Ex Parte Patil et al

Patent Trial and Appeal Board

Jan 7, 2019

14636964 (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/636,964
15604 7590
Baker Botts L.L.P.
FILING DATE
03/03/2015
01/09/2019
910 Louisiana Street, One Shell Plaza
Houston, TX 77002
FIRST NAMED INVENTOR
Rahul Chandrakant Patil
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.
201 l-IP-048040 UlDlCl 4031
EXAMINER
RUNYAN, SILVANAC
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
01/09/2019 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):
susan.stewart@bakerbotts.com
debie.hernandez@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAHUL CHANDRAKANT PATIL,
SANDIP PRABHAKAR PATIL, SOHINI BOSE, ASHOK K. SANTRA,
and BALASUNDARAM BALARAMAN
Appeal2017-006402
Application 14/636,964 1
Technology Center 3600
Before BENJAMIN D. M. WOOD, LYNNE H. BROWNE, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
decision, as set forth in the Final Office Action dated June 22, 2016 ("Final
Act."), and as further explained in the Advisory Action dated August 12,
2016, rejecting claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant is the Applicant, Halliburton Energy Services, Inc., which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 2.
Appeal2017-006402
Application 14/636,964
BACKGROUND
The disclosed subject matter "generally relates to cement
compositions and methods for cementing wells." Spec. ,r 2. Claims 1 and
11 are independent. Claim 1 is reproduced below, with emphasis added to
the limitation at issue:
Kirkland
Keys
1. A method of cementing a treatment zone of
a well, the method comprising the steps of:
(A) forming a cement composition
compnsmg:
(i) hydraulic cement, wherein the
hydraulic cement has a ratio of CaO to Si02
from about 0.5 to about 2.0;
(ii) a water-soluble metaphosphate in
a concentration of at least 2.5% bwoc; and
(iii) water;
wherein the cement compos1t10n is
substantially free of any alkali hydroxide,
alkali carbonate, and alkali citrate; and
(B) introducing the cement composition into
the well.
EVIDENCE RELIED ON BY THE EXAMINER
us 4,784,693
US 2010/0240556 Al
Nov. 15, 1988
Sept. 23, 2010
American Concrete Institute Committee 233, Ground Granulated Blast-
Furnace Slag as Cementitious Constituent in Concrete, ACI 233R-95 (2000)
("ACI 233R-95").
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Application 14/636,964
REJECTIONS
1. Claims 1---6, 8-16, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Keys and ACI 233R-95.
2. Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Keys, ACI 233R-95, and Kirkland.
DISCUSSION
Rejection 1 - Claims 1-6, 8-16, 18, and 19
Appellant argues the patentability of the two independent claims in
this rejection----claims 1 and 11-as a group and does not provide separate
arguments for any dependent claims. Appeal Br. 4--9; Reply Br. 2--4. We
select independent claim 1 as representative, with the remaining claims
standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
As to the limitation at issue (shown with emphasis above), the
Examiner stated that, in Table 1, Keys discloses a "cement chemical
composition compris[ing] ... CaO and Si0[2]" but stated that Keys "is silent
regarding a ratio of CaO to Si[02] from about 0.5 to about 2.0" as recited.
Final Act. 3, 4 (certain emphasis omitted). The Examiner found, however,
that "ACI 233R-95 teaches a ratio of CaO to Si[02] from about 0.5 to about
2.0," citing Table 1.1 and stating that ACI 233-95 discloses the limitation at
issue by describing "range[ s] of chemical composition[ s] of Blast furnace
slags [with] CaO in the range of 32-45 and Si0[2] in the range 32-43,
therefore for instant [sic] CaO: Si0[2] 1: 1." Id. at 4; see also ACI 233R-95
at 233R-3 (Table 1.1 ). According to the Examiner, it would have been
obvious for one of ordinary skill in the art at the time of the invention "to
modify the method of Keys, wherein a ratio of CaO to Si[02] from about
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0.5 to about 2.0, as taught by ACI 233[R]-95 in order to have a ready-mixed
concrete. (602 Ready-mixed concrete)." Final Act. 4. 2
A.
