HALLIBURTON ENERGY SERVICES, INC. et al.

Patent Trials and Appeals Board

May 17, 2021

2020002671 (P.T.A.B. May. 17, 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.
14/889,955 11/09/2015 Gao Li 164.2011-IP-047916 U1 US 9531
138627 7590 05/17/2021
Gilliam IP PLLC (Halliburton)
7200 N. Mopac
Suite 440
Austin, TX 78731
EXAMINER
CASEY, LIAM R
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
05/17/2021 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):
uspto@gilliamip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LI GAO, MICHAEL T. PELLETIER,
JAMES MASINO, and MARK ANTON PROETT
Appeal 2020-002671
Application 14/889,955
Technology Center 2800
Before KAREN M. HASTINGS, DEBRA L. DENNETT, and
JANE E. INGLESE, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

1 In our Decision, we refer to the Specification (“Spec.”) of Application
14/889,955 filed Nov. 9, 2015 (“’955 App.”); the Final Office Action dated
July 11, 2019 (“Final Act.”); the Appeal Brief filed Oct. 11, 2019 (“Appeal
Br.”); the Examiner’s Answer dated Dec. 16, 2019 (“Ans.”); and the Reply
Brief filed Feb. 18, 2020 (“Reply Br.”).
Appeal 2020-002671
Application 14/889,955

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1; Appeal Br. 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The subject matter of the invention relates to analysis of downhole
fluids in a geological formation to determine fluid viscosity. Spec. ¶ 1. The
inventors contend that understanding and analyzing the physical properties
of the formation fluid(s) of a hydrocarbon producing well is useful in
evaluating the well’s commercial value. Spec. ¶ 3. According to the
Specification, density and viscosity of formation fluids are important
physical properties to be analyzed. Spec. ¶ 5. The Specification indicates
that the density of a formation fluid can help identify the type of fluid (gas,
oil, or water) present in the formation, and the viscosity may directly affect
the producibility and economic viability of a well. Spec. ¶ 5. The
Specification describes direct measurement and simultaneous determination
of both density and viscosity of formation fluids as desirable. Spec. ¶ 5.
The invention relates to a method of directly measuring the resonance
frequency and resonance quality factor (Q) in a vibrating tube density
sensor, and using the measured resonance frequency to calculate fluid
density, and the measured Q value and calculated density to calculate
viscosity. Spec. ¶ 36.

2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Halliburton Energy Services, Inc.
Appeal Br. 2.
Appeal 2020-002671
Application 14/889,955

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Claim 1, reproduced below, illustrates the claimed subject matter:
1. A method for determining the density and viscosity of a
fluid, comprising:
receiving a fluid sample into a sample tube of a
measurement device;
determining a resonant frequency and a quality factor (Q
value) of the tube containing fluid;
calculating a density of the fluid using the resonant
frequency;
calculating a viscosity of the fluid such that the Q value
scaled by the density is proportional to the inverse square root
of a density-viscosity product.
Appeal Br. 19 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Name Reference Date
Storm, JR. et al.
(“Storm”)
US 2002/0184940 A1 Dec. 12, 2002
Loose et al. (“Loose”) US 2005/0159904 A1 July 21, 2005
Sinha US 2009/0084178 A1 Apr. 2, 2009
Ramkumar et al.
(“Ramkumar”)
US 2013/0192349 A1 Aug. 1, 2013
Seppa et al. (“Seppa”) US 2013/0336095 A1 Dec. 19, 2013
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103:
A. Claims 1–6, 9–11, 13–15, 18, and 19 over Storm in view of
Seppa;
Appeal 2020-002671
Application 14/889,955

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B. Claims 7 and 16 over Storm in view of Seppa, and further in
view of Sinha;
C. Claims 8 and 17 over Storm in view of Seppa, and further in
view of Loose; and
D. Claims 12 and 20 over Storm in view of Seppa, and further in
view of Ramkumar. Final Act. 8–20.
OPINION
Claims 1 and 13 are independent. Appeal Br. 19–21 (Claims App.).
Appellant argues the claims as a group. Id. at 6–17. We select claim 1 as
representative of the group. 37 C.F.R. § 41.37(C)(1)(iv). Claims 2–20 stand
or fall with claim 1.
The Examiner rejects claim 1 as obvious under 35 U.S.C. § 103 over
Storm in view of Seppa. Final Act. 8–10. The Examiner finds that Storm
teaches the limitations of claim 1 except that Storm does not teach
determining a quality factor (Q value) or calculating the viscosity such that
the Q value scaled by the density is proportional to the inverse square root of
a density-viscosity product. Id. at 8–9. The Examiner finds that Storm ties
the viscosity to peak width, and that it is well-known that the quality factor
Q is determined in terms of resonant frequency and peak width. Id. at 9.
The Examiner finds that Seppa teaches detecting a quality factor (Q
value), and that the Q value scaled by density is proportional to the inverse
square root of a density-viscosity product, i.e.,

