Ex Parte Scott et al

Patent Trial and Appeal Board

Nov 29, 2018

13650876 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/650,876 10/12/2012
91524 7590 12/03/2018
Traskbritt, P.C. / Baker Hughes, Inc.
Baker Hughes, Inc.
P.O. Box 2550
Salt Lake City, UT 84110
FIRST NAMED INVENTOR
Danny E. Scott
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1684-10786.l(CUT4-52827-U 4015
EXAMINER
COY, NICOLE A
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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 DANNYE. SCOTT, ANTHONY A. DIGIOVANNI,
GAURA V AGRA WAL, and SOMA CHAKRABORTY
Appeal2018-001824
Application 13/650,876 1
Technology Center 3600
Before LINDA E. HORNER, FREDERICK C. LANEY, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1-5, 8-12, 24, and 25. Final Office Action
(March 8, 2017) ("Final Act."). 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Baker Hughes Incorporated (now, Baker Hughes, a GE Company)
("Appellant") is the applicant under 37 C.F.R. § 1.46 and is the real party in
interest. Appeal Brief (September 1, 2017) ("Appeal Br."), at 1.
2 Claims 6 and 7 are canceled, and claims 13-23 are withdrawn from
consideration. Appeal Br. A-2, A-4 through A-6; Final Act. 1
Appeal 2018-001824
Application 13/650,876
The Examiner rejected all of the claims as obvious over the prior art.
Appellant contests the Examiner's stated reasons for combining the prior art
in the manner claimed. For the reasons explained below, the Examiner
provided adequate evidence and reasoning based on rational underpinnings
to support a determination of obviousness of the claimed subject matter.
Thus, we AFFIRM.
CLAIMED SUBJECT MATTER
The subject matter of the appeal relates to polycrystalline compacts
used on cutting elements of earth-boring tools. Specification (October 12,
2012) ("Spec.") ,r,r 2, 4. Claims 1 and 12 are independent claims. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below with the
disputed claim language shown in italics for emphasis.
1. A polycrystalline compact, comprising:
a polycrystalline superabrasive material comprising:
a first plurality of grains of superabrasive material having
a first average grain size between about five microns (5 µm) and
about forty microns ( 40 µm); and
a second plurality of grains of superabrasive material
having a second average grain size between about five
nanometers ( 5 nm) and about two microns (2 µm), wherein at
least some of the second plurality of grains are in-situ nucleated
grams;
wherein the first average grain size is at least about fifty
(50) times greater than the second average grain size;
wherein the first plurality of grains is dispersed within a
continuous matrix of the second plurality of grains and at least
some of the first plurality of grains are noncontiguous.
Appeal Br. A-1 (Claims Appendix).
2
Appeal 2018-001824
Application 13/650,876
Smith
DiGiovanni3
EVIDENCE
US 2004/0238227 Al
US 2011/0031034 Al
REJECTION
Dec. 2, 2004
Feb. 10,2011
The Final Office Action rejects claims 1-5, 8-12, 24, and 25 under
35 U.S.C. § I03(a) as unpatentable over Smith and DiGiovanni. 4
ANALYSIS
The Examiner found that Smith discloses the polycrystalline compact
of claim 1, including first and second grains of different sizes, and Smith
teaches that the sizes of the grains "may be adjusted in order to optimize the
cutter for cutting particular formations." Final Act. 2-3 ( citing Smith ,r 48).
The Examiner found that Smith does not disclose the specific size ranges
claimed for the first and second plurality of grains. Id. at 2. The Examiner
3 On its face, DiGiovanni is prior art to the application under pre-AIA
35 U.S.C. § I02(a). DiGiovanni published less than one year before the
effective filing date of the application and is "by another" because the
inventive entities on DiGiovanni and the application differ. During
prosecution before the Examiner, Appellant filed a Declaration Under
37 C.F.R. § 1.131 attempting to swear behind DiGiovanni to remove it as a
prior art reference. Response Accompanying Request for Continued
Examination (September 6, 2016). The Examiner determined the
declaration was not sufficient. Non-Final Office Action (September 28,
2016), at 5-7. Appellant has not asserted error in this decision by the
Examiner and has not presented the declaration for our review in this appeal.
