Ex Parte Patil et alDownload PDFPatent Trials and Appeals BoardJan 7, 201914636964 - (D) (P.T.A.B. Jan. 7, 2019) Copy Citation 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"). 2 Appeal2017-006402 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 3 Appeal2017-006402 Application 14/636,964 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. 4 Appeal2017-006402 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 5 Appeal2017-006402 Application 14/636,964 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 6 Appeal2017-006402 Application 14/636,964 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 7 Appeal2017-006402 Application 14/636,964 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. 8 Appeal2017-006402 Application 14/636,964 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 9 Appeal2017-006402 Application 14/636,964 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. 10 Appeal2017-006402 Application 14/636,964 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 11 Copy with citationCopy as parenthetical citation