Jiinjen Albert. Sue et al.

Patent Trials and Appeals Board

Sep 10, 2019

14410475 - (D) (P.T.A.B. Sep. 10, 2019)

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.
14/410,475 12/22/2014 Jiinjen Albert Sue 1814-70508 1007
92297 7590 09/10/2019
Conley Rose P.C
P.O.Box 3267
Houston, TX 77253
EXAMINER
WALLACE, KIPP CHARLES
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
09/10/2019 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JIINJEN ALBERT SUE, HAROLD SRESHTA, and
RAJAGOPALA PILLAI1
____________________

Appeal 2018-008326
Application 14/410,475
Technology Center 3600
____________________

Before JENNIFER D. BAHR, BRANDON J. WARNER, and
SEAN P. O’HANLON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 National Oilwell Varco, L.P. (Appellant) is the applicant as provided in 37
C.F.R. § 1.46 and is identified as the real party in interest. Application Data
Sheet submitted Dec. 22, 2014; Appeal Br. 3.
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Application 14/410,475

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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A downhole tool, comprising:
a body made of a metal or metal alloy;
a coating disposed on the body;
wherein the coating includes at least 75 vol% tungsten
carbide having an average grain size less than 1.0 µm; and
wherein the coating includes only 40 to 64 vol% tungsten
carbide with a grain size less than 0.5 µm.

REJECTIONS
I. Claims 1–12 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Keshavan et al. (US 5,535,838, issued July 16,
1996, hereinafter “Keshavan”) and Shmyreva et al.
(US 2012/0171469 A1, published July 5, 2012, hereinafter
“Shmyreva”).
II. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Keshavan, Shmyreva, and Shinde et al.
(US 2010/0068405 A1, published Mar. 18, 2010, hereinafter
“Shinde”).

DISCUSSION
Rejection I
The Examiner finds that Keshavan discloses a tungsten carbide-
cobalt-chromium coating including at least 75 vol% tungsten carbide, but
fails to disclose “the coating having at least 75 vol% tungsten carbide with a
grain size less than 1 micrometer and 40-64 volume% having a grain size
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less than 0.5 micrometers.” Final Act. 3–4 (selecting weight percentages
within the ranges disclosed in column 8, lines 56–60 of Keshavan and
converting to volume percentages, resulting in 76.6 vol% tungsten carbide).
The Examiner finds that Shmyreva teaches a tungsten carbide-cobalt-
chromium coating comprising three different types of tungsten carbide
grains provided in varying percentages, namely, 1–80% of the coating being
of a nanocrystalline grain phase (having grain size below 100 nanometers),
1–90% of the coating being of a microcrystalline phase (having grain size
below 1000 nanometers), and the remainder of the coating being of an
amorphous phase. Id. at 4. Within these three ranges of tungsten carbide
phases taught by Shmyreva, the Examiner selects 70% for the
nanocrystalline phase having a grain size below 0.1 µm, 20% for the
microcrystalline phase having an average grain size of 0.6 µm (from within
the range of 0.1–1.0 micrometers taught in paragraph 21 of Shmyreva), and
the remaining 10% of the tungsten carbide being an amorphous phase. Id.
By selecting a percentage of the coating of 76.6 vol% of tungsten
carbide from the range disclosed in Keshavan, the Examiner calculates a
result of “59 vol % [sic: 53.6 vol%] tungsten carbide with an average
particle size less than .5 micrometers (70 % nanocrystalline of 76.6 vol% is
53.6 % by volume tungsten carbide grains less than .5 micrometers[)]” and
“29 % microcrystalline of 76.6 vol% tungsten carbide[, which] is 22.2 % by
volume tungsten carbide grains less [sic] averaging .6 micrometers.”2 Id.
The Examiner then concludes that it would have been obvious to apply “the

