Ex Parte Vargo et al

Patent Trial and Appeal BoardSep 17, 2014

12785136 (P.T.A.B. Sep. 17, 2014)

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. 12/785,136 05/21/2010 Richard F. Vargo JR. HES 2003-IP-013019U1P1D1 1246 50401 7590 09/17/2014 HALLIBURTON ENERGY SERVICES, INC. C/O Conley Rose, P.C. 5601 Granite Parkway, Suite 500 Plano, TX 75024 EXAMINER ABU ALI, SHUANGYI ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 09/17/2014 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 RICHARD F. VARGO JR. and DAVID S. KULAKOFSKY ____________ Appeal 2012-012555 Application 12/785,136 Technology Center 1700 ____________ Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1, the only independent claim, is illustrative of the claimed subject matter: 1. A method of servicing a wellbore comprising: Appeal 2012-012555 Application 12/785,136 2 (a) transporting to a worksite proximate the wellbore a liquid additive comprising a quantity of lightweight beads and a quantity of liquid; (b) preparing a pumpable cement composition comprising the liquid additive, cement, and optionally one or more additional liquids or additives; (c) placing the cement composition in the wellbore; and (d) allowing the cement composition to set. The Examiner maintains, and Appellants appeal, the following rejections under 35 U.S.C. § 103(a): 1. claims 1-7, 14, and 18-20 as being unpatentable over the combined prior art of Messenger (US Patent No. 3,902,911 issued Sept. 2, 1975), Wong (ARNOLD WONG & M.J. ARCO, USE OF HOLLOW GLASS BUBBLES AS A DENSITY REDUCING AGENT FOR DRILLING 1 (CADE/CAODC Drilling Conference 2001)), and Burkhalter (US Patent No. 5,151,131 issued Sept. 29, 1992). 2. claims 18-13 as being unpatentable over the combined prior art of Messenger, Wong, Burkhalter, and Mikolajczyk (US Patent No. 4,416,547 issued Nov. 22, 1983); and 3. claims 15-17 as being unpatentable over the combined prior art of Messenger, Wong, Burkhalter, and Lantz (US Patent No. 4,624,575 issued Nov. 25, 1986). Appellants state that “dependent claims 2-20 stand or fall with independent claim 1” (Reply Br. 5 n.1). ANALYSIS We have reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the claimed subject Appeal 2012-012555 Application 12/785,136 3 matter of representative claim 1 is unpatentable under § 103(a) in view of the applied prior art for the reasons set out by the Examiner in the Answer. Accordingly, we will sustain the Examiner’s prior art rejections, and we add the following primarily for emphasis. In assessing whether a claim to a combination of prior art elements or steps would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Appellants’ main argument is that there would have been no reason to mix the known microspheres additive with liquid and transport it to the worksite for mixing with cement at the oilfield worksite because Messenger teaches “the hollow glass spheres must be blended with dry cement and ASMS prior to the addition of water” (App. Br. 8) and thus teaches away from the claimed steps (e.g., id. at 7-11; Reply Br. generally). This argument is not persuasive. Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Appeal 2012-012555 Application 12/785,136 4 Moreover, it is well settled that, in a section 103 inquiry, “[a]ll the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citations omitted).1 In re Preda, 401 F.2d 825, 826 (CCPA 1968) (In evaluating references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.) There is no dispute that Messenger teaches that a mixture of cement, water, and lightweight beads (hollow glass microspheres which are added to reduce the density of the cement) may be used for treating a wellbore. Contrary to Appellants’ position, however, Messenger does not teach that the hollow glass microspheres must be blended with dry cement and ASMS prior to the addition of water. Rather, Messenger teaches that the ASMS, which solves the problem of microspheres breaking when the cement is mixed with water, “should be mixed with the portland cement prior to the mixing of the cement with water” (col. 5, ll. 60-62). Messenger further teaches that the hollow spheres “are desirably added” (col. 5, l. 68; emphasis added) to the dry cement “to provide a convenient packaged cement mixture” (col. 6, ll. 27-28). 1 See also In re Boe, 355 F.2d 961, 965 (CCPA 1966) (“All of the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art. Thus, . . . this court affirmed rejections based on art which we concluded rendered the claimed invention obvious to those of ordinary skill in the art despite the fact that the art teachings relied upon in all three cases were phrased in terms of a non-preferred embodiment or as being unsatisfactory for the intended purpose.”) Appeal 2012-012555 Application 12/785,136 5 The Examiner finds that Wong also exemplifies that hollow glass spheres were known additives to water/drilling fluids for wellbore applications to reduce the density thereof (Answer 3, 4; Wong generally). The Examiner further finds that Burkhalter teaches it was known that cement was normally “field prepared,” with liquid additives transported to the worksite for mixing with dry cement (Answer 4; Burhalter, col 1, ll. 12-22 and ll. 50-68). These findings are supported by the evidence. Accordingly, one of ordinary skill in the art would have weighed the benefits of bringing a liquid additive with microspheres therein (e.g., as exemplified by the combined prior art of Wong/Burkhalter) to the worksite versus the desirability of a convenient package dry cement mixture with the microspheres therein. In light of this, Appellants have not provided persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably transported known ingredients such as liquid containing microspheres in Wong to the worksite as exemplified in Burkhalter for preparing the cement slurry at the worksite, and with the resultant mixing of the liquid/microsphere additive with cement in the order recited in Messenger (e.g., Ans. 4-6; generally App. Br.; Reply Br.). See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellants rely upon the arguments for claim 1 for all the remaining claims, even those claims separately rejected. Therefore, we affirm the Examiner’s § 103 rejections of all the claims on appeal for the reasons set forth above and in the Answer. Appeal 2012-012555 Application 12/785,136 6 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 bar