Ex Parte Bramlett et al

Patent Trial and Appeal Board

Dec 12, 2013

11083540 (P.T.A.B. Dec. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH BRAMLETT, ANTHONY GRIFFO,
DAH-BEN LIANG, and ADAM POTTICARY
____________________

Appeal 2011-000102
Application 11/083,540
Technology Center 3700
____________________

Before KEVIN F. TURNER, MICHAEL J. FITZPATRICK, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kenneth Bramlett et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from a decision finally rejecting claims 10 and 13-18. Appeal Brief
(“Br.”) 7. Claims 1-9, 11, 12, and 19-26 are cancelled.1 Id. We have
jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm.

1 In the Final Rejection, claim 12 was rejected. Fin. Rej. 2. However, claim
12 subsequently was cancelled. See Response After Final Action (filed Jan.
21, 2010); see also Examiner’s Answer (“Ans.”) 2 (omitting claim 12 from
the list of claims that stand rejected).
App
App

more
(“Sp
wellb
the a
havin
eal 2011-0
lication 11
The clai
particular
ec.”) 1, ¶ 0
ores throu
pplication
Figure 1
g a bit bo
00102
/083,540
T
med inven
ly, to met
001. A ro
gh earth f
is reprodu
, reproduc
dy 32 that
he Claime
tion gener
hods for in
ller cone
ormations
ced below
ed above,
rotates ab
2
d Subject
ally relates
creasing t
drill bit is
. Id. at 1,
with an a
depicts a p
out longitu
Matter
to roller c
heir durab
a type of d
¶¶ 0002 an
nnotation.
rior art ro
dinal axis
one drill b
ility. Spec
rill bit use
d 0004. F

ller cone d
L during
its and,
ification
d to drill
igure 1 of

rill bit 30
use. Id. at

Appeal 2011-000102
Application 11/083,540

3
2, ¶ 0005. The bit includes three legs 36, which extend downward from the
bit body and which have roller cones 40 with cutting elements 42. Each leg
includes a backturn area. See annotation supra; see also Spec. 6, ¶ 0025,
Fig. 3a, ref. 130. The Specification describes a method for improving the
durability of a roller cone bit by treating the backturn area to induce a
compressive stress, such as by shot-peening. Spec. 5, ¶¶ 0020-0021.
The only independent claim on appeal reads as follows:
10. A method of manufacturing a roller cone
drill bit comprising:

inducing a compressive stress, through
plastic deformation, in at least a portion of a leg
backturn surface of at least one leg depending from
a bit body to treat the portion,

wherein inducing a compressive stress
comprises one selected from shot peening and
lasershock peening.

Br. 22.2

Evidence
The Examiner relies upon the following prior art references:
Reed
Huffstutler
Slaughter
US 4,674,365
US 5,595,255
US 2001/0050187 A1
Jun. 23, 1987
Jan. 21, 1997
Dec. 13, 2001

2 The version of claim 10 as provided on page 25 of the Appeal Brief is not
correct.
Appeal 2011-000102
Application 11/083,540

4
Rejections
The Examiner makes the following rejections:
I. Claims 10 and 14-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Slaughter and Reed. Ans. 4-5.
II. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Slaughter, Reed, and Huffstutler. Ans. 5.

OPINION
Claims 10 and 14-18
The Examiner rejected claims 10 and 14-18 as unpatentable over
Slaughter and Reed. Appellants argue the claims as a group. Br. 8. In
accordance with 37 C.F.R. § 41.37(c)(1)(vii)(2008), we select independent
claim 10 as representative of the group. Therefore, we will treat claims 14-
18 as standing or falling with representative claim 10.
The Examiner found that Slaughter teaches a roller cone drill bit but
does not teach “inducing a compressive stress, through plastic deformation,
in at least a portion of a leg backturn surface . . . wherein inducing a
compressive stress comprises one selected from shot peening and lasershock
peening,” as required by claim 10. Ans. 4 (citing Slaughter, Fig. 8, refs. 10,
20, 48, and 124). The Examiner also found that Slaughter identifies the
problem of backturn surfaces being prone to “contact damage.” Ans. 4
(citing Slaughter, ¶ 0054). Specifically, Slaughter teaches:
[A] hard, wear resistant material 122 may be incorporated into,
or upon, the bit 10 to strengthen the bit 10 and inhibit erosive
wear and contact damage . . .
Appeal 2011-000102
Application 11/083,540

