DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 1 recite(s) determining a pressure and temperature window at which an ultra-high-pressure, high-temperature treatment of the catalyst-free composite mixture forms a solid composite body.
The limitation of “determining” the pressure and temperature window covers the performance of the process limitation in the mind; nothing in the claim element precludes the step from practically being performed in the mind. This is an evaluation and therefore a mental step and abstract idea.
This judicial exception is not integrated into a practical application because once the determination is made, the composite material is exposed to that pressure and temperature window. This is an application, but it is not a particular practical application. It is merely adding the words “apply it” (or an equivalent with the judicial exception or mere instructions to implement an abstract idea MPEP 21.06.05(f)).
The claim does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional element of the claim includes the steps of mixing, pressing, exposing to ultra-high pressure and high-temperature, and cooling which are well understood and routine and conventional within the art. Wang (see below) teaches all the claimed steps of mixing, pressing, exposing the mixture to the ultra-high-pressure, high-temperature and cooling, as well the use of a mixture of diamond and cubic boron nitride powder. Thus, those steps would not amount to significantly more than the abstract idea.
The dependent claims do not solve the issues of the above. Dependent claim 2-10 are rejected with the base claim, i.e. claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 103803985 to Wang et al. (hereinafter Wang) in view of U.S. Patent No. 9,097,074 to Shen et al. (hereinafter Shen).
With respect to claim 1, Wang teaches a method for preparing nanostructured cubic boron nitride-diamond polycrystalline material with significantly better cutting performance which is used in ordinary cutting tools, as well as material for ultra-high precision cutting tools, wherein the method comprises mixing hexagonal boron nitride and diamond powder as raw materials, wherein the mass fraction of diamond in the raw material is 10%-90% by mass (Wang, claim 1, [0007], [0020]); this would result in, at least, an overlapping range of a molar ratio between 0.1 to 0.9. This is because if the mass fraction of diamond is 10% and that of the hexagonal boron nitride is 90%, this would result in a molar ratio of approximately 0.33. Also, if the mass fraction of diamond is 90% and that of hexagonal boron nitride is 10%, this would result in a molar ratio of approximately 18.73. A range of a molar ratio of 0.33 to 18.73 overlaps with the claimed range of 0.1-0.9.
Wang, additionally, teaches pre-pressing the raw material powder (Wang, [0014], [0032]) followed by treating them under high pressure high temperature wherein the sintering pressure is 8-20 GPa and the sintering temperature is 1000-2700˚C for 10-30 minutes (Wang, [0015]). The reference discloses no metal binder is used in the production of this polycrystalline material (Wang, [0019]) which is taken to read on the claimed “catalyst-free” composite mixture.
Furthermore, Wang teaching that after the high pressure high temperature treatment, the formed material is slowly cooled down (Wang, [0015]).
Wang teaches that their material has high hardness and density, high thermal stability, wear resistance and toughness, and is a new type of superhard material with excellent performance (Wang, [0033]).
With respect to overlapping ranges, MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The recitation of “for a downhole drill tool” is an intended use recitation in the preamble, but it does not result in a structural difference of the claimed invention. According to MPEP 2111.02 “During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim.” See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963).
Wang specifically discloses the use of their material in cutting tools due to their improved toughness, wear resistance, hardness, and high thermal stability, and as such the use of the disclosed material in a downhole drill tool is well within the scope of a skilled artisan.
As noted above, the “determining” step is rejected under 35 U.S.C. 101; however, Wang clearly discloses the mixing, pressing, exposing, and cooling steps. Wang, also, specifically discloses a the sintering of the powder mixture under the pressure of 8-20 GPa and the temperature of 1000-2700˚C for 10-30 minutes (Wang, [0015]) which would result in the formation of the composite polycrystalline material.
Although Wang teaches the use of a mixture of diamond powder and hexagonal cubic boron nitride powder, the reference is silent as to the use of “polycrystalline” diamond powder.
Shen, directed to polycrystalline diamond composites, discloses that such composites contain a plurality of discrete regions having thermal stability, abrasion resistance, wear resistance, and polycrystalline material density (Shen, abstract, col. 1, lines 1-24; col. 5, lines 36-47). Shen discloses that their polycrystalline diamond composites is then formed by combining already sintered granules with diamond grains, and subjecting them to a high pressure high temperature treatment (Shen, abstract). The polycrystalline composite of Shen is used in roller cone or hammer drill bit (Shen, col. 5, lines 27-29) which are both different types of downhole drill bits. Additionally, Shen discloses that the discrete regions may comprise materials selected from the group including cubic boron nitride (cBN), polycrystalline cubit boron nitride (PcBN), thermally stable polycrystalline diamond (TSP), carbonado diamond, polycrystalline diamond (PCD) or mixtures thereof (Shen, col. 7, lines 24-28). In addition, Shen discloses such TSP can be used without further consolidation before being introduced into the mixture used to form the surrounding polycrystalline d diamond region; the reference continues to disclose that alternatively such TSP can be subjected to desired treatments for the purpose of reducing and/or filling the interstitial voids or volumes resulting from the removal of the catalyst material (Shen, col. 9, lines 32-38). Furthermore, Shen discloses that where it is desired that the discrete regions be relatively more thermally stable than the surrounding polycrystalline diamond region, PCD can be used to form the discrete regions where such PCD may have a diamond density that is greater than that of the surrounding polycrystalline diamond regions or a binder or catalyst content that is less than that of the surrounding polycrystalline region (Shen, col. 7, lines 39-47).
Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Wang with the teachings of Shen in order to substitute the diamond powder of Wang with the polycrystalline diamond taught by Shen motivated by the fact that Shen, also, recognizes regions, disclosed as discrete regions, which comprise of a mixture of cubic boron nitride and polycrystalline diamond whether PCD or TSP, wherein such regions contain high density of polycrystalline material, and wherein the polycrystalline composite of Shen is, also, used in drilling tools. Additionally, Shen, much like Wang, teaches that the discrete regions show improved wear resistance and abrasion resistance as well as high thermal stability (Shen, col. 5, lines 39-47; col. 7, lines 39-47; col. 12, lines 62-67). Thus, references teach and recognize the improvements as a result of using a mixture of polycrystalline diamond and cubic boron nitride with high density of polycrystalline material. It is important to note that the discrete regions of Shen are not required to contain catalyst/binder (Shen, col. 7, lines 39-47). Thus, both references are drawn to a catalyst free composite as well.
As noted above, Wang specifically discloses the use of their material in cutting tools due to their improved toughness, wear resistance, hardness, and high thermal stability, and as such, it was concluded that the use of the disclosed material in a downhole drill tool is well within the scope of a skilled artisan. However, assuming this is not found persuasive, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Wang and to recognize that the composite material taught by Wang is used is downhole drill tools such as roller cone or hammer drill bit motivated by the fact that Shen teaches the use of their composite material in such tools, wherein their composite material also comprises of hard materials such as diamond and cubic boron nitride, and in particular, comprises of discrete regions comprising a mixture of polycrystalline diamond and cubic boron nitride, and further motivated by the fact that such regions impart high wear resistance, high abrasion resistance, high density of polycrystalline material, and high thermal stability (Shen, col. 5, lines 37-47), which all are recognized to be qualities for tools used in downhole drilling.
With respect to claim 2, Wang discloses an embodiment in which the particle size of the raw material powder has an average particle size of 0-2 microns (Wang, [0031]) which has overlapping with the claimed range of between 0.1 and 50 µm. MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 3, Wang discloses drying in a vacuum furnace at a temperature of 500-1000˚C (i.e. 773.15-1273.15K) for 1-3 hours (Wang, [0013]). The disclosed temperature overlaps with the claimed one, and the disclosed time not only overlaps, but also shares an end point with the claimed range.
MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 4, Wang teaches sintering the raw material mixture under high pressure high temperature for 10-30 minutes (Wang, [0015]) which shares an end point value of 10 minutes. MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 5, Wang clearly teaches the depressurization of formed composite material, after the sintering process (Wang, [0015]). Thus, the reference teaches the decompression. As for the duration of time to depressurize the chamber, and as a result, depressurizing the formed composite material, it would be inevitable to recognize the fact that the duration of time to decompress or depressurize a chamber would depend on the applied pressure for sintering and the time taken to maintain the composite material under sintering condition. MPEP 2144 states “The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law.” In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); see also In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000) (setting forth test for implicit teachings); In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990).
Thus, obtaining the optimized time for decompress or depressurize the chamber and the sintered composite material is expected to be achieved through routine experimentation, which would depend on the pressure originally applied to the chamber for the sintering process and the time under which the chamber is maintained under that pressure; MPEP 2144.05 (II)(A) states "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to claims 6 and 7, the combination of Wang in view of Shen teaches the claimed method of claim 1 wherein a mixture of polycrystalline diamond powder and cubic boron nitride particles are sintered to form a hard composite material used in a cutting tool such as roller cone or downhole drilling tool, as detailed out above under the rejection of claim 1. Wang discloses the diamond grains are uniformly distributed in the nanostructured cubic boron nitride grains as a hardness-enhancing phase, forming a large area of tightly bonded and high-strength nanostructured cubic boron nitride-diamond interface (Wang, [0019]). Thus, the formation of a strong covalent bond between all the grains is inevitable because the final outcome is the formation of the final polycrystalline composite. Additionally, no metal binder is used in the high-performance polycrystalline material (Wang, [0019]). As such, it is expected of the cubic boron nitride powder/grains to act as binder due to the fact that the diamond grains form a polycrystalline structure. In short, the formation of a strong covalent bond using the cubic boron nitride powder as a binder is expected and inevitable.
With respect to claims 8 and 9, the combination of Wang in view of Shen teaches the claimed method of claim 1 wherein a mixture of polycrystalline diamond powder and cubic boron nitride particles are sintered to form a hard composite material used in a cutting tool such as roller cone or downhole drilling tool, as detailed out above under the rejection of claim 1. Wang discloses the diamond grains are uniformly distributed in the nanostructured cubic boron nitride grains as a hardness-enhancing phase, forming a large area of tightly bonded and high-strength nanostructured cubic boron nitride-diamond interface (Wang, [0019]). Thus, the formation of a strong bond between all the grains, which would be the grains of cubic boron nitride, as well as the diamond grains or the grains of polycrystalline diamond grains, is inevitable because the final outcome is the formation of the final polycrystalline composite containing both diamond the cubic boron nitride. For a mixture of two different types of grains to form a polycrystalline structure, in the absence of a metal binder (Wang, [0019]), the formation of a chemical bond, at the boundaries between the two types of grains, is inevitable, and thus, the chemical bonds should inevitably include chemical bonds of B-C and C-N, again, due to the fact that the final product is a polycrystalline structure of diamond and cubic boron nitride. Additionally, no metal binder is used in the high-performance polycrystalline material.
With respect to claim 10, Wang discloses polycrystalline composite of diamond and cubic boron nitride in a cutting tool, and Shen discloses drilling tools such as roller cone or hammer drill bit, all as detailed out above. The combination of Wang in view of Shen, thus, discloses a PDC drill bit or a hole opener. A roller cone drill tool is a hole opener.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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