4 Appellant argues in support of patentability of claim 1. Appeal Br. 17-25.
Appellant does not argue separately for patentability of dependent claims 2-
5, 8-11, 24, and 25. Id. at 25. Appellant also relies on these same
arguments in support of independent claim 12. Id. at 26. We select claim 1
as the representative claim, and claims 2-5, 8-12, 24, and 25 stand or fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
3
Appeal 2018-001824
Application 13/650,876
found that DiGiovanni discloses larger particles and smaller particles having
size ranges that overlap the claimed ranges to provide a cutter having
improved durability and thermal stability. Id. at 3 ( citing Di Giovanni ,r,r 35,
63). The Examiner found that DiGiovanni also discloses that the larger
average grain size is at least about fifty times greater than the smaller
average grain size. Id. at 3. The Examiner determined that it would have
been obvious to adjust the sizes of Smith's grains based on the teaching in
DiGiovanni to provide an improved and optimized cutter. Id.
Appellant makes two arguments contesting the rejection. First,
Appellant argues that one having ordinary skill in the art would not have
been motivated to modify the sizes of Smith's grains to have the sizes of
DiGiovanni's grains. Appeal Br. 17-21. Second, Appellant argues that one
having ordinary skill in the art would not have been motivated to modify the
relative sizes of the smaller and larger grains of Smith to have the relative
sizes of the smaller and larger grains ofDiGiovanni. Id. at 21-25. For the
reasons explained below, the Examiner did not err in the proposed
modification to Smith's grains based on the teaching of Di Giovanni.
Smith discloses a superabrasive table made from superabrasive
particles having different wear characteristics to cause the cutting edge of
the cutting face to wear unevenly. Smith ,r 23. Smith explains that upon
wearing, vugs are formed in the cutting edge, which accentuates the
roughness of the edge and provides a "rough cut" surface on the cutting edge
throughout the life of the cutting element. Id. Smith discloses that in one
embodiment, the superabrasive table includes differently sized superabrasive
particles having substantially different grades. Id. ,r 31. Specifically, the
superabrasive table includes larger particles having a wear rate within a first
4
Appeal 2018-001824
Application 13/650,876
selected wear rate distribution range, and smaller particles having a wear
rate within a second, different selected wear rate distribution range. Id. ,r 47.
Smith discloses a preferred size range of the larger particles is between
100 µm and 600 µm and a preferred size range of the smaller particles is
between 15 µm and 100 µm. Id. Smith then teaches that the specific size of
the larger and smaller particles "may be adjusted to optimize [the] cutter ...
for cutting particular formations exhibiting particular hardness and particular
abrasiveness characteristics." Id. ,r 48. Smith also teaches that the relative,
desirable particle size relationship of the larger and smaller particles
involves a tradeoff between strength (using a relatively smaller difference in
average particle size between the smaller and larger particles) and cutter
aggressiveness (using a relatively larger difference in average particle size
between the smaller and larger particles). Id. Smith describes that "in one
instance the interstitial smaller diamonds, or superabrasive particles, ... may
wear away relatively more quickly as the cutting element is in service,
resulting in vugs ... providing asperities in the cutting surfaces." Id. ,r 50.
Smith describes that "[a]ltematively, larger diamonds ... may wear away
relatively more quickly, creating vugs ... providing the asperities in the
cutting surfaces provided by the remaining 'matrix' of small diamonds .... "
Id. ( describing that larger diamonds are inherently weaker than smaller ones
and exhibit weaker bonding to, and easier loss from, the table).
We understand from the description in Smith that the bonding
strengths of the particles are one factor in the overall wear rates of the
different particles. However, Smith describes that in some instances smaller
particles may wear more quickly than larger particles. Thus, we do not
understand the size of the particle to be the controlling or sole factor to
5
Appeal 2018-001824
Application 13/650,876
achieve the rough cut surface in Smith. Smith also discloses that the
different particles can be a substantially different grade, thus having
differing inherent quality and strength. Id. ,r 5 3. Thus, according to Smith,
vugs can be formed using particles of different grades so that the smaller
particles wear away more quickly than the larger particles.
Di Giovanni teaches that upon formation of a diamond table using a
high temperature/high pressure process, catalyst material may remain in
interstitial spaces between the grains of diamond in the resulting diamond
table. Di Giovanni ,r 6. Di Giovanni teaches that the presence of this catalyst
material "may contribute to thermal damage in the diamond table when the
cutting element is heated during use." Id. DiGiovanni teaches using grains
of different sizes in the diamond table, where the difference between the
average grain sizes is large, e.g., at least about 150 times difference in sizes,
so that the total volume of the interstitial spaces or voids, and any catalyst
material that might be present within the spaces, may be more evenly
distributed throughout the microstructure. Id. ,r 31, 36. DiGiovanni teaches
that the smaller grains may be between 6 nm and 150 nm, and the larger
grains may be between 5 µm and 40 µm. Id. ,r 35. DiGiovanni teaches that
the disclosed polycrystalline diamond compacts "exhibit improved durability
and thermal stability." Id. ,r 63.
