Halliburton Energy Services, Inc.

Patent Trials and Appeals Board

Feb 25, 2020

15315635 - (D) (P.T.A.B. Feb. 25, 2020)

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.
15/315,635 12/01/2016 Qi Liang 074263.1479 1681
52239 7590 02/25/2020
BAKER BOTTS L.L.P.
1500 SAN JACINTO CENTER
98 SAN JACINTO BLVD
AUSTIN, TX 78701-4039
EXAMINER
CHRISTIE, ROSS J
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
02/25/2020 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
jennifer.k.smith@bakerbotts.com
juli.tran@BakerBotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte QI LIANG and WILLIAM BRIAN ATKINS
____________

Appeal 2019-006530
Application 15/315,635
Technology Center 1700
____________

Before CHRISTOPHER L. OGDEN, MERRELL C. CASHION, JR., and
SHELDON M. McGEE, Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Examiner’s
rejection of claims 1, 2, and 4–20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention generally relates to a polycrystalline diamond and
methods for forming a polycrystalline diamond. Claims 1 and 16 are
illustrative of the subject matter claimed and are reproduced below from the
Claims Appendix to the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Halliburton Energy Services, Inc. Appeal Br. 3.
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1. A method of forming a polycrystalline diamond
element, the method comprising:

placing at least two leached polycrystalline diamond
segments comprising pores formed by removal of a diamond
sintering aid adjacent one another with a reactant gas
comprising methane, acetone, methanol, another hydrocarbon
gas, or any combinations thereof in an assembly; and

applying to the assembly a voltage and amperage
sufficient to heat the reactant gas to a temperature of 1500 °C or
less at which the reactant gas forms a plasma, which plasma
forms diamond bonds and carbide structures in at least a portion
of the polycrystalline diamond pores, wherein diamond bonds
bridge the adjacent polycrystalline diamond segments and
covalently bond the adjacent polycrystalline diamond segments
to one another to form a polycrystalline diamond element.

16. A polycrystalline diamond compact (PDC)
element comprising polycrystalline diamond segments adjacent
one another and covalently bonded to one another by diamond
bonds in pores formed by removal of a diamond sintering aid,
wherein the diamond bonds bridge the adjacent polycrystalline
diamond segments.

Independent claim 18 recites an article comprising the polycrystalline
diamond of claim 16.
Appellant requests review of the following rejections from the
Examiner’s Non-Final Office Action dated September 4, 2018:
I. Claims 16 and 18–20 rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Setlur (US 2012/0097457 A1, published April 26, 2012).2

2 The Examiner also relies on DiGiovanni (US 2013/0086847 A1, published
April 11, 2013) as an evidentiary reference in this rejection. Non-Final Act.
3.
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II. Claims 1, 2, 4–11, 13, 15, and 17 rejected under 35 U.S.C. §
103 as unpatentable over Setlur and Egan (US 2010/0206941 A1, published
August 19, 2010).3

III. Claims 12 and 14 rejected under 35 U.S.C. § 103 as
unpatentable over Setlur, Egan, and DiGiovanni.

Appellant argues independent claims 16 and 18 together (Rejection I)
and presents separate arguments for independent claim 1 (Rejection II).
Appellant does not present arguments for the respectively rejected dependent
claims 2, 4–11, 13, 15, 17, and 19–20 or separately rejected claims 12 and
14 (Rejection III). See generally Appeal Br. Accordingly, we select the
independent claims 1 and 16 as representative of the claimed subject matter
and decide the appeal as to all grounds of rejection based on the arguments
presented for these claims.
OPINION
After review of the respective positions Appellant provides in the
Appeal Brief4 and the Examiner provides in the Non-Final Action and the
Answer, we AFFIRM the Examiner’s rejections of claims 1, 2, and 4–20
under 35 U.S.C. §§ 102(a)(1) and 103 for essentially the reasons the
Examiner presents in the Non-Final Office Action and the Answer. We add
the following for emphasis.

