DUREZ Corporation

Patent Trials and Appeals Board

Sep 1, 2021

2021001251 (P.T.A.B. Sep. 1, 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.
14/848,514 09/09/2015 JAMES J. RAPPOLT D14-001 US 3521
55165 7590 09/01/2021
PROMERUS, LLC
225 WEST BARTGES STREET
AKRON, OH 44307
EXAMINER
SKAIST, AVI T.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
balu.gupta@promerus.com
ip@promerus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES J. RAPPOLT
Appeal 2021-001251
Application 14/848,514
Technology Center 3600
Before KEVIN F. TURNER, CARL M. DEFRANCO, and
LISA M. GUIJT, Administrative Patent Judges.

DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 6–10. Claims 4, 5, and 11–20
are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a process for making proppant
particles that “prop[] open” fractures in subterranean oil and gas formations
to maintain continuous flow through the fractures. Spec. 1:7–16. Claim 1,
reproduced below, is the sole independent claim.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Durez Corporation as the real party in
interest. Appeal Br. 2.
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1. A process for the production of low temperature curable
proppant particles, wherein said low temperature is below 180°F,
consisting of:
heating particles;
adding a phenolic resin to coat the particles with the resin;
adding a curative;
partially curing the resin; and
adding 0.1 weight parts or more to 2.0 weight parts or less of
surfactant per 100 weight parts of the particles; and
wherein the proppant particles are dry and free flowing at room
temperature, wherein the surfactant is added after adding the
resin and before or after partially curing the resin and wherein
said proppant particles exhibit first tackiness when dry and
second tackiness when slurried with water and pumped into a
wellbore which is higher than the first tackiness.
Appeal Br. A-1 (Claims App.).
EXAMINER’S REJECTIONS
Claims 1–3 and 6–10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Green (US 2013/0081812 A1, published Apr. 4, 2013).
See Final Act. 2–5.
ANALYSIS
A. Claims 1–3 and 7–9
We begin with claim 1. The Examiner finds that Green discloses all
the steps of method claim 1, but acknowledges that Green fails to expressly
disclose that “the proppant particles ‘exhibit first tackiness when dry and
second tackiness when slurried with water . . . which is lower than the
second tackiness,” as claimed. Final Act. 2–3. Nonetheless, the Examiner
finds that, because Green discloses the same composition as that recited by
claim 1, “the material would naturally act in the same manner as claimed,
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i.e., it would possess a first tackiness when dry and a second, higher
tackiness when slurried with water.” Id. at 3. And to the extent any
difference exists between Green’s composition and the claimed composition,
the Examiner explains that
the difference would have been minor and obvious . . . because
it has been held “Products of identical chemical composition
cannot have mutually exclusive properties.” A chemical
composition and its properties are inseparable. Therefore, if the
prior art teaches the identical chemical structure, the properties
Applicant discloses and/or claims are necessarily present.

Id. at 3–4 (citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977); Titanium
Metals Corp. v. Banner, 778 F.2d 775 (Fed Cir 1985); In re Ludtke, 441
F.2d 660 (CCPA 1971)).
Appellant submits myriad arguments in response to the Examiner’s
rejection of claim 1. First, Appellant argues that Green fails to disclose
“proppant particles which are curable below 180°F,” as recited in the
preamble of claim 1. Appeal Br. 7; see also id. at 11 (“Applicant cannot
find disclosure in Green et al. of ‘curable proppants’ exhibiting ‘low
temperature activity with free flowing property’, as instantly disclosed and
claimed.”); Reply Br. 4 (repeating essential same). We disagree. As the
Examiner correctly notes, Green discloses a process in which, “during the[]
mixing, coating, and curing steps,” the proppant particles are “heated to
some nominal temperature, for example, in the range of 65º F. to 100º F.”
Green ¶ 127; see also Final Act. 4 (citing same). Green’s disclosure of that
temperature range falls squarely within claimed range, i.e., “below 180°F.”
Thus, we are unpersuaded by Appellant’s arguments to contrary.
Second, Appellant argues that Green fails to disclose the recited step
of adding “surfactants” because it only discloses “surface wettability
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modifiers.” Appeal Br. 7; see also Reply Br. 4. According to Appellant,
surface wettability modifiers “are, by and large, not surfactants at all,” and,
thus, cannot be relied on as corresponding to the claimed “surfactants.” Id.
Appellant also faults Green for lacking any disclosure of “a class of ionic or
nonionic surfactants as ‘surface wettability modifiers.’” Appeal Br. 14
(citing Rappolt Decl. ¶ 6.3(c)). Appellant is mistaken. Green discloses that
“surface wettability modifiers” disposed on the proppant particle include
“silicon-containing surfactants” and “fluoro-surfactants.” Green ¶¶ 68, 70,
73, 82. Moreover, the Examiner specifically identifies Green’s disclosure of
a commercial example of one such surfactant, namely, Novec
fluorosurfactant FC-4430, “a nonionic fluorochemical surfactant” from 3M.
Final Act. 6 (citing Green ¶ 74) (emphasis added). And the Examiner also
provides evidentiary support for finding that the surfactant (i.e., surface
wettability modifier) is added after the phenolic resin. See id. at 3 (citing
Green ¶¶ 119–120). Nowhere do we discern that Appellant persuasively
addresses these express disclosures by Green. Thus, we reject the notion
that Green does not disclose the claimed step of adding a nonionic
surfactant.
Third, Appellant argues that the Examiner “seemingly admitted” that
Green does not disclose the amounts of surfactant recited by claim 1. Reply
Br. 3. We disagree. Although the Examiner withdrew an alternative basis
(i.e., the “second” ground) for finding that Green discloses the recited
amounts, the Examiner expressly “maintained” the primary basis (i.e., the
“first” ground) for finding that Green discloses such amounts. See Ans. 3.
More specifically, the Examiner points to Green’s disclosure of adding the
surfactant in amounts ranging “from about 0.01% to about 5.0% by weight
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. . . of the proppant material,” a finding that Appellant does not meaningfully
dispute. Compare Final Act. 3 (citing Green ¶ 105), with Appeal Br. 9
(disputing only that Green’s surface wettability modifier is a surfactant, but
not the fact of the amount added). Thus, to the extent Appellant attempts in
its Reply Brief to now challenge the Examiner’s finding that Green discloses
the claimed amounts of surfactant, we reject the argument as untimely since
it was not raised in the original Appeal Brief.
Fourth, Appellant argues that Green’s disclosure of surfactants as
being “optional” precludes them from being considered a “surface
wettability modifier.” Appeal Br. 9. We are not persuaded. As a matter of
law, if Green discloses that a component is optional, then Green may be
relied upon for teaching a composition that includes such component. That
is, one skilled in the art would understand that Green’s option of including a
surfactant or other additive means that Green teaches a composition with the
additive included. In any event, when read as a whole, Green expressly
discloses an embodiment in which the curing process includes the addition
of a phenolic resin to coat the particles along with the addition of a “surface
wettability modifier . . . to obtain free-flowing particles of coated proppant.”
Green ¶ 120; see also id. ¶ 126. And because Green discloses that the
surface wettability modifier may be a “surfactant” (id. ¶¶ 68, 70, 73, 74, 82),
one skilled in the art would understand Green to be disclosing an
embodiment in which the curing process clearly includes a surfactant. Thus,
we reject the notion that Green’s additional discussion of the surfactant as
being optional somehow detracts from Green’s express disclosure of
producing curable proppant particles with a surfactant.

