Ex Parte Weaver et al

Patent Trial and Appeal Board

Aug 30, 2016

13466807 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/466,807 05/08/2012
52239 7590 09/01/2016
BAKER BOTTS L.L.P.
1500 SAN JACINTO CENTER
98 SAN JACINTO BL VD
AUSTIN, TX 78701-4039
FIRST NAMED INVENTOR
Gary E. Weaver
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.
074263.0687 2213
EXAMINER
ANDREWS, DAVID L
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
crystle. garbade@bakerbotts.com
juli.luong@BakerBotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY E. WEAVER and RAM L. LADI
Appeal2014-007337
Application 13/466,807
Technology Center 3600
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gary E. Weaver and Ram L. Ladi (Appellants) 1 seek our review under
35 U.S.C. § 134 of the Examiner's Final Rejection of claims 1-26. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 5, and 13 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1 According to Appellants, the real party in interest is Halliburton Energy
Services, Inc. Appeal Br. 3.
Appeal2014-007337
Application 13/466,807
1. A super-abrasive body comprising a thermally stable
polycrystalline diamond (TSP) body having a top region and an
enhanced attachment region, wherein the enhanced attachment
region comprises tungsten carbide particles having a volume of
at least 3 0% of the total volume of the enhanced attachment
region, and wherein the TSP body is formed from polycrystalline
diamond (PCD) leached sufficiently to exhibit thermal stability
at temperatures above 7 50 °C.
REJECTIONS
The following Examiner's rejections are before us for review.
1. Claims 1 and 2 are rejected under 35 U.S.C. § 102(b) as
anticipated by Middlemiss (US 7,377,341 B2, iss. May 27, 2008).
2. Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Middlemiss and Qian (US 2008/0206576 Al, pub.
Aug. 28, 2008).
3. Claims 5, 6, 9-14, and 17-24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Middlemiss; Qian; and Shwayder (US
3,049,435, iss. Aug. 14, 1962).
3. Claim 3 is rejected under 35 U.S.C. 103(a) as being
unpatentable over Middlemiss, Qian, and Boeckeler (US 3,147,542,
iss. Sept 8, 1964).
4. Claims 7 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Middlemiss, Qian, Shwayder, and Boeckeler.
5. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Middlemiss, Qian, Shwayder, and Stevens (US
2011/0239545 Al, pub. Oct. 6, 2011).
6. Claims 4, 8, and 16 are rejected under 35 U.S.C. § 103(a) as
2
Appeal2014-007337
Application 13/466,807
unpatentable over Middlemiss, Qian, Shwayder, and Burhan (US
2010/0320005 Al, pub. Dec. 23, 2010).
ANALYSIS
Anticipation of Claims 1 and 2 by Middlemiss
We are persuaded by Appellants' arguments that the Examiner failed
to establish a prima facie showing of anticipation in rejecting claims 1 and 2
as anticipated by Middlemiss. See Appeal Br. 6-7 and Reply Br. 2--4.
The Examiner finds that Middlemiss anticipates claim 1 by disclosing,
inter alia,
a super-abrasive body compnsmg a thermally stable
polycrystalline diamond body (col. 6, lines 21 +) having a top
region ( 60) and an enhanced attachment region (intermediate
layer [ 5 8] as disclosed, col. 11, lines 8+ ), wherein the enhanced
attachment region comprises tungsten carbide particles . . . (as
taught appears 100% ).
Final Act. 3--4 (citing Middlemiss, col. 11, 11. 8+ ).
Appellants take issue with the analysis and conclusions presented in
the Final Action, first pointing out that "Middlemiss teaches that the
intermediate layer is an attached layer that is interposed between the ultra-
hard material body and a substrate," but contending that "[t]here is no
explicit or implicit disclosure in Middlemiss that the intermediate layer
[formed entirely of tungsten carbide] is included in the ultra-hard material
body." Appeal Br. 6 (citing Middlemiss, col. 3, 11. 4--12; Fig. 5, item 58).2
Appellants also explain that "the present specification consistently
discusses a TSP body (or, more broadly, a super-abrasive body) in which
both the top region and enhanced attachment region both contain TSP (or
2 See Middlemiss, col. 13, 11. 22-37, describing intermediate layer 58.
3
Appeal2014-007337
Application 13/466,807
super-abrasive material)," and argue that "[t]he Examiner provides no reason
to ignore this teaching of the specification and to instead interpret Claim 1 as
[reciting] an enhanced attachment region with no TSP because Middlemiss.
may disclose an enhanced attachment region that has no TSP." Reply Br.
3. In light of the teachings in the Specification and the claims, as written,
the Examiner's claim construction is not reasonable, in that claim 1 requires
the enhanced attachment region, as a region of the super-abrasive body, to
be comprised of thermally stable TSP and, in addition, to comprise tungsten
carbide particles. A preponderance of the evidence does not support the
Examiner's finding that intermediate materials or layers 58 of Middlemiss
comprise both TSP and tungsten carbide particles, but as correctly argued by
Appellants, only tungsten carbide.
[U]nless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
For the foregoing reasons, we do not sustain the Examiner's decision
rejecting claims 1 and 2 as anticipated by Middlemiss.
Obviousness of Claims 1and2 over Middlemiss and Qian
In rejecting claims 1 and 2 over Middlemiss and Qian, the Examiner
first determines that Middlemiss, inter alia, "disclose[ s] a super-abrasive
body comprising a thermally stable polycrystalline diamond [TSP] body ...
having a top region (60) and an enhanced attachment region [intermediate
