Agienic, Inc.

Patent Trials and Appeals Board

Dec 16, 2021

2021000352 (P.T.A.B. Dec. 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.
16/216,225 12/11/2018 Anoop Agrawal 4534-102US2 1071
6449 7590 12/16/2021
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14TH STREET, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
SHIN, MONICA A
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
12/16/2021 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):
PTO-PAT-Email@rfem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANOOP AGRAWAL, DONALD R. UHLMANN, and
NICHOLAS R. KRASNOW
Appeal 2021-000352
Application 16/216,225
Technology Center 1600
Before ULRIKE W. JENKS, TAWEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims to an oil field coated proppant as being
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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 Agienic Inc.
(Appeal Br. 1.)
Appeal 2021-000352
Application 16/216,225

2
STATEMENT OF THE CASE
“Proppants used in the oil and gas industry are generally particles of
sand and ceramics.” (Spec. 61.) Resin coatings that “increase the crush
strengths of the proppants” are known. (Id.) These “durable resin
coating[s]” also are able to “retain pieces of proppant . . . broken under the
high downhole pressure” and “bond individual proppant particles together.”
(Id.)
“Generally, one finds mixtures of bacteria and biofilms of multi-
species [of] bact[]eria in oil wells . . . .” (Id. at 58.) Narrow fissures “in
rock . . . are most prone to getting blocked by biofilms or bacteria.” (Id. at
60.)
Appellant’s invention is directed to incorporating antimicrobial agents
into coatings on the proppant particles, which agent is released by the
proppants in the narrow fissures in the rock, thereby “reduc[ing] the frequent
cost of treating the well with biocides and provid[ing] local antimicrobial
action for an extended period of time.” (Id. at 60–61.)

Claims 1–7 and 10–19 are on appeal.2 Claim 7, reproduced below, is
illustrative of the claimed subject matter:
7. An oil field proppant comprising frac sand or an aluminum
oxide-containing particulate wherein said proppant is coated
with a thermoset polymer coating containing at least one
antimicrobial material in the range of 0.05 to 70 wt. % as
compared to the weight of said polymer coating wherein the said
antimicrobial material does not react with the said thermoset
polymer coating, and the thermoset polymer coating releases the
antimicrobial material or a component of the antimicrobial

2 Claims 20 and 21 remain pending but are withdrawn from consideration.
Appeal 2021-000352
Application 16/216,225

3
material with antimicrobial properties under conditions present
in an oil well, thereby providing antimicrobial activity in the oil
well.
(Appeal Br. 71.)
The prior art relied upon by the Examiner is:
Name Reference Date
Nguyen et al. US 2017/0191357 A1 July 6, 2017
Sherman et al. US 2016/0137911 A1 May 19,
2016
Shaikh et al. US 2012/0227967 A1 Sept. 13,
2012
Turakhia et al. US 2011/0024129 A1 Feb 3, 2011
McDonald US 4,413,931 Nov. 8, 1983
Aldcroft et al. US 6,905,698 B1 June 14,
2005
The Engineering
ToolBox
Polymers – Physical Properties:
Thermoplastics, available at
https://www.EngineeringToolBox.com,
1–5
2008
American
Elements
Silver Nanoparticles, available at
https://www.americanelements.com,
1–8
1998
Haliburton Aldacide® G Product Data Sheet,
available at halliburton.com/baroid
2016

The following grounds of rejection by the Examiner are before us on
review3:
Claims 7 and 12–14 under 35 U.S.C. § 103(a) as unpatentable over
Nguyen, The Engineering ToolBox, and American Elements.

3 In the Final Action the Examiner had also rejected claims 1–7 and 10–19
for non-statutory double patenting. However, in the Answer, the Examiner
withdrew that rejection in light of the recordation of the terminal disclaimer
over U.S. Patent 10,208,241 filed on July 13, 2020. (Ans. 4.)
Appeal 2021-000352
Application 16/216,225

4
Claims 1, 2, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over
Nguyen, The Engineering ToolBox, American Elements, Sherman, and
Haliburton.
Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Nguyen,
Sherman, The Engineering ToolBox, American Elements, Haliburton, and
Shaikh.
Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Nguyen,
Sherman, The Engineering ToolBox, American Elements, Haliburton, and
Turakhia.
Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Nguyen,
Sherman, The Engineering ToolBox, American Elements, Haliburton, and
McDonald.
Claims 3, 11, and 15–18 under 35 U.S.C. § 103(a) as unpatentable
over Nguyen, Sherman, The Engineering ToolBox, American Elements,
Haliburton, and Aldcroft.

