Ex Parte 8427640 et al

Patent Trial and Appeal Board

Sep 15, 2017

90013474 (P.T.A.B. Sep. 15, 2017)

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.
90/013,474 04/23/2015 8427640 MET1893-118 3589
26722 7590 09/18/2017
OSHA LIANG/MI
TWO HOUSTON CENTER
909 FANNIN STREET, SUITE 3500
HOUSTON, TX 77010
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/18/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte M-I LLC and SCHLUMBERGER NORGE AS,
Patent Owner and Appellant
____________

Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JOHN A. JEFFERY, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL

This proceeding arose out of a request for ex parte re-examination of
U.S. Patent No. 8,427,640 B2 (“the ’640 patent”) to Egil Ronaes et al.,
entitled Method and Apparatus for Measuring Particle Size Distribution in
Drilling Fluid, issued April 23, 2013. An oral hearing was conducted on
August 23, 2017.
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

2
Patent Owner appeals under 35 U.S.C. § 134 and 306 from the
Examiner’s rejection of claims 1–27. App. Br. 6–76.1 We have jurisdiction
under 35 U.S.C. § 6(b).
The disclosed invention relates generally to measuring particle size
distribution in a fluid material. See Spec. 1:64.
Claim 1 reads as follows:

1. A method for measuring particle size distribution in a
fluid material, comprising:
inserting a laser beam instrument directly in the fluid flow
line, wherein the laser beam instrument focuses a laser beam on a
window directly coupled with the fluid flow line,
wherein the fluid flow line comprises a fluid having a
plurality of droplets and a plurality of particles of different sizes;
measuring a diameter of at least one particle in the fluid
flow line by reflectance of the at least one particle as the at least
one particle passes through the focused laser beam;
determining a duration of reflection of the at least one
particle; and
obtaining a count of particles in each of a pre-set range
group of particle sizes, wherein the count of particles is used to
determine particle size distribution of the plurality of particles in
the fluid flow line.

Patent Owner appeals the following rejections:
Claims 1–27 under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement;

1 Appeal Brief, filed Sept. 14, 2016 (“App. Br.”).
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

3
Claims 1, 6–8, 10–12, 16–18, and 21–25 under 35 U.S.C. § 102(b) as
anticipated by MT-Lasentec2 (Final Act. 20);
Claims 2 and 13 under 35 U.S.C. § 103(a) as unpatentable over MT-
Lasentec and MT-FBRM3 (Final Act. 24);
Claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over MT-
Lasentec, MT-FBRM, and any one of Dick4 or Suri5 (Final Act. 25–26);
Claims 5, 14, 15, and 19 under 35 U.S.C. § 103(a) as unpatentable
over MT-Lasentec and Dick (Final Act. 27);
Claim 9 under 35 U.S.C. § 103(a) as unpatentable over MT-Lasentec
and Orban6 (Final Act. 29);
Claims 1, 7, 11, and 21–23 under 35 U.S.C. § 103(a) as unpatentable
over Preikschat7 and MT-Lasentec (Final Act. 5);
Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Preikschat,
MT-Lasentec, and MT-FBRM (Final Act. 8);
Claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Preikschat, MT-Lasentec, and MT-FBRM, and any one of Dick or Suri
(Final Act. 9–10);

2 Mettler-Toledo AutoChem Inc., Lasentec D600 Hardware Manual,
February 2004 (“MT Lasentec”).
3 Mettler-Toledo AutoChem Inc., FBRM Control Interface Users’ Manual,
Version 6.7.0, 2005 (“MT-FBRM”).
4 M.A. Dick, et al., “Optimizing the Selection of Bridiging Particles for
Reservoir Drilling Fluids,” 2000 (“Dick”).
5 Ajay Suri and Mukul M. Sharma, “Strategies for Sizing Particles in
Drilling and Completion Fluids,” 2004 (“Suri”).
6 US Patent 4,754,641, issued July 5, 1988 (“Orban”).
7 US Patent 4,871,251, issued October 3, 1989 (“Preikschat”).
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

4
Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Preikschat,
MT-Lasentec, and Dick (Final Act. 11);
Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Preikschat,
MT-Lasentec and Heath8 (Final Act. 12–13);
Claims 10, 12, 16, 18, 20, and 24–27 under 35 U.S.C. § 103(a) as
unpatentable over Preikschat, MT-Lasentec and Hamann9 (Final Act. 12–
13); and
Claims 14, 15, and 19 under 35 U.S.C. § 103(a) as unpatentable over
Preikschat, MT-Lasentec, Hamann, and one of Dick or Suri (Final Act. 17–
19).