First, Appellant argues that the Examiner has "fail[ ed] to establish a
prima facie case of obviousness with respect to independent claim[]
1 ... because ... the combination of Keys and ACI 233-R95 does not
disclose all limitations of claim[] 1." Appeal Br. 4. 3 Specifically, Appellant
contends that "[n]either Keys nor ACI 233-R95 discloses forming a cement
composition that comprises a hydraulic cement having 'a ratio of CaO to
Si02 from about 0.5 to about 2.0"' as recited in the limitation at issue. Id.
Appellant argues (1) that "Table 1.1. of ACI 233-R95 discloses that 'blast-
fumace slags'-not hydraulic cements-may have a ratio of CaO to Si02 of
about 1.0" and (2) that "ACI 233-R95 teaches that these slags are one of
many cementitious materials incorporated into hydraulic cements." Id. at 5.
According to Appellant, "[ t ]he other cementitious materials included along
with these slags, such as portland cement, have different CaO to Si02
ratios," and thus, "the hydraulic cements comprising both the slag and other
cementitious materials disclosed in ACI 233-R95 that are used for [sic] form
cement compositions would not necessarily have the same CaO to Si02 ratio
as the slags of Table 1.1 themselves." Id.
2 The meaning of "602" in the Examiner's reasoning statement is
unclear. We note, however, that ACI 233R-95 includes a section "6.2-
Ready-mixed concrete" in the discussion (in Chapter 6) of "Uses of [Ground
Granulated Blast Furnace] Slag in Concrete and Mortar." ACI 233R-95 at
233R-15 (capitalization modified).
3 For quotations from Appellant's briefing, we omit italicization from
the names of the references.
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Application 14/636,964
The Examiner responds in two ways. The Examiner first notes that
paragraph 66 of the Specification "expressly states: 'Slag cement (also
known as ground granulated blast-furnace slag or "GGBFS", is a
hydraulic cement."' Ans. 2 ( emphasis added by the Examiner). According
to the Examiner, "[t]hus, the blast-furnace slag taught in ACI 233-R95
having a ratio ofCaO to Si02 of about 1.0 (e.g., see Table 1.1) is a
hydraulic cement, according to Appellant's own definition." Id. at 3. In
the alternative, the Examiner states that "ACI 233-R95 expressly teaches a
'slag cement' (i.e., a hydraulic cement) that is a combination of ground
granulated blast-furnace (GGBF) slag and Portland cement and contains '70
percent or more GGBF slag."' Ans. 3 ( citing ACI 233-R95 at 233R-4).
According to the Examiner, "[t]his teaching includes slag cements that
contain 99 percent GGBF slag having a ratio of CaO to Si02 of about 1.0
(e.g., see Table 1.1) and 1 percent Portland cement." Id. The Examiner
states that "Appellant admits that Portland cement typically has a ratio of
CaO to Si02 of less than 4.0." Id. (citing Spec. ,r 56).
We agree with Appellant that Table 1.1 of ACI 233-R95 shows ranges
for the chemical constituents of blast-furnace slags-not of a "hydraulic
cement" as recited in the limitation at issue. See ACI 233-R95 at 233R-3.
As to the Examiner's discussion of paragraph 66 of the Specification, we
understand the statement "also known as ground granulated blast-furnace
slag or 'GGBFS "' to refer to only the "Slag" portion of "Slag cement" rather
than to the entire phrase "Slag cement." In other words, we do not
understand the first sentence of paragraph 66 as defining "ground granulated
blast-furnace slag" as a "hydraulic cement." Instead, we agree with
Appellant's view that ACI 233-R95 teaches that slag is one component of a
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hydraulic cement. See Appeal Br. 5 (citing, e.g., ACI 233-R95 at Abstract
("This report primarily addresses the use of GGBF slag as a separate
cementitious material added along with portland cement in the production of
concrete." (emphasis added)). The Specification reflects this understanding,
disclosing, for example, that in certain situations, "slag is added to the
cement or to the concrete mix." Spec. ,r 61.
