Ex Parte Lawson Mohar

Patent Trial and Appeal Board

Apr 25, 2016

13527373 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/527,373 06/19/2012
27683 7590 04/27/2016
HA YNES AND BOONE, LLP
IP Section
2323 Victory A venue
Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
Jeanie Lynn LAWSON MOHAR
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.
7523.1335US01 6944
EXAMINER
FAN,LYNNY
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEANIE LYNN LAWSON MOHAR1
Appeal2014-004808
Application 13/527,373
Technology Center 1600
Before ERIC B. GRIMES, LORA M. GREEN, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to testing
of drilling fluids, which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The invention relates to a method for assessing wellbore fluids using
test organisms. Spec. i-f 9. As part of the test method the test organisms are
sorted by size using a series of tubs. Id. Each tub is divided into two
sections by a screen. Id. The screens retain organisms of a specific size or
1 The real party-in-interest is Halliburton Energy Services. Inc. Appeal Br.
3.
Appeal2014-004808
Application 13/527,373
larger while permitting smaller organisms to pass through the screen into a
second section of the tub and then to the next tub in series. Id. Once the
organisms are sorted according to size, a portion of the organisms of a
specific size are then used to evaluate the wellbore fluid. Id.
Claims 1-20 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A method of assessing a wellbore servicing fluid
or a component thereof comprising:
providing a plurality of test organisms,
wherein providing the plurality of test organisms
compnses:
introducing at least a portion of a population
of the test organisms into a first section of a first
tub, wherein the first section of the first tub is
separated from a second section of the first tub by
a first screen, wherein the first screen is configured
to retain an organism of at least a first size and to
allow passage of an organism less than the first
size;
allowing at least a portion of the organisms
of a size less than the first size to pass through the
first screen and into the second section of the first
tub;
allowing at least a portion of the organisms
of a size less than the first size to flow out of the
first tub and into a first section of a second tub,
wherein the first section of the second tub is
separated from a second section of the second tub
by a second screen,
wherein the second screen is configured to
retain an organism of at least a second size and to
allow passage of an organism less than the second
size;
allowing at least a portion of the organisms
of a size less than the second size to pass through
2
Appeal2014-004808
Application 13/527,373
the second screen and into the second section of
the second tub;
allowing at least a portion of the organisms
of a size less than the second size to flow out of the
second tub and into a first section of a third tub,
wherein the first section of the third tub is
separated from a second section of the third tub by
a third screen, wherein the third screen is
configured to retain an organism of at least a third
size and to allow passage of an organism less than
the third size;
allowing at least a portion of the organisms
of a size less than the third size to pass through the
third screen and into the second section of the third
tub; and
allowing at least a portion of the organisms
of a size less than the third size to flow out of the
third tub;
selecting test organisms of a size desired for
testing from the first section of the first tub, the
first section of the second tub, the first section of
the third tub, or combinations thereof;
dividing the test organisms of the selected
size into a control group and at least one test
group;
subjecting the at least one test group to the
wellbore servicing fluid or component thereof;
and assessing the acceptability of the
wellbore servicing fluid or component thereof.
Appeal Br. 22-23 (Claims Appendix).
Claims 1-20 stand rejected under 35 U.S.C.103(a) as unpatentable
over Patel et al., US 7,081,437 B2 (issued July 25, 2006)("Patel") in view of
OFFICE OF RESEARCH AND DEVELOPMENT, U.S. ENVIRONMENTAL
PROTECTION AGENCY, PUB. 600/R-25/025, Methods for Assessing Toxicity of
3
Appeal2014-004808
Application 13/527,373
Sediment-associated Contaminants with Estuarine and Marine Amphipods
( 1994 )("EPA") and Arterbury, US 2,091,023 (issued Aug. 24,
1937)("Arterbury").
DISCUSSION
Issue
The Examiner finds that Patel teaches the use of a method for
conducting toxicity testing of sediments using a plurality of test organisms.
Ans. 6. The organisms are exposed to the natural sediment and the sediment
is sieved through 1000 and 500 micrometer screens. Id. The Examiner also
finds that EPA teaches a method of toxicity testing using a plurality of test
organisms. Id. The Examiner goes on to find that EPA teaches sorting the
test organisms by size by passing the organisms through a series of sieves
and then selecting the smallest organisms for testing and that EPA also
teaches the use of multiple test chambers. Id. Finally, the Examiner
concludes that
at the time of the claimed invention, it would have
been obvious to one of ordinary skill in the art to
