Ex Parte Cariveau

Patent Trial and Appeal BoardNov 19, 2012

11129060 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PETER THOMAS CARIVEAU ____________________ Appeal 2010-010885 Application 11/129,060 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and BRADFORD E. KILE, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010885 Application 11/129,060 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-4, 6, 8, 9, and 11-20. Claims 5, 7, and 10 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION The claims are directed to an angular offset drill bit for drilling wellbores through the earth. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fixed cutter drill bit, comprising: a drill bit body having a cutting structure face; and a pin, having a first central axis, for attaching the drill bit body to a drill string, wherein the cutting structure face has a second central axis misaligned with the first central axis. REFERENCES Beimgraben Evans US 4,817,740 US 6,234,261 B1 Apr. 4, 1989 May 22, 2001 REJECTIONS Claims 1-4, 6, 8, 9, and 11-20 stand rejected under 35 U.S.C §103(a) as being unpatentable over Beimgraben and Evans. Ans. 3. Appeal 2010-010885 Application 11/129,060 3 ANALYSIS Claims 1-4, 11-18 The Examiner found that Beimgraben teaches a rotary drill bit 20 comprising: a drill bit body having a cutting structure face (see Fig. 1); and a pin 16a, having a first central axis, for attaching the drill bit body to a drill string, wherein the cutting structure face has a second central axis aligned at an angle relative to the first central axis since the pin 16a is offset by an angle relative to the bit. Ans. 3-4 (citing Beimgraben, Figs. 1, 2; col. 4, ll. 38-55). Appellant argues, inter alia, that “pin 16a of Beimgraben refers to a pin end of a bearing housing 17,” and is not part of Beimgraben’s drill bit.1 App. Br. 10 (citing Beimgraben, col. 4, ll. 38-49); see also Reply Br. 5.2 The Examiner responds that claims do not require the pin to be part of the drill bit body itself. Ans. 5-6. The Examiner also argues that “parts 16, 17, 18, and 20 can clearly be considered a drill bit in the broadest, most reasonable interpretation of the term drill bit.” Ans. 6. “This is because,” the Examiner asserts, “a) the drilling tool 1 would not be able to perform its intended function of drilling without parts 16, 17, 18, and 20 being assembled in the manner shown in Figures 1-3, and b) parts 16, 17, 18, 20 clearly move together as one relative to the drill string 14, thus the parts, when considered as a whole, are seen as one drill bit.” Id. 1 Beimgraben describes part 16a as the “angularly inclined external threads” formed on “bearing housing 16.” Beimgraben, col. 4, ll. 40-41. We understand the Examiner’s and Appellant’s reference to “pin 16a” to mean the entire housing 16, not just the threads. 2 Appellant filed two Reply Briefs, the first on February 1, 2010, the second on April 15, 2010, to cure a defect in the Appeal Brief. We refer here to the second Reply Brief. Appeal 2010-010885 Application 11/129,060 4 We agree with Appellant that the proposed combination of prior art does not disclose or reasonably suggest all of the elements of claims 1-4 and 11-18. Specifically, the proposed combination does not disclose a fixed cutter drill bit with the requisite pin, because the Examiner has not shown by a preponderance of the evidence that pin 16a is part of Beimgraben’s drill bit. As an initial matter, we note that while the Examiner is correct that the claims do not require that the pin is part of the drill bit body, the claims are drawn to “[a] fixed cutter drill bit” and therefore the pin must be part of the drill bit. Moreover, we disagree with the Examiner that the term “drill bit” can reasonably be interpreted to encompass intermediate housing 16, bearing housing 17, annular eccentric stabilizer 18, and rotary drill bit 20. First, Beimgraben identifies only item 20 as the drill bit portion of the drilling tool 1 of Figure 1. Beimgraben, col. 3, ll. 59-69. Second, the Examiner’s reasons for considering items 16, 17, 18 and 20 as part of the drill bit are unpersuasive. The Examiner’s first reason, that the drilling tool would not be able to perform its intended function if not assembled in the manner shown in Figures 1-3, simply proves too much. Under that logic the term “drill bit” would encompass the entire drill string depicted in Figures 1- 3. Regarding the Examiner’s second reason, the Examiner has not apprised us of any evidence to support a finding that “parts 16, 17, 18, and 20 move together as one relative to the drill string 14.” Ans. 6. On the contrary, our reading of Beimgraben is that drilling bit 20 rotates independently of components 16, 17, and 18. Beimgraben teaches that drilling bit 20 is “rotatably mount[ed]” to housing 17, meaning that drilling bit 20 rotates independently of housing 17. Beimgraben, Figs. 1-3; col. 3, ll. 59-63. Appeal 2010-010885 Application 11/129,060 5 Stabilizer 18 is secured to housing 17 and thus bit 20 necessarily rotates independently of it as well. Beimgraben, col. 4, ll. 57-59. Drill bit 20 is turned by fluid pressure motor 13 via drive shaft 22, which rotates with respect to housing 16 with the assistance of bearings 23. Beimgraben, col. 4, ll. 5-9. Since drill bit 20 is attached to drive shaft 22, it also must rotate independently of housing 16. We do not sustain the Examiner’s rejection of claims 1-4, 11-14, and 16-18. Claims 6, 8, 9, 19, and 20 Claims 6, 8, 9, 19, and 20 also require that the claimed pin be part of a drill bit. App. Br. 20-22. Accordingly, for the reasons stated above, we do not sustain the Examiner’s rejection of claims 6, 8, 9, 19, and 20. DECISION For the above reasons, the Examiner’s rejection of claims 1-4, 6, 8, 9, and 11-20 is reversed. REVERSED mls