Ex Parte 6,659,175 B2 et al

Patent Trial and Appeal Board

Mar 23, 2015

95002141 (P.T.A.B. Mar. 23, 2015)

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.
95/002,141 09/06/2012 6,659,175 B2 COR-1026-US-RE 5065
87627 7590 03/24/2015
Mossman, Kumar & Tyler PC
P.O. Box 421239
Houston, TX 77242
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/24/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

SPECTRUM TRACER SERVICES, LLC.
Requester

v.

CORE LABORATORIES LP
Patent Owner and Appellant
____________________

Appeal 2015-000198
Reexamination Control 95/002,141
Patent 6,659,175 B2
Technology Center 3900
____________________

Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF CASE
This is a decision on appeal by Core Laboratories LP (hereinafter
“Patent Owner”)1 from the Patent Examiner’s decision to reject pending
claims 1-7, 9, and 11 in an inter partes reexamination of U.S. Patent
6,659,175 B2 (hereinafter, “the ’175 Patent”). The Board’s jurisdiction for
this appeal is under 35 U.S.C. §§ 6(b), 134(b), and 315(a).
The ’175 patent is related to U.S. Patent 7,032,662 B2 (“the ’662
Patent”), which is the subject of Reexamination Control 95/002,144, also
currently on appeal. The ’175 Patent and the ’662 Patent are the subjects of
a litigation in the U.S. District Court for the Western District of Oklahoma
styled Core Laboratories LP v. Spectrum Tracer Services, LLC, Case No.
11-cv-1157-M. The litigation is stayed pending the outcome of these
reexamination proceedings.
We concurrently heard oral arguments from Patent Owner and
Requester concerning the reexaminations of the ’175 Patent and ’662 Patent
on February 11, 2015, a written transcript of which will be entered into the
electronic record in both cases in due course.
We AFFIRM.

II. BACKGROUND
The ’175 Patent issued December 9, 2003, to Scott Malone et al. A
request for inter partes reexamination under 35 U.S.C. §§ 311-318 and 37
C.F.R. §§ 1.902-1.997 for the ’175 Patent was filed September 6, 2012 by a
Third-Party Requester, Spectrum Tracer Services, LLC, (hereinafter

1 See Patent Owner’s Supplemental Appeal Brief, filed June 13, 2014 (“App.
Br.”) 2.
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“Requester”). Request for Inter Partes Reexamination 1; Requester’s
Respondent Brief, filed May 23, 2014 (hereinafter “Res. Br.”) 1.
Claims 1-11 were original to the ’175 patent. Claim 10 was not
subject to reexamination, and claim 8 was cancelled during this proceeding.
Claims 1–7, 9 and 11 stand rejected and are currently appealed. Right of
Appeal Notice mailed February 7, 2014 (hereinafter “RAN”) 1; App. Br. 3.
The ’175 Patent relates to a method for determining the extent of
recovery of materials injected into an oil well during oil and gas exploration
and production using chemical tracers. ’175 Patent, col. 1, ll. 16-19.
Claim 1 is representative of the claims on appeal and reads as follows,
(with underlining showing language added during reexamination and
indentations added for clarity).
1. A method for determining the extent of recovery of
materials injected into an oil well comprising the steps of:
a) preparing a material to be injected into an oil well,
wherein the material injected into the oil well is a material
useful for hydraulically fracturing the oil well;
b) admixing therewith a chemical tracer compound at a
predetermined concentration;
c) injecting the admixture into an oil well;
d) recovering from the oil well a production fluid;
e) analyzing the production fluid for the concentration of
the chemical tracer present in the production fluid; and
f) calculating the amount of admixture recovered from
the oil well using the concentration of the chemical tracer
present in the production fluid as a basis for the calculation.
App. Br. 8 and Claims App’x. Independent claim 11 is substantially
identical to claim 1, but further recites that “the tracer is a fluorinated
benzoic acid.” Id. The Examiner maintains the following rejections on
appeal. See App. Br. 6-7.
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I. The Rejection of claims 1, 5 and 6 under 35 U.S.C. § 103(a) as
obvious in view of Hinkel2 in view of Deans3 or Hall.4 See
Grounds I and IX, RAN 5-7 and 19-21.
II. The Rejection of claims 2–4, 9, and 11 under 35 U.S.C.
§ 103(a) as obvious over Hinkel and Deans or Hall and further
in view of Dugstad.5 See Grounds II and X, RAN 7-10 and 21-
22.
III. The Rejection of claims 5–7 under 35 U.S.C. § 103(a) as
obvious over Hinkel and Deans and further in view of Chen,6
Hoots7 or Greenkorn8 or Hinkel and Hall and further in view of
Chen or Hoots. See Grounds III, IV, VI, XI, and XII, RAN 10–
12, 14-15, and 22-26.
IV. The Rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as
obvious over Hinkel and Deans and further in view of
Teasdale.9 See Ground V, RAN 13–14.
V. The Rejection of claims 2–4 and 11 under 35 U.S.C. § 103(a) as
obvious over Hinkel, Deans, and Teasdale or Greenkorn, or

2 US 6,192,985 B1, issued Feb. 27, 2001, to Hinkel et al.
3 US 4,090,398, issued May 23, 1978, to Deans et al.
4 EP 0 282 232 A2, published Sep. 14, 1988, listing Christopher Hall as
inventor.
5 Dugstad, et al., “Application of Tracers to Monitor Fluid Flow in the
Snorre Field: A Field Study,” Society of Petroleum Engineers, Publication
No. SPE 56427 (1999).
6 US 4,303,411, issued Dec. 1, 1981 to Chen et al.
7 US 4,783,314, issued Nov. 8, 1988 to Hoots et al.
8 Greenkorn, Robert A., “Experimental Study of Waterflood Tracers,”
Society of Petroleum Engineers, Publication No. SPE 169 (January 1962).
9 US 4,223,725, issued Sep. 23, 1980 to Teasdale et al.
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Hinkel and Hall, further in view of Bowman.10 See Grounds
VII, VIII, XIII, RAN 16-19 and 26-27.

Patent Owner relies on the testimony of J. Thomas Hampton. See
Rule 132 Technical Declaration of J. Thomas Hampton, dated January 15,
2013 (hereinafter the “First Hampton Declaration”) (App. Br. 14); Rule 132
Technical Declaration of J. Thomas Hampton, dated September 1, 2013
(hereinafter the “Supplemental Hampton Declaration”) (App. Br. 10).11
Patent Owner also relies on the testimony of Dr. Gary Wooley. See Rule 132
Technical Declaration of Gary Wooley, dated January 15, 2013 (hereinafter
the “First Wooley Declaration”); Rule 132 Supplemental Technical
Declaration of Gary Wooley, dated September 16, 2013 (hereinafter the
“Second Wooley Declaration) (App. Br. 10). Patent Owner also relies on the

10 Bowman, R.S., “Evaluation of Some New Tracers for Soil Water
Studies,” 48 Soil Sci. Soc. Am. J. 987-993 (1984).
11 With the Appeal Brief filed June 13, 2014, Patent Owner submitted a
“Rule 132 Technical Declaration of J. Thomas Hampton,” dated January 15,
2013 as the “First Hampton Declaration,” which includes no exhibits, and a
second “Rule 132 Technical Declaration of J. Thomas Hampton,” which is
also dated January 15, 2013, as the “Second Hampton Declaration,” which
includes Exhibits A–K. It is clear from the record that Patent Owner
intended to submit the “Second Hampton Declaration,” dated January 15,
2013 as the “First Hampton Declaration” because of the citations in the
Appeal Brief to Exhibits A–K of the “First Hampton Declaration.” It is also
clear from the record that Patent Owner intended to submit an entirely
different declaration as the “Second Hampton Declaration,” namely, the
“Rule 132 Supplemental Technical Declaration of J. Thomas Hampton” that
was executed on September 1, 2013, and made of record on September 16,
2013. The error is apparent because Patent Owner specifically identifies the
separate declarations by execution date (see App. Br. 10 and 14) and refers
to paragraph numbers and Exhibits consistent therewith.
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testimony of Mr. Michael J. Flecker, dated September 16, 2013 (referred to
by Patent Owner as the “Flecker Declaration”) (App. Br. 17).
Requester relies on the testimony of Alfred Roy Jennings, Jr. See
Declaration of Alfred Roy Jennings, Jr., P.E., dated February 20, 2013
(hereinafter “First Jennings Declaration”) (Res. Br. 5); Supplemental
Declaration of Alfred Roy Jennings, Jr., P.E., dated October 3, 2013
(hereinafter “Supplemental Jennings Declaration”) (Res. Br. 9).

