Ex Parte Mazyar et alDownload PDFPatent Trial and Appeal BoardJan 26, 201713194271 (P.T.A.B. Jan. 26, 2017) Copy Citation 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2.) 2 Office action mailed 30 May 2014 (“Final Rejection”; cited as “FR”). 3 Remaining copending claims 13—17 have been withdrawn from consideration by the Examiner (FR 1, § 5a), and are not before us.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. 2 Appeal 2015-003849 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 3 Appeal 2015-003849 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.) 4 Appeal 2015-003849 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. 5 Appeal 2015-003849 Application 13/194,271 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). 6 Appeal 2015-003849 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. 7 Appeal 2015-003849 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. 8 Appeal 2015-003849 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 9 Appeal 2015-003849 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 10 Copy with citationCopy as parenthetical citation