3 The Examiner further relies on Fang (Z. Zack Fang et al. Synthesis,
sintering, and mechanical properties of nanocrystalline cemented tungsten
carbide - A review. Int’l J. Refractory Metals & Hard Materials 27 (2009)
288–299) as an evidentiary reference in both rejections under 35 U.S.C. 103.
Non-Final Act. 7, 17.
4 Appellant did not file a Reply Brief.
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Claim 16 (Rejection I under 35 U.S.C. § 102(a)(1))
Claim 16 recites a polycrystalline diamond compact (PDC) element
comprising polycrystalline diamond segments adjacent one another and
covalently bonded to one another by diamond bonds in pores formed by
removal of a diamond sintering aid, wherein the diamond bonds bridge the
adjacent polycrystalline diamond segments.
The Examiner finds that Setlur describes a PDC element comprising
leached polycrystalline diamond segments bonded to one another by
diamond bonds. Non-Final Act. 3; Setlur ¶¶ 15, 16, 18, 37, 38, 59, 60. The
Examiner finds that Setlur, like Appellant, bonds the polycrystalline
diamond segments by subjecting them to a spark plasma sintering process.
Non-Final Act. 4; Ans. 19–20; Setlur ¶ 18. Setlur discloses operating the
spark plasma sintering process at temperatures of from about 1000 to about
2500° C, which encompasses the operation temperatures that Appellant
discloses for the same process. Setlur ¶ 18; Spec. 7. The Examiner relies on
DiGiovanni solely to establish that it is known to use a spark plasma
sintering process to bond diamond grains or crystals directly together by
intergranular diamond-to-diamond bonds and that these bonds can be “any
direct atomic bond (e.g., covalent, ionic, etc.) between atoms in adjacent
grains of material.” Non-Final Act. 3–4 (emphasis added); DiGiovanni
¶¶ 20–22, 24.
In view of the above, the Examiner finds that Setlur anticipates the
subject matter of claim 16. Non-Final Act. 4.
After consideration of the arguments the Appellant presents to address
the anticipation rejection of claim 16 (Appeal Br. 7–11), we are not
persuaded of reversible error in the Examiner’s determination of anticipation
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for the reasons the Examiner presents (Ans. 19–23).
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of § 102. In re Schaumann, 572 F.2d
312, 317 (CCPA 1978). It is also well settled that when a claimed product
reasonably appears to be substantially the same as a product disclosed by the
prior art, the burden is on the applicant to prove that the prior art product
does not necessarily or inherently possess characteristics attributed to the
claimed product, and that it is of no moment whether the rejection is based
on § 102 or § 103 since the burden on the applicant is the same. In re Spada,
911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
The premise of the Examiner’s rejection is that the polycrystalline
diamond compact (PDC) element of claim 16 “reasonably appears to be
substantially the same as a product disclosed by [Setlur]” because Setlur
forms such an element using the same spark plasma sintering process the
Appellant uses.
Appellant acknowledges that Setlur discloses a polycrystalline
diamond compact element made by a spark plasma sintering process.
Appeal Br. 7, 9; Setlur ¶¶ 59–60. However, Appellant argues that Setlur
uses diamond powder placed between the two leached polycrystalline
diamond segments to bond them and this diamond powder prevents forming
the bridging diamond bonds in the pores of the two segments as claimed.
Appeal Br. 7. According to Appellant, the diamond powder forms new
polycrystalline diamond material between the two polycrystalline diamond
segments. Id.
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These arguments do not point to reversible error in the Examiner’s
rejection.
We first note that Setlur’s invention addresses the same problem as
the claimed invention: the presence of residual catalyzing materials that
imposes a limit upon the maximum useful operating temperature of the PCD
cutting element while in service. Setlur ¶ 5; Spec. 1. Both Setlur and
Appellant leach the segments to be bonded to remove or substantially
remove the residual material. Setlur ¶ 37; Spec. 1.
As the Examiner notes, Setlur teaches the use of the spark plasma
sintering process on stacks of pre-sintered discs (or stack) of previously
pressed diamond powder materials and does not disclose that a diamond
filler material is placed between the stacks of pre-sintered. Ans. 20; Setlur
¶¶ 59–60. Setlur does disclose that, in this embodiment, “sparking allows
the ‘stack’ 100 to form diamond-to-diamond bonds of PCD, similar to those
formed in the traditional HTHP process.” Setlur ¶ 60. As the Examiner
notes (Ans. 19–20), Appellant’s arguments do not address adequately the
portions of Setlur that the Examiner relies upon. Appellant does not explain
adequately, or provide evidence to support, why Setlur’s spark plasma
sintering process would not result in polycrystalline diamond segments
adjacent one another and covalently bonded to one another by diamond
bonds in pores formed by removal of a diamond sintering aid, wherein the
diamond bonds bridge the adjacent polycrystalline diamond segments.
Given that the Examiner established that using a spark plasma
sintering process results in covalent bonds to bond diamond grains or
crystals directly together (Non-Final Act. 3–4; DiGiovanni ¶¶ 20–22, 24),
the Examiner has provided a reasonable basis to assert that the claimed
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polycrystalline diamond compact element and Setlur’s product are
substantially the same. Appellant has not provided any persuasive reasoning
or credible evidence to show otherwise.
Appellant argues that Di Giovanni only discusses the use of the spark
plasma sintering process in conjunction with a high temperature and high
pressure (HTHP) sintering process while Setlur does not use spark plasma
sintering in the context of a HTHP process. Appeal Br. 10.
Appellant’s argument lacks persuasive merit. The Examiner relied
upon DiGiovanni for its teaching that spark plasma sintering results in
covalent diamond bonds when forming a polycrystalline diamond element.
Non-Final Act. 3–4; DiGiovanni ¶¶ 20–22, 24. The argument does not
address the reason for which the Examiner relies upon DiGiovanni. The
argument also fails to explain why DiGiovanni does not teach that spark
plasma sintering would not result in covalent diamond bonds as disclosed by
the reference.
Accordingly, we AFFIRM the Examiner’s prior art rejection of claims
16 and 18–20 under 35 U.S.C. § 102(a)(1) for the reasons the Examiner
presents and we give above.
Claim 1 (Rejections under 35 U.S.C. § 103)
We refer to the Examiner’s Non-Final Action for the statement of
rejection of claim 1. Non-Final Act. 7–12.
The Examiner relies on the additional references to Egan and Fang (as
an evidentiary reference) to address additional features recited in claim 1.
Id. at 10–12.
Appellant relies on arguments similar to those presented to address the
rejection of claim 16. Appeal Br. 11–12. Appellant does not present
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arguments contesting the Examiner’s reliance on Egan and Fang to address
the additional limitations recited in claim 1.
Accordingly, we AFFIRM the Examiner’s prior art rejections of
claims 1, 2, 4–11, 12–15, and 17 under 35 U.S.C. § 103 for the reasons the
Examiner presents and we give above.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16, 18–20 102(a)(1) Setlur 16, 18–20
1, 2, 4–11,
13, 15, 17
103 Setlur, Egan 1, 2, 4–11,
13, 15, 17

12, 14 103 Setlur, Egan,
DiGiovanni
12, 14
Overall
Outcome
1, 2, 4–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED