DUREZ CorporationDownload PDFPatent Trials and Appeals BoardSep 1, 20212021001251 (P.T.A.B. Sep. 1, 2021) Copy Citation 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. Appeal 2021-001251 Application 14/848,514 2 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, Appeal 2021-001251 Application 14/848,514 3 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 Appeal 2021-001251 Application 14/848,514 4 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 Appeal 2021-001251 Application 14/848,514 5 . . . 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. Appeal 2021-001251 Application 14/848,514 6 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 Appeal 2021-001251 Application 14/848,514 7 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 Appeal 2021-001251 Application 14/848,514 8 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)). Appeal 2021-001251 Application 14/848,514 9 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. Appeal 2021-001251 Application 14/848,514 10 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 Copy with citationCopy as parenthetical citation