Ex Parte Agrawal et al

Patent Trial and Appeal Board

Jul 23, 2018

15154458 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/154,458 05/13/2016
6449 7590 07/25/2018
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
Anoop Agrawal
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4534-102 2922
EXAMINER
SHIN, MONICA A
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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
Appeal2018-005516
Application 15/154,458
Technology Center 1600
Before ERIC B. GRIMES, MICHAEL J. FITZPATRICK, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Anoop Agrawal, Donald R. Uhhnann, and Nicholas R. Krasnow,
("Appellants") 1 appeal under 35 U.S.C. § 134(a) from a decision finally
rejecting claims 1, 2, 6, 8-10, 18, 21-24, and 26-36. 2 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is Agienic Inc. App. Br. 1.
2 Claim 25 was also rejected in the Final Action. Final Act. 4. However,
Appellants subsequently canceled claim 25. App. Br. 3, 51.
Appeal 2018-005516
Application 15/154,458
STATEMENT OF THE CASE
According to Appellants, the claimed invention "relates to polymeric
coatings on proppants," that have antimicrobial agents that "are released
from these coatings in the environment of the proppants." Spec. 1 :21-25.
Proppants are solids used to keep strata cracks open after they have been
opened by hydraulic fracturing, during oil extraction from wells. McDaniel
irif3--4. 3
Of the pending and finally rejected claims, claims 1, 22, 24, and 34
are independent. App. Br. 3-5. Claim 1 is representative and reads as
follows:
1. An oil field proppant comprising frac sand or an
aluminum oxide-containing particulate wherein said
proppant is coated with a polymeric coating containing
an antimicrobial material wherein the weight percent of
the antimicrobial material is about 0.1 to 20% as
compared to the weight of said polymeric coating so that
the polymeric coating releases the antimicrobial material
or a component of the antimicrobial material with
antimicrobial properties under conditions present in an
oil well, thereby providing antimicrobial activity in the
well.
Id. at 47.
The following rejections are before us for review:
(1) Claims 1, 2, 6, 8-10, 18, 21-24, 26-29, 32, and 34--36 under
35 U.S.C. § 103 as unpatentable over McClung,4 McDaniel, and Tanguay, 5
as evidenced by US Silica6 and Fujimori7 (Final Act. 4; Ans. 3);
3 US 2013/0065800 Al (published Mar. 14, 2013).
4 McClung, IV, US 2013/0312974 Al (published Nov. 28, 2013)
("McClung").
5 WO 2012/151109 Al (published Nov. 8, 2012).
2
Appeal 2018-005516
Application 15/154,458
(2) Claims 30 and 31 under 35 U.S.C. § 103 as unpatentable over
McClung, McDaniel, Tanguay, and Bardwell, 8 as evidenced by US Silica
and Fujimori (Final Act. 14; Ans. 3); and
(3) Claim 33 as unpatentable over McClung, McDaniel, Tanguay,
and Bardwell, as evidenced by US Silica and Fujimori (Final Act. 16; Ans.
3).
DISCUSSION
In rejecting all independent claims, the Examiner found that McClung
describes the entire subject matter of those claims except that it "does not
appear to explicitly disclose (i) the use of a polymeric coating; [or] (ii) the
amount of the IM [(inhibitory material) 9] in the coating." Final Act. 7. The
Examiner found that McDaniel and Tanguay teach the limitations the
Examiner conceded as missing from McClung. Id. Specifically, the
Examiner applied Tanguay for its teaching of coating of proppants with
polymers (id. at 7-8), and McDaniel for its teaching of additives in proppant
coating compositions and their concentration by weight of coating. Id. at 8-
9.
6 us Silica, 40/70 us Silica Whiteâ„¢, CODE OF CONDUCTIVITY (2014),
http://www. us silica.com/ sites/ussilica.com/files/US-Silica-White-4070. pdf
("US Silica").
7 US 2011/0195108 Al (published Aug. 11, 2011).
8 WO 2011/009083 Al (published Jan. 20, 2011 ).
9 In this finding, the Examiner equates "antimicrobial material," which is
recited in the claims, with "inhibitory material" ( or IM), which is disclosed
in McClung. Regardless of whether this difference is critical from a claim
construction perspective, it goes to the heart of what McClung teaches and
does not teach, and, thus, what a person of ordinary skill in the art would
have done in view of McClung and the other references.
3
Appeal 2018-005516
Application 15/154,458
McClung "is directed to: controlling production of hydrogen sulfide
by bacteria in ... fracturing operations." McClung iP. McClung discloses
"a treatment of sulfate-reducing bacteria with an effective amount of
inhibition material ('IM') to inhibit or prevent the bacteria from producing
hydrogen sulfide." Id. i-fl9. "Bacteria of concern produce hydrogen sulfide
in a biochemical process involving enzyme production (the production of
enzymes that produce hydrogen sulfide) and the presence of the inhibition
material ('IM') renders these biochemical processes inoperative." Id.
