HALLIBURTON ENERGY SERVICES, INC.

Patent Trials and Appeals Board

Nov 16, 2021

2020006541 (P.T.A.B. Nov. 16, 2021)

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.
14/414,658 01/13/2015 David L. Perkins 2013-083545 U1 US 9404
142050 7590 11/16/2021
HALLIBURTON ENERGY SERVICES, INC.
C/O PARKER JUSTISS, P.C.
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
11/16/2021 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID L. PERKINS,
ROBERT PAUL FREESE, CHRISTOPHER MICHAEL JONES,
and RICHARD NEAL GARDNER
____________

Appeal 2020-006541
Application 14/414,658
Technology Center 1700
____________
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–28 of Application 14/414,658. Final
Act. (November 29, 2019). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Halliburton Energy Services, Inc. as the real party in interest.
Appeal Br. 3.
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I. BACKGROUND
The interaction of light with a substance can change the properties
(e.g., the frequency, intensity, polarization, and/or direction) of the light.
Spec. ¶ 2. These changes are related to the properties of the substance and
can be useful in the analysis of crude petroleum, gas, water, or other
wellbore fluids encountered in oil field operations. Id.
An integrated computational element (ICE) provides one way to
obtain information about the interaction of light with a particular substance.
Id. ¶ 3. An ICE can be an optical substrate with multiple stacked dielectric
layers. Id. Each layer has a different complex refractive index—i.e., a
refractive index having both real and imaginary components—from its
neighboring layers. Id. The specific number of layers, their optical
properties, the optical properties of the substrate, and the thickness of each
of the layers are chosen so that light processed by the ICE reveals something
about the sample. Id. An ICE extracts the information from the light
modified by the sample passively. Id. Thus, an ICE can be incorporated in a
low-cost, rugged optical analysis tool. Id.
The ’658 Application describes methods for making ICEs that are said
to reduce manufacturing errors that degrade ICE performance. Id. ¶ 4.
Claim 1 is representative of the ’658 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix. We have
italicized the key limitation at issue in this appeal.
1. A method comprising:
receiving, by a fabrication system, a design of an
integrated computational element (ICE), the ICE design
comprising specification of a substrate and a plurality of layers,
their respective constitutive materials, target thicknesses and
complex refractive indices, wherein complex refractive indices
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of respective materials of adjacent layers are different from
each other, and wherein the ICE fabricated in accordance with
the ICE design is related to a characteristic of a sample;
forming, by the fabrication system, one or more layers of
the plurality of layers of the ICE in accordance with the ICE
design, such that the formed one or more layers comprise
corresponding one or more materials from among the specified
constitutive materials of the ICE;
measuring, by a measurement system associated with the
fabrication system, at two or more temperatures, characteristics
of probe-light provided by the measurement system and
interacted with the one or more formed layers;
determining, by the fabrication system, temperature
dependencies of one or more complex refractive indices of the
corresponding one or more materials of the formed layers using
the measured characteristics; and
updating, by the fabrication system, the received ICE
design based on the determined temperature dependencies of
the one or more complex refractive indices.
Appeal Br. 19 (emphasis added).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–3, 27, and 28 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Myrick2 and Kitagawa.3 Final Act. 3.

2 US 7,138,156 B1, issued November 21, 2006.
3 US 2003/0142407 A1, published July 31, 2003.
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2. Claim 26 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Myrick, Kitagawa, and Filmetrics.4 Final Act. 6.
3. Claims 4–13 and 18–25 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Myrick, Kitagawa, and Jaing.5 Final
Act. 7.
4. Claims 14–17 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Myrick, Kitagawa, Jaing, and Hunter.6
Final Act. 11.
III. DISCUSSION
A. Rejection of claims 1–3, 27, and 28 over Myrick and Kitagawa
Appellant argues for reversal of this rejection based upon the
limitations of claim 1. Appeal Br. 5–12. Claims 2, 3, 27, and 28 are said to
be patentable based upon their dependence from claim 1. Id. at 12. We,
therefore, choose claim 1 as representative of the group of claims subject to
this ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Appellant argues that this rejection should be reversed because the
Examiner has not established a prima facie case that the subject matter of
claim 1 would have been obvious to a person having ordinary skill in the art.
Id. at 5–12. In particular, Appellant argues that the Examiner erred by
finding that Kitagawa describes or suggests the step of determining the

