NATIONAL OILWELL DHT, L.P. et al.Download PDFPatent Trials and Appeals BoardNov 3, 202014427978 - (D) (P.T.A.B. Nov. 3, 2020) Copy Citation 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. Appeal 2020-002586 Application 14/427,978 2 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. Appeal 2020-002586 Application 14/427,978 3 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. Appeal 2020-002586 Application 14/427,978 4 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. Appeal 2020-002586 Application 14/427,978 5 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 Appeal 2020-002586 Application 14/427,978 6 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. Appeal 2020-002586 Application 14/427,978 7 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. Appeal 2020-002586 Application 14/427,978 8 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 Copy with citationCopy as parenthetical citation