Turning to the Examiner's alternative response, however, we see no
error in the finding-which was not addressed by Appellant in the Reply
Brief-that ACI 233-R95 "expressly teaches a 'slag cement' (i.e., a
hydraulic cement) that is a combination of ground granulated blast-furnace
(GGBF) slag and Portland cement and contains '70 percent or more GGBF
slag."' Ans. 3 ( citing ACI 233-R95 at 233R-4). Although ACI 233-R95
does not expressly disclose the ratio of CaO to Si02 in the "slag cement"
itself, we see no error in the Examiner's finding-which is supported by
scientific reasoning and was not addressed by Appellant in the Reply
Brief-that the relied-upon teachings inherently include a "slag cement"
with an overall ratio of CaO to Si02 within the recited range. See Ans. 3; Ex
parte Whalen, 89 USPQ2d 1078, 1083 (BP AI 2008) (precedential)
(requiring an examiner to provide a basis in evidence or scientific reasoning
to support a finding that a characteristic is inherently present in the prior art).
B.
Second, Appellant presents two arguments as to why the Examiner
has allegedly "fail[ ed] to establish a prima facie case of obviousness with
respect to independent claim[] 1" because:
the Examiner fail[ ed] to account for differences in the prior art,
pointed out by Appellant, that demonstrate that there is
insufficient rationale as to why one of ordinary skill in the art
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would combine Keys with ACI 233-R95 to arrive at the subject
matter recited in Appellant's claims with a reasonable
expectation of success.
Appeal Br. 4.
As the first argument addressing the Examiner's stated reason to
combine, Appellant argues that "one of ordinary skill in the art would not
have been motivated to modify the hydraulic cement compositions of Keys
to have a ratio of CaO to Si02 from about 0.5 to about 2.0 as taught by ACI
233-R95 because doing so would require proceeding contrary to the teaching
of Keys." Id. at 7-8. Appellant argues that the proposed modification
"would change the principle of operation of Keys because the resulting
cement composition would no longer comprise a calcium aluminate cement
as taught in all embodiments of Keys." Id. at 8 (citing MPEP
§ 2143.0l(VI)). According to Appellant, "Keys is directed to cement
compositions comprising a very specific type of hydraulic cement (i.e.,
calcium aluminate cement)" and"[ c ]alcium aluminate cement is well-known
in the art to have a higher ratio of CaO to Si02 than other hydraulic cement
types such as portland cement and slag cement." Id. at 6 ( citing Keys,
Abstract; Spec. ,r,r 56, 66). Appellant argues that, although Table 1 of Keys
would appear to include a ratio of CaO to Si02 of 1: 1, "such a CaO to Si02
ratio is contrary to the remainder of the disclosure in Keys." Id. at 7.
Appellant argues that the "lowest ratio of CaO to Si02 of the hydraulic
cements disclose[d] in Keys is 2.5, which is outside the claimed range of
'about 0.5 to about 2.0. "' Id. ( discussing Keys ,r,r 10, 11 and Table 1 ).
The Examiner responds:
even though the ratio of CaO to Si02 in the hydraulic cements
of Keys would be modified in light of the teachings of ACI
233-R95, the primary use of the cement (i.e., pouring the
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cement/ concrete into well bore and allowing the
cement/concrete to set in order to fix in place the casing within
the wellbore) is unaffected.
Ans. 4.
Appellant replies that under "the Examiner's logic, it would be
obvious to use any cement composition for any cementing operation with a
reasonable expectation of success." Reply Br. 2-3. According to Appellant,
the stated motivation to combine Keys and ACI 233-R95 "is too broad and
ignores the specific principle of operation and teachings related to the
calcium aluminate cement compositions of Keys." Id. at 3.
