Anthony A. Digiovanni

Patent Trials and Appeals Board

Oct 21, 2019

14257762 - (D) (P.T.A.B. Oct. 21, 2019)

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.
14/257,762 04/21/2014 Anthony A. DiGiovanni 1684-10367.1(CUT4-51823-
U
5558
91524 7590 10/21/2019
Traskbritt, P.C. / Baker Hughes, Inc.
Baker Hughes, Inc.
P.O. Box 2550
Salt Lake City, UT 84110
EXAMINER
CHRISTIE, ROSS J
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
10/21/2019 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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte ANTHONY A. DIGIOVANNI

Appeal 2018-008090
Application 14/257,762
Technology Center 1700

Before DEBRA L. DENNETT, LILAN REN, and
SHELDON M. MCGEE, Administrative Patent Judges.

MCGEE, 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, 8–13, and 15. We have
jurisdiction. 35 U.S.C. § 6(b).
We reverse.

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 Baker Hughes, a
GE Company, LLC. Appeal Br. 1.
Appeal 2018-008090
Application 14/257,762

2
CLAIMED SUBJECT MATTER
The subject matter on appeal is directed to cutting elements having a
sintered diamond layer and earth-boring tools comprising such cutting
elements. Spec. ¶¶ 2, 5.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A cutting element comprising:
a sintered diamond table comprising interbonded grains
of diamond, the grains of diamond defining interstitial spaces
within the sintered diamond table;
a catalyst material within the interstitial spaces; and
lithium fluoride within the interstitial spaces.

REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Hall US 2009/0263308 A1 Oct. 22, 2009
Danilova SU 918073 A1 Apr. 7, 1982
Zhan2 EP 1 923 475 A2 May 21, 2008

REJECTIONS
Under 35 U.S.C. § 103(a):
Claims 1, 3, 6, 8, 9, 11–13, and 15 are rejected as being unpatentable
over Smith in view of Danilova; and
Claim 10 is rejected as being unpatentable over Smith in view of
Danilova, and further in view of Hall.

2 The Examiner and Appellant refer to this document as “Smith.” To be
consistent with the appeal record, we also refer to this document as “Smith.”
Appeal 2018-008090
Application 14/257,762

3
OPINION
We need only address independent claims 1 and 3 from which all
other claims depend. Each of these claims require, inter alia, a cutting
element comprising a sintered diamond table3 which has “interbonded grains
of diamond, the grains of diamond defining interstitial spaces within the
sintered diamond table, . . . and lithium fluoride within the interstitial
spaces.” Appeal Br. 24 (Claims Appendix).
In rejecting the independent claims under 35 U.S.C. § 103(a), the
Examiner finds that although Smith’s cutting element utilizes fluoride
compounds as a conformal coating material, “Smith does not teach explicitly
‘lithium fluoride within the interstitial spaces’.” Final Act. 4. To address
this difference, the Examiner turns to Danilova, finding that Danilova’s
Example 3 contains lithium fluoride as a component of a diamond wheel
cutting tool. Id. Based on these disclosures, the Examiner determines it
would have been obvious “to modify the teachings of Smith per Danilova’s
teachings” to incorporate lithium fluoride (“LiF”) in Smith’s cutting tool
because “Danilova teaches the inclusion of LiF produces strong diamond
tools suitable for machining glass.” Id. at 5.
Appellant argues that the skilled artisan would not have been
motivated to make the proffered modification of Smith’s cutting tool
because “Danilova does not teach that adding lithium fluoride to a diamond
tool increases the strength of the tool.” Appeal Br. 14. This argument is
persuasive of reversible error.

3 A “table” is also known as a “layer” of polycrystalline diamond material on
the cutting element. Spec. ¶ 5.
Appeal 2018-008090
Application 14/257,762

4
Danilova discloses a diamond abrasive tool, such as a diamond wheel,
for use in cutting “art glass and crystal glass.” Danilova, 2. The relied-upon
disclosure of Danilova ties the “major increase of the durability of the
diamond tool” to the destruction of sodium fluoride under the high
temperatures of grinding and the subsequent reaction of “fluoride ion with
silicon oxide, the main component of the glass.” Id. at 4 (emphasis added).
On this record, the Examiner has not established that Smith’s cutting tool––
which is disclosed as a “downhole cutting tool” to be used in “drilling earth
formations”––would undergo similar reaction conditions between fluoride
ions and silicon oxide. Smith ¶¶ 3, 24. Without evidence that Smith’s
cutting tool would encounter the reaction conditions present in Danilova that
yields “a major increase of the durability of the diamond tool,” the
Examiner’s proffered motivation lacks merit, particularly in view of
Danilova’s teaching that “the addition of fluorides reduces the strength of
the” diamond cutting wheel. Danilova, 4 (emphasis added); Final Act. 5.
We emphasize here Danilova’s discussion of the importance of certain
chemical reactions in order to achieve an increased durability in the cutting
tool. See Danilova 4 (“To increase the effectiveness of the diamond tool, the
role of the chemical reactions which proceed in the zone of working should
be increased.”).
Because the rejections lack sufficient evidentiary support, they cannot
be sustained. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies” in the cited references.).

Appeal 2018-008090
Application 14/257,762

5
CONCLUSION
The Examiner’s rejections are reversed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 6, 8, 9,
11–13, 15
103(a) Smith, Danilova 1, 3, 6, 8, 9,
11–13, 15
10 103(a) Smith, Danilova, Hall 10
Overall
Outcome
1, 3, 6, 8–
13, 15

REVERSED