layer (58) that comprises tungsten particles]." Final Act. 4--5 (citing
Middlemiss, col. 6, 11. 21 +; col. 11, 11. 8+ ). While explaining that
4
Appeal2014-007337
Application 13/466,807
"Middlemiss [does] not teach the tungsten carbide particles as within the
[diamond body] PCD itself, " the Examiner relies on Qian for teaching "an
enhanced attachment region [transition-layer mixture 122] of a diamond
body [PCD] wherein that region comprises tungsten carbide particles having
a volume of at least 30% of the total volume of the enhanced attachment
region." Id. at 5 (citing Qian i-f 70, disclosing the transition-layer mixture
122 comprising 20-80% tungsten-carbide particles by volume).
Based on the foregoing, the Examiner reasons that
[i]t would have been obvious ... to include a portion of the PCD
as containing [tungsten carbide] WC particles [as taught by Qian]
(as a replacement [for] the enhanced attachment region of
Middlemiss et al. OR as a further attachment region) ... in order
to moderate stresses of the assembly and/or further facilitate
attachment.
Id. (citing Qian i-f 70).
Appellants take issue with the analysis and conclusions presented in
the Final Action relating to the rejection of claims 1 and 2 as obvious over
Middlemiss and Qian, first contending that "Middlemiss does not teach or
suggest 'a thermally stable polycrystalline diamond (TSP) body having a top
region and an enhanced attachment region, wherein the enhanced attachment
region comprises tungsten carbide particles', as recited in claim 1." Appeal
Br. 7. However, Appellants are simply attacking Middlemiss in isolation for
lacking support for findings not relied upon by the Examiner, rather than
addressing the Examiner's combination of Middlemiss and Qian. 3
Nonobviousness cannot be established by attacking references individually
3 See Final Act. 5.
5
Appeal2014-007337
Application 13/466,807
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants acknowledge that "the transition layer mixture 122 may
comprise a mixture of tungsten carbide particles (or other metal-particles)
and diamond particles," but contend that because "the substrate 102 and the
transition layer 122 in Qian are separate and distinct from 'a layer of the
particular mixture 100 comprising any of the previously described diamond-
silicon formulations,'" that Qian does "not teach or suggest 'a thermally
stable polycrystalline diamond (TSP) body having a top region and an
enhanced attachment region, wherein the enhanced attachment region
comprises tungsten carbide particles', as recited in claim 1." Appeal Br. 8.
However, Appellants are simply attacking Qian in isolation for
lacking support for findings not relied upon by the Examiner. As we pointed
out previously, the Examiner relies on Qian in combination with Middlemiss
as stated at page 5 of the Final Rejection, and further emphasizes that "Qian
clearly teaches an enhanced attachment region (i.e. transition region 122,
i-f70) containing a combination of TSP and tungsten carbide as claimed
(20%-80% WC with the remaining [being] TSP)." Ans. 4. Thus, the
Examiner has provided "reasoning with some rational underpinning to
support the legal conclusion of obviousness" based on the combined
teachings of Middlemiss and Qian. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Appellants have not apprised us that the Examiner's rationale is
m error.
Further, to the extent that Appellants are arguing the references must
be capable of bodily incorporation in order to combine their teachings, the
6
Appeal2014-007337
Application 13/466,807
test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of a primary reference. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). "Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." Id. The Examiner relies on Qian merely for
disclosing "an enhanced attachment region of a diamond body wherein that
region comprises tungsten carbide particles having a volume of at least
30% of the total volume of the enhanced attachment region." See Final
Act. 5; see also Ans. 4.
For these reasons, we sustain the rejection of claims 1 and 2 under 3 5
U.S.C. § 103(a) as unpatentable over Middlemiss and Qian.
Obviousness of claims 5, 6, 9-14, and 17-24 over Middlemiss, Qian,
and Shwayder; of claim 3 over Middlemiss, Qian, and Boeckeler; of claims
7 and 15 over ~Middlemiss, Qian, Shwayder, and Boeckeler; of claims 25 and
26 over Middlemiss, Qian, Shwayder, and Stevens; and of claims 4, 8 and 16
over Middlemiss, Qian, Shwayder, and Burhan
Other than repeatedly observing that neither Shwayder, Boeckeler,
Stevens, or Burhan teaches or suggests "a thermally stable polycrystalline
diamond (TSP) body having a top region and an enhanced attachment
region, wherein the enhanced attachment region comprises tungsten carbide
particles having a volume of at least 30% of the total volume of the
enhanced attachment region," as recited by claims 1, 5, and 13, we
understand Appellants' appeal of the rejections of claims 3-26 to rest on the
arguments presented against the proposed combination of Middlemiss and
Qian, which we found not demonstrative of error in the Examiner's rejection
7
Appeal2014-007337
Application 13/466,807
of claims 1 and 2, as set forth supra. See, generally, Appeal Br. 8-11.
Accordingly, we sustain the rejections of claims 3-26 over the cited
references, for the same reasons stated above with respect to the rejection of
claims 1 and 2 over Middlemiss and Qian.
DECISION
We AFFIRM the Examiner's decisions as to claims 1-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
8