A. Hinkel and Deans (Ground I, RAN 5–7)
Claims 1 and 5-6
The dispositive issue on appeal is:
Does a preponderance of the evidence support Patent Owner’s
contention that the Examiner erred in determining that it would have been
obvious for one of ordinary skill in the art to use tracer data to determine the
extent of recovered material that has been injected into an oil well, as taught
by Deans, in a hydraulic fracturing operation in which recovery of all of the
injected fracturing fluid is necessary for optimum hydrocarbon recovery, as
described in Hinkel? We answer this question in the negative.
Patent Owner initially argues that the Examiner erred in interpreting
the language added to claim 1 during reexamination, namely “the material
injected into the oil well is a material useful for hydraulically fracturing the
oil well.” According to Patent Owner, this language, read in light of the
disclosure of the ’175 Patent, indicates that the claim is limited to a method
of determining the extent of recovery of hydraulic fracturing fluid in a
hydraulic fracturing operation. App. Br. 8–17. The Examiner determined
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that the claim is not limited to a hydraulic fracturing operation. RAN 4–5
and 43–44; Res. Br. 2–3.
Even assuming that the claim is limited to hydraulic fracturing, Hinkel
discloses an admixture of a hydraulic fracturing fluid and a tracer used in a
hydraulic fracturing operation. See RAN 5–6 (“Hinkel further discloses that
tracers can be added to the various fracturing fluid stages in actual field
applications so that a tracer study can be performed to verify the
effectiveness of the fracture clean-up process (see Example 4).”); Res. Br. 8
(“Hinkel teaches the use of a tracer study in a staged fracturing operation
and provides clear and repeated motivation for determining the amount of
fracturing fluid recovered.”). Hinkel teaches admixing a tracer and a
material useful for hydraulically fracturing an oil well, namely hydraulic
fracturing fluid. Col. 3, ll. 9-19; Ex. 4.
Patent Owner contends that one of ordinary skill in the art would not
have looked to the tracer study of Deans, which includes the steps of (e)
analyzing the production fluid for the concentration of the chemical tracer
and (f) calculating the amount of admixture recovered from the oil well
using the concentration of the chemical tracer, for use in the hydraulic
fracturing operation of Hinkel. App. Br. 20–22. Patent Owner argues that
one of ordinary skill in the art would have no reason to look to Deans
because (a) Deans’ water flooding operation is non-analogous art to Hinkel’s
hydraulic fracturing operation, (b) Deans’ tracer study is for a different
purpose than Hinkel’s tracer study, and (c) Deans teaches away from a
hydraulic fracturing operation. Id. Thus, Patent Owner argues that hydraulic
fracturing and water flooding operations are not in the same field of
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endeavor. App. Br. 22. Dr. Wooley explains the differences between these
two operations. Wooley First Decl. ¶ 12–14; see also Wooley Second Decl.
¶ 15, 19, and 20. Nonetheless, Dr. Wooley admits that “it is true that both
operations require the injection of materials into an oil well,” Wooley
Second Decl. ¶ 19.
Whether a prior art reference is “analogous” is a question of fact. In re
Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “The analogous-art test requires
that the Board show that a reference is either in the field of the applicant’s
endeavor or is reasonably pertinent to the problem with which the inventor
was concerned in order to rely on that reference as a basis for rejection.” In
re Kahn, 441 F.3d 977, 986-987 (Fed. Cir. 2006) (citing In re Oetiker, 977
F.2d 1443, 1447 (Fed. Cir. 1992)). “The rationale behind this rule
precluding rejections based on combination of teachings of references from
nonanalogous arts is the realization that an inventor could not possibly be
aware of every teaching in every art. Thus, we attempt to more closely
approximate the reality of the circumstances surrounding the making of an
invention by only presuming knowledge by the inventor of prior art in the
field of his endeavor and in analogous arts.” In re Wood, 599 F.2d 1032,
1036 (CCPA 1979). The question is not whether the combined art is
analogous to each other, but whether the combined references are each
analogous to the “applicant’s endeavor.” Id.
We are not persuaded that the field of endeavor of the ’175 Patent is
limited to hydraulic fracturing. Rather, the inventor’s field of endeavor is
determined by the disclosure of the ’175 Patent. See Wood, 599 F.2d at
1036. The ’175 Patent is not limited to hydraulic fracturing, but rather is
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related to any operation in which materials injected into an oil well during
oil and gas exploration and production are recovered. See ’175 Patent, col.
1, ll. 13-23 and 41-63. Both water flooding and hydraulic fracturing
operations require recovery of material injected into an oil well and both are
operations that occur during oil and gas exploration and production.
Even if the field of endeavor is properly limited to determining
amount of fracturing fluid recovered from a hydraulic fracturing operation,
as argued by Patent Owner, both Hinkel and Deans are reasonably pertinent
to the problem with which the inventor was concerned. “A reference is
reasonably pertinent if ... it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem. If a reference disclosure has the same purpose as
the claimed invention, the reference relates to the same problem, and that
fact supports use of that reference in an obviousness rejection.” Innovention
Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)
(quoting Clay, 966 F.2d at 659); see also In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011). “References are selected as being reasonably pertinent to
the problem based on the judgment of a person having ordinary skill in the
art.” Kahn, 441 F.3d at 986-987.
Hinkel would have been reasonably pertinent because it relates to
recovery of fracturing material in a hydraulic fracturing process and using
tracer studies to evaluate the effectiveness of the recovery. Patent Owner
argues that Deans is not related to determining the amount of fluid
recovered, but rather to determining the fluid saturations of immobile fluid
phase and a mobile fluid phase in a subterranean reservoir. Reb. Br. 12.
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However, Deans teaches that not only can return tracer concentrations be
used to determine “the dissolved immobile fluid concentration,” but that the
return tracer concentration can also be used to determine “when the total
volume of fluid injected into the formation has been produced.” Deans, col.
6, ll. 22–28. According to Deans, “knowledge of when the volume of
injected fluid has been produced can be determined either by knowing the
total injected fluid volume or by measuring the tracer concentration profile
in the produced fluid and determining the injected fluid volume using
general engineering principles.” Id. at ll. 28–33. Thus, Deans would also be
reasonably pertinent since it teaches a method to determine the extent of
recovery of a fluid injected into an oil well, i.e. the volume of fluid injected
into the formation that has been produced, using recovered tracer
concentrations, which is the same purpose of the tracer as in the claimed
invention. Accordingly, both Hinkel and Deans are analogous art to the
present invention.
Therefore, we turn to the question of whether it would have been
obvious to a skilled artisan to use the recovery evaluation procedure of
Deans to determine the full extent of recovery of the hydraulic fracturing
fluid in the hydraulic fracturing operation of Hinkel.
Patent Owner argues that the purpose of the tracer in Hinkel is
different than the purpose of the tracer in Deans, and that the processes are
too different for the skilled artisan to expect success in using the tracer study
of Deans in a hydraulic fracturing operation such as Hinkel. App. Br. 22–
24.
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The Examiner stated that it would have been obvious to use the tracer
study of Deans in the hydraulic fracturing operation of Hinkel “in order to
determine the effectiveness of the fracture clean-up process disclosed in
Hinkel.” RAN 7. Hinkel explains the importance of deliberately removing
the fracturing fluid from the fracture, i.e. “clean-up,” for example, to avoid
the presence of fluid acting as a barrier to the migration of hydrocarbon from
the formation. Hinkel, col. 2, l. 44 to col. 3, l. 38. While the diagnostics
discussed in Hinkel are directed to the improvement in removing fluid
retained in the distal-most portion of the fracture from the wellbore (id.), the
Examiner is relying on the diagnostics of Deans not the diagnostics of
Hinkel. RAN 7. Hinkel nonetheless teaches the importance of ensuring
maximum recovery of injected hydraulic fracturing material. Accordingly,
we agree with the Examiner that Hinkel provides sufficient reason for the
skilled artisan to evaluate the extent of admixture recovered.
Patent Owner has not persuasively demonstrated by a preponderance
of the evidence that the tracer study of Deans would be either incapable of
working or not expected to work in the hydraulic fracturing operation of
Hinkel. Since Hinkel uses known tracers in hydraulic fracturing operations,
one of ordinary skill in the art would have expected that the extent of
recovery could be determined using tracer measurements and material
balances described in Deans.
Finally, Patent Owner argues that Deans “teaches away” from a
hydraulic fracturing operation by requiring an injection rate of the brine
material that is low enough to avoid fracturing the formation. App. Br. 21–
22; see Deans, col. 7, ll. 42–43. A reference “teaches away” when it
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suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the Appellants’ invention. See In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Additionally, a reference may “teach away”
from a use when that use would render the result inoperable. McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001) (“If references
taken in combination would produce a “seemingly inoperative device,” we
have held that such references teach away from the combination and thus
cannot serve as predicates for a prima facie case of obviousness.”).
Patent Owner’s argument that Deans teaches away from the claimed
invention is directed to the injection rate of brine in Deans, while the
rejection of record is directed to the hydraulic fracturing operation of Hinkel.
Dr. Wooley discusses the difference between the injection processes of
Hinkel and Deans. Wooley First Decl. ¶ 12-15. However, any difference in
the injection rate of the brine material in the method for determining fluid
saturation of Deans does not amount to a teaching away from applying the
tracer study of Deans to the fracturing process of Hinkel.12
As discussed above, Patent Owner has directed us to no persuasive
evidence that the tracer study evaluations of Deans would not be reasonably
expected to work in the hydraulic fracturing operation of Hinkel or would
somehow make the hydraulic fracturing operation inoperable. In fact, the
evidence as a whole supports otherwise because Hinkel clearly discloses
tracer materials successfully used and recovered during hydraulic fracturing

12 Nonetheless, Deans’ teaching that the injection rate should not be so high
that the formation will fracture (Deans, col. 7, ll. 42-43) is evidence that
brine materials might be substituted for other known fracturing fluids in a
fracturing operation provided that the brine material is injected at a high
enough flow rate.
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operations. Therefore, we are not persuaded that one of ordinary skill in the
art would be dissuaded from applying the tracer study of Deans to the
hydraulic fracturing operation disclosed in Hinkel.
Secondary Considerations of Non-obviousness
Patent Owner relies on the First and Second declarations of Mr. J.
Thomas Hampton, the declaration of Mr. Michael J. Flecker, and the Second
Declaration of Dr. Wooley as evidence of non-obviousness based on
secondary consideration, namely that ProTechnics’ SpectraChem service
satisfied a long felt but unmet need in the art, was copied, received industry
praise, and was commercially successful. App. Br. 17–19.
For objective evidence to be accorded substantial weight, Patent
owner must establish a nexus between the evidence and the merits of the
claimed invention. In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995)
(appellant offers no evidence that the market reaction to appellants’
invention is rooted in the subject matter claimed). Put another way,
commercial success or other secondary considerations may presumptively be
attributed to the claimed invention only where “the marketed product
embodies the claimed features, and is coextensive with them.” Ormco Corp.
v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) (quoting Brown
& Williamson Tobacco Corp. v. Phillip Morris, Inc., 229 F.3d 1120, 1130
(Fed. Cir. 2000)).
The Examiner found that there was insufficient evidence to find a
nexus between the SpectraChem service offered by ProTechnics and the
claimed method for the evidence to having meaningful weight in an
obviousness analysis. See RAN 42. In particular, the Examiner determined
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that the evidence did not support a finding that the SpectraChem service
included the step of “calculating the amount of admixture recovered from
the oil well using the concentration of the chemical tracer present in the
production fluid as a basis for the calculation.” See RAN 71.
Mr. Hampton testifies that the SpectraChem service provided by
ProTechnics corresponds to the subject matter of Amended Claims 1 and 8.
See First Hampton Decl. ¶ 11.13 To corroborate this testimony, Mr.
Hampton points to Exhibit H, which is a claim chart prepared by Mr.
Hampton, and Exhibit I, which is a brochure of ProTechnics’ services. In
Exhibit H, Mr. Hampton states
The attached brochure verifies that Step f) is performed.
SPECTRACHEM tracers are routinely used to quantify
and profile frac fluid clean-up and flowback efficiency over
time.
ProTechnics performs this step by either using a mass
balance approach or a relative rate of recovery.
First Hampton Decl., Exhibit H, p. 1-2. The second sentence is a quote from
the fourth page of the brochure submitted as Exhibit I. Mr. Hampton then
cites to a Markman ruling in a district court litigation involving the ’175
Patent. Mr. Hampton further testifies that he had explained during a
preliminary injunction hearing that ProTechnics performs step f) by either a
mass balance approach or a relative rate of recovery approach and that “the
tracer concentrations were used to determine the amounts of fluid that were
flowing back.” See Supplemental Hampton Decl. ¶ 20 (citing Exhibit A to