position, e.g., horizontally or vertically, the sieve
(screen) in the chamber (tub) to have the first and
second section, since Patel and EPA both disclose
methods of using the sediment toxicity test, and EPA
specifically discloses passing the test organisms
through the sieve in water and selecting the smaller
test organisms for toxicity testing by utilizing identical
test chambers (multiple tubs).
Ans. 6-7.
Appellant contends that the references fail to teach all the elements of
the claims, specifically placing the screens in the tubs so as to divide the tubs
4
Appeal2014-004808
Application 13/527,373
into first and second sections. Appeal Br. 10-12. Appellant also argues that
the Examiner has failed to articulate why one skilled in the art would make
the suggested combination of elements. Id. at 12-14. Next, Appellant
argues that EPA teaches away from the combination proposed by the
Examiner. Id. at 14--17. Appellant goes on to argue that the proposed
modification of the references would render EPA unsuitable for its intended
purpose. Id. at 17-18. Finally, Appellant argues that the Examiner used
impermissible hindsight in reaching a conclusion of obviousness. Id. at 19-
20.
The issue with respect to this rejection is whether the Examiner has
proved by a preponderance of the evidence that claims 1-20 are
unpatentable as obvious over Patel in view of EPA and Arterbury as defined
by 35 U.S.C. § 103(a).
Findings of Fact
FF 1. Patel teaches toxicity testing of sediments using marine
amphipods to evaluate drilling fluids. Patel, col. 16, 11. 42-54.
FF2. Patel teaches sieving dry sediment as part of the test procedure.
Patel, col. 16, 11. 57-58.
FF3. EPA discloses a method for toxicity testing of sediments using
marine amphipods. EPA i-f 2.1.1.1.
FF4. EPA discloses the use of a series of sieves to sort marine
amphipods by size. EPA i-fi-110.3.3.8, 10.3.4.6, and 10.5.9.1.
FF5. EPA teaches that sediments containing mixed-size amphipods
are poured over a sieve series having different mesh sizes. EPA i-f 10.5.9.1.
5
Appeal2014-004808
Application 13/527,373
FF6. EPA teaches immersing a sieve in water after the series of
sieves has been used to sort organisms by size to allow collection of the
organisms. EPA i-f 10.3.3.8.
FF7. EPA discloses that at least 4 replicate test chambers should be
used to conduct the toxicity test. EPA Table 1.1.
FF8. The Examiner cites Arterbury only for its disclosure of the valve
and flow conduit (Ans. 5) of dependent claim 12.
Principles of Law
The factors considered in determining obviousness include: 1) scope
and content of prior art; 2) differences between prior art and claims at issue;
3) level of ordinary skill in the art at the time invention was made; 4)
objective evidence of non-obviousness. Graham vs. John Deere Co., 383
U.S. 1 (1966).
Obviousness is not found where an element is missing from the prior
art. See, Croes, Inc., v. Int'! Trade Comm., 598 F.3d 1294, 1309 (Fed. Cir.
2010).
When a prima facie case of obviousness has not been established, the
rejection must be reversed. In re Fine, 837 F.2d 1071, 1075 (Fed. Cir.
1988).
Analysis
We agree with Appellant that the Examiner has failed to establish that
all of the elements of the claims are taught or suggested by the references.
The claims require that the tubs be divided into two sections by a screen.
6
Appeal2014-004808
Application 13/527,373
Claim 1. The Examiner has failed to point to any teaching or suggestion in
any of the references showing the use of tubs, containing screens, to sort
amphipods in preparation for toxicity testing. The Examiner points to
EP A's Table 11.1 as showing multiple chambers. Ans. 6. However, Table
11.1 does not relate to the sorting of organisms by size, but rather the
conduct of the toxicity test after the organisms have been sorted. FF7. No
passages in Patel, EPA, or Arterbury cited by the Examiner teach or suggest
the use of screen-containing tubs as part of the sorting process.
The Examiner has also failed to produce any evidence that would
teach or suggest using a screen to divide a tub into two sections such that the
sieve would allow smaller organisms to flow from the first section into the
second section. The Examiner suggests that the immersion of a sieve into
water as taught by EPA satisfies this limitation. Ans. 6. We are
unpersuaded. We agree with Appellant that the submersion of the screen as
taught by EPA would not separate the tub into two sections. Reply Br. 11-
12. Moreover, EPA teaches that the submersion occurs after the organisms
pass through a series of screens to sort the organisms by size. FF6. This
does not teach or suggest the limitation that the screens are arranged so as to
divide the tubs into two sections such that smaller organisms pass from the
first section of each tub through the screen and into the second section of
each tub.
Conclusion of Law
We conclude that the Examiner has failed to establish by a
preponderance of the evidence that claims 1-20 are unpatentable as obvious
over Patel in view of EPA and Arterbury as defined by 35 U.S.C. § 103(a).
7
Appeal2014-004808
Application 13/527,373
SUMMARY
We reverse the rejection of claims 1-20 as unpatentable under 35
U.S.C. § 103 (a) as obvious over Patel in view of EPA and Arterbury.
REVERSED
8