DISCUSSION
Claim 7
The Examiner found that Nguyen discloses biocidal proppant
particulates where a biocidal coating comprising a plurality of biocidal
nanoparticles dispersed within a binder material is adhered to the proppant
particulates. (Final Action 5.) The Examiner further found that Nguyen
teaches that suitable proppant particulates “are not believed to be
particularly limited” and include sand. (Id. at 6 (citing Nguyen ¶ 28).) The
Examiner further found that Nguyen teaches the binder may be a curable
resin, such as a thermosetting resin. (Id. (citing Nguyen ¶¶ 34, 41).) In
Appeal 2021-000352
Application 16/216,225

5
addition, the Examiner found that Nguyen teaches that “the biocidal
nanoparticles may comprise about 10% or less of the biocidal coating by
weight (para.0032).” (Id.) The Examiner concluded that because this
teaching overlaps with the range recited in claim 7, a prima facie case of
obviousness exists. (Final Action 7.) The Examiner further concluded that
because Nguyen discloses that the quantity of biocidal nanoparticles present
may be dictated by the type, species, quantity, and/or location of bacteria in
a subterranean environment that the amount of biocidal nanoparticles is
clearly a result effective parameter that one of ordinary skill in the art
“would routinely optimize.” (Id. at 7–8.)4
In light of the evidence of record, we do not agree with the
Examiner’s assertion that Nguyen teaches a coated proppant where the
biocidal nanoparticles may comprise about 10% or less of the biocidal
coating composition by weight. Nguyen describes a proppant free biocidal
coating that is applied to a fracture (Nguyen ¶¶ 18, 22), as well as a coating
of biocidal nanoparticles on a proppant in which coated particulates are set
into propped fractures (Nguyen ¶¶ 16, 22). Nguyen refers to the coated
proppant particulates as “biocidal proppant particulates.” (Id. ¶¶ 22–23.)
Nguyen teaches that “[t]he proppant-free pad fluid” that contains “the
components of the biocidal coating” is “introduced to the subterranean
formation” during a fracturing operation “resulting in the creation of one o[r]
more fractures at the fracture face,” and “[b]y adhering th[at] biocidal
coating upon the fracture face as the fractures form, such as through forming
an adhesive bond, the likelihood of bacterial growth within inaccessible

4 The Examiner relied on American Element and the Engineering ToolBox
to address density limitations in dependent claims. (Final Action 6.)
Appeal 2021-000352
Application 16/216,225

6
regions of the subterranean formation can be decreased.” (Nguyen ¶ 18; see
also id. ¶ 27.)
Paragraph 32 of Nguyen states:
In some embodiments, the biocidal nanoparticles may comprise
about 10% or less of the biocidal coating by weight, or about
5% or less of the biocidal coating by weight. When disposed
on proppant particulates, the biocidal proppant particulates may
comprise about 5% or less of the biocidal coating by weight, or
about 1% or less of the biocidal coating by weight.
Notably, Nguyen does not teach that in all embodiments the biocidal
nanoparticles may comprise about 10% or less of the biocidal coating by
weight, only that this is the case in some embodiments.
In paragraph 75, Nguyen notes that the pad fluid comprising a binder
material that has a plurality of biocidal nanoparticles dispersed therein is
introduced into a wellbore and is disposed as a biocidal coating on the
fracture face. In paragraph 77, Nguyen further describes embodiments
“[w]hen treating a fracture face and forming a biological coating thereon.”
Nguyen states that in those embodiments “the pad fluid may comprise about
10% or less of the biocidal nanoparticles by weight relative to the weight of
the pad fluid.” (Nguyen ¶ 77.) It is the pad fluid with all that it contains that
forms the coating composition of the fracture face. In other words,
paragraph 77 supports interpreting the “[i]n some embodiments” sentence of
paragraph 32 as relating only to the biocidal coating on the fracture face that
is proppant free. In contrast to the foregoing, nowhere in Nguyen, other than
the Examiner’s interpretation of paragraph 32, is there a teaching of a
percentage of biocidal nanoparticles relative to the weight of a coating on a
proppant.
Appeal 2021-000352
Application 16/216,225

7
During prosecution, Appellant provided the Declaration of one of the
named inventors of the Application on Appeal, Dr. Donald Uhlmann,
describing how one of ordinary skill in the art would have understood the
teachings of Nguyen regarding the concentrations of biocidal nanoparticles.
(Uhlmann Declaration dated April 13, 2020.) In particular, Dr. Uhlmann
provides his conclusion that one of ordinary skill in the art reading Nguyen
would have understood the “[i]n some embodiments” statement in paragraph
32 of Nguyen to refer to the amount of biocidal nanoparticles in a fracture
face coating and the reasons for arriving at such a conclusion. (Uhlmann
Declaration ¶¶ 6–7.) In particular, Dr. Uhlmann states that this sentence is
“followed by specific teachings for coatings on proppant particles” and thus
in light of the teachings of paragraph 18 of the reference to a biocidal
coating that is applied directly to a fracture face without being carried on
proppant particulates, one of ordinary skill in the art would have understood
the “[i]n some embodiments sentence” to relate to coatings on a fracture
face. (Id. ¶¶ 6–7.)
The Examiner does not provide a factual basis for disregarding
Dr. Uhlmann’s Declaration evidence or reconciling the teachings of
paragraph 77 of Nguyen with paragraph 32. Instead, the Examiner simply
states that based on her reading of paragraphs 15–18 and 32 of Nguyen that
it is reasonable to interpret the sentence in paragraph 32 as “Nguyen
discloses a single type of coating composition that may be used in different
embodiments.” (Advisory Action, dated May 18, 2020, 2–3.) We, however,
determine that it is just as reasonable to conclude from the entirety of
Nguyen’s disclosure that the disputed sentence in paragraph 32 of Nguyen
only refers to the percentage of biocidal nanoparticles that is part of the non-
Appeal 2021-000352
Application 16/216,225