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Fifth, Appellant argues that claim 1’s “consisting of” language
prevents reliance on Green because “there is no basis . . . to select
surfactants in connection with a phenolic resin coating on a proppant
particle.” Appeal Br. 7; see also Reply Br. 5. We disagree. As the
Examiner explains, Green expressly discloses an embodiment that performs
only the claimed steps. See Final Act. 2–3 (citing ¶ 23, 119–122, 126–130);
see also Ans. 4 (same). More specifically, Green describes the embodiment
as including the steps of: first, heating a substrate material, such as sand, at
“lower starting sand temperatures,” which, as discussed above, can be in the
range of 65ºF to 100ºF; next, adding “phenolic resin” to coat the particles,
along with “any additives” to cure the resin; and, finally, adding a “surface
wettability modifier,” which can be a surfactant (as also discussed above)
“to obtain free-flowing particles of coated proppant.” Green ¶ 120. Indeed,
like claim 1, Green’s surfactant may be added after adding the resin but
before or after partially curing the resin. See id. ¶ 126 (“[T]he surface
wettability modifier may be added to the mixture . . . prior to or during a
curing process.”).
We further note the identity between Green’s disclosure and
Appellant’s description of the materials used in the process. For instance,
both Green and Appellant describe the core particle as being “sand,” the
phenolic resin as being a “novolac” or “resole” resin, the curing additive as
being a “coupling agent,” and the surfactants as being “anionic,” “nonionic,”
or “cationic.” Compare Spec. 4:6–5:15 (giving examples of various
materials), with Green ¶ 95 (regarding surfactant), ¶ 120 (regarding core
material and additive), ¶ 126 (regarding resin). Given the explicit and
detailed nature of Green’s disclosures, and their identity to Appellant’s
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description of the claimed invention, we are unpersuaded by Appellant’s
assertions that Green fails to disclose the identical process steps as claimed.
Sixth, Appellant argues that “[t]he Examiner has not provided a
plausible reason why one skilled in the art would be motivated to ... [adjust]
tackiness of particles in the presence of water.” Appeal Br. 7 (alteration in
original); see also id. at 12 (“Applicant does not discern any plausible
reasons why one of skill in the art would make the multiple selections
required from Green et al. . . . in such a way to arrive at the subject matter of
Claim 1 other than hindsight.”). According to Appellant, the Examiner
relies on an “inherency-based conclusion” that “only applies to features
necessarily present, not mere possibilities.” Id. at 7. We disagree.
Appellant misconstrues the Examiner’s basis for finding that Green satisfies
claim 1’s limitation of a “first tackiness when dry and second tackiness
when slurried with water.”
As the Examiner fittingly explains, Green’s satisfaction of this
limitation is based, not on an inherency rationale, but rather on Green’s
disclosure of the same composition of materials as claimed, the same
process of production as claimed, and the same manner of use as claimed,
i.e., slurried with water. See Final Act. 3; see also Green ¶ 115 (disclosing
“fill[ing] the fracture with a slurry of proppant materials”). Insofar as the
same composition and methods are employed, the Examiner reasons that
Green’s proppant material naturally would possess the claimed characteristic
of an increased tackiness when slurried with water. We see no error in the
Examiner’s reasoning. Where the prior art product is identical or
substantially identical in structure or composition to the claimed product, or
are produced by identical or substantially identical processes, a prima
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facie case of obviousness is established. In re Best, 562 F.2d 1252, 1255
(CCPA 1977). And because the Examiner provides sound reasoning for
finding that Green’s proppant product is the same as the claimed proppant
product, the burden shifts to Appellant to proffer evidence showing that
Green’s proppant does not necessarily possess the characteristics of the
claimed product. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990); In re
Best, 562 F.2d at 1255; see also Titanium Metals Corp. v. Banner, 778 F.2d
775 (Fed. Cir. 1985). Here, Appellant fails to persuade us of any salient
differences between the two products. See Appeal Br. 4–11. Thus, we
detect no error in the Examiner’s finding that Green possesses the same
tackiness characteristics as the claimed product.
Seventh, Appellant presents an inventor declaration purporting to
show “unexpected, superior and surprising [results], not achieved by any
prior art, including Green et al.” Appeal Br. 5–6 (citing Declaration of
James J. Rappolt ¶ 9, filed Oct. 29, 2019); see also id. at 13–17 (citing
Rappolt Dec. ¶¶ 5, 6, 8). According to Appellant, “the Examiner has not
provided any reason to doubt the statements in the Declaration.” Appeal Br.
17. We disagree. In comparing the claimed invention to Green’s disclosure,
the declarant asserts that:
(1) Green fails to disclose “a proppant particle coated with a
phenolic resin, which exhibits two different tackiness”
(Rappolt Dec. ¶ 5);

