Ex Parte HuangDownload PDFBoard of Patent Appeals and InterferencesApr 28, 201010888523 (B.P.A.I. Apr. 28, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SUJIAN HUANG ____________ Appeal 2009-012723 Application 10/888,523 Technology Center 2100 ____________ Decided: April 28, 2010 ____________ Before LEE E. BARRETT, LANCE LEONARD BARRY, and CAROLYN D. THOMAS, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Patent Examiner rejected claims 1-7, 9, 10, 13-22, and 24-36. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-012723 Application 10/888,523 2 INVENTION The Appellant describes the invention at issue on appeal as follows. The invention relates generally to fixed cutter drill bits used to drill boreholes in subterranean formations. More specifically, the invention relates to methods for modeling the drilling performance of a fixed cutter bit drilling through an earth formation, methods for designing fixed cutter drill bits, and methods for optimizing the drilling performance of a fixed cutter drill bit. (Spec. 2.) ILLUSTRATIVE CLAIMS 1. A method for designing a fixed cutter drill bit, said method comprising: (a) selecting a cutter; (b) selecting an earth formation; (c) engaging said cutter with said earth formation at a selected orientation with respect to said earth formation; (d) determining a force on the cutter; (e) creating a database of the determined force and data representative of at least one of a force applied to the cutter, the selected depth of cut, the selected orientation of the cutter, and a geometric parameter of the cutter; (f) simulating a fixed cutter drill bit drilling a formation; (g) determining a force on at least one cutter of the simulated fixed cutter drill bit, wherein the determining comprises: accessing the data stored in the database; (h) designing a fixed cutter drill bit based on the simulating and the determining the force on at least one cutter of the simulated fixed cutter drill bit; and Appeal 2009-012723 Application 10/888,523 3 (i) graphically displaying the designed fixed cutter drill bit. 25. A method of simulating a fixed cutter bit drilling an earth formation, the simulating comprising: a. selecting an earth formation; b. executing the simulation; wherein the executing comprises: i. accessing a database of determined forces and data representative of at least one of a force applied to a cutter, a selected depth of cut, a selected orientation of the cutter, and a geometric parameter of the cutter, ii. determining, based on the data accessed from the database, a force acting on at least one cutter, iii. rotating the bit and redetermining the force acting on the at least one cutter; and iv. repeating the rotating and redetermining until the force acting on the at least one cutter is optimized; and c. graphically displaying the fixed cutter bit. PRIOR ART Chen US 6,095,262 Aug. 1, 2000 Goldman US 6,109,368 Aug. 29, 2000 David A. Glowka et al.; Use of Single-Cutter Data in the Analysis of PDC Bit Designs: Part 1- Development of a PDC Cutting Force Model, August 1989, JPT, art provided by the Applicant on the Information Disclosure Statement dated December 10, 2004, item CB, pages 797-799, 844-849 ("Glowka I") David A. Glowka et al.; Use of Single-Cutter Data in the Analysis of PDC Bit Designs: Part 2- Development and Use of the PDCWEAR Computer Code, August 1989, JPT, art provided by the Applicant on the Information Appeal 2009-012723 Application 10/888,523 4 Disclosure Statement dated December 10, 2004, item CC, pages 850-859 ("Glowka II") T.M. Warren et al., Drag-Bit Performance Modeling, SPE Drilling Engineering, June 1989, pages 119-127. Baird et al, Analyzing the Dynamic Behavior or Downhole Equipment During Drilling, SAND-84-0758C, January 1, 1984, pages 1-5. REJECTIONS Claims 1-7, 9, 10, 15-17, 19, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Warren, Glowka I, and Glowka II. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Warren, Glowka I and Glowka II in view of Goldman. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Warren, Glowka I, Glowka II, and Chen. Claims 20-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Warren, Glowka I, Glowka II, and Baird. Claims 25-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen and Warren. CLAIMS 1-7, 9, 10, 13-22, AND 24 FIRST ISSUE The Examiner makes the following findings. Warren et al. teaches . . . storing data representative of at least one of a force applied to the cutter (Table I), storing data representative of the selected depth of cutter (Figure 8 and description; Figure 16 and description; Figure 22 and description; Figure 25), the selected orientation of the cutter (Table 1), and a geometric parameter of the cutter (page 119, "Example Model Results", paragraph 1; Figure 1; "Laboratory Appeal 2009-012723 Application 10/888,523 5 Drilling Tests", paragraph 1, sentence 1; Table :1); and (f) simulating a fixed cutter drill bit drilling a formation (at least page 119, left-side column, section "Example Model