5
. . . The hard wear resistant material 122 may, for example, be
inserts 124 (FIG. 4), as are known in the art for strengthening
and inhibiting wear to the bit 10.
Slaughter, ¶¶ 0054-0055. In Figure 4, as well as several other Slaughter
figures, the wear resistant material and inserts are shown on a backturn
surface. See also Figs. 6-11, ref. 122 and 124. Appellants have not
persuaded us of any error in the Examiner’s findings with respect to
Slaughter.
The Examiner found that Reed teaches extending the life of a cutting
tool, including, specifically, drill bits, by shot peening the surface of the
cutting tool to induce a compressive stress layer. Ans. 4 (citing Reed col. 4,
ll. 3-11); see also Reed col. 1, ll. 20-22. Appellants have not persuaded us
of any error in the Examiner’s findings with respect to Reed.
In rejecting claim 10, the Examiner concluded that, because Slaughter
identifies the problem with backturn surfaces being prone to contact damage
and Reed teaches extending the life of drill bits by shot peening the surface
thereof, it would have been obvious to one skilled in the art to further
strengthen the backturn surface of Slaughter’s roller cone drill bit by shot
peening that surface as taught by Reed. Ans. 4-5; see KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”)
Appellants argue that the Examiner’s combination of Slaughter and
Reed “offends common sense.” Br. 12. In particular, Appellants argue that
Reed’s teachings relate to the “cutting edges” whereas Slaughter’s teachings
Appeal 2011-000102
Application 11/083,540

6
relate to “a relatively flat outer surface of a drill bit leg.” Id. However, as
the Examiner noted, Reed generally teaches shot peening “surfaces” of
cutting tools, including drill bits. Ans. 4 (citing Reed col. 1, ll. 20-22, col. 4,
ll. 3-11); see also Ans. 7. Reed need not specifically teach shot peening of
backturn surfaces, as a reference “must be read, not in isolation, but for what
it fairly teaches in combination with the prior art as a whole,” which, here,
also includes Slaughter. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether . . . the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
Appellants also argue that inducing a compressive stress, as taught by
Reed, and the incorporation of wear-resistant material, as taught by
Slaughter, are “opposing methods.” Br. 12-13. In particular, Appellants
argue that Slaughter’s method “suggest[s] that the backturn surface of a drill
bit may be strengthened by increasing tensile stresses rather than by
inducing compressive stresses.” Id. at 13. However, Appellants have not
shown that Slaughter’s description of an alternative technique amounts to a
teaching away from inducing compressive stresses. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (Prior art does not teach away from
claimed subject matter merely by disclosing a different solution to a similar
problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed.).
Appellants also argue that the claimed subject matter would not have
been obvious to a person of ordinary skill in the art “because there was no
Appeal 2011-000102
Application 11/083,540

7
reasonable expectation of success that the combination [of Reed and
Slaughter] would strengthen the bit backturn surface enough to prevent
‘contact damage.’” Br. 13. Appellants’ evidentiary support for this
argument is based on declaration testimony from Robert H. Slaughter
(“Slaughter Decl.”) and Joshua Gatell (“Gatell Decl.”). Br. 13-14. In
essence, the witnesses assert that shot-peening the backturn surfaces of the
Slaughter bit would not be expected to strengthen them in any significant
respect. Id. (citing Slaughter Decl., ¶ 12; Gatell Decl., ¶ 11). We do not
find the declaration testimony persuasive.
Mr. Slaughter testified:
[I]f I were to apply method of inducing compressive stresses on
my bit, I would have no expectation of success because the
depth of the effected surface would soon be worn away from
cutting debris and would provide no benefit at all.

Slaughter Decl., ¶ 12. This testimony, which Appellants rely on at page 13
of their brief, is a mere conclusion. Mr. Slaughter does not explain
adequately the basis for his conclusion that the shot-peened backturn surface
of the modified Slaughter bit “would soon be worn away.” Further, Mr.
Slaughter does not testify with respect to combining Reed and Slaughter.
See generally Slaughter Decl. Thus, there is no indication that, in forming
his opinion, he considered the specific Reed teachings cited by the Examiner
in making the rejection.
Mr. Gatell testified:
[T]he occurrence of non-shot-peened leg breakage often results
from the bit being run for too long of a time period or from
premature failure of the cutting structure, both of which may
Appeal 2011-000102
Application 11/083,540

8
result in so much wear to the leg that the leg is weakened and
eventually breaks.
. . . For bits that are run for too long or have cutting structure
failure, the breakage results from leg wear, and this leg wear
would wear through the very surface having been shot-peened
. . .

