Ex Parte Mazyar et al

Patent Trial and Appeal Board

Jan 26, 2017

13194271 (P.T.A.B. Jan. 26, 2017)

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.
13/194,271 07/29/2011 Oleg A. Mazyar TYI4-52087-US
(BAO0778US)
9581
44639 7590 01/30/2017
TANTOR TOT RTTRN T T P- RAKFR HTTrTHFS INFORPOR ATFF)
EXAMINER
20 Church Street
22nd Floor
BHUSHAN, KUMAR R
Hartford, CT 06103 ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLEG A. MAZYAR,1
Michael Johnson, Randall Guest, Nicholas Carrejo,
Wayne Furlan, Sean Gaudette, and Zhiyue Xu
Appeal 2015-003849
Application 13/194,271
Technology Center 1700
Before ROMULO H. DELMENDO, MARKNAGUMO, and
N. WHITNEY WILSON, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Oleg A. Mazyar, Michael Johnson, Randall Guest, Nicholas Carrejo,
Wayne Furlan, Sean Gaudette, and Zhiyue Xu (“Mazyar”) timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1—12 and 18—
24.3 We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Baker Hughes Incorporated.
(Appeal Brief, filed 28 October 2014 (“Br.”), 2.)
2 Office action mailed 30 May 2014 (“Final Rejection”; cited as “FR”).
3 Remaining copending claims 13—17 have been withdrawn from
consideration by the Examiner (FR 1, § 5a), and are not before us.
Appeal 2015-003849
Application 13/194,271
OPINION
A. Introduction4
The subject matter on appeal relates to composite particles said to be
useful for making downhole elements such as ball/ball seats or plugs that are
placed in a borehole to seal off the lower zones, e.g., in a hydraulic
fracturing process (also referred to as “fracking”). After the fracking
process is completed, the ball/ball seat is removed to retrieve the desired
fluids. (Spec. 1 [0001].) Rather than physically breaking up the plug, the
plug may be corroded in place {id. at [0002]) by exposing it to a corrosive
fluid such as aqueous brine, hydrogen sulfide, or hydrochloric acid
{id. at 5 [0016]). Mazyar seeks patent protection for a composite particle
said to provide a controllable corrosion rate without the need for fine
adjustment of alloy composition. {Id. at 2 [0005].)
The ’271 Specification explains that metals may be classified
according to their reactivity based on the saltwater galvanic series.
{Id. at 7 [0020].) As illustrated in Figure 1 A, reproduced on the following
page, the composite particles may comprise a high-reactivity core 1105, such
as magnesium (Mg), surrounded by layers of lesser reactivity, including, in
order: a shielding layer 120, such as aluminum (Al); a noble material layer,
referred to as the “metallic” layer 130, which has a lower reactivity than
4 Application 13/194,271, Method of controlling the corrosion rate of alloy
particles, alloy particle with controlled corrosion rate, and articles
comprising the particle, filed 29 July 2011. We refer to the
“’271 Specification,” which we cite as “Spec.”
5 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 13/194,271
core 110; and an optional “adhesion” layer 140, deposited on metallic
layer 130. {Id. at 4 [0013].) The adhesion layer is said to promote adhesion
between the composite particles. (Id.; 7 [0021].) The aluminum of shielding
layer 120 adjacent to core 110 alloys with the magnesium of the core to form
an intermetallic region 121 that is less reactive than the core but more
reactive than the aluminum in outer region 122. The Specification teaches
that a layer need not completely cover the underlying layer, so the layer
coverage can be said to be “discontinuous.” {Id. at 8 [0022].) Indeed, layers
may be “inter-dispersed,” meaning that “two or more adjacent layers
interpenetrate into or through each other in intimate admixture.” {Id.) An
illustration of a composite particles having distinct layers is provided by
Figure 1A, below left, while an illustration of a composite particle having
inter-dispersed layers is provided by Figure IB, below right.
(Fig. 1A shows a composite particle
with Mg core 100, intermetallic
layer 121, A1 layer 122, metallic
layer 130, and adhesive layer 140.
The layers may be discontinuous.}
(Fig. IB shows a composite particle
with core 110 and inter-dispersed
layers 150.}
The more-reactive layers are said to be anodic relative to cathodic,
less reactive layers. {Id. at 11 [0034].) Upon exposure to an electrolyte,
multiple localized corrosion mechanisms are said to take place, in which
reversal of anodic and cathodic regions occur, depending on what regions
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Application 13/194,271
are exposed. (Id. at [0035].) The Specification explains further that as the
corrosion advances, the corrosion regions “can corrode outward over the
surface of the composite particle and link to other micro-cells to form larger
corrosion regions, which in turn can link to other corrosion regions, etc.”
(Id. at 11—12 [0036].)