13 While Dr. Wooley and Mr. Flecker provide additional testimony of
secondary considerations of non-obviousness, they provide no persuasive
testimony regarding the nexus between ProTechnics’ SpectraChem service
and the claimed method.
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the Declaration, 29, l. 1 to 32, l. 5).14 Accordingly, Patent Owner is relying
on the testimony of Mr. Hampton as someone with personal knowledge of
the services provided and an expert in the field in describing a “rate of
recovery” determination. See App. Br. 18 (“The Examiner either discounted
or ignored Mr. Hampton’s declaration testimony that Appellant’s services do
include the ‘calculating’ step. See, e.g., Second [Supplemental] Hampton
Dec. ¶ 20 (testifying that ‘the tracer concentrations were used to determine
the amounts of fluid that were flowing back.’).”
Although Mr. Hampton, as president of the ProTechnics division of
Core Laboratories, would have personal knowledge of the services provided
by ProTechnics, we decline to give substantial weight to the testimony of
Mr. Hampton without corroborating evidence that ProTechnics performs the
additional step of calculating the amount of admixture recovered from the
tracer concentration data. See, e.g., Am. Acad. of Sci. Tech. Ctr., 367 F.3d at
1368 (“[T]he Board is entitled to weigh the declarations and conclude that
the lack of factual corroboration warrants discounting the opinions expressed
in the declarations.”); In re Etter, 756 F.2d 852, 859-60 (Fed. Cir. 1985)
(opinion affidavit asserting the reference disclosed obsolete technology was
correctly characterized by the board “as merely representing opinion[]

