NATIONAL OILWELL DHT, L.P. et al.

Patent Trials and Appeals Board

Nov 3, 2020

14427978 - (D) (P.T.A.B. Nov. 3, 2020)

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.
14/427,978 03/12/2015 Charles Leonard Wright II 1814-71003 4662
92297 7590 11/03/2020
Conley Rose P.C
P.O.Box 3267
Houston, TX 77253
EXAMINER
CARROLL, DAVID P.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES LEONARD WRIGHT II, HAROLD A. SRESHTA,
and JIINJEN ALBERT SUE
Appeal 2020-002586
Application 14/427,978
Technology Center 3600
Before JENNIFER D. BAHR, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 6–9, 19, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
National Oilwell DHT, L.P. Appeal Br. 3.
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Application 14/427,978

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CLAIMED SUBJECT MATTER
The claims are directed to a drill bit. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A drill bit for cutting through a downhole metal structure,
the bit comprising:
a bit body having a central axis and a bit face, wherein
the bit body is configured to rotate about the central axis in a
cutting direction;
a cutting structure disposed on the bit face, wherein the
cutting structure includes a plurality of circumferentially spaced
blades, a plurality of primary cutter elements mounted to each
blade, and a plurality of secondary cutter elements mounted to
each blade,
wherein the primary cutter elements on each blade lead
the secondary cutter elements on the same blade relative to the
cutting direction;
wherein each primary cutter element has a forward-
facing primary cutting face and each secondary cutter element
has a forward-facing secondary cutting face;
wherein each primary cutting face has an extension
height that is greater than an extension height of each secondary
cutting face;
wherein each secondary cutter element comprises a
substrate and an ultrahard table mounted to the substrate,
wherein the ultrahard table forms the secondary cutting face;
wherein each primary cutting face is made of a whisker
ceramic composite;
wherein the whisker ceramic composite is configured to
cut the downhole metal structure and the ultrahard table is
configured to cut a subterranean formation adjacent the
downhole metal structure.
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Application 14/427,978

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Rhodes US 4,789,277 Dec. 6, 1988
Hart US 2005/0039905 A1 Feb. 24, 2005
Durairajan US 2009/0266619 A1 Oct. 29, 2009
DiGiovanni US 2011/0088954 A1 Apr. 21, 2011
Setlur US 2012/0018223 A1 Jan. 26, 2012
REJECTIONS
Claims 1, 3, 6–8, 19, 21, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hart, Durairajan, Rhodes, and DiGiovanni.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Hart, Durairajan, Rhodes, DiGiovanni, and Setlur.
OPINION
Claims 1, 3, 6–8, 19, 21, and 22
Appellant argues claims 1, 3, 6–8, 19, 21, and 22 as a group. Appeal
Br. 16–25. We select claim 1 as representative. Claims 3, 6–8, 19, 21, and
22 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The disputed issue in this case concerns the Examiner’s rationale for
modifying Hart’s drill bit to switch the locations of its primary and
secondary cutter elements with one another, such that its primary cutter
elements on each blade lead the secondary cutter elements on that blade.
See Appeal Br. 16–25. Appellant does not dispute the Examiner’s findings
related to Hart.
Appellant’s Figure 1 and Hart’s Figure 1 are each reproduced below
with our annotations.
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Appellant’s Figure 1 is a perspective view of a drill bit with our annotations
indicating the primary cutting elements on the leading portion of the blade
and the secondary cutting elements on the trailing portion of the blade.
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Hart’s Figure 1 is a perspective view of a drill bit with our annotations
indicating the primary cutting elements on the trailing portion of the blade
and the secondary cutting elements on the leading portion of the blade.
As seen above, Hart’s primary cutting elements trail the secondary
cutting elements. The Examiner proposes modifying that arrangement to
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Application 14/427,978

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have the secondary cutting elements trail the primary cutting elements, and
provides multiple reasons for the proposed modification. Final Act. 9–12.
The Examiner finds that Durairajan teaches “the primary cutter
element (leading cutters) (Durairajan 40) have a cutting face with an
extension height that is greater (Durairajan [0069, 0071-0072, 0074]) than
an extension height of the cutting face of each secondary cutter element
(Durairajan 50).” Final Act. 9 (emphasis omitted). The Examiner reasons
that “[i]t would have been considered obvious . . . to have modified Hart, to
include positioning the primary cutters with the larger cutting face extension
height in front of the secondary cutters as taught by Durairajan in order to
provide better protection to the secondary cutting elements.” Id. The
Examiner additionally reasons that
it would have been obvious . . . to try placing the primary
cutting element (taller) in the leading position and the
secondary cutting element (shorter) in the trailing position, as
there are a finite number of positions (leading or following) for
the primary and secondary cutting elements . . . and one of skill
in the art would have anticipated success and yielded
predictable results.
Final Act. 10.
Appellant contends that “the articulated reason to modify Hart does
not have a rational underpinning as is required” because “the proposed
rationale in support of modifying Hart to swap the positions of cutting
structure 20, 22 is redundant with capabilities and functionality already
provided and expressly taught in Hart alone – protection of leading cutting
structure 22 during milling of the casing with trailing cutting structure 20.”
Appeal Br. 22. Appellant’s contentions are not persuasive.
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Although Appellant disputes whether Durairajan specifically
“teach[es] that leading cutter elements with greater extension heights
provide enhanced protection to the trailing cutter elements with reduced
extension height,” that is not persuasive of error. Appeal Br. 23–24. There
is no dispute that Hart teaches cutter elements that have greater extension
heights that serve as protection for those having lesser heights or that
Durairajan’s leading cutters have greater heights than its trailing cutters.
Nor is there any dispute that the Examiner’s proposed modification to move
Hart’s primary cutters to the leading position would provide the benefit
asserted (i.e., provide better protection to the secondary cutter elements).
Appellant’s dispute essentially reduces to an allegation that the
proposed modification is based on impermissible hindsight. Appeal Br. 23.
The Examiner’s proposed modification, however, is not based solely on
Appellant’s disclosure. Rather, as the Examiner notes, Hart’s primary
cutters can be in one of two positions, a trailing position or a leading
position, with the secondary cutters in the other of the two positions. That
Appellant chose one of those options does mean it is hindsight for anyone
else to make the same selection out of the two available choices. Moreover,
as noted above, there is no dispute that Durairajan teaches leading cutters
having greater heights than its trailing cutters. See Appeal Br. 15.
For at least the reasons set forth above, Appellant does not apprise us
of error in the Examiner’s decision to reject claims 1, 3, 6–8, 19, 21, and 22.
Claim 9
Claim 9 depends from claim 1, and Appellant relies on the
unpersuasive contentions discussed above relative to claim 1 for the
patentability of claim 9. Appeal Br. 25.
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CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 6–8,
19, 21, 22
103(a) Hart, Durairajan,
Rhodes,
DiGiovanni
1, 3, 6–8,
19, 21, 22

9 103(a) Hart, Durairajan,
Rhodes,
DiGiovanni, Setlur
9
Overall
Outcome
1, 3, 6–9,
19, 21, 22

TIME PERIOD FOR RESPONSE
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