ISSUE
Did the Examiner err in rejecting claims 1–27?

ANALYSIS
35 U.S.C. § 112, first paragraph – claims 1–27
The Examiner states that the Specification fails to provide sufficient
written description support for claims 1 and 12 (and claims dependent
therefrom), as amended, because, according to the Examiner, the
Specification “does not disclose the count of particles is used to determine
particle size distribution of the plurality of particles in the fluid line.” Ans.
1. Unamended claim 1 recites determining particle size distribution in the

8 Alex R. Heath, et al., “Estimating Average Particle Size by Focused Beam
Reflectance Measurement (FBRM),” 2002 (“Heath”).
9 US Patent 6,449,042 B1, issued September 10, 2002 (“Hamann”).
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

5
fluid line. Claim 1, as amended, recites determining the particle size
distribution of the plurality of particles present in the fluid line.
As Patent Owner points out, the Specification discloses a “method for
measuring particle size distribution in a fluid material” by directing a laser
beam “on a window directly coupled with the fluid flow line” and that the
fluid flow line “comprises a fluid having a plurality of particles.” Spec.
1:63–2:2. In other words, the Specification discloses measuring particle size
distribution within a fluid that has a plurality of particles. The Examiner
does not explain sufficiently a meaningful difference between measuring a
particle size distribution within a fluid containing a plurality of particles and
the amended claim feature of determining particle size distribution of a
plurality of particles in a fluid line (containing the fluid). In both cases, a
fluid containing particles is analyzed to determine a particle size distribution
of the particles in the fluid.
Regarding claims 21, 23, 24, and 27, the Examiner states that the
Specification fails to disclose “whether the particle size distribution of the
plurality of particles is determined independent of the plurality of droplets.”
Ans. 2. As Patent Owner points out, the Specification discloses “[p]articles
and droplets” within a fluid. Spec. 3:32. The Specification also discloses
measuring chord length of particles and particle structures to monitor
changes in diameter, “scan[ning] across the diameter of each particle” within
the fluid, and, based on this analysis, “determin[ing] the particle size
distribution (PSD) of a fluid flow line.” Spec. 38–55, 56–57. In other
words, the Specification discloses written description support for
determining the particle size distribution of “particles” and “particle
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

6
structures” in a fluid that contains “particles and droplets.” The Examiner
does not sufficiently explain a meaningful difference between these two
seemingly identical concepts. In both cases, a fluid containing both
“particles” and “droplets” is analyzed and a particle size distribution of
“particles” in the fluid is determined.
The Examiner erred in rejecting claims 1–27 under 35 U.S.C. § 112,
first paragraph for failing to comply with the written description
requirement.

Claims 1, 6–8, 10–12, 16–18, and 21–25 – MT-Lasentec (35 U.S.C. 102)
Claim 1, as amended, recites a method comprising focusing a laser
beam on a fluid flow line that comprises a plurality of droplets and a
plurality of particles of different sizes, measuring a diameter and
determination of reflection of a particle in the fluid flow line, and obtaining
a count of particles. Patent Owner argues that MT-Lasentec fails to disclose
that “particle size distribution is based on particles and not droplets” and that
“it appears that MT-Lasentec would include the droplets in the measured
diameters and particle size distribution.” App. Br. 13. Patent Owner also
argues that “MT-Lasentec mentions that droplets may be present in the fluid
flow line and indicates that particle size distribution also [is] based on the
droplets.” App. Br. 20. In other words, Patent Owner argues that MT-
Lasentec discloses determining the size distribution of both droplets and
particles, but the claim excludes determining the size distribution of
droplets. We are not persuaded by Patent Owner at least because Patent
Owner does not demonstrate persuasively that claim 1 recites that “particle
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