McClung states that the IM may be, among other substances, copper iodide
(CI) and copper oxide. Id. ,I23. McClung states that the IM may be in fluid
injected into the well in a concentration of 0.001 to about 2.0% by weight.
Id. i-f 117. McClung also teaches that the IM may be included in a coating of
the proppant, but does not provide any teaching as to its concentration in that
form. Id. i-f 4 3.
Applicants' Specification discloses copper iodide and copper oxide as
antimicrobial materials, which McClung describes as inhibitory material or
IM. Despite this overlap in exemplary compounds of Applicants'
antimicrobial material and McClung' s inhibitory material, McClung does
not describe using inhibitory material ( e.g., copper iodide or copper oxide)
to kill bacteria. Nor does McClung teach a desire to kill bacteria.
We find insufficient on this record the Examiner's reasoning why a
person of ordinary skill in the art allegedly would have combined the cited
prior art teachings in a manner encompassed by the independent claims.
Specifically, we find error in the Examiner's reasons for why a person of
ordinary skill in the art would have chosen copper iodide or copper oxide in
4
Appeal 2018-005516
Application 15/154,458
the claim-specified amount of "about 0.1 to 20% as compared to the weight
of said polymeric coating."
The first reason Examiner provides is as follows:
In light of McDaniel's disclosure that polymeric coatings used
on proppants for use in oil wells are known to include additives
in the coating in amounts of about 15 wt.% or less by weight of
the coating composition, it would have been obvious to one of
ordinary skill in the art before the effective filing date of the
instant invention to further combine the teachings of McClung
and Tanguay with the teachings of McDaniel and try the
inclusion ofMcClung's IM [i.e., copper iodide or copper oxide]
in Tanguay's polymeric coating in amounts disclosed by
McDaniel as a person with ordinary skill has good reason to
pursue known options within his or her technical grasp.
Final Act. 11. However, McDaniel's teaching of how much of an additive to
use in a proppant coating does not inform the person of ordinary skill in the
art how much antimicrobial material to use in a proppant coating.
McDaniel's additives are used for a different purpose than McClung' s IM.
McDaniel's additives are used to make "a coated proppant that combined
adequate crush resistance, resistance to dusting when handled pneumatically
and the limited leaching of chemicals that is exhibited by pre-cured coatings
with the ability to create the particle-to-particle bonds that resist proppant
flowback which are exhibited by a partially cured proppant coating."
McDaniel i-f24.
The other reason Examiner provides is as follows:
Further, one of ordinary skill in the art would have found it
prima facie obvious and would have been motivated to optimize
the amount of McClung's IM in the coating material within the
ranges disclosed by McClung and McDaniel in order to obtain
the optimal amount of control of hydrogen sulfate [ sic, sulfide]
production.
5
Appeal 2018-005516
Application 15/154,458
Final Act. 11. However, we do not find the "ranges disclosed by McClung
and McDaniel" sufficiently relevant to support the Examiner's conclusion.
First, as just discussed, McDaniel discloses different additives that are used
for different purposes than McClung' s IM. Second, McClung does not
disclose how much IM to use in a proppant coating. Rather, McClung
teaches how much IM to use in a treatment fluid. The Examiner rightfully
concedes this. See Final Act. 7 ("McClung does not appear to explicitly
disclose ... the amount of the IM in the coating."). Thus, there are no
teachings in the asserted prior art regarding how much antimicrobial
material to use in a proppant coating.
And, even if a person of ordinary skill in the art nonetheless could
have optimized the amount of IM in a proppant coating "in order to obtain
the optimal amount of control of hydrogen sulfate [sic] production," as the
Examiner asserts, there is no evidence in the record to support that such an
amount would be "about 0.1 to 20% as compared to the weight of said
polymeric coating," as required by all independent claims on appeal.
The Examiner's rejection of independent claims 1, 22, 24, and 34 is
reversed. For the same reason, the Examiner's rejection of dependent claims
2, 6, 8-10, 18, 21, 23, 26-33, 35, and 36 is also reversed. See In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) ("Since dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious, the Board's affirmance of the rejection of dependent claims 2-
7, 9-12, 14--23, and 30 is also reversed.").
6
Appeal 2018-005516
Application 15/154,458
SUMMARY
For the reasons discussed, we reverse the Examiner's rejection of all
claims on appeal.
REVERSED
7