et al

Board of Patent Appeals and Interferences

May 14, 2012

10545181 (B.P.A.I. May. 14, 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.
10/545,181 06/06/2006 Steven Weaver 042866-8452 1015
9629 7590 05/15/2012
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
HUTCHINS, CATHLEEN R
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
05/15/2012 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 STEVEN WEAVER and MICHAEL McLEAN
____________

Appeal 2010-005670
Application 10/545,181
Technology Center 3600
____________

Before JOHN C. KERINS, EDWARD A. BROWN and WILLIAM V.
SAINDON, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2010-005670
Application 10/545,181

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STATEMENT OF THE CASE
Steven Weaver and Michael McLean (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 20-34.
Claims 1-19 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ invention is directed to a drill bit configured for
attachment to an end of an elongate drill rod. Independent claim 20,
reproduced below with emphasis added, is illustrative:
20. A drill bit defining a longitudinal center axis and
including an axial trailing end configured for attachment to an
end of an elongate drill rod, and an axial leading end including
a pair of axially forwardly extending abutment elements, each
abutment element having circumferential leading and trailing
ends with reference to a direction of drilling rotation; each
abutment element having an axially forwardly open slot formed
therein for separating the respective abutment element into
circumferential leading and trailing portions on which the
circumferential leading and trailing ends are respectively
disposed; each slot being situated closer to the circumferential
leading end than to the circumferential trailing end, wherein the
circumferential trailing portion is of greater width in the
circumferential direction than is the circumferential leading
portion; said slots being diametrically opposed and receiving
respective drill tip portions which project axially forwardly
from the respective slots; each circumferential trailing portion
extending axially forwardly farther than the associated
circumferential leading portion; each drill tip portion being
secured by adhesive to the respective circumferential leading
and trailing portions, wherein a substantial portion of a surface
of the drill tip portion adjacent to the respective circumferential
leading portion is in contact said respective circumferential
leading portion.
Appeal 2010-005670
Application 10/545,181

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THE REJECTIONS
The Examiner rejected:
(i) claims 20-29, 31, 32 and 34 under 35 U.S.C. § 103(a) as being
unpatentable over Weaver (US 6,309,159 B1, issued Oct. 30, 2001) in view
of Evans (US 2001/0030067 A1, published Oct. 18, 2001) and Kloppers (US
5,704,438, issued Jan. 6, 1998);
(ii) claims 30 and 33 under 35 U.S.C. § 103(a) as being unpatentable
over Weaver in view of Evans, Kloppers and Sheirer (US 5,400,861, issued
Mar. 28, 1995); and
(iii) claims 20-25, 27-29 and 31-34 under 35 U.S.C. § 103(a) as being
unpatentable over Kloppers in view of Evans.
ISSUE
Did the Examiner err in concluding, in view of the Kloppers
disclosure, that it would have been obvious to provide a drill bit in which a
substantial portion of a surface of a drill tip portion adjacent to a
circumferential leading portion is in contact with the circumferential leading
portion?
ANALYSIS
All three grounds of rejection on appeal rely on the Examiner’s
finding that Kloppers shows a leading portion of a drill bit in contact with a
front surface of a drill bit or cutter, and either that a substantial portion of the
leading portion is in contact with the surface of the drill bit or cutter (Ans. 5)
or that a substantial portion of the drill tip portion is in contact with the
Appeal 2010-005670
Application 10/545,181

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leading portion of the drill bit (Ans. 7).1 The Examiner’s position with
regard to the term “substantial portion” is that “substantial” is a broad term,
and that, in Kloppers, the contact between the drill tip portion and the
leading edge portion is “‘substantial’ enough to support the [drill tip],” thus
meeting the limitation set forth in claim 20 and the other independent claims.
Ans. 8; see also, Ans. 5-6 and 7.
Appellants argue that the term “substantial” should be construed as
meaning “largely but not wholly,” asserting that the Specification evidences
that this would be the understood meaning.2 Appellants do not point to any
specific language in the Specification or any particular drawing figure in
support of their argument. The term “substantial” itself does not appear to
be used in the Specification.
Notwithstanding, the Specification favors Appellants’ position.
Appellants’ drawings, and Figures 3 and 4 in particular, support the “largely,
but not wholly” interpretation. Figs. 3, 4, circumferential leading portion 15,
drill tip 18. In addition, the slot, which is bounded at the leading end by the
claimed leading portion, is described as being formed at “a depth sufficient
to accept almost the full height of the drill tip,” and that the leading portion
of the slot “increas[es] the bond area for adhesive bonding.” Spec., p. 3, ll.
29-31; p. 7, ll. 15-17.

1 The latter being the relationship set forth in the claims.
2 Appellants do not point out, but it is worth noting, that the meaning of the
term “substantial” in at least one prior Federal Circuit decision, was found to
mean “largely but not wholly” in the context of the disclosure and claims in
that case. See Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358 (Fed. Cir.
2001).
Appeal 2010-005670
Application 10/545,181

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In contrast, Kloppers describes the drill bit disclosed therein as
having:
the retaining formation [corresponding to the
claimed leading portion] extends merely to a
forwarded position well short of the front of the tip
30, thus leaving a large portion of, in fact a major
portion of, the working layer 34 [corresponding to
the leading surface of the drill tip portion]
exposed.
Kloppers, col. 4, ll. 34-37.
In describing a further, similar embodiment, Kloppers notes that:
each retaining formation 120 is chamfered at a
shallow angle at its radially inner end as indicated
by reference numeral 121. This enlarges even
further the portion of the working surface 134 of
each tip 130 which is exposed in use.
Kloppers, col. 5, ll. 52-57.
As such, Kloppers fails to disclose providing a drill bit in which a
substantial portion of a surface of the drill tip portion adjacent to a
circumferential leading portion is in contact with that leading portion. The
Examiner’s conclusion that such a construction would have been obvious is
not supported by rational underpinnings. The rejections of claims 20-34 are
not sustained.
CONCLUSION
The Examiner erred in concluding, in view of the Kloppers disclosure,
that it would have been obvious to provide a drill bit in which a substantial
portion of a surface of a drill tip portion adjacent to a circumferential leading
portion is in contact with the circumferential leading portion.

Appeal 2010-005670
Application 10/545,181

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DECISION
The rejections of claims 20-34 are reversed.

REVERSED

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