We agree with the Examiner's determination that one having ordinary
skill in the art would have been led by the teachings of Di Giovanni to
modify Smith's particles with DiGiovanni's particles sizes and differences
between the average sizes of the larger and smaller particles as a means to
more evenly distribute catalyst material throughout the microstructure to
achieve improved durability and thermal stability. In other words, one
6
Appeal 2018-001824
Application 13/650,876
having ordinary skill in the art would have recognized that DiGiovanni's
technique would improve Smith's superabrasive table in the same way to
achieve the same result. KSR Int'! 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").
Appellant argues that the proposed modification to reduce the size of
Smith's larger diamond particles to within the range disclosed in DiGiovanni
would result in stronger bonds between the different particles of Smith's
superabrasive table, thus, thwarting Smith's goal of creating vugs through
the loss of the larger diamonds during wearing of the cutting element.
Appeal Br. 18-20 (citing Smith ,r,r 23, 47, 50). We are not persuaded that
adopting the proposed changes to Smith to use smaller particles would
render Smith unfit for its intended purpose. Even if modifying the larger
diamond particles of Smith with the 5--40 µm grains of Di Giovanni would
result in stronger bonds and more difficult loss from the table, Smith
discloses other means to control relative wear of the particles to form vugs.
As discussed above, Smith discloses using diamond particles of different
grades to control the relative wear of the particles, and discloses that in some
embodiments, the smaller diamond particles wear away more quickly than
the larger particles, resulting in vugs that expose the large diamonds. Smith
,r,r 50, 53.
Appellant also argues that Smith's suggestion to adjust the sizes of the
diamond grains to optimize the cutter for cutting particular formations is
confined to adjusting the sizes within the ranges disclosed in Smith. Appeal
7
Appeal 2018-001824
Application 13/650,876
Br. 22-23 (discussing Smith ,r,r 47--48). Even if Appellant's reading of
Smith were correct, Smith does not teach away from adjusting the sizes of
the diamond grains to lie outside of the disclosed ranges. In fact, Smith
teaches that the difference in relative sizes of the smaller and larger grains is
a result effective variable-the smaller difference in average particle size
provides for better bonding strength between the diamond grains, and the
larger difference in average particle size provides a more aggressive cutter.
Smith ,r 48. DiGiovanni shows that diamond grains sized outside of Smith's
ranges can be used to create a more thermally stable polycrystalline
microstructure. DiGiovanni ,r 63.
We are not persuaded that implementing DiGiovanni's teaching of a
difference of 150 times in average grain sizes in Smith's table "would result
in a complete tradeoff for cutter aggressiveness at the expense of bonding
strength." Appeal Br. 23. Smith shows that it was within the level of skill
of one having ordinary skill in the art to account for these tradeoffs when
optimizing the relative sizes of the grains. Further, Appellant has not
provided any evidence to support the argument that modifying the large
grains to be 150 times larger than the small grains in Smith would diminish
the bonding strength to an undesirable or unworkable extent. Attorney's
argument in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1404 (CCPA 1974).
The Examiner has articulated adequate reasoning based on rational
underpinnings for the proposed combination of Smith and Di Giovanni. The
Examiner's determinations are supported by a preponderance of the
evidence, and Appellant's arguments have not identified error in the
rejection. We sustain the rejection of the claims under 35 U.S.C. § 103(a).
8
Appeal 2018-001824
Application 13/650,876
OTHER MATTERS
Appellant also seeks rejoinder of withdrawn claims 13-23. 5 Appeal
Br. 26-27. An Examiner's requirement to restrict certain claims from an
application under 35 U.S.C. § 121 is not appealable to the Board. 37 C.F.R.
§ 1.113(a) ("Petition may be taken to the Director in the case of objections
or requirements not involved in the rejection of any claim."); Manual of
Patent Examining Procedure§ 1002.02(c)(2) (delegating the Director's
authority to the Technology Center Directors to decide petitions from a final
decision of an examiner requiring restriction in patent applications). Thus,
we do not reach Appellant's request for rejoinder of claims 13-23.
DECISION
The decision of the Examiner rejecting claims 1-5, 8-12, 24, and 25
under 35 U.S.C. § 103(a) is affirmed.
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)(l )(iv).
AFFIRMED
5 The Examiner determined that the method of claims 13-23 are drawn to a
distinct invention from the compact recited in the elected claims on appeal.
Non Final Office Action (May 6, 2015), at 2. Appellant made a provisional
election without traverse to prosecute the invention of the claims on appeal.
Id. at 3; Amendment (July 29, 2015), at 8.
9