Such particles may be combined by cold compacting followed by
forging or sintering into articles such as a ball (see Fig. 3, not reproduced
here.) (Id. at 7 [0021]; 15 [0046].)
Claim 1 is representative and reads:
A composite particle, comprising:
a core,
a shielding layer deposited on the core, and
further comprising an interlayer region formed at an
interface of the shielding layer and the core,
the interlayer region having a reactivity less than that
of the core, and
the shielding layer having a reactivity less than that of
the interlayer region,
a metallic layer not identical to the shielding layer and
deposited on the shielding layer,
the metallic layer having a reactivity less than that of
the core, and
optionally, an adhesion metal layer deposited on the
metallic layer,
wherein at least one of the shielding layer, the interlayer
region, the metallic layer, and the optional adhesion metal
layer is discontinuous, and
wherein the composite particle is corrodible in the
presence of an electrolyte fluid.
(Claims App., Br. 24; some indentation, paragraphing, and emphasis added.)
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Application 13/194,271
Remaining independent claim 12 is similar, but limits the composition
of the core to a Mg-Al alloy; specifies that the shielding layer comprise
aluminum and requires that the interlayer region comprise y-MgnAl^ and
inclusions of alumina or magnesia; requires that the metallic layer deposited
on the shielding layer comprise certain metals; and requires that all recited
layers external to the core be inter-dispersed with one another. (Claims
App., Br. 25—26.)
The Examiner maintains the following grounds of rejection6,7’8:
A. Claims 1, 2, 4—11, 19, and 21—24 stand rejected under
35 U.S.C. § 102(a) or 35 U.S.C. § 103(a) in view of Xu9 or
Xu’953.10,11
6 Examiner’s Answer mailed 17 December 2014 (“Ans.”).
7 The application was filed before the effective date of the America Invents
Act, 16 March 2013, so we refer to the pre-AIA versions of Title 35 U.S.C.
8 The Examiner withdrew an objection and numerous rejections in response
to the Brief on Appeal. (Ans. 6—7.)
9 Zhiyue Xu and Gaurav Agrawal, Nanomatrix powder metal compact, U.S.
Patent Application Publication 2011/0132143 A1 (9 June 2011); issued as
U.S. Patent No. 9,101,978 on 11 August 2015. (ZX is a common inventor,
and Baker Hughes, Inc., is the common assignee.)
10 Zhiyue Xu et al., Coated metallic powder and method of making the same,
U.S. Patent Application Publication 2011/0135953 Al (9 June 2011);
a Notice of Allowance was mailed 17 November 2016). (ZX is a common
inventor, and Baker Hughes, Inc., is the common assignee.).
11 The paragraph numberings of the two Xu references differ slightly; the
Examiner appears to have cited Xu ’143. The contents of corresponding
paragraphs appear to be substantially identical. The Examiner does not cite
the references separately. We discourage strongly the needless citation of
cumulative references, which serves only to lessen the persuasive value of
the arguments.
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Al. Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Xu ’143 or Xu ’953 and
Bastow.12
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Anticipation requires that a reference describe, either expressly or
inherently, each and every claim limitation, arranged or combined as
required by the claimed invention. See, e.g., In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009). As a plurality of the predecessor to our reviewing
court explained, in a rejection for anticipation, “the . . . reference must
clearly and unequivocally disclose the claimed compound or direct those
skilled in the art to the compound without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the cited reference.” In reArkley, 455 F.2d 586, 587 (CCPA
1972), cited with approval, NetMoneyINInc. v. VeriSign Inc., 545 F.3d
1359, 1371 (Fed Cir. 2008). The court has held, “when the prior art
discloses a product which reasonably appears to be either identical with or
only slightly different than a product claimed in a product-by-process claim,
a rejection based alternatively on either section 102 or section 103 of the
statute is eminently fair and acceptable.” In re Brown, 459 F.2d 531, 535
(CCPA 1972) “As a practical matter,” the court explained, “the Patent
Office is not equipped to manufacture products by the myriad of processes
12 T.J. Bastow and S. Celotto, Clustering and formation of nano-precipitates
in dilute aluminium and magnesium alloys, 23 Mat. Sci. & Eng’g C 757—762
(2003).
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Application 13/194,271
put before it and then obtain prior art products and make physical
comparisons therewith.” Id.
Briefly, the Examiner finds that Xu “discloses a powder metal
compact” (FR 12,1. 20), where the metal particles have “core metals and the
coating layers may include metals such as Mg, Al, Cu, Fe, Ni, or alloys or
oxides, wherein the coating is a single layer or multilayer with the interlayer
formation (abstract, para. [0042]—[0059], claims, fig 1—5, 16).” (FR 13,
11. 2—5; emphasis added.) The Examiner determines that the reactivities and
other properties of the various layers are met because “the composite particle
of the Xu is the same as instantly claimed.” {Id. at 11. 6—11.) The Examiner
also determines, based on Kilpatrick13, that the limitations that at least one
layer is discontinuous and that the particles are corrodible are inherent.
{Id. at 12,11. 13—19.) Regarding claim 12, the Examiner finds that
the y-Mgi7Ali2 phase, and the conditions under which to make it were
known, as shown by Bastow. {Id. at 15,11. 12—15.) On this basis, the
Examiner concludes that it would have been obvious to form the y-phase in
the composite particles disclosed by Xu. {Id. at 11. 16—20.)
Mazyar urges that the rejections should be reversed because Xu does
not disclose or suggest the claimed composite particle having the core, the
interlayer region, the shielding layer, the metallic layer, and the optional
13 James M. Kilpatrick, Method and apparatus for determining corrosion
rate, U.S. Patent No. 3,406,101 (1968). Although not cited in the statement
of rejection, Kilpatrick is relied on as evidence and therefore should be cited
in the statement of the rejection. In re Hoch, 428 F.2d 1341, 1342 n.2
(CCPA 1970). Here, the omission amounts to harmless error in that Mazyar
addresses this reference and was not prejudiced.
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Application 13/194,271
adhesion metal layer. (Br. 18—19; elaborated in the Reply14, para,
bridging 2—3, stressing the generality of Xu’s disclosure.) More particularly,
with respect to claim 1, Mazyar argues that Xu does not describe or suggest
the requirement that at least one layer be discontinuous. (Br. 18, last para.)
With respect to claim 12, Mazyar urges that Xu does not teach or suggest
that the layers be inter-dispersed with each other {id. at 19,11. 11—13.)
The Examiner responds that Xu discloses the term “substantially
continuous” in paragraph [0064] (cited for the first time in the Examiner’s
Answer), which teaches that “complete continuity and regular order of the
nanomatrix around each dispersed particle 214 is not required.” (Ans. 8,
11. 3—10, quoting Xu.) As for the alumina and magnesia requirement, the
Examiner refers to the general disclosure of oxides, and to paragraph [0084]
(again, the first citation of record). (Ans. 11,11. 1—6.) As for the inter-
dispersed requirement, the Examiner responds that the limitation was
addressed in the Final Rejection at page 13 (Ans. 12,11. 2—3)15. Because the
particles described by Xu are formed by sintering, as shown by Xu,
paragraph [0084], which is, the Examiner finds, the same way Mazyar
prepares particles, the Examiner determines that the inter-dispersed
limitation must be met. (Ans. 11,11. 6—11.)
We have reviewed Xu, particularly paragraphs [0041]—[0059], [0064],
and [0084], mentioned by the Examiner. While we find generic descriptions
of many composite particles disclosed for similar ultimate uses, we are
14 Reply Brief filed 17 February 2015 (“Reply”).
15 The Final Rejection at page 13 does not appear to address sintering or the
inter-dispersed requirement of claim 12. We believe the Examiner may have
meant to refer to page 15 of the Final Rejection.
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Application 13/194,271
unable to discern a reasonably precise description of the particular class of
composite particles covered by the appealed claims. Indeed, the descriptions
in Xu are sufficiently generic that the particles here claimed may well be
encompassed by those disclosures. But, the Examiner’s findings are so
diffuse and attenuated we should be hard-pressed to discern reasons why the
generally cited disclosures of Xu would have directed the routineer to the
claimed subject matter on appeal. While it is true that Xu shares a common
inventor with the present application, and is assigned to the same real party-
in-interest, and that therefore Mazyar may be presumed, without prejudice,
to be fully aware of its teachings, these facts do not relieve the Examiner of
the burden of making findings of fact sufficient to show where and how Xu
describes the invention now claimed.
The appealed rejection has the form of a “hybrid” rejection, in which,
upon a showing that the prior art describes something so like the claimed
invention, the burden may be shifted to the applicant to show that the prior
art does not have the required properties. In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“[Wjhen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”). But because a prior art description of
the required shell structure has not been identified on the present record, the
burden has not been shifted to Mazyar.
The Examiner makes no findings in the course of addressing the
remaining limitations of the independent claims, or of the dependent claims,
that cure this fundamental defect. Moreover, as Mazyar points out
(Reply 5), merely demonstrating that Bastow shows that the y-MgnAl^
phase was known, and the conditions under which it could be caused to form
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Application 13/194,271
were known, does not establish that the routineer would have had the
motivation to adjust the conditions of formation of the composite particles
such that the y-phase would be formed.
The rejections based on Xu are reversed.
C. Order
It is ORDERED that the rejection of claims 1—12 and 18—24 is
reversed.
REVERSED
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