2 The Examiner’s use of 29 vol% for the microcrystalline phase is
inconsistent with the Examiner’s earlier selection of 20% for the
microcrystalline phase having an average grain size of .6 micrometers. See
Final Act. 4.
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grain size distribution of [Shmyreva] in the invention of [Keshavan] in order
to provide improved coatings for enhanced corrosion and wear resistance in
severe environments as taught by [Shmyreva].” Id. (citing Shmyreva ¶ 7).
Using the selected percentages, the Examiner determines that the resulting
coating would comprise 75.8 percent by volume tungsten carbide with a
grain size under 1.0 µm, which is within the “at least 75 vol%” claimed,
with only 53.6 percent by volume of the tungsten carbide particles having a
grain size of less than 0.5 µm, which is within the “only 40 to 64 vol%”
claimed. Id.
Appellant argues that “Shmyreva is silent regarding the amount, if
any, of the particles of the microcrystalline phase (grain sizes between
0.1 µm and 1.0 µm) that have grain sizes above or below 0.5 µm.” Appeal
Br. 13 (italics omitted). Therefore, Appellant submits that “Shmyreva does
not expressly teach or disclose a coating comprising only 40 to 64 vol%
tungsten carbide with a grain size less than 0.5 µm as included in claim 1,”
nor is the claimed “closed vol% range of tungsten carbide in the coating
having grain sizes less than 0.5 µm . . . inherent or implied in the teachings
of Shmyreva.” Id. (italics and underlining omitted).
Shmyreva teaches providing, in the coating,
from about 1 to about 95 volume percent of an amorphous
phase, from about 1 to about 80 volume percent of a
nanocrystalline phase, and from about 1 to about 90 volume
percent of a microcrystalline phase, and wherein said
amorphous phase, nanocrystalline phase and microcrystalline
phase comprise about 100 volume percent of said thermally
sprayed coating.
Shmyreva ¶ 18. Shmyreva defines the nanocrystalline phase as comprising
discrete particles having a structure comprising a grain size of less than
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about 100 nanometers (0.1 µm) and the microcrystalline phase as
comprising discrete particles having a structure comprising a grain size from
about 100 nanometers to less than about 1000 nanometers (about 0.1 µm to
less than about 1.0 µm). Id. ¶ 21. More specifically, Shmyreva teaches that
the coatings typically comprise from about 5 to about 75 (more preferably
from about 25 to about 50) volume percent of the nanocrystalline phase and
from about 5 to about 80 (more preferably from about 25 to about 50)
volume percent of the microcrystalline phase. Id. ¶¶ 24–25.
Although it may have been obvious to select any percentage from
within the range of percentages taught by Shmyreva for each of the
nanocrystalline phase and the microcrystalline phase, Shmyreva is silent as
to what percentage, if any, of the particles in the microcrystalline phase
(which have grain sizes ranging from about 0.1 µm to less than about 1.0
µm) would have grain sizes less than 0.5 µm. The Examiner appears to
choose arbitrarily an average grain size of 0.6 µm for the microcrystalline
phase and then appears to treat the microcrystalline phase particles as having
grain sizes less than 1.0 µm, but not less than 0.5 µm. This is problematic
for two reasons. First, having an “average” grain size of 0.6 µm does not
speak to the question of what percentage, if any, of the particles of the
microcrystalline phase would have grain sizes less than 0.5 µm. Second,
Shmyreva gives no indication that one would, or even could, select any
particular average grain size for the particles in the microcrystalline phase,
much less a specific grain size for all of the particles of the microcrystalline
phase (in case the Examiner actually intends to select a grain size of .6 µm
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for all of the particles in the microcrystalline phase).3 See Atofina v. Great
Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (pointing out that
“the disclosure of a genus in the prior art is not necessarily a disclosure of
every species that is a member of that genus”). “[T]he disclosure of a range
is no more a disclosure of the end points of the range than it is of each of the
intermediate points.” Id. at 1000.
The Examiner offers two interpretations of Shmyreva’s teaching of
the microcrystalline phase comprising discrete particles having a structure
comprising a grain size of about 0.1 µm to less than about 1.0 µm. The first
interpretation is that “the grain size of this phase can be selected to be one of
any of the values in this range.” Ans. 3. This interpretation is flawed, for
the reasons discussed above. The Examiner does not provide any evidence
or technical reasoning to explain why, in this case, Shmyreva’s disclosure of
a microcrystalline phase comprising particles having grain sizes falling
within a particular range would be interpreted in this manner. The second
interpretation is that “the grain size of this phase ranges from .1-1µm and an
equal distribution will be assumed in light of the lack of evidence to the
contrary.” Id. This interpretation is likewise flawed, in that it is based on an
unfounded assumption or speculation.
The Examiner also reasons that “it would have been obvious to
choose something higher in the range of .1-1 [µ]m for the micro phase since
[Shmyreva] teaches that costs increase as particle size decreases . . . so the
higher end of the range (.5-1[µ]m) becomes an even more obvious choice.”
Adv. Act. 2 (citing Shmyreva ¶ 51). This reasoning takes Shmyreva’s