7
size distribution is based on particles and not droplets.” Rather, claim 1
merely recites a method comprising “obtaining a count of particles” that “is
used to determine particle size distribution of the plurality of particles in the
fluid flow line,” but does not recite, or otherwise require, the absence of
determining, for example, size distribution of a plurality of droplets or that
the “particle size distribution of the plurality of particles” that is determined
cannot be associated with “droplets” in any way.
In addition, as the Examiner points out, MT-Lasentec discloses a
“flow stream” of a fluid containing “particles or droplets being carried” by
the fluid that contains “high solids/dispersed liquid loading” (i.e., “particles”
and “droplets”) and that with proper “probe orientation,” “[t]he flow carries
particles close to the window for the best measurement presentation.” MT-
Lasentec 30–32. In other words, contrary to Patent Owner’s implied
contentions, MT-Lasentec discloses flow of a fluid containing “high
solids/dispersed liquid loading” of “particles or droplets” (i.e., the fluid
contains both particles and droplets), and at least one embodiment in which a
probe is oriented such that flow “carries particles” for measurement. See
also id. at 51 (recommending a gap twice the size of the largest particle or
particle structure, and labeling a particle/droplet system to be measured in
Figure 4-28). We do not observe, and Patent Owner does not contend or
demonstrate persuasively, that MT-Lasentec, in at least this embodiment,
also discloses that the fluid flow carries “droplets” (also present in the fluid)
for measurement. Hence, even assuming Patent Owner’s implied contention
to be correct that claim 1 recites that “droplets” must not be involved in any
determination at all, we are still not persuaded by Patent Owner with respect
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

8
to MT-Lasentec supposedly failing to disclose this hypothetical claim
feature.
Patent Owner provides similar arguments in support of claims 12, 16–
18, and 21–25 (App. Br. 23–25, 56, 59, 62, 63, 66–67, and 69–70) and does
not provide additional arguments in support of claims 6–8, 10, and 11. The
Examiner did not err in rejecting claims 1, 6–8, 10–12, 16–18, and 21–25.

Claims 2–5, 9, 13–15, 19, 20, 26, 27 – MT-Lasentec
Patent Owner argues that none of the combinations of MT-Lasentec
and any one of MT-FBRM, Orban, Dick, or Suri “teach[es] or suggest[s] . . .
fluid containing both particles and droplets, where a count of the particles is
used to determine particle size distribution of the particles.” App. Br. 21, 22,
33, 34, 40, 44, 48, 53, 54. In other words, Patent Owner argues that none of
MT-FBRM, Orban, Dick, or Suri makes up for the alleged deficiency of
MT-Lasentec of supposedly failing to disclose a fluid containing particles
and droplets and using a count of particles to determine particle size
distribution of the particles, but not droplets. For at least the reasons
previously discussed with respect to MT-Lasentec, we are not persuaded by
Patent Owner’s argument.
Regarding claim 5, Patent Owner further argues that Dick fails to
disclose “monitoring changes in particle size distribution of the flow line to
determine a blend of bridging products to add to the fluid flow line, wherein
the blend of bridging products is used to bridge one of a pore and a fracture
in a reservoir” as recited in the claim. App. Br. 44–45. The Examiner finds
that Dick discloses this feature. Ans. 12 (citing Dick 2).
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