Results"); determining a force on at least one cutter of the simulated fixed cutter drill bit wherein the determing comprises: accessing the data stored in the database (at least page 119, section "Example Model Results", "The circumferential, axial, and normal forces are calculated for each cutter on the basis of the empirical force models"; please note that an empirical force model is produced using the measured data in the database, and thus, the determining accesses the database during the forming of the parameters of the empirical force model). (Answer 4-5.) Glowka I teaches the limitation at least on page 844, left-side column, "recorded the forces and other pertinent test data on floppy disk", because recording the forces on a floppy disk would reasonably suggest to the ordinary artisan the limitation of creating a database of a determined force and data representative of at least one of a force applied to the cutter. . . . Further, the recited column teaches recording the cut depth ("cut depth") . . . . (Id. at 16.) The Appellant argues that "[c]reating a database of averaged data is not equivalent to creating a database of actual determined forces, as well as data representative of forces applied to cutters, depth of cut, orientation, and/or geometric parameters of the cutter." (App. Br. 11.) Therefore, the first issue before us is whether the Examiner has erred in finding that the combined teachings of Warren and Glokaw I would have suggested a database of a determined force on a cutter and data representative of at least one of a force applied to the cutter, the selected depth of cut, the selected orientation of the cutter, and a geometric parameter of the cutter as recited in independent claims 1 and 24. Appeal 2009-012723 Application 10/888,523 6 SECOND ISSUE The Examiner also makes the following findings. Glowka I . . . continues by creating a database of experimental results (page 844, left-side column, recording experimentally measured data on floppy disk), and using the results to design a cutter (Glowka II, at least on page 854, in the section labeled "Predicted Effects of Design and Operation on Bit Performance", first paragraph). (Ans. 18.) The Appellant argues that "a person of ordinary skill in the art would have decided against the models of the present disclosure because of the volume of data generated" (Appeal Br. 16-17); that "[t]he skilled artisan, upon reading Glowka, would thus not use single-cutter interaction data in drill bit design, and as such, would never get to the simulation steps of the present application." (id. at 17); and that "assuming the Board concludes that the database of Glowka I includes certain determined forces, the database could not be used in subsequent drill bit simulation and design . . . ." (Id. at 12.) Therefore, the second issue before us is whether the Appellant has shown that Glowka I teaches away from the invention of claims 1 and 24, more specifically, by teaching away from using Glowka I's database in the drill bit simulation and design of Glowka II. LAW The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001). "'A prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter Appeal 2009-012723 Application 10/888,523 7 to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)). "What the prior art teaches and whether it teaches toward or away from the claimed invention . . . is a determination of fact." Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). FINDINGS OF FACT ("FFS") 1. Glowka I includes the following disclosure. A computerized data acquisition system was used to sample three components of cutter force during each cut on the rock sample: a vertical or penetrating force, a horizontal drag force, and a horizontal side force. The nominal sampling rate of 75 cycles/sec [75 Hz] allowed several hundred samples of each force channel to be stored for each cut. At the end of each cut, the computer averaged the data and recorded the forces and other pertinent test dam on floppy disk. These other data included rock type, cutter wear-flat area, cut depth, lateral distance to adjacent cuts, and depths of the adjacent cuts. (p. 844.) 2. Glowka I mentions that "[a]lthough it is possible to duplicate some interaction patterns in the laboratory,* it is clearly impractical in single- cutter tests to duplicate all the degrees of interaction that could be experienced by cutters in a given bit design." (p. 798.) Appeal 2009-012723 Application 10/888,523 8 3. Glowka II includes the following disclosure. Predicted Effects of Design and Operation on Bit Performance With baseline results established for the demonstration analysis, the effects of several important design and operating variables can be assessed. These effects were determined by modifying the bit design and/or operating parameters used in the baseline demonstration analysis and by repeating the calculations. Results for the modified analyses are illustrated by comparing the performance parameters predicted after drilling the same footage as in the baseline analysis (i.e., 0, 460, and 975 ft [0, 140, and 297 m]. (p. 854.) ANALYSIS Glowka I samples components of cutter force during each cut on several hundred rock samples, averages the forces, and records the averaged forces and other data including cut depth on a floppy disk. (FF 1.) We agree with the Examiner that "[w]hile the forces are averaged, the forces are still 'determined forces'." (Answer 16) and that storing these forces and data on a floppy disk constitutes storing them in a database. The same reference explains, however, that "it is clearly impractical in single-cutter tests to duplicate all the degrees of interaction that could be experienced by cutters in a given bit design." (FF 2.) We agree with the Appellants that this explanation teaches away from using the averaged forces and other data stored on Glowka I's floppy disk "in subsequent drill bit simulation and design . . . ." (Appeal Br. 12.) Appeal 2009-012723 Application 10/888,523 9 The Examiner cites the following disclosures as allegedly teaching toward the use of the data on the floppy disk in subsequent drill bit simulation and design. Glowka I then continues by creating a database of experimental results (page 844, left-side column, recording experimentally measured data on floppy disk), and using the results to design a cutter (Glowka II, at least on page 854, in the section labeled "Predicted Effects of Design and Operation on Bit Performance", first paragraph). (Answer 18.) The Examiner has not shown that the part of Glowka II on which he relies, however, teaches or would have suggested the use of the averaged forces and other data stored on Glowka I's floppy disk. Instead, the part merely mentions modifying the bit design or operating parameters used in a baseline demonstration analysis and repeating calculations. (FF 3.) Therefore, we agree with the Appellants that the prior art as a whole teaches away from the invention of claims 1 and 24, more specifically, by teaching away from using Glowka' I's database in the drill bit simulation and design of Glowka II. CONCLUSION Based on the aforementioned facts and analysis, we make the following conclusions. First, the Examiner has not erred in finding that the combined teachings of Warren and Glowka I would have suggested a database of a determined force on a cutter and data representative of at least one of a force applied to the cutter, the selected depth of cut, the selected orientation of the cutter, and a geometric parameter of the cutter as recited in independent claims 1 and 24. Second, the Appellant has shown that Glowka I teaches away from the invention of claims 1 and 24, more Appeal 2009-012723 Application 10/888,523 10 specifically, by teaching away from using Glowka I's database in the drill bit simulation and design of Glowka II. CLAIMS 25-36 Based on the Appellant’s arguments, we will decide the appeal of claims 25-36 based on claim 25 alone. FIRST ISSUE The Examiner makes the following conclusion and findings. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the simulation of the roller cone bit drilling an earth formation and the method of improving drilling performance as taught in Chen to simulate a fixed cutter drill and improve the drilling performance of a fixed cutter drill bit as taught by Warren et al since Warren et al teaches the analysis of the drilling mechanics of fixed cutter bits is much easier than that of roller cone bits because of their simpler geometry and teaches a model for PDC bits that is useful for evaluating the mechanical design of a particular bit ("Introduction", paragraph 1, "Review", paragraph 1). (Ans. 14.) The Appellant argues that "Chen is not properly combination with Warren because the interaction of roller cone drill bits and fixed cutter drill bits with formation is fundamentally different." (App. Br. 22.) Therefore, the issue before us is whether the Examiner has erred in combining teachings from Chen with those of Warren. LAW The presence or absence of a reason "to combine references in an obviousness determination is a pure question of fact." In re Gartside, 203 Appeal 2009-012723 Application 10/888,523 11 F.3d 1305, 1316 (Fed. Cir. 2000). A reason to combine teachings from the prior art "may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved." WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). FINDINGS OF FACT 4. Chen "relates generally to the drilling of oil and gas wells, or similar drilling operations . . . ." (Col. 1, ll. 12-13.) 5. The same reference explains that "[t]wo main types of drill bits are in use . . . ." (Id. at l. 24.) "Drag bits are becoming increasingly popular for drilling soft and medium formations, but roller cone bits are still very popular, especially for drilling medium and medium-hard rock." (Id. at ll. 34-37.) For its part, Warren explains that "[a]nalysis of the drilling mechanics of large-cutter (> 1/4 in. [>0.64cm] in diameter) PDC bits is much easier than that of roller-cone bits because of their simpler geometry. At the same time, variations in PDC bit designs result in a wider range of performance than observed with roller-cone bits." (p. 119.) 6. Chen discloses the following advantages of its invention. The disclosed methods provide a very convenient way for designers to take full advantage of the precision of a computer-implemented calculation of geometries. (The motion over hole bottom of roller cone bit teeth is so complex that only a complex mathematical model and associated computer program can provide accurate design support.) Appeal 2009-012723 Application 10/888,523 12 The disclosed methods provide convenient calculation of tooth trajectory over the hole bottom during the period when the tooth engages into and disengages from the formation. The disclosed methods permit the orientation angle of teeth in all rows to be accurately determined based on the tooth trajectory. The disclosed methods permit the influence of tooth orientation changes on bit coverage ratio over the hole bottom to be accurately estimated and compensated. The disclosed methods also permit designers to optimally select different types of teeth for different rows, based on the tooth trajectory. (Col. 5, ll. 43-63.) ANALYSIS Drag bits and roller cones are the two main types of drill bits in use. Each is better than the other for certain types of rock. (FF 5.) Because there are only two main types of drill bits, and each is suitable for different types of rock, we are unpersuaded that any difference in their interaction with rocks would have prevented one of ordinary skill in the art from looking to both types for solutions to problems. Furthermore, Chen discloses several advantages to its design method. (FF 6.) We agree with the Examiner's finding that such advantages would have provided one or more reasons to combine teachings from Chen with those of Warren. CONCLUSION Based on the aforementioned facts and analysis, we conclude that the Examiner has not erred in combining teachings from Chen with those of Warren. Appeal 2009-012723 Application 10/888,523 13 SECOND ISSUE The Appellant argues that "Chen and Warren fail to show or suggest, among other things, accessing a database of determined forces and data representative of at least one of a force applied to a cutter, a selected depth of cut, a selected orientation of the cutter, and a geometric parameter of the cutter." (App. Br. 23.) Therefore, the issue before us is whether the Examiner has erred in finding that the combined teachings of Chen and Warren would have suggested a database of a determined force on a cutter and data representative of at least one of a force applied to the cutter, the selected depth of cut, the selected orientation of the cutter, and a geometric parameter of the cutter as recited in claim 25. LAW "All of the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art." In re Boe, 355 F.2d 961, 965 (CCPA 1966)). "'The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.'" In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). FINDINGS OF FACT 7. Chen's "FIG[ ] 1A . . . shows a sample embodiment of a bit design process . . . ." (Col. 6, ll. 16-17.) "First, the bit geometry, rock properties, and bit operational parameters are input (step 102)." (Col. 7, ll. 4-5.) "Next the bit mechanics are calculated." (Id. at l. 26.) "The cutting depth, area, Appeal 2009-012723 Application 10/888,523 14 volume and forces for each tooth are calculated, and the hole bottom model is updated (based on the crater model for the type of rock being drilled)." (Id. at ll. 38-40.) "Finally, all results are outputted (step 148). The process can then be reiterated if needed." (Id. at ll. 46-47.) ANALYSIS Chen teaches inputting operational parameters for a drill including data representing the geometry of the drill's bit. (FF 7.) The same reference also teaches calculating, i.e., determining, forces for each tooth of the drill bit. (Id.) These parameters and forces are used to run an update a model. (Id.) The entire process can be reiterated as needed. (Id.) That the determined forces and the parameters are used to run, update, and reiterate a model would have suggested that these were stored in a database. CONCLUSION Based on the aforementioned facts and analysis, we conclude that the Examiner has not erred in finding that the combined teachings of Chen and Warren would have suggested a database of a determined force on a cutter and data representative of at least one of a force applied to the cutter, the selected depth of cut, the selected orientation of the cutter, and a geometric parameter of the cutter as recited in claim 25. DECISION We reverse the rejections of claims 1-7, 9, 10, 13-22, and 24 but affirm the rejection of claims 25-36. Appeal 2009-012723 Application 10/888,523 15 No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART rwk OSHA, LIANG LLP / SMITH TWO HOUSTON CENTER 909 FANNIN STREET, SUITE 3500 HOUSTON TX 77010 Copy with citationCopy as parenthetical citation