Ex Parte Eyre et al

Patent Trial and Appeal Board

Dec 3, 2018

14062533 (P.T.A.B. Dec. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/062,533 10/24/2013
59977 7590 12/05/2018
OSHA, LIANG LLP / SMITH
TWO HOUSTON CENTER
909 FANNIN STREET, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Ronald K. Eyre
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.
05516/394008 6507
EXAMINER
ABU ALI, SHUANGYI
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
12/05/2018 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):
docketing@oshaliang.com
bergman@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD K. EYRE,
ANTHONY GRIFFO, and THOMAS W.OLDHAM
Appeal 2018-001755
Application 14/062,533
Technology Center 1700
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 26-45. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellant claims a method for making a thermally stable
polycrystalline diamond construction. App. Br. 4--5. Independent claims 26
1 Appellant is the applicant, Smith International, Inc., which, according to
the Appeal Brief, is the real party in interest. Appeal Brief filed January 30,
2017 ("App. Br."), 4.
Appeal 2018-001755
Application 14/062,533
and 34 illustrate the subject matter on appeal and are reproduced below with
contested language italicized:
26. A method for making a thermally stable polycrystalline
diamond construction comprising:
treating a polycrystalline diamond compact comprising a
polycrystalline diamond body and a metallic substrate
attached thereto, the polycrystalline diamond body
comprising a plurality of intercrystalline bonded diamond
grains and interstitial regions disposed therebetween, to
remove a Group VIII metal from a first region of the
diamond body while allowing the Group VIII metal to
remain in a second region of the diamond body;
wherein prior to the step of treating, protecting the metallic
substrate and a portion of the diamond body from
exposure to a treating agent used during the step of
treating such that during the step of treating the first
region is controlled so that it extends along a length of
the side surface that exceeds the depth of the first region
at the side surface.
34. A method for making a thermally stable polycrystalline
diamond construction comprising a polycrystalline diamond
compact having a polycrystalline diamond body and a metallic
substrate attached thereto, the polycrystalline diamond body
including a plurality of intercrystalline bonded diamond grains
and interstitial regions disposed therebetween, the
polycrystalline diamond body having an upper surface and a
side surface extending a length from the upper surface toward
the substrate, the method comprising:
treating the compact to render a first region of the
diamond body substantially free of Group VIII
metal while allowing the Group VIII metal to
remain untreated in a second region of the
diamond body, wherein the first region extends a
partial depth into the diamond body along a partial
length of the side surface,
2
Appeal 2018-001755
Application 14/062,533
wherein the treating step is performed after the portion of
the compact to be treated has been finished to an
approximate final dimension.
App. Br. 25-26 (Claims Appendix) ( emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered July 14, 2016 ("Final Act."), and maintains the rejections in
Examiner's Answer entered October 6, 2017 ("Ans."):
I. Claims 26-30 and 33--44 under 35 U.S.C. § 103(a) as
unpatentable over Griffin et al. (US 6,592,985 B2, issued July 15, 2003) in
view of Hall et al. (US 2002/0023733 Al, published February 28, 2002); and
II. Claims 31, 32, and 45 under 35 U.S.C. § 103(a) as unpatentable
over Griffin in view of Hall and Horton et al. (US 4,664,705, issued May 12,
1987).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejections of
claims 26--45 under 35 U.S.C. § 103(a) for the reasons set forth in the
Appeal Brief and below.
Rejection I
Claims 26-30, 33
The method of claim 26 requires, in part, treating a polycrystalline
diamond compact comprising a polycrystalline diamond body and a metallic
substrate attached to the body, to remove a Group VIII metal from a first
region of the diamond body; and, before this treating step, protecting the
metallic substrate and a portion of the body from exposure to the treating
3
Appeal 2018-001755
Application 14/062,533
agent so that the first (treated) region of the diamond body is controlled to
extend along a length of the side surface of the body that exceeds the depth
of the first (treated) region at the side surface.
The Examiner finds that Griffin discloses a method of making a
polycrystalline diamond (PCD) element comprising a body bonded to a
substrate. Final Act. 2. The Examiner finds that Griffin discloses that the
body includes bonded diamond crystals and an interstitial matrix containing
catalyzing material. Final Act. 2-3; Ans. 2. The Examiner finds that Griffin
discloses a working surface on the body, which is "any portion of the PCD
body which, in operation, may contact the object to be worked." Final Act.
3; Ans. 3. The Examiner finds that Griffin discloses removing the catalyst
material from a portion of the body adjacent to the working surface using an
acid etching process, resulting in "a working surface [being] substantially
free of the catalyzing material to a depth of at least about 0.1 mm from the
working surface, and the remaining interstitial matrix contains the catalyzing
material." Final Act. 3; Ans. 2-3. The Examiner finds that these disclosures
in Griffin "meet the limitation" recited in claim 26 that "during the step of
treating the first region is controlled so that it extends along a length of the
side surface that exceeds the depth of the first region at the side surface."'
Ans. 3.
The Examiner finds that Griffin does not disclose protecting the
substrate and a portion of the diamond body from exposure to the acid
treating agent used during the catalyst removal step, and the Examiner relies
on Hall to address this feature. Final Act. 3--4. The Examiner finds that
Hall discloses a bonded diamond crystal body bonded to a substrate. Ans. 3.
The Examiner finds that "Hall discloses removing metal catalysts from the
4
Appeal 2018-001755
Application 14/062,533
bonded diamond crystal body by acid leaching and masking off the other
portion to avoid acid attack." Ans. 3. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of
Appellant's invention to protect the substrate and the portion of the body
"still containing [] desired catalyst" disclosed in Griffin "by masking off'
these parts of Griffin's polycrystalline diamond element during the acid
treatment as disclosed in Hall. Final Act. 3--4; Ans.
The preponderance of the evidence relied-upon in this appeal,
however, does not support the Examiner's conclusion of obviousness, for
reasons expressed by Appellant, as discussed below.
Griffin discloses a method for manufacturing a polycrystalline
diamond (PCD) element bonded to a substrate. Col. 7, 11. 12-13, 44. Griffin
discloses that the "PCD element has a plurality of partially bonded diamond
or diamond-like crystals forming at least one continuous diamond matrix,
and the interstices among the diamond crystals forming at least one
continuous interstitial matrix containing a catalyzing material." Col. 4, 11.
47-51. Griffin discloses that the polycrystalline diamond element includes a
body and a working surface on the body that contacts an object to be
worked. Col. 7, 11. 18-22. Griffin discloses that a "portion of the working
surface on the body of the PCD element may be post-processed so that the
interstices among the superhard crystals are substantially free of the
catalyzing material." Col. 4, 11. 57---60.
Hall discloses a heat spreader comprising polycrystalline diamond
matrix mounted on a substrate. ,r,r 2, 9. Hall discloses that the heat spreader
includes a layer of copper material on a major surface of the heat spreader
opposite the substrate that permits the heat spreader to be bonded to a
5
Appeal 2018-001755
Application 14/062,533
thermal source or to a heat sink. ,r,r 2, 9, 15, and 22-25. Hall discloses
forming the heat spreader using a process that results in collection of cobalt
catalyst material in interstitial sites in the polycrystalline diamond matrix.
,r,r 22-25. Hall discloses that the heat spreader should have high electrical
resistance, and indicates that although diamond is not electrically
conductive, residual cobalt catalyst in the polycrystalline diamond matrix
produces electrical conductivity. ,r 27. Hall discloses that to make the heat
spreader electrically resistive, it is necessary to remove the residual metal
catalyst from the polycrystalline diamond matrix, which can be
accomplished "by acid leaching in boiling aqua regia." Id. Hall discloses
"masking off the bondable layer to protect it from acid." Id.
Thus, as Appellant correctly argues, Hall discloses "masking off' the
layer of bondable copper material formed on the polycrystalline diamond
matrix of Hall's heat spreader opposite the substrate. App. Br. 9. We find
no disclosure in Hall, however, of "masking off' the polycrystalline
diamond matrix or any portion thereof, or of "masking off' the substrate,
and the Examiner does not provide a citation to any such disclosure in Hall.
Final Act. 2-5; Ans. 2--4. Rather, as discussed above, the Examiner makes
the unsupported assertion that "Hall discloses removing metal catalysts from
the bonded diamond crystal body by acid leaching and masking off the other
portion to avoid acid attack," which appears to be contrary to Hall's actual
disclosure. Ans. 3.
Consequently, the Examiner does not provide a persuasive, reasoned
explanation, supported by objective evidence, for why Hall's disclosure of
"masking off' a layer of bondable copper material formed on a
polycrystalline diamond matrix opposite a substrate before treating the
6
Appeal 2018-001755
Application 14/062,533
polycrystalline diamond matrix with acid, would have led one of ordinary
skill in the art to protect the substrate, and a portion of the body, of the
polycrystalline diamond element disclosed in Griffin, before removing
catalyst material from the body of the element adjacent to the working
surface.
Nor does the Examiner provide a reasoned explanation for why
Griffin's disclosure of removing catalyst material from a portion of Griffin's
body adjacent to the working surface to a depth of at least about 0.1 mm, and
disclosure that the working surface is any portion of the body that may
contact the object to be worked, "meet the limitation" recited in claim 26 of
controlling a treated (first) region of a polycrystalline diamond body, during
the step of treating to remove a Group VIII metal, so that the treated (first)
region extends along a length of the side surface that exceeds the depth of
the treated (first) region at the side surface.
Accordingly, the Examiner does not establish that the combined
disclosures of Griffin and Hall would have suggested treating a
polycrystalline diamond compact comprising a polycrystalline diamond
body and a metallic substrate attached to the body to remove a Group VIII
metal from a first region of the diamond body, and, before treating,
protecting the metallic substrate and a portion of the body from exposure to
the treating agent, so that the first (treated) region of the diamond body is
controlled to extend along a length of the side surface of the body that
exceeds the depth of the first ( treated) region at the side surface, as required
by claim 26. It follows that the Examiner does not establish a prima facie
case of obviousness of the subject matter recited in claim 26 within the
meaning of 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed.
7
Appeal 2018-001755
Application 14/062,533
Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability").
We accordingly do not sustain the Examiner's rejection of claim 26
under 35 U.S.C. § 103(a), and also of claims 27-30, and 33, which each
depend from claim 26.
Claims 34-44
The method of claim 34 requires, in part, treating a polycrystalline
diamond compact having a polycrystalline diamond body and a metallic
substrate attached to the body to render a first region of the diamond body
substantially free of Group VIII metal, and performing this treating step after
the portion of the compact to be treated has been finished to an approximate
final dimension.
The Examiner finds that Griffin discloses "that the PCD cutting
element 52 of the present invention is in the form of a triangular, rectangular
or other shaped material for use as a cutting insert in machining operations."
Final Act. 5; Ans. 5-6. The Examiner finds that Griffin discloses that "a
portion of the working surface on the body of the PCD element may be post-
processed so that the interstices among the superhard crystals are
substantially free of the catalyzing material." Id. The Examiner appears to
conclude-without actually so stating-that these disclosures in Griffin
would have suggested performing a post-processing step to remove
catalyzing material from the PCD cutting element described in the reference
after finishing the element to an approximate final dimension. Id.
8
Appeal 2018-001755
Application 14/062,533
The preponderance of the evidence relied-upon in this appeal,
however, does not support the Examiner's apparent conclusion of
obviousness, for reasons expressed by Appellant, as discussed below.
As discussed above, Griffin discloses that a portion of the working
surface on the body of the polycrystalline diamond element described in the
reference "may be post-processed so that the interstices among the superhard
crystals are substantially free of the catalyzing material." Col. 4, 11. 57---60.
Griffin also discloses that the PCD element can be adapted for use in a
machining process as a cutting element, and discloses that the cutting
element could be rectangular, triangular, quadrilateral, or another shape
suitable for machining highly abrasive products that are difficult to machine
with conventional tools. Col. 12, 11. 51-57.
Although Griffin does disclose using the polycrystalline diamond
element described in the reference as a rectangular, triangular, or
quadrilateral cutting element, we find no disclosure in Griffin of finishing, to
an approximate final dimension, the portion of the polycrystalline diamond
element treated to remove catalyst, before performing the catalyst removal
process, and the Examiner does not provide a citation to any such disclosure
in Hall. Final Act. 5; Ans. 5-6. In addition, as Appellant correctly argues,
the Examiner also does not provide a persuasive, reasoned explanation,
supported by objective evidence, for why Griffin's reference to the catalyst
removal process as "post-processing" would have led one of ordinary skill in
the art to finish, to an approximate final dimension, the portion of the PCD
element treated to remove catalyst, before performing the catalyst removal
process, as required by claim 34. Compare Final Act. 5, with App. Br. 18-
19.
9
Appeal 2018-001755
Application 14/062,533
Consequently, the Examiner does not articulate the requisite reasoning
having rational underpinning for why one of ordinary skill in the art seeking
to produce a polycrystalline diamond compact would have treated the
compact to render a first region substantially free of Group VIII metal, after
finishing the treated portion of the compact to an approximate final
dimension, as required by claim 34. KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398,418 (2007) ("[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.").
It follows that the Examiner does not establish a prima facie case of
obviousness of the subject matter recited in claim 34 within the meaning of
35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
("[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability").
We accordingly do not sustain the Examiner's rejection of claim 34
under 35 U.S.C. § 103(a), and also of claims 35--44, which each depend
from claim 34.
Rejection II
Because the Examiner does not rely on the additional reference
applied in this rejection (Horton) for any disclosure that remedies the
deficiencies of Griffin and Hall discussed above, we do not sustain the
10
Appeal 2018-001755
Application 14/062,533
Examiner's rejection of claims 31, 32, and 45 under 35 U.S.C. § 103(a).
Final Act. 6-8.
DECISION
We affirm the Examiner's rejections of claims 26-45 under 35 U.S.C.
§ 103(a).
REVERSED
11