Ex Parte AL-SHAFEI

Patent Trial and Appeal Board

Dec 17, 2018

13551200 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/551,200 07/17/2012
38137 7590 12/17/2018
ABELMAN, FRAYNE & SCHWAB
666 THIRD A VENUE, 10TH FLOOR
NEW YORK, NY 10017
FIRST NAMED INVENTOR
Mansour A. AL-SHAFE!
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.
212,120 2831
EXAMINER
OLSEN,KAJK
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
12/17/2018 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
Ex parte MANSOUR A. AL-SHAFE!
Appeal2017-000329
Application 13/551,200
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and
GEORGE C. BEST, Administrative Patent Judges.
Opinion for the Board by OWENS, Administrative Patent Judge.
Opinion concurring by NAGUMO, Administrative Patent Judge.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (Saudi Arabian Oil Company) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claim 13. We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal2017-000329
Application 13/551,200
The Invention
Claim 13 is as follows:
13. A material for use as an additive to modify the curing
characteristics by increasing the thickening time of a
cementitious composition that is in the form of a pumpable oil
well cement slurry for shallow casing cementing, wherein the
material is spent Claus catalyst in the form of ground particles
in the size range of from 6. 8 to 10 .4 microns.
Kennard
The Reference
US 2005/0194320 Al
The Rejection
Sept. 8, 2005
Claim 13 stands rejected under 35 U.S.C. § I03(a) over Kennard. 1
OPINION
We reverse the rejection.
Claim 13 requires spent Claus catalyst in the form of ground particles
in the size range of from 6.8 to 10.4 microns.
Kennard discloses spent Claus catalyst having exemplified particle
sizes of less than about 1 millimeter to less than about 300 mesh2 (i1i132, 56-
58). The particle size can be less than about 600 mesh, 3 but "[i]fthe
particles become too small, however, their sorptive capabilities [ for
removing contaminants from gaseous streams] may be hindered or
eliminated due to a decrease in the framework size of the particle" (i-f 58).
The Examiner finds (Ans. 9):
"[T]oo small is not defined by Kennard. While possibly a
nanosize particle could be an example of "too small", nowhere
1 Additional rejections are withdrawn in the Examiner's Answer (Ans. 3).
2 325 mesh corresponds to 44 microns (Ans. 3).
3 625 mesh corresponds to 20 microns (Ans. 3).
2
Appeal2017-000329
Application 13/551,200
does the reference state that a range of 6.8 to 10.4 microns is
too small. Kennard still teaches using a particle size less than
about 600 mesh (about 25 microns) which is inclusive of
appellant's claimed range of particle size for spent Claus
catalyst.
The mesh size corresponding to 10 microns, which is near the upper
end of the Appellant's 6.8 to 10.4 micron particle size range, is 1250 mesh
(Ans. 3), which is approximately double Kennard's 600 mesh (i-f 58).
Kennard' s particle size can be less than 600 mesh (id.), but the Examiner
does not establish that Kennard would have led one of ordinary skill in the
art to use any particle size in the less than 600 mesh range except nanosize
or smaller. Kennard's particles having a size less than 600 mesh are used to
reduce the levels of inorganic contaminants, particularly mercury and
arsenic, in gaseous streams (i1i13, 17, 58). The Appellant's particles are used
to modify the curing characteristics of an oil well cement slurry for shallow
casing cementing (Spec. 17:11-13). The Examiner does not establish that
Kennard's use of spent Claus catalyst particles for a different purpose than
that of the Appellant would have led one of ordinary skill in the art to use
particles within the Appellant's size range.
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a conclusion of obviousness of the Appellant's claimed material.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art"). Accordingly, we reverse the rejection.
3
Appeal2017-000329
Application 13/551,200
DECISION
The rejection of claim 13 under 35 U.S.C. § 103(a) over Kennard is
reversed.
The Examiner's decision is reversed.
REVERSED
4
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANSOUR A. AL-SHAFE!
Appeal2017-000329
Application 13/551,200
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and
GEORGE C. BEST, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge, concurring.
I concur in the judgment. I write separately to explain in more detail
why I join the Majority's reason for reversing the appealed rejection (Op. 3,
1st para., first two sentences), and to differ with the second reason
articulated by the Majority (id. at last three sentences).
As the Examiner and the Majority point out, Kennard does teach that
the particle size can be less than about 600 mesh ( for gaseous waste
streams), but that there is a lower limit due to the "framework size of the
particle." (Kennard ,r 58.) However, Kennard states also expressly that
"[i]n general, the term 'about' is used herein to modify a numerical value
above and below the stated value by a variance of 20%." (Kennard ,r 31.)
Thus, "about 600 mesh" particles is a disclosure of 600 ± 120 mesh
particles, which does not encompass -1200 mesh particles. Moreover, the
Examiner has not established that the ordinary worker would have
Appeal2017-000329
Application 13/551,200
understood that -1200 mesh particles would be suitable for the waste stream
treatment disclosed by Kennard because their small framework size would
"not hinder or eliminate their sorptive capabilities." This is a question of
fact that must be established on the basis of evidence of record. Until that
basis has been explained, it is premature to assume that -1200 mesh is not
"too small," and it is premature to transfer the burden to Appellant to show
that -1200 mesh particles are too small.
I thus concur that Appellant has shown harmful error in the appealed
rejection, and I join in the decision to reverse.
My disagreement with the Majority Opinion is one of emphasis. Until
the recitation of intended use is shown to impose an additional limitation, it
doesn't matter what use is disclosed for the spent Claus catalyst particles as
long as they meet the recited size.
2