A proposed modification that changes the "basic principles under
which the [prior art] was designed to operate" may not support a conclusion
of obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We are not
apprised of error based on this argument, however, because Appellant has
not adequately explained why modifying the ratio of CaO to Si02 in Keys
based on ACI 233-R95 would change the principle of operation of Keys.
That certain characteristics of the modified "hydraulic cement" may differ
from the characteristics of the cements disclosed in Keys (e.g., in that the
modified "cement" would satisfy the claimed ratio) does not necessarily
demonstrate that the proposed modification would change the principle of
operation of Keys.
Further, to the extent that Appellant asserts error because Keys alone
does not disclose the claimed ratio, nonobviousness cannot be established by
attacking references individually when the rejection is based on the
teachings of a combination of prior art references. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner relies on the
combination of Keys and ACI 233-R95 to address the claimed ratio.
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We tum now to the second argument addressing the Examiner's stated
reason to combine, in which Appellant argues:
one of ordinary skill in the art would not have reasonably
expected that the cement compositions of Keys would set
quickly if the calcium aluminate cement was replaced with the
slag of ACI 233-R95 in order to achieve a ratio of CaO to Si02
from about 0.5 to about 2.0 because slag is known in the art to
increase the setting time.
Appeal Br. 8. In support, Appellant states (1) that ACI 233-R95 "teaches
that 'an increase in time of setting can be expected when GGBF slag is used
as a replacement for part of the portland cement in concrete mixtures"'
(Appeal Br. 8 (quoting, with emphasis added, ACI 233-R95 at 233R-7)) and
(2) that, "[i]n contrast, Keys teaches that calcium aluminate cements when
combined with the other components of the cement compositions disclose
therein 'form quick setting cement compositions"' (id. (quoting, with
emphasis added, Keys ,r 5) ). Appellant also argues that "Keys is more
specifically directed to incorporating specific set retarding agents into the
cement compositions comprising calcium aluminate cement so that they
'display predictable thickening times."' Appeal Br. 8 ( quoting Keys ,r 6).
According to Appellant, because:
Id.
the cited prior art references teach that the use of different
cementitious materials affect the properties of the cement
compositions, one of ordinary skill in the art would not have
reasonably expected the same set [ of] retarding agents to
successfully control the thickening times in both the calcium
aluminate based cements of Keys and modified cement
compositions having a lower ratio of CaO to Si 0 2.
We are not apprised of error based on this argument because
Appellant has not identified evidence supporting the assertions as to what
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one of ordinary skill in the art would have "reasonably expected" in the
context of either of the block quotations in the prior paragraph. Appeal Br.
8; see In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's
argument in a brief cannot take the place of evidence.").
Moreover, even assuming that the modified "cement" would have had
an increased setting time as compared to the compositions in Keys,
Appellant has not shown that Keys' s reference to "quick setting cement
compositions" (Keys ,r 5) would have dissuaded one of ordinary skill in the
art from the proposed modification. See Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine"); DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not
teach away ... if it merely expresses a general preference for an alternative
invention but does not 'criticize, discredit, or otherwise discourage'
investigation into the invention claimed." (quoting In re Fulton, 391 F.3d
1195, 1201 (Fed Cir. 2004))).
For the reasons above, we sustain the rejection of independent claim
1. Claims 2---6, 8-16, 18, and 19 fall with claim 1.
Rejection 2 - Claims 7 and 17
For this rejection, Appellant argues that claims 7 and 17 are allowable
based on their dependence from claims 1 and 11, respectively. See Appeal
Br. 9; Reply Br. 4. Appellant does not provide additional arguments for
claims 7 and 1 7. For the reasons discussed above, we are not apprised of
error in the rejection of claims 1 and 11. See supra Rejection 1. As such,
we sustain the rejection of claims 7 and 17.
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DECISION
We affirm the decision to reject claims 1-19 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv); 37 C.F.R. § 41.50(±).
AFFIRMED
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