Ex Parte Lewis et al

Patent Trial and Appeal BoardDec 27, 2012

11689716 (P.T.A.B. Dec. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/689,716 03/22/2007 Sam Lewis 2006-IP-022639U2 2387 7590 12/27/2012 Craig W. Roddy Halliburton Energy Services, Inc. 2600 South Second Street P. O. Box 1341 Duncan, OK 73536 EXAMINER MARCANTONI, PAUL D ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 12/27/2012 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 SAM LEWIS, RITA MCKINLEY, and RUSSELL FITZGERALD __________ Appeal 2011-010298 Application 11/689,716 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010298 Application 11/689,716 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-7 and 9-16. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is said to be directed to additives for particulate materials and, specifically, “compositions that may improve the flow properties of dry particulate cementitious and non-cementitious materials and related methods of synthesis and use” (Spec. para. [0002]). Claim 1 is illustrative: 1. A composition comprising: a particulate solid adsorbent material; a flow inducing chemical; water; and ethylene glycol; and wherein the flow inducing chemical, the water, and the ethylene glycol are adsorbed on the particulate solid adsorbent material such that the composition is in particulate form. The following rejection is before us on appeal:1 Claims 1-7 and 9-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Reddy (US 6,494,951 issued Dec. 17, 2002) in view of Kunzi ‘198 (US 5,447,198 issued Sept. 5, 1995) or Kunzi ‘550 (US 5,346,550 issued Sept. 13, 1994). 1 The Examiner withdrew the rejection of claims 1-7 and 9-16 under 35 U.S.C. § 102(b) (and alternatively 35 U.S.C. § 103(a)) as well as the rejection of claims 1-7 and 9-16 under 35 U.S.C. § 112, second paragraph. Ans. 2-3. Appeal 2011-010298 Application 11/689,716 3 Appellants argue the subject matter common to independent claims 1 and 11 (App. Br. 15-16). We select claim 1 as representative. Claims 2-7 and 9-16 stand or fall with claim 1 in the absence of separate substantive arguments in this appeal. ISSUE Did the Examiner reversibly err in determining that Reddy’s disclosure of a particulate solid adsorbent material, a flow inducing chemical, and water combined with Kunzi ‘198’s disclosure of ethylene glycol would have rendered obvious the claimed composition? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES Appellants distinguish Reddy on the basis that water is added to form a pumpable slurry. App. Br. 13. Appellants also argue that when the particulate solid adsorbent material is cement, “the cement cannot simply be ‘dried’ to regain dry particulates with the same components adsorbed onto the particulates.” Id. at 14. Appellants distinguish Kunzi ‘198 and Kunzi ‘550 on the basis that ethylene glycol is used as a freezing point depressant during mixing and “a secondary freezing point depressant is added ‘to prevent freezing of . . . excess water in the pores of the set cement . . . .’” Id. (quoting Kunzi ‘198, col. 6, ll. 10-12). Appellants further argue that the combination of Reddy and Kunzi ‘198 would result in a composition that is in slurry form rather than in particulate form because ethylene glycol would only be added to “free, liquid water” and water would not be added to a dry mixture unless a slurry is desired. Id. at 15. Appeal 2011-010298 Application 11/689,716 4 The Examiner responds that the composition of Reddy is in particulate form because at least some adsorption of the liquid into the solid particulate adsorbent material would occur from mixing of the composition in Reddy and the prior art particulate. Ans. 5-6. The Examiner relies on Reddy for disclosing the solid absorbant material, including precipitated silica, zeolite, talcum, diatomaceous earth, and fuller’s earth, as well as the flow inducing chemical and water, which is the slurry form of Reddy. Ans. 7. The claims do not exclude the addition of cement which is added in Reddy as well. Id. The Examiner also responds that an additional freezing point depressant as in Kunzi ‘198 neither detracts from the fact that Kunzi ‘198 discloses ethylene glycol as a freezing point depressant nor is it precluded by the claims. Id. at 7-8. The preponderance of the evidence favors the Examiner’s obviousness conclusion. We adopt the Examiner’s analysis in the Answer as our own. We add the following discussion primarily for emphasis. Reddy broadly discloses that the combination of a particulate solid material (precipitated silica, zeolite, talcum, diatomaceous earth and fuller’s earth) and a flow inducing polar chemical (polar molecule producing organic acids, their salts and acid anhydrides) functions as a flow enhancing additive. Reddy, col. 3, ll. 8-14; Ans. 4. Reddy also discloses a composition in which water is combined with the flow enhancing additive in a composition including cement. Reddy, col. 4, ll. 24-25; Ans. 4. Kunzi ‘198 broadly discloses ethylene glycol as a preferred freezing point depressant in a cement composition. Kunzi ‘198, col. 2, ll. 38-43; Ans. 4-5. The Examiner reasonably finds that one of ordinary skill in the art would have Appeal 2011-010298 Application 11/689,716 5 added ethylene glycol to the composition of Reddy “to give cement resistance to freeze thaw cycling”. Ans. 4. Appellants’ arguments fail because they are directed to limitations not recited in the claims as found by the Examiner (Ans. 8). The claims require water, but there is no requirement as to the amount of water added to the composition as argued. Appellants also do not address the Examiner’s explanation why the composition of Reddy together with ethylene glycol would be in particulate form. We decline Appellants’ invitation to read limitations from the Specification into the claims. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Moreover, Appellants’ Specification includes embodiments where the composition is in slurry form. Spec. paras. [0031]- [0032], [0044]. Appellants do not dispute that Kunzi ‘198 discloses ethylene glycol as a freezing point depressant or the Examiner’s reason for combining Kunzi ‘198’s ethylene glycol with Reddy’s slurry form of particulate solid adsorbent, flow inducing chemical, and water in their Appeal Brief. In a Reply Brief, Appellants argue that the Examiner’s reason for combining Kunzi ‘198 with Reddy is not reasonable because the only purpose of adding ethylene glycol is to depress the freezing point of water rather than to improve flow properties, which is the stated function of Reddy’s composition. Reply Br. 4. Appellants’ present this argument for the first time in their Reply Brief. Although arguments raised for the first time in the reply brief need not be considered without a showing of good cause, Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI 2010)(informative), this argument is unsuccessful because one skilled in the art would have seen the benefit of depressing the freezing point of water as a reason for combining Kunzi ‘198 with Reddy. KSR v. Teleflex, 550 U.S. Appeal 2011-010298 Application 11/689,716 6 398, 420 (2007). Indeed, Appellants add ethylene glycol to the composition in order to lower the freezing point of the composition (Spec. para. [0021]). On this record, we affirm the Examiner’s § 103 rejection. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED sld