(2) Green “falls short of any teachings as to ‘low temperature
curable proppants’” (id. ¶ 6.3(f));

(3) Green’s “broad disclosure” of “employing so called ‘surface
wettability modifiers’” is not a disclosure of a “general class
of ionic or nonionic surfactants” (id. ¶¶ 6.2, 6.3, 6.3(c)); and

(4) Green’s “use of surfactants . . . is optional” (id. ¶ 6.3(c)).

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Having reviewed the declaration, we note the declarant’s assertions
are no different than the arguments addressed by the Examiner in the final
rejection, as discussed above with respect to Appellant’s myriad arguments.
See Final Act. 3, 6–7. So, although the Examiner may not have cited the
declaration directly, the Examiner nonetheless provides substantive
reasoning, along with evidentiary support, to cast sufficient doubt on the
declarant’s assertions, thereby affording them little if any weight. In other
words, the declaration fails to show why it would be unexpected to achieve
results that were previously taught by Green, as discussed above. Thus, we
agree with the Examiner that Appellant’s arguments are no more persuasive
when raised in the declaration than when raised in the briefing. Having
considered Appellant’s so-called proof of unexpected results, we are not
persuaded that it overcomes the Examiner’s rejection.
Finally, Appellant argues that the Examiner should have given weight
to the “successful prosecution of corresponding applications before the EPO
and the Russian Patent Office.” Appeal Br. 17. We disagree. As the
Examiner correctly notes, patentability in the United States encompasses
different laws and standards than under European and Russian patent laws.
As such, we see no error in the Examiner’s repudiation of Appellant’s
evidence of corresponding foreign patents. See Ans. 6.
In sum, we have considered Appellant’s arguments, but find them
unpersuasive. See Appeal Br. 9–11; Reply 2–3.2 Thus, we sustain the

2 To the extent Appellant now argues in its Reply Brief that there is no
reasonable expectation of success “in view of the unpredictable nature of
the chemical art” (Reply Br. 3), we note that this argument was not raised in
the Appeal Brief and, thus, is untimely. Lacking evidentiary support, it is
also conclusory attorney argument.
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Examiner’s obviousness rejection of claim 1. We also sustain dependent
claims 2, 3, and 7–9, which are not argued separately and fall therewith. See
37 C.F.R. § 41.37(c)(1)(iv).
B. Claims 6 and 10
Appellant argues claims 6 and 10 separately. In contesting the
rejection of these claims, Appellant states simply that these claims are
allowable “for the reasons discussed above and because there is no
suggestion in Green et al. to employ non-ionic surfactant in the recited
amounts in connection with phenolic resins.” Appeal Br. 18; see also Reply
Br. 5 (essentially same). But, as discussed above, Green clearly discloses
employing a non-ionic surfactant in connection with phenolic resins. See
Green ¶¶ 45, 68, 69, 73–74. And, as discussed above, Appellant does not
meaningfully dispute the Examiner’s finding that Green discloses the
amounts of surfactant as recited by claim 1, from which claims 6 and 10
each depend. Compare Final Act. 3 (citing Green ¶ 105), with Appeal Br. 9
(disputing only that Green’s surface wettability modifier is a surfactant, but
not the fact of the amount added). Thus, we sustain the Examiner’s
obviousness rejection of dependent claims 6 and 10.
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–3, 6–10 103 Green 1–3, 6–10

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)(1)(iv).
AFFIRMED