HALLIBURTON ENERGY SERVICES INC.

Patent Trials and Appeals Board

Nov 13, 2020

14412308 - (D) (P.T.A.B. Nov. 13, 2020)

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.
14/412,308 12/31/2014 David L. Perkins 2013-083543 U1 US 4212
142050 7590 11/13/2020
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
11/13/2020 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 2019-005698
Application 14/412,308
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer 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. 3.
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Appellant’s invention is directed to a method of fabricating an
integrated computational element (ICE) used in optical analysis tools for
analyzing a substance of interest, such as crude petroleum, gas, water, or
other wellbore fluids (Spec. ¶ 1; Claim 1).
Claim 1 is representative of the subject matter on 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 target thicknesses and complex refractive
indices, wherein complex refractive indices of adjacent layers
are different from each other, and wherein a notional ICE
fabricated in accordance with the ICE design is related to a
characteristic of a sample over an operational wavelength
range;
forming, by the fabrication system, at least one of the
layers of the ICE in accordance with the ICE design;
optically monitoring, during said forming, by a measurement
system associated with the fabrication system, optical
properties of the formed layers using monochromatic probe-
light having a probe wavelength that is selected to be outside of
the operational wavelength range of the ICE based
on a material of the formed layers; and
adjusting, by the fabrication system, said forming, at least
in part, based on the optically monitored optical properties of
the formed layers of the ICE.

Appellant appeals the following rejections presented in the Non-
Final Action dated September 17, 2018:
1. Claims 1, 2, 7, and 11–17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Myrick (US 7,138,156 B1, issued
November 21, 2006) in view of Rosencwaig (US 6,781,692 B1,
issued August 24, 2004), Fraction definition (https://merriam-
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webster.com/dictionary/fraction 2017) and Infrared definition
(Previous (Information graphics) (/entry/lnformation_graphics).
2. Claims 3–6 and 8–10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Myrick in view of Rosencwaig and Thomas
(US 2007/0019204 A1, published January 25, 2007).
Appellant’s arguments focus on the subject matter of claim 1 only
(Appeal Br. 4–10). Appellant’s only argument regarding rejection (2) is that
Thomas does not cure the alleged deficiencies in Myrick and Rosencwaig
(Appeal Br. 11). Accordingly, claims 2–17 will stand or fall with our
analysis of the rejection of claim 1.

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings regarding the obviousness of claim 1 over
Myrick, Rosencwaig, Fraction, and Infrared are located on pages 4–6 of the
Non-Final Action dated September 17, 2018. The Examiner finds that
Myrick teaches most of the limitations in claim 1, except for a specific light
source that emits monochromatic light with a wavelength outside the
operational wavelength range of the ICE (Non-Final Act. 4–5). The
Examiner finds that Rosencwaig teaches forming wavelength specific filters
composed of alternating layers of high and low index of refraction materials
(Non-Final Act. 5). The Examiner finds that Rosencwaig teaches optically
monitoring the thickness of the alternating layers formed using a probe beam
of radiation (Non-Final Act. 5). The Examiner finds Rosencwaig teaches
that the probe radiation has a wavelength either approximately that of the
operative wavelength or a fraction thereof (Non-Final Act. 5). The
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Examiner finds Rosencwaig’s ellipsometry process uses a light beam
reflected from a forming surface (Non-Final Act. 5–6). The Examiner finds
that because Rosencwaig’s ellipsometry process reflects off the substrate,
the materials forming the substrate must inherently be selected based on the
forming material (Non-Final Act. 6). Based on the definition of “fraction,”
the Examiner finds Rosencwaig’s disclosure of fractional wavelengths
includes fractions greater than 1 and less than 1 (Non-Final Act. 6). The
Examiner concludes it would have been obvious to modify Myrick’s method
to include the measurement techniques suggested by Rosencwaig because
Myrick wants to use optical methods to determine the thickness of thin
layers in an optical filter, and Rosencwaig teaches using a light source at a
fraction of the desired transmission wavelength as a known method for
determining the thickness of thin films with a high degree of accuracy and
repeatability (Non-Final Act. 5).
Appellant argues that Myrick and Rosencwaig fail to teach all the
limitations in claim 1 (Appeal Br. 4). Appellant contends that Rosencwaig
fails to teach selecting a probe beam to be outside of the operational
wavelength range of the ICE based on a material of the formed layers and
teaches away from such a selection of probe wavelength (Appeal Br. 6).
Appellant argues that Rosencwaig prefers to use a wavelength of the light
that is near the operational wavelength range of the filter (i.e., 1500/1550 nm
range) to improve sensitivity and minimize uncertainties in the measurement
(Appeal Br. 6). Appellant argues that Rosencwaig’s teaching to select a
wavelength near the operational wavelength of the resulting filter amounts to
a teaching away from selecting a wavelength outside of the operational
wavelength range of the ICE (Appeal Br. 7). Appellant contends that
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Rosencwaig does not inherently teach selecting a wavelength of its light
based on the forming materials (Appeal Br. 8). Appellant argues the
Examiner has not considered the claim as a whole in omitting the claim
requirement that the selected wavelength is outside the operational
wavelength range of an ICE in determining that Rosencwaig inherently
bases the operational wavelength on the material of the formed layers
(Appeal Br. 9).
We have fully considered Appellant’s arguments and we find that the
preponderance of the evidence favors the Examiner’s obviousness
conclusion. We are unpersuaded by Appellant’s argument that Rosencwaig
teaches away from the using a probe wavelength outside the operational
wavelength of the ICE. Rosencwaig prefers using a light source 52 having
an output wavelength “near” the desired transmission band of the filter (col.
7, ll. 14–16). Rosencwaig teaches “to improve sensitivity and minimize
uncertainties in the measurement of films transmitting in the 1550 nm range,
it may be desirable to use a probe beam having a wavelength in the 1550 nm
region or fractions thereof.” (Col. 4, ll. 13–16). A wavelength that is “near”
the desired transmission band must be outside of the band, otherwise the
near wavelength would have been characterized as being within the desired
transmission band. Merriam-Webster Dictionary defines “near” as “close
to.”2 A wavelength that is “close to” a transmission range is outside the
range (i.e., it is not at or within the transmission range). The Examiner’s
finding that “Rosencwaig teaches a desire to select a measurement
wavelength near (as opposed to inside) the operational wavelength range of