14 During the Preliminary Injunction Hearing, Mr. Hampton testified that the
Report demonstrates tracer concentration recovery per stage of operation and
total tracer concentration recovery. When asked “Can you explain how the
relative rate of recovery satisfies the claim element of calculating the amount
of admixture recovered?” Mr. Hampton points to where in the Report “we
just add the amount of chemical coming back from each stage so that you
can see the total amount of chemical tracer coming back on that particular
job.” Exhibit A, filed with Patent Owner’s Response to the Action Closing
Prosecution on September 16, 2013, 29, l. 1 to 32, l. 5.
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unsupported by facts and thus entitled to little or no weight”) (citing In re
Piasecki, 745 F.2d 1468, 1472-73 (Fed. Cir. 1984); In re Rinehart, 531 F.2d
1048, 1052 (CCPA 1976)).
The language of the SpectraChem brochure (First Hampton Decl.,
Exhibit I) fails to describe steps being performed with sufficient specificity
so as to ascertain whether the SpectraChem service meets the requirements
of the claimed invention, particularly the “calculating step” thereof.
Accordingly, we agree with the Examiner that the SpectraChem brochure is
insufficient corroborating evidence of a step of calculating of the amount of
admixture (including both the injected fluid and tracer) recovered.
Patent Owner further argues that the term “calculating” was
interpreted by the District Court for the Western District of Oklahoma to
include both a mass balance approach and relative rate of recovery approach.
According to Patent Owner, plotting returned tracer concentration over
time,15 as evidence by the Report cited by Mr. Hampton (Patent Owner’s
Comments of September 16, 2013, Exhibit G), is a calculation within the
meaning of the term because it traces the relative rate of recovery. Reb. Br.
8–9.
The District Court determined that the term “calculating” means
“determining by mathematical process” and that the phrase “calculating the
amount . . . recovered” means “determining by mathematical process the
amount . . . recovered.” First Hampton Decl., Exhibit K, p. 13–14. The

15 We note that this claim interpretation does not affect the Examiner’s prima
facie case of obviousness because the Examiner relies on Dean’s teaching of
using tracer data for “mass balance purposes,” which Patent Owner seems to
agree involves “calculating” even under a narrow interpretation.
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District Court acknowledged that Patent Owner argues that “calculating”
encompasses both the mass balance approach and the relative rate of
recovery approach and that Defendants “disagree with Core’s position that
simply plotting tracer concentration over time satisfies the calculation step
of the relative rate of recovery approach. Id. However, the District Court
did not clearly reject either the Patent Owner or the Defendant’s contentions
or apply the definition in the Markman order so as to determine whether
plotting tracer concentration over time constitutes “determining by
mathematical process” an amount of injected material that is recovered. Id.
Accordingly, we are not persuaded that the District Court necessarily
“rejected Respondent’s proposal, adopting instead Appellant’s proposal,” as
argued by Patent Owner (Reb. Br. 9), since both parties included a
“mathematical” element in their proposed definitions, which is all the
District Court expressly adopted. Id.
As noted by Patent Owner, the Board is not bound by the District
Court’s claim interpretation because, unlike District Court, the Board
operates under a broadest reasonable interpretation standard. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (claims . . .
are to be given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”)
(quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
The ’175 Patent does not expressly define the word “calculating.”
However, the Specification states:
In the practice of the present invention, the recovered
materials are tested for tracer concentration and the amount of
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material recovered determined. At this point, the well operator
can make an informed decision regarding whether to continue
clean up or begin production.
The extent of recovery of materials injected including a
tracer of the present invention is preferably determined by using
a mass balance approach. Therein, the total amount of tracer
admixed with the injected material is a known. [sic] A
homogenous sample of production fluid is tested for tracer
concentration and the amount of tracer recovered is thereby
determined. The amount of injected admixture recovered is then
determined using the formula:
AMTr=((Tr/Ti)xAMTi)
wherein AMTr is the amount of injected admixture
recovered, Ti is the amount of tracer injected; Tr is the amount
of tracer recovered; and AMTi is the amount of materials
injected. Tr is determined by multiplying the concentrations of
the tracer in the production fluid by the total quantity of
production fluid recovered.
Where a mass balance approach is not possible or
desirable, a relative rate of recovery can also be determined by
measuring the concentration of tracer in the production fluids
recovered from an oil well as a function of time. In a process
such as this, samples of production fluid being recovered from
the well are taken, analyzed for tracer concentration that is then
plotted against time and/or flow rates. This can also be a
desirable way for an operator to decide when to begin
production from an oil well.
’175 Patent, col. 5, ll. 23–52. In the Example, the ’175 Patent states that
“[t]he flow back is tested for the presence and relative concentration of each
tracer using a GC-mass spectrometer.” Id., col. 7, ll. 19–21.
The language of the claim recites “calculating the amount of
admixture recovered.” The ’175 Patent explains that by determining the
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amount of material recovered, “the well operator can make an informed
decision regarding whether to continue clean up or begin production.” Id.,
col. 5, ll. 23–26. The ’175 Patent exemplifies determining the “amount of
admixture recovered” or “extent of recovery of materials injected” only by
using a mass balance approach. The ’175 Patent explains that the relative
rate of recovery “can also be a desirable way for an operator to decide when
to begin production from an oil well.” Id., col. 5, ll. 51–52. (emphasis
added.)
While the ’175 Patent indicates that determining the amount of
material recovered and determining the relative rate of recovery are both
useful in determining when to begin production from an oil well, the ’175
Patent does not reasonably support a finding that an amount of admixture
recovered can be determined by plotting the concentration of tracer in the
production fluids recovered from an oil well as a function of time.
According to the ’175 Patent, plotting concentration over time only
determines “a relative rate of recovery” and not the amount of material
recovered. Accordingly, we are not persuaded that a service that provides
only plotting tracer concentration as a function of time includes the step of
using the tracer concentration for calculating the amount of admixture
recovered.
Since tracer concentration data over time (either per stage or total
concentration) is all that was provided in the Report cited by Mr. Hampton
(see Patent Owner’s Response to the Action Closing Prosecution of
September 16, 2013, Exhibits A, F, and G), the evidence is insufficient to
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corroborate Mr. Hampton’s testimony that a step of calculating the amount
of admixture recovered was performed by ProTechnics.
Accordingly, Patent Owner has not met the burden of establishing that
the evidence related to a long felt need met by, commercial success of,
industry praise for, and copying of ProTechnics’ SpectraChem services is
relevant because it has failed to establish a nexus by preponderance of the
evidence between ProTechnics’ SpectraChem services and the claimed
invention. In particular, Patent Owner has failed to establish by
preponderance of the evidence that ProTechnics’ SpectraChem services
includes a step of “calculating the amount of admixture recovered from the
oil well using the concentration of the chemical tracer present in the
production fluid as a basis for the calculation.”
Considering the evidence as a whole, we affirm the Examiner’s
rejection of claims 1, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over
Hinkel and Deans.