Id. (citing Seppa ¶¶ 95, 101, 119).
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Application 14/889,955

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The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time the ’955 Application was filed to use the
relationship disclosed in Seppa in the context of Storm as a suitable
substitution of a relationship for viscosity in a similar structure yielding
predictable results, and remedying the lack of a specific teaching in Storm
for how to determine viscosity. Id. at 10.
Appellant argues that Seppa does not explicitly tie its paragraph 95
(“attenuation [is] inversely proportional to the Q value”) to its paragraph 119
(providing equation 11):

Appeal Br. 6–8. Appellant argues that the Examiner “finessed” the initial
burden of proof by simply ignoring the difference between “attenuation” in
Seppa paragraph 95 and “attenuation constant” in Seppa paragraph 119. Id.
at 8. Appellant contends that it provided rebuttal evidence by pointing out
the discrepancy between the two terms. Id.
We disagree. The Examiner’s findings are reasonable and supported
by the record. Appellant’s “rebuttal evidence” is merely attorney argument
that the Examiner is incorrect. It is well settled that arguments of counsel
cannot take the place of factually supported objective evidence. See, e.g., In
re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
Appellant also argues that one of ordinary skill in the art would not
have been motivated to combine Seppa and Storm. Appeal Br. 13–14.
Appellant argues that Storm describes calculating viscosity and does not
indicate a need for a substitute method for determining viscosity. Id. at 14.
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Application 14/889,955

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The Examiner finds that Storm is silent with regard to a specific
teaching of how to calculate viscosity. Ans. 11. The Examiner finds that
one of ordinary skill in the art would look to a reference disclosing a known
relationship for calculating viscosity, Seppa being among such references,
that would predictably yield suitable results. Id.
“Evidence of a motivation to combine prior art references ‘may flow
from the prior art references themselves, the knowledge of one of ordinary
skill in the art, or, in some cases, from the nature of the problem to be
solved.’” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir.
2006) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc.,
229 F.3d 1120, 1125 (Fed.Cir.2000)). The Examiner’s explanation of the
reasons a person of ordinary skill in the art would have had to combine the
prior art teachings is sufficient when an allowance is made for “the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also
PerfectWeb Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324, 1329 (Fed. Cir.
2009) (an analysis of obviousness “may include recourse to logic, judgment,
and common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion”).
Appellant also argues that the claimed invention is an improvement on
the density and viscosity measuring capabilities of Storm. Appeal Br. 14.
Limitations not appearing in the claims—such as Appellant’s alleged
improvements—cannot be relied upon for patentability. In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
In the Reply Brief, Appellant asserts for the first time that Seppa fails
to disclose claim 1’s limitations because claim 1 recites “receiving a fluid
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sample into a sample tube,” and determining “a quality factor (Q value) of
the tube containing fluid.” Reply Br. 4. Appellant contends that Seppa’s
Figure 5a shows “cavity 54” would pertain to a gas or air filling. Id. at 5.
This argument is a new argument, which could have been, but was not
presented in the Appeal Brief. All arguments not specifically and timely
raised in the principal Appeal Brief are considered waived absent a showing
of good cause. In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting
that an argument not first raised in the brief to the Board is waived on
appeal); Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative)
(explaining that arguments and evidence not timely presented in the
principal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477
(BPAI 2010) (informative) (“Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.”); see also Optivus Tech., Inc. v.
Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief is considered waived); see also
37 C.F.R. § 41.37 and § 41.41. Because the record contains no such
showing, we will not consider the new argument in the Reply Brief.3
For the reasons above, we sustain the rejection of claim 1. Claims 2–
20 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

3 Were we to consider Appellant’s argument, we note that the disclosure in
Seppa paragraph 119 regarding attenuation constant is within a section of the
reference describing a “resonator loaded with a fluid-filled cavity 54.” See
Seppa ¶¶ 117, 119.
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Application 14/889,955

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CONCLUSION
The Examiner’s decision to reject claims 1–20 is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 9–11,
13–15, 18,
19
103 Storm, Seppa 1–6, 9–11,
13–15, 18,
19

7, 16 103 Storm, Seppa, Sihna 7, 16
8, 17 103 Storm, Seppa, Loose 8, 17
12, 20 103 Storm, Seppa,
Ramkumar
12, 20
Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED