Halliburton Energy Services, Inc.

Patent Trials and Appeals Board

Mar 30, 2020

15305612 - (D) (P.T.A.B. Mar. 30, 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.
15/305,612 10/20/2016 Shilin Chen 2013-079884 U1 US 1102
142050 7590 03/30/2020
HALLIBURTON ENERGY SERVICES, INC.
C/O PARKER JUSTISS, P.C.
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
EXAMINER
AKAKPO, DANY E
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
03/30/2020 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHILIN CHEN and MARK EVANS WILLIAMS

Appeal 2019-005439
Application 15/305,612
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–7, 9–15, and 17–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Halliburton Energy Services, Inc. Appeal Br. 3.
Appeal 2019-005439
Application 15/305,612

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STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant’s invention “relates to hybrid drill bits for drilling a
wellbore in a formation, and more particularly to hybrid drill bits with blades
and roller discs.” Spec. ¶ 1.
Claims 1, 15, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A hybrid drill bit, comprising:
a bit body defining a central bit body axis;
a blade on the bit body extending from an end of the bit
body, the blade comprising a plurality of fixed cutting
elements; and
a roller disc rotatably coupled to the bit body about the end
of the bit body to rotate on a roller disc axis, the roller disc axis
extending toward the central bit body axis, wherein the roller
disc comprises only one cutting row that is configured to extend
further into a formation in a shoulder zone of a corresponding
bit profile than the fixed cutting elements of the blade are
configured to extend into the formation in the shoulder zone.

Rejections
Claims 1, 3, 4, 6, 7, 9, 11, 13–15, and 17–20 are rejected under
35 U.S.C. § 102(a)(2) as anticipated by Do et al. (US 2014/0332271 A1,
pub. Nov. 13, 2014) (“Do”).2
Claims 5, 10, and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over Do.

2 The Examiner has withdrawn the rejection of claims 2 and 16 under
35 U.S.C. § 102(a)(2) as anticipated by Do. See Final Act. 2, 3, 5; Ans. 3;
Reply Br. 4.
Appeal 2019-005439
Application 15/305,612

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ANALYSIS
The Appellant argues that contrary to the Examiner’s finding, Do’s
cutting elements 156, 158, as shown in the embodiment depicted in
Figure 14, do not show a “roller disc compris[ing] only one cutting row that
is configured to extend further into a formation in a shoulder zone of a
corresponding bit profile than the fixed cutting elements of the blade are
configured to extend into the formation in the shoulder zone,” as recited in
independent claims 1 and 15, and as similarly recited in independent
claim 18. Reply Br. 2–3 (emphasis omitted).3 The Appellant contends that
“it appears that Do has positioned its movable cutting elements 156, 158 in
the cone zone, and if so it would never extend into the formation in the
shoulder zone.” Id. at 2. The Appellant’s argument is persuasive.
The Examiner finds Do’s support member 130 corresponds to the
claimed “roller disc,” and Do’s movable cutting element 158 and movable
replacement cutting element 156 (i.e., “cutting elements”) correspond to the
claimed “cutting row.” Final Act. 3 (citing Do, Fig. 14); see Ans. 4–5; Do
¶¶ 51–55. Do describes, “[m]ovable cutting elements 158 and movable
replacement cutting elements 156 may be attached [to] respective support
members 130.” Do ¶ 51 (emphasis omitted). Do’s support member 130 and
cutting elements 156, 158 move rotationally between first and second
orientations. Id. ¶¶ 52–55. In response to the Appellant’s argument, the
Examiner explains that “cutting row (156, 158) is located in such a way that
it would extend into the formation in the shoulder zone further than the fixed

3 The Appellant makes a similar argument in the Appeal Brief addressing the
embodiment shown in Do’s Figure 1 instead of Figure 14. Appeal Br. 7–8.
Appeal 2019-005439
Application 15/305,612

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cutting elements.” Ans. 4. This explanation appears to assume that Do’s
movable cutting elements 156, 158 can be positioned in the drill bit’s
shoulder zone. However, as explained below, that assumption is not
adequately supported.
The Specification explains the meaning of the term shoulder zone as
well as the terms cone zone, nose zone, and gage zone as they relate to the
exterior portions of a rotary drill bit that contact adjacent portions of a
downhole formation. See Spec. Abstract, ¶ 35, Fig. 1. The order of the
zones moving outwards from the bit body’s central axis is the cone zone, the
nose zone, the shoulder zone, and the gage zone. See id. ¶ 35, Fig. 2
(showing bit body 102, central bit body axis 108); see also id. at ¶ 6, Fig. 3B
(showing “a schematic side view of an example hybrid drill bit profile”).
“The cone zone is in the lateral center of the drill bit on the longitudinal drill
end.” Id. ¶ 35. “The nose zone extends farther beyond the drill end of a bit
body than the cone and shoulder zones, and the shoulder zone bridges the
nose zone and the gage zone.” Id. “The gage zone is associated with the
cylindrical sidewall of a wellbore, such that engaging the gage zone includes
cutting only the cylindrical sidewall of the wellbore.” Id.
Do’s Figure 14 shows three support members 130, three movable
cutting elements 158, and three movable replacement cutting elements 156.
For purposes of this appeal only, we consider one support member 130, one
movable cutting element 158, and one movable replacement cutting element
156, shown in close proximity, as one group. Three groups of these
structures are shown in Figure 14. Notably, Figure 14 is a perspective view
of an embodiment of Do’s earth-boring tool 100’ (Do ¶¶ 24, 51).
Consequently, the location of each group relative to the different zones, as
Appeal 2019-005439
Application 15/305,612

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explained by the Specification of the present application, is not easy to
determine from the drawing. We refer to the three groups as the uppermost
group, the lowermost group, and leftmost group. We determine that the
uppermost and leftmost groups appear to be in the cone zone or, more
likely, in the nose zone. We determine that the location of the lowermost
group cannot be readily determined. Further, we note that Do does not use
the phraseology of cone zone, nose zone, shoulder zone, or gage zone, to
identify exterior portions of its drill bit that contact adjacent portions of a
downhole formation. See Reply Br. 2–3.
Accordingly, we determine that Do’s movable cutting element 158
and movable replacement cutting element 156, as shown in Figure 14, do not
appear to be in the shoulder zone of the drill bit profile. Moreover, the
Examiner fails to adequately explain how movable cutting element 158 and
movable replacement cutting element 156 could or would be positioned in
the shoulder zone of the drill bit profile. Therefore, we determine that the
Examiner’s assumption that movable cutting elements 156, 158 can be
positioned in the shoulder zone of the drill bit profile lacks adequate support.
In view of the foregoing, we cannot agree with the Examiner that Do’s
movable cutting elements 156, 158 correspond to the cutting row as recited
in independent claims 1 and 15 –– i.e., a “roller disc compris[ing] only one
cutting row that is configured to extend further into a formation in a shoulder
zone of a corresponding bit profile than the fixed cutting elements of the
blade are configured to extend into the formation in the shoulder zone,” and
as similarly recited in claim 18.
Thus, we do not sustain the Examiner’s rejection of independent
claims 1, 15, and 18, or their respective dependent claims, under 35 U.S.C.
Appeal 2019-005439
Application 15/305,612

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§ 102(a)(2) as anticipated by Do. The additional findings and reasoning
provided in the Examiner’s rejection of dependent claims 5, 10, and 12 do
not cure the deficiency in the Examiner’s rejection of the claims from which
these claims depend. Therefore, we do not sustain the Examiner’s rejection
of claims 5, 10, and 12 under 35 U.S.C. § 103 as unpatentable over Do.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 3, 4, 6, 7,
9, 11, 13–
15, 17–20
102(a)(2) Do

1, 3, 4, 6,
7, 9, 11,
13–15, 17–
20
5, 10, 12 103 Do 5, 10, 12
Overall
Outcome
1, 3–7, 13–
15, 17–20

REVERSED