B. Hinkel, Deans, and Dugstad (Ground II, RAN 7–10)
Claims 2–4, 9, and 11
The Examiner relies on Dugstad as evidence that the specific tracers
recited in claims 2–4 and 11 were known in the art, namely fluorinated
benzoic acid. The Examiner notes that Dugstad identifies fluorinated
benzoic acids as tracers with a good recovery rate in water. See RAN 8 and
10 (citing Dugstad, p. 2). The Examiner also relies on Dugstad as teaching
“the same mass balance approach as described in the ’175 patent and in
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claim 9 to calculate the ratio of the amount of injected fluid recovered based
on the tracer concentration profile.”
We agree with the Examiner that it would have been obvious to use
the specific tracers recited in Dugstad in the tracer study taught by Deans.
To do so would have been no more than the predictable use of a known
tracer according to its established function as tracer material injected into an
oil well. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The
question to be asked is “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.”). Moreover, Deans teaches that
The trace chemicals suitable for use in one embodiment
of this invention can be selected from a wide category of known
and available substances. In making such a selection the
purpose of the trace chemical and the particular manner in
which it is to be used should, or [sic] course, be kept in mind.
Deans, col. 7, ll. 11–16. In other words, the skilled artisan would have been
capable of selecting a preferred tracer from known tracer chemicals for a
particular purpose. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368
(Fed. Cir. 2007) (“The fact that [the salt recited in the claim] was the best of
the seven [] salts actually tested proves nothing more than routine
optimization that would have been obvious to one of ordinary skill in the
art.”) (citing In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955) (“[E]ven though
applicant’s modification results in great improvement and utility over the
prior art, it may still not be patentable if the modification was within the
capabilities of one skilled in the art.”)); In re Swain, 156 F.2d 246, 247–48
(C.C.P.A. 1946) (“In the absence of a proper showing of an unexpected and
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superior result over the disclosure of the prior art, no invention is involved in
a result obtained by experimentation.”).
Likewise, it would have been obvious to use the particular mass
balance formula recited in Dugstad as the method of determining the amount
of admixture recovered because Deans states that such a determination could
be made using “general engineering principles.” Id., col. 6, ll. 28–33. In
other words, the skilled artisan would have been aware of the mass balance
principles of Dugstad, as they are general engineering principles.
Patent Owner contends that a person of ordinary skill in the art would
not have found it obvious to combine Dugstad with the teachings of Hinkel
and Deans because Dugstad teaches a substantially different application
from hydraulic fracturing operations and because the tracer study in Dugstad
is substantially different and for a different purpose than the tracer study of
the ’175 Patent. App. Br. 24; Second Wooley Decl. ¶ 17(c).
Patent Owner’s arguments are not persuasive for the same reasons
discussed above with respect to the combination of Hinkel and Deans.
Dugstad is relied upon for the purpose of showing that certain tracers were
known for use in combination with fluid injected into an oil well. While we
understand that the conditions and studies are different in Hinkel and
Dugstad, merely pointing out the differences is insufficient in light of the
Examiner’s reasoning. See Second Wooley Decl. ¶ 17(c). Patent Owner has
provided no persuasive reasoning or evidence that the skilled artisan would
not have expected the tracer of Dugstad to function similarly as a successful
tracer in the hydraulic fracturing operation described in Hinkel. Similarly,
Patent Owner has provided no persuasive reasoning or evidence that the
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skilled artisan would not have expected to be able to use the mass balance
equation cited in Dugstad as the general engineering principle for
determining the amount of admixture recovered as described in Deans.
Considering the evidence as a whole, we affirm the Examiner’s
rejection of claims 2-4, 9, and 11 under 35 U.S.C. § 103(a) as unpatentable
over Hinkel, Deans, and Dugstad.