3 See Ans. 5 (stating that Shmyreva “actually discloses .6µm in [the 0.1–1.0
µm] range”).
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statement regarding costs increasing as particle size decreases somewhat out
of context and mischaracterizes the point Shmyreva is making. Shmyreva
teaches that “[t]he average particle size of each raw material powder is
preferably no less than 0.1 microns and more preferably no less than 0.2
microns, but preferably no more than 10 microns” because costs may
increase if the average particle size “is too small” (i.e., falls below the lower
end of this range), and the powder may become difficult to disperse
uniformly if the average particle size “is too large” (i.e., is greater than 10
microns). Shmyreva ¶ 51. In other words, Shmyreva sets forth a feasible
operating range for the particle size of the raw material powder to control
costs while maintaining acceptable dispersibility characteristics. Shmyreva
gives no indication that costs will vary significantly for different particle
sizes within the disclosed operating range. Thus, the passage of Shmyreva
cited by the Examiner would not have made the higher end of the
microcrystalline grain size range “an even more obvious choice” (Adv.
Act. 2) as the Examiner states.
The Examiner emphasizes that the question of whether or not
Keshavan and Shmyreva recognize the percent volume of particles less than
0.5 µm as a result effective variable is not germane to the rejection because
the Examiner’s rejection is not grounded on a routine optimization rationale.
Ans. 4. Nonetheless, the Examiner finds that Shmyreva “does recognize
particle size and particle size distribution as a result effective variable.” Id.
(citing Shmyreva ¶ 26).
Shmyreva teaches:
Thermally sprayed coatings having more than about 95
volume percent of amorphous phase have very good corrosion
resistance but have less wear resistance because of the lack of
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hard nanocrystalline and microcrystalline phases. Thermally
sprayed coatings having more than about 80 volume percent of
nanocrystalline phase and about 90 volume percent of
microcrystalline phase are hard but brittle (having decreased
erosion resistance) because the coatings do not have a sufficient
amount of more elastic amorphous based binder between the
hard precipitants.
Shmyreva ¶ 26. In other words, the passage cited by the Examiner teaches
that providing too much of one of the phases, to the exclusion of sufficient
amounts of the other phases, may sacrifice either corrosion resistance or
wear resistance, or be too brittle, and, in this regard, appears to recognize the
percentages of each of the phases as result-effective variables. However,
this is a far cry from any recognition that the percentage of any particular
particle size (or range of particle sizes) within any of the phases is of any
particular significance or is a result-effective variable. More specifically, it
does not constitute a recognition that the percentage of particles having a
grain size less than 0.5 µm would be a result-effective variable.
For the above reasons, the Examiner does not articulate a sufficient
reason, objectively based on rational underpinnings, as to why it would have
been obvious, in view of the combined teachings of Keshavan and
Shmyreva, and in the absence of Appellant’s disclosure, to provide a coating
comprising “at least 75 vol% tungsten carbide having an average grain size
less than 1.0 µm,” but “only 40 to 64 vol% tungsten carbide with a grain size
less than 0.5 µm,” as called for in claim 1. Accordingly, we do not sustain
the rejection of claim 1, or claims 2–12 and 14, which depend from claim 1,
as unpatentable over Keshavan and Shmyreva.
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Rejection II
The aforementioned deficiency in the rejection of claim 1 also
pervades the rejection of claim 13, which depends indirectly from claim 1.
Appeal Br. 20–21 (Claims App.). The Examiner’s application of Shinde
does not remedy this deficiency. See Final Act. 5. Accordingly, we do not
sustain the rejection of claim 13 as unpatentable over Keshavan, Shmyreva,
and Shinde.

DECISION
The Examiner’s decision rejecting claims 1–14 is reversed.

REVERSED