8
proppant coating composition on the fracture face. And, given the
Declaration evidence, we conclude that the preponderance of the evidence
favors Appellant’s position. (Appeal Br. 23–25.) We agree with Appellant
and Appellant’s Declarant that nowhere in Nguyen is there a teaching of the
weight percent of the biocidal nanoparticles in the coating to be used to coat
the proppant particles, and that one of ordinary skill in the art would not
have taken the teaching with respect to the weight percent in a fracture
coating to be relevant to the weight percent of biocidal nanoparticle to be
used in a composition to coat proppant. (See Appeal Br. 25–32; Uhlmann
Declaration ¶¶ 10–12.)
We also agree with Appellant that because the general condition for a
weight percentage of biocidal nanoparticle to be used in the proppant coating
composition is not provided, there is insufficient guidance to arrive at the
claimed percentages through routine optimization. (Appeal Br. 32–35.) The
fact that Nguyen discloses that the quantity of biocidal nanoparticles may be
dictated by species, quantity, and/or location of bacteria in a subterranean
environment does not provide a reason to provide a particular weight
percentage of biocidal nanoparticle in the composition that is to be used to
coat the proppant. That is because there are other ways to adjust the quantity
of biocidal nanoparticle, such as by adding more coated proppant.
Thus, we reverse the Examiner’s rejection of claims 7 and 12–14
under 35 U.S.C. § 103(a) as unpatentable over Nguyen, The Engineering
ToolBox, and American Elements.

Appeal 2021-000352
Application 16/216,225

9
Claim 1
The Examiner relies on the teachings of Sherman for the obviousness
of modifying the amount of antimicrobial material to between 20 and 70
weight % of the proppant coating of Nguyen. (See Final Action 11.) The
Examiner urges that Sherman teaches that fillers, such as nanoparticles, can
be combined with a thermosetting resin for a polymer coating to be used to
coat sand proppant used in subterranean operations. (Id. (citing Sherman
Title, abstract, and ¶¶ 2, 19, 14, 66).) As discussed above, we do not agree
that Nguyen teaches even the broader range recited in claim 7. Furthermore,
we also do not agree with the Examiner’s findings regarding Sherman.
Sherman teaches that additives that improve mechanical properties
and/or cure strength of the polymer can be added in between 0–50% by
weight of the polymer coating. (Sherman ¶¶ 14, 40, 66.) Sherman also
discloses that the filler can be a chemical additive, such as antimicrobial
metals, to improve in situ properties/activities. (Id. ¶¶ 14, 41.) However,
Sherman does not disclose that the same 0–50% by weight range applies to
such chemical additives. (Id.) Thus, like Nguyen, Sherman is silent
regarding the percent by weight antimicrobial metal that is present in the
coating that includes a thermosetting resin to be applied on a proppant.
Consequently, we agree with Appellant that Sherman does not cure the
deficiency in the Examiner’s rejection noted above. (Appeal Br. 41–45.)
Thus, we reverse the Examiner’s rejection of claims 1, 2, 5, and 6
under 35 U.S.C. § 103(a) as unpatentable over Nguyen, The Engineering
ToolBox, American Elements, Sherman, and Haliburton.
Appeal 2021-000352
Application 16/216,225

10
Furthermore, none of Shaikh, Turakhia, McDonald, or Aldcroft cure
the deficiencies of Nguyen or Sherman. Consequently, we also reverse the
Examiner’s rejections of claims 3, 4, 10, 11, and 15–19 for obviousness.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7, 12–14 103 Nguyen, The
Engineering
ToolBox,
American
Elements,
7, 12–14
1, 2, 5, 6 103 Nguyen, The
Engineering
ToolBox,
American
Elements,
Sherman,
Haliburton
1, 2, 5, 6
19 103 Nguyen, Sherman,
The Engineering
ToolBox,
American
Elements,
Haliburton, Shaikh
19
10 103 Nguyen, Sherman,
The Engineering
ToolBox,
American
Elements,
Haliburton,
McDonald
10
Appeal 2021-000352
Application 16/216,225

11
4 103 Nguyen, Sherman,
The Engineering
ToolBox,
American
Elements,
Haliburton,
Turakhia
4
3, 11, 15–18 103 Nguyen, Sherman,
The Engineering
ToolBox,
American
Elements,
Haliburton,
Aldcroft
3, 11, 15–18
Overall
Outcome
1–7, 10–19

REVERSED