C. Hinkel, Deans, and Chen (Ground III, RAN 10–11)
Claims 5-7
The Examiner relies on Chen as evidence that the use of tracers in the
concentrations recited in claims 5–7 were known in the art. The Examiner
found that Chen shows successful tracer determination at concentrations as
low as 3ppm for water-soluble alkali metal salts of inorganic or organic
compounds having fluorine in the anion by 19FNMR spectroscopy. Chen,
col 1, ll. 39–50 and col. 2, ll. 53–55. According to the Examiner, “it would
have been obvious to one of ordinary skill in the art to use sufficiently small
amount of the tracer compounds, as suggested by Chen, in the injected fluids
disclosed in Hinkel and Deans in order to lower the operation cost and also
reduce the negative effects that the tracers cause to the environment.” See
RAN 11.
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use the very low tracer
concentration recited in Chen in a tracer study for an economical benefit, as
taught by Chen. The Examiner found that Deans teaches that the
concentration of trace chemicals in the injected fluid can be established by
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one of ordinary skill in the art using general engineering principles and
Deans, like Chen, encourages the use of small amounts of tracer chemicals
“as a matter of economics.” RAN 10–11; Deans, col. 7, ll. 30–35.
Accordingly, it is within the skill of the ordinary artisan to select from
known tracers those that can be detected in small quantities for their
economic benefits.
Patent Owner contends that a person of ordinary skill in the art would
not have found it obvious to combine Chen with the teachings of Hinkel and
Deans because Chen teaches a substantially different application from
hydraulic fracturing operations, and because the tracer study in Chen is
substantially different and for a different purpose than the tracer study of the
’175 Patent. App. Br. 24–25; Second Wooley Decl. ¶ 17(d).
Patent Owner’s arguments are not persuasive for the same reasons
discussed above with respect to the combination of Hinkel and Deans. Chen
is relied upon for the purpose of showing that certain very low tracer
concentrations can be detected after injected into an oil well admixed with a
fluid. While we understand that the conditions and studies are different in
Hinkel and Chen, merely pointing out the differences is insufficient in light
of the Examiner’s reasoning. See Second Wooley Decl. ¶ 17(d). Patent
Owner has provided no persuasive reasoning or evidence that the skilled
artisan would not have expected the tracer of Chen to function successfully
in similarly low concentrations in the hydraulic fracturing operation
described in Hinkel.
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Considering the evidence as a whole, we affirm the Examiner’s
rejection of claims 5-7 under 35 U.S.C. § 103(a) as unpatentable over
Hinkel, Deans, and Chen.

V. REMAINING REJECTIONS
Because our decision is dispositive regarding the unpatentability of all
the claims, we need not reach the merits of the cumulative obviousness
rejections based on other references. See In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009) (holding that obviousness rejections need not be reached
upon affirming a rejection of all claims as anticipated); cf. Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (having decided a single
dispositive issue, the ITC was not required to review other matters decided
by the presiding officer).

V. CONCLUSION
On the record before us and for the reasons presented above, we
affirm the following rejections.
I. The Rejection of claims 1 and 5–6 under 35 U.S.C. § 103(a) as
obvious in view of Hinkel in view of Deans;
II. The Rejection of claims 2–4, 9, and 11 under 35 U.S.C.
§ 103(a) as obvious over Hinkel and Deans and further in view
of Dugstad; and
III. The Rejection of claims 5–7 under 35 U.S.C. § 103(a) as
obvious over Hinkel and Deans in view of Chen.
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Since we affirm rejections of each claim on appeal, we decline to
address the merits of additional grounds of rejection maintained by the
Examiner and appealed by the Patent Owner.

In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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27
ack

FOR PATENT OWNER:

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P.O. BOX 421239
HOUSTON, TX 77242

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