Gatell Decl., ¶¶ 10 and 11. This testimony, which Appellants rely on at page
13 of their brief, similarly is premised on the idea that the shot-peened
backturn surface would be worn away, after which it could not provide any
benefit. The testimony is not persuasive, as it fails to demonstrate when
such a surface would be worn away. It is also not persuasive because it is
limited to “bits that are run too long or have cutting structure failure.”
Further, Mr. Gatell, like Mr. Slaughter, does not testify with respect to
combining Reed and Slaughter. See generally Gatell Decl. Thus, there is no
indication that, in forming his opinion, he considered the specific Reed
teachings cited by the Examiner in making the rejection.
Appellants also argue that secondary considerations indicate non-
obviousness of the claims. Br. 14-20; see also Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966) (“Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc., might be utilized
to give light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or nonobviousness,
these inquiries may have relevancy.”) In doing so, Appellants rely on the
Slaughter and Gatell Declarations as well as a declaration by Stephen C.
Steinke (“Steinke Decl.”).
In particular, Appellants assert “unexpected results” and “skepticism
of experts,” both of which are based on the same premise: that a person of
Appeal 2011-000102
Application 11/083,540

9
ordinary skill in the art would have expected that shot peening the backturn
surface of a bit would have a negligible, if any, effect on protecting the bit
from failure. Br. 18-19. The evidence of record, however, does not support
that premise. Indeed, Reed expressly teaches that the life of a cutting tool,
including, specifically, drill bits, can be extended by shot peening the
surface of the cutting tool to induce a compressive stress layer. Reed col. 1,
ll. 20-22, col. 4, ll. 3-11; see also In re Skoner, 517 F.2d 947, 950 (CCPA
1975) (“Expected beneficial results are evidence of obviousness of a claimed
invention. Just as unexpected beneficial results are evidence of
unobviousness.”)
Appellants assert that (1) “the natural strength of a bit leg is generally
sufficient to oppose any applied stresses encountered under downhole
conditions,” (2) “the typical causes of failure in non-shot-peened drill bits
arise from the bit being run for too long or from premature failure of the
cutting structure,” and (3) shot peening would not be expected to reduce or
prevent those typical causes of failure because shot peened surfaces are worn
away by the time those failures materialize. Br. 19. We are not persuaded
by this argument. First, it includes numerous qualifications such as through
the terms “generally sufficient,” “typical causes,” “too long,” and
“premature failure.” Second, it is at odds with Reed. Reed instructs the
person of ordinary skill in the art to strengthen the bit by shot peening, yet
Appellants’ declarants state that there is no point to shot peening because
either the bit’s “natural strength” will suffice or the bit will fail due to a
reason for which shot peening would not make a difference. Weighing
Reed’s clear disclosure of the benefits of shot-peening drill bits against
Appellants’ qualified opinion evidence, we determine that the Examiner
Appeal 2011-000102
Application 11/083,540

10
correctly found that Appellants’ position is not supported by a
preponderance of the evidence.
For the foregoing reasons, we sustain the obviousness rejection of
claim 10 and of claims 14-18, which fall therewith. 37 C.F.R.
§ 41.37(c)(1)(vii)(2008).
Claim 13
The Examiner rejected claim 13 as unpatentable over Slaughter, Reed,
and Huffstutler. Claim 13 recites: “The method of claim 10, further
comprising applying a hardface coating to a region adjacent the treated
portion.” Br. 23. The Examiner found that Huffstutler teaches the
additional limitation recited in claim 13 and that it was obvious to further
modify Reed/Slaughter by applying a hardface coating to the leg of the bit
body to protect the leg from erosion as taught by Huffstutler. Ans. 5.
Appellants do not dispute that Huffstutler teaches that a “shirttail
extension” of a roller cone drill bit may be covered with a layer of hard
facing material. Br. 20; see also Huffstutler col. 11, ll. 6-21. Appellants
also do not dispute that Huffstutler can be combined with Reed and
Slaughter as set forth in the Examiner’s rejection. Br. 21.
Rather, Appellants argue that the combination, though possible, was
not obvious “because there was no reasonable expectation of success and
because the results would not have been predictable.” Br. 21. Appellants
again rely on the Slaughter and Gatell declarations but only provide general
citations to them. Id. In fact, neither declaration discusses Huffstutler or
Reed. Although the declarations assert that a compressive stress layer
formed by shot-peening the outer surface of a drill bit would be expected to
Appeal 2011-000102
Application 11/083,540

11
wear away quickly, they lack any indication that the witnesses, in forming
their opinions, considered the specific Reed teachings cited by the Examiner
in making the rejection. See Slaughter Decl., ¶ 12; Gatell Decl., ¶ 11.
Appellants also point out that “while Huffstutler teaches protecting a
tool by increasing the amount of tensile stresses within the tool, Reed
teaches a method of extending tool life by increasing the amount of
compressive stresses within the tool.” Br. 22. However, teaching a different
solution is not teaching away. See Fulton, 391 F.3d at 1201.
For the foregoing reasons, including the reasons in regards to claim
10, we sustain the obviousness rejection of claim 13.

DECISION
The Examiner’s decision to reject claims 10 and 13-18 is affirmed.
No time period for taking action in connection with this appeal may
be extended under 37 C.F.R. § 1.135(a)(1)(iv)(2010).

AFFIRMED

llw