4 Filmetrics, Inc., Taking the Mystery Out of Thin-Film Measurement,
(2012).
5 US 6,466,308 B1, issued October 15, 2002.
6 US 2008/0170842 A1, published July 17, 2008.
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temperature dependencies of one or more complex indices of refraction of
the corresponding one or more materials of the formed layers. Id. at 5–6.
In rejecting claim 1, the Examiner found that Myrick does not
describe or suggest measurement of a formed layer or layers at two or more
temperatures. Final Act. 4. The Examiner further found that Kitagawa
describes measuring the probe light’s interaction with one or more formed
layers over at least two deposition temperatures. Id. at 5. The Examiner also
found that Kitagawa describes determining the temperature dependencies of
one or more complex refractive indices of the corresponding one or two
materials of the formed layers using the measured characteristics. Id. (citing
Kitagawa ¶¶ 31, 36).
We agree with Appellant that the Examiner reversibly erred by so
finding.
As an initial matter, Appellant and the Examiner disagree regarding
whether Kitagawa’s apparatus is even capable of measuring the temperature
of the substrate and/or the deposited layers. Compare Appeal Br. 8–10, with
Answer 4. Appellant argues that Kitagawa’s instrument cannot measure
temperatures because there is no mention of this capability in Kitagawa and
Kitagawa’s brief discussion of the structure of the apparatus does not
identify any temperature measuring means. Appeal Br. 8 (citing Kitagawa
¶ 70, Fig. 7). The Examiner infers that Kitagawa’s apparatus can measure
substrate temperature from Kitagawa’s statement that the substrate’s
temperature rose 14°C during a sample deposition. Answer 4 (citing
Kitagawa ¶ 64; Fig. 3).
We determine that Appellant has not demonstrated that the Examiner
erred in finding that Kitagawa’s apparatus can measure substrate
temperatures. The data reported in Figure 3—a graph of substrate
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temperature as a function of time—and summarized in Kitagawa’s
paragraph 64 support the Examiner’s inference that Kitagawa’s apparatus
includes some means of measuring substrate temperature.
Next, Appellant argues that Kitagawa does not describe determining
the temperature dependencies of one or more complex refractive indices of
the corresponding one or more materials of the formed layers. Appeal Br. 5–
12.
The Examiner responds that Kitagawa describes measuring the
transmittance of the substrate during a deposition process and is capable of
monitoring the substrate’s temperature. Answer 3. Based upon these factual
determinations, the Examiner found that Kitagawa establishes a dependence
between the temperature and the complex refractive index. Id. at 4.
Having reviewed Kitagawa’s disclosure we are persuaded by
Appellant’s argument. Kitagawa teaches monitoring changes in the
substrate’s transmittance as a way to determine when the substrate’s
temperature stops changing. Kitagawa ¶ 9. In describing this process,
Kitagawa does not discuss monitoring the substrate’s actual temperature. Id.
In other words, Kitagawa does not describe correlating any particular
complex refractive index with the observed temperature. Thus, the
Examiner’s finding that Kitagawa describes determining the temperature
dependence of the complex refractive index is not adequately supported by
the evidence.
First, Kitagawa describes monitoring transmittance, not the complex
refractive index. Although transmittance is a function of the complex
refractive index, Kitagawa never describes determining the complex
refractive index for the observed transmittance.
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Second, Kitagawa never describes correlating either the observed
transmittance or the complex refractive index with the actual temperature of
the substrate. The only relationship described or used in Kitagawa is the
proposition that when the change in transmittance is zero, the change in
temperature also is zero. Kitagawa neither mentions nor relies upon the
actual substrate temperature in making this determination. Indeed,
Kitagawa’s intention is to use the change in transmittance as a substitute
from monitoring substrate temperature.
Based on these facts, we find that Kitagawa would have neither
described nor suggested to a person having ordinary skill in the art at the
time of filing that determining the complex refractive index is a function of
temperature.
In view of the foregoing, we surmise that the Examiner’s finding that
Kitagawa describes determining the refractive index is a function of
temperature is based upon an impermissible hindsight reconstruction of the
claimed invention. We, therefore, reverse the rejection of claim 1.
Accordingly, we also reverse the rejection of claims 2, 3, 27, and 28.
B. Rejection of claim 26 over Myrick, Kitagawa, and Filmetrics
Appellant’s sole argument for reversal of this rejection is that
Filmetrics does not cure the defects in the rejection of claim 1. Appeal Br.
12–13.
As discussed above, we have reversed the rejection of claim 1. The
Examiner has not found that Filmetrics describes or suggests those elements
of claim 1 not described or suggested in the combination of Myrick and
Kitagawa. See Answer 4. Thus, we also reverse the rejection of claim 26.
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C. Rejection of claims 4–13 and 18–25 over Myrick, Kitagawa, and
Jaing
Claims 4–13 and claims 18–25 depend from claim 1. As discussed
above, we have reversed the rejection of claim 1 because the Examiner has
not established a prima facie case that claim 1’s subject matter would have
been obvious to a person having ordinary skill in the art. See § III.A. In
rejecting claims 4–13 and 18–25, the Examiner did not find that Jaing cures
the defects we have determined are present in the rejection of claim 1. See
Final Act. 7–11.
We, therefore, reverse the rejection of claims 4–13 and 18–25 as
unpatentable over the combination of Myrick, Kitagawa, and Jaing.
D. Rejection of claims 14–17 as unpatentable over Myrick, Kitagawa,
Jaing, and Hunter
Claims 14–17 depend from claim 13. Appellant’s sole argument for
reversal of the rejection of claims 14–17 is that Hunter does not cure the
defects in the prima facie case that claim 13 would been obvious. Appeal Br.
17.
As discussed in § III.C, supra, we have reversed the rejection of claim
13 because the combination of Myrick, Kitagawa, and Jaing does not
describe all of the elements of claim 1 from which claim 13 depends. Here,
the Examiner did not find that Hunter describes or suggests the elements
missing from the prima facie case that claim 1 would have been obvious. See
Answer 6–7. Thus, we also reverse the rejection of claims 14–17.
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IV. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–3, 27, 28 103 Myrick, Kitagawa 1–3, 27, 28
26 103 Myrick, Kitagawa, Filmetrics 26
4–13, 18–25 103 Myrick, Kitagawa, Jaing 4–13, 18–25
14–17 103 Myrick, Kitagawa, Jaing, Hunter 14–17
Overall Outcome 1–28
REVERSED