9
As the Examiner explains, Dick discloses a “cumulative curve” that
“shows a . . . particle-size distribution” (i.e., monitoring changes in particle
size distribution) and, based on such monitoring of a particle-size
distribution, a “wide range of . . . products for bridging permeable
formations” is determined. Dick 2. Such “various sized-bridging agents”
are “blended” to achieve “a proper blend of bridging agents.” Id.; See also
Ans 10. The evidence therefore supports the Examiner’s finding that Dick
discloses the disputed claim feature.
Patent Owner argues that “Dick . . . does not . . . indicate that changes
in the particle size distribution . . . are monitored.” App. Br. 45. However,
Patent Owner does not explain adequately how the disclosure of Dick that
“particle-size distribution” is used to determine “a wide range of . . .
products for bridging permeable formations” and that, as a result, “various
sized-bridging agents” are “blended” differs from the claim feature of using
particle size distribution of the flow line to determine a blend of bridging
products to add to the fluid flow line. Dick 2. In both cases, particle size
distribution is monitored and is used to determine a blend of bridging
products.
Patent Owner argues that Dick merely discloses “designing a
distribution, at the outset, that achieves the ideal packing theory.” App. Br.
45. We are not persuaded by Patent Owner’s argument because, even
assuming that Dick discloses designing a distribution that achieves the ideal
packing theory, as Patent Owner contends, Patent Owner does not
demonstrate persuasively that Dick also fails to disclose using particle size
distribution of the flow line to determine a blend of bridging products to add
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

10
to the fluid flow line. As previously discussed, Dick appears to disclose this
feature.
Claims 20, 26, and 27 depend from claim 12. As explained by the
Examiner and discussed above, MT-Lasentec discloses the features of claim
12. In addition, as the Examiner further explains, Preikschat also discloses
features of claim 12. For example, Preikschat discloses an “[a]pparatus for
analyzing particles contained in a fluent [m]edium . . . having a window . . .
[that] detects light backscattered from . . . particles in the fluent medium, and
produces an electrical signal . . . associated with the particles.” Preikschat
also discloses that the “electrical signal” “indicates the number of particles
in the fluent medium.” Abstract; See also Final Act. 13–14 (citing
Preikschat Abstract, 2:29–36, 50–60; 4:21–24; 5:36–67; 6:66 – 7:2; 8:48–
52; 9:41–48; 11:62–66; 12:33–41, 36–41; 13:17–20; Fig. 1).
Patent Owner argues that Preikschat fails to disclose “that particle size
distribution is determined based on the plurality of particles [but not
droplets, because] . . . Preikschat teaches that such materials [i.e., droplets]
would be considered in the calculated distribution based on the chord
lengths.” App. Br. 15, 26–28, 75–76. As previously discussed, Patent
Owner does not demonstrate persuasively that claim 12, for example, recites
determining a particle size distribution based on the plurality of particles but
which exclude droplets. For at least this reason, we are not persuaded by
Patent Owner’s arguments.
We are also not persuaded by Patent Owner’s argument because the
Examiner relies on the combination of Preikschat and MT-Lasentec (and
Hamann), rather than Preikschat in isolation or Preikschat and Hamann,
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

11
alone. Final Act. 13–14. For at least this additional reason, we are not
persuaded by Patent Owner’s argument that Preikschat (alone) or Preikschat
and Hamann (alone) supposedly fails to disclose the disputed claim feature.
In view of the above, it is unnecessary to reach the propriety of the
Examiner’s decision to reject claims on a different basis. Cf. In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009).

SUMMARY
We reverse the Examiner’s rejection of claims 1–27 under 35 U.S.C.
§ 112, first paragraph. We affirm the Examiner’s rejection of claims 1, 6–8,
10–12, 16–18, and 21–25 under 35 U.S.C. § 102(b) as anticipated by MT-
Lasentec; claims 2 and 13 under 35 U.S.C. § 103(a) as unpatentable over
MT-Lasentec and MT-FBRM; claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over MT-Lasentec, MT-FBRM, and any one of Dick or Suri;
claims 5, 14, 15, and 19 under 35 U.S.C. § 103(a) as unpatentable over MT-
Lasentec and Dick; claim 9 under 35 U.S.C. § 103(a) as unpatentable over
MT-Lasentec and Orban; and claims 12, 20, 26, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Preikschat, MT-Lasentec and Hamann.

AFFIRMED

gvw
Appeal 2017-006794
Reexamination Control 90/013,474
Patent 8,427,640 B2

12

PATENT OWNER:
OSHA LIANG/MI
Two Houston Center
909 Fanin Street, Suite 3500
Houston, TX 77010

THIRD-PARTY REQUESTER:

Standley Law Group LLP
6300 Riverside Drive
Dublin, OH 43017