2 https://www.merriam-webster.com/dictionary/near accessed on November 2, 2020.
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its optical device” is reasonable (Ans. 4). Appellant argues that “near” is not
the opposite of “inside” such that Rosencwaig does not exclude selecting the
wavelength inside the optical wavelength range (Reply Br. 3). Appellant’s
argument is without merit. If Rosencwaig’s probe wavelength was at the
wavelength range, it would not be near the wavelength range, but would
rather have been characterized as being within wavelength range.
Appellant contends that a fraction of the wavelength does not mean
that the fractional wavelength is outside of the operational wavelength range
of an ICE (Appeal Br. 10). Appellant’s argument does not address
Rosencwaig’s example at column 2, lines 13–17, where the film transmits in
the 1550 nm region relied upon by the Examiner (Non-Final Act 5).
Appellant’s argument is not fully understood because, for example, if a
fractional wavelength is used for a layer that transmits in the 1550 nm
wavelength region as taught by Rosencwaig, then it would stand to reason
that the fractional wavelength (e.g., 750 nm) would have been outside of the
1550 nm region. (Rosencwaig col. 2, ll. 13-17). Appellant has not shown
reversible error in the Examiner’s rejection.
We are further unpersuaded by Appellant’s argument regarding the
Examiner’s finding that Rosencwaig’s operational wavelength range is
based on a material of the formed layers (Appeal Br. 9). Appellant contends
the Examiner’s finding assumes that Rosencwaig’s ellipsometry process
always selects/changes a wavelength to make light reflect off a material and
such changing/selecting always makes the light reflect off materials (Appeal
Br. 9). Appellant contends that Rosencwaig teaches that the wavelength is
selected based on the operating wavelength of the resulting filter (Appeal Br.
9).
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The Examiner finds Rosencwaig teaches that ellipsometry requires
measurement of a light beam reflected from a forming substrate surface
(Non-Final Act. 5). The Examiner finds that Rosencwaig must inherently
select the material based upon the forming materials themselves (Non-Final
Act. 5). Although Appellant contends the Examiner assumes that
ellipsometry always requires reflection of the light off a material, we note
that Examiner’s rejection is based on the teachings of Rosencwaig, not a
mere assumption (Non-Final Act. 5). The Examiner cites to Rosencwaig to
teach that well-known ellipsometric principles include that the reflected
beam will be in a mixed linear and circular polarization state after
interacting with the sample (Non-Final Act. 5; Rosencwaig col. 4, ll. 26–31).
In other words, it is undisputed that Rosencwaig teaches that the
ellipsometry involves reflections off a surface. A preponderance of the
evidence supports the Examiner’s finding that a person of ordinary skill in
the art would have selected substrate materials so that the reflection required
in ellipsometry could occur.
We find Rosencwaig teaches that the applied films transmit the probe
light in the 1550 nm range (col. 2, ll. 13–14). Rosencwaig teaches that the
layers used are made of silicon or tantalum to provide high and low index of
refraction material (col. 2, ll. 52–56). Stated differently, the composition of
the layers are selected based upon their index of refraction and transmission
range. We find that Rosencwaig would have suggested selecting the film
compositions to have a particular operation wavelength range.
Rosencwaig’s teaching that the probe light source has a wavelength “near”
the transmission band of the filter would have suggested that the wavelength
used is outside the transmission band (operational wavelength) of the filter
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(ICE). The Examiner has not treated the claims in a piecemeal fashion as
argued by Appellant (Appeal Br. 9).
On this record, we affirm the Examiner’s § 103 rejection of claims 1,
2, 7, and 11–17 over Myrick, and Rosencwaig. We further affirm the § 103
rejections of claims 3–6 and 8–10 over Myrick, Rosencwaig, and Thomas.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Prior Art  Affirmed Reversed
1, 2, 7, 11–17 103(a) Myrick,
Rosencwaig
1, 2, 7, 11–17
3–6, 8–10 103(a) Myrick,
Rosencwaig,
Thomas
3–6, 8–10
Overall
Outcome
1–17

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).

AFFIRMED