Ex Parte Alary et al

Patent Trial and Appeal Board

Mar 21, 2013

11469589 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/469,589 09/01/2006 INV001Jean Andre Alary 09157.0011 6681
22852 7590 03/21/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
GRAY, JILL M
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
03/21/2013 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 JEAN ANDRE ALARY and THOMAS PARIAS
____________

Appeal 2012-007158
Application 11/469,589
Technology Center 1700
____________

Before RICHARD E. SCHAFER, CATHERINE Q. TIMM, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek relief from the final rejection of claims 1-6, 8-16, 18-
41, 107, 109-111, and 124-141 directed to a high-strength proppant. The
Examiner rejects these claims as unpatentable under 35 U.S.C. § 103(a) over
Cooke (US 4,068,718, issued January 17, 1978) in view of Ueltz
(US 3,079,243, issued February 26, 1963), Graham (US 3,497,008, issued
February 24, 1970), and “appellants’disclosure at [0016] of
US 2008/0066910 A1” (referred to herein as “Spec. [016]”). Ans. 4. The
Examiner rejects claims 40 and 41 as unpatentable under 35 U.S.C. § 103(a)
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over Cooke in view of Ueltz, Graham, Spec. [016], and Youngman
(US 6,372,678 B1, issued April 16, 2002).
We AFFIRM.1
The independent claims are 1 and 107. Appellants’ arguments are
directed to the patentability of claim 1. No separate arguments are presented
regarding claim 107. See, e.g., App. Br. 14, 31. Our analysis of claim 1,
which reads as follows, is dispositive of all issues raised in this appeal:
1. A high strength sintered rod-shaped proppant for fracturing
subterranean formations comprising at least about 80% by weight
alumina and between about 0.2% by weight and about 4% by weight
aluminum titanate, wherein the proppant has a permeability of at least
300 Darcies after 50 hours at 250°F and 5,000 psi, wherein the
alumina is contributed by at least one of bauxitic and non-bauxitic
sources, and wherein the at least one of bauxitic and non-bauxitic
sources contains a TiO2 content of between about 0.15% and about
3.5% by weight.

Appellants challenge the Examiner’s finding that the applied art
suggests a proppant having “a TiO2 content of between about 0.15% and
about 3.5% by weight” as specified in claim 1, because Cooke “discloses a
TiO2 content of 4.55%” using ALUNDUM 75 brand bauxite. Id. at 16; see
Cooke 3:50. We agree with the Examiner that Cooke is not limited by that
example. Ans. 8, 19, 22. Cooke identifies a second brand of acceptable
bauxite (SA LIONITE) and, furthermore, generally explains that “the
present invention may be prepared from natural bauxite.” Cooke 3:13-14,
4:19. It is beyond dispute, and Appellants admit, that the TiO2 content of
natural bauxite is “typically from about 1% to about 5% by weight[,]”

1 A hearing was held on March 13, 2013, in this case and related Appeal
No. 2012-001919. A decision in Appeal No. 2012-001919 is mailed
simultaneously herewith.
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Spec. [016], which significantly overlaps the specified range “of between
about 0.15% and about 3.5% by weight[.]” Claim 1; Ans. 24.
The Examiner finds, and Appellants do not contest, that “Cooke
discloses that improved sintered particles can be made from natural bauxite
with the result that the final propping agent is less expensive than many
other aluminum or alumina products.” Ans. 24 (citing Cooke 2:63-68). In
other words, Cooke supplies a reason (cost savings) for selecting natural
bauxite over other alumina products. On this record, the evidence supports
the Examiner’s view that, even if “Cooke has a preference for a certain
commercially available bauxite” having a TiO2 content of 4.55%, that
preference “does not preclude [Cooke’s] suggestion to the skilled artisan that
other natural bauxites could be used successfully to produce high strength
proppants at a lower cost.” Id.
The Examiner observes that Cooke contains a citation to Ueltz for a
method of sintering natural bauxite. Ans. 5 (citing Cooke 4:51-54). Ueltz in
fact discloses three “readily available” sources of natural bauxite, each of
which has a TiO2 content that falls squarely within the range specified in
claim 1. Ueltz 2:26; Table entitled “Calcined Bauxite Analyses” (disclosing
three sources of natural bauxite having TiO2 contents of 2.24 to 2.66%
(Arkansas), 2.75 to 3.09% (Demerara), and 3.18 to 3.50% (Surinam)).
Appellants contend that Ueltz “is not analogous art with respect to
[the specified] proppants,” App. Br. 17, because the reference “is unrelated
to proppants or methods of forming proppants, and is instead related to
forming abrasive grains from sintered bauxite.” Id. at 19; Reply Br. 3-6
(arguing that completely different considerations come into play when
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making an abrasive particle according to Ueltz as compared to a proppant
according to the claimed invention).
However, Cooke is indisputably within Appellants’ field of endeavor,
and it expressly refers to Ueltz in the context of “methods for sintering
natural bauxite” for use in the formation of proppants. Cooke 4:51-54.
Where Cooke refers to Ueltz in that context, we agree with the Examiner
that Cooke establishes that Ueltz is relevant to “the formation of sintered
bauxitic proppants.” Ans. 21. On this record, we are of the opinion that a
skilled artisan seeking to make a proppant according to Cooke would have
turned to Ueltz and reasonably expected that any one of the “readily
available” natural bauxites disclosed therein could be successfully selected
for forming a proppant: On this record, such a selection would have
represented nothing more than putting a known material (natural bauxite) to
an ordinary use (making a proppant). Ueltz 2:26 (three natural bauxite
sources were “readily available”). Any advantage of strength attained when
a proppant is formed from bauxite having a TiO2 content within Appellants’
specified range (in other words, from any of the three “readily available”
bauxites disclosed in Ueltz, 2:26) “is based upon a known utility of [a]
naturally occurring material[.]” Ans. 25.
Appellants contend that “[i]t is a mere coincidence that some of the
commercially-available bauxites disclosed in Ueltz have a TiO2 range that
falls within a narrow portion of the range recited in” claim 1. App. Br. 23;
Reply Br. 9. On the contrary, that is compelling evidence that it would have
been obvious to make Cooke’s sintered bauxite proppant with one of Ueltz’s
several “readily available” bauxites having a TiO2 content falling squarely
within the specified range. Ueltz 2:26. When a range recited in a claim
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overlaps a range disclosed in the prior art, a prima facie case of obviousness
typically exists and the burden of proof is shifted to the applicant to show
that the invention would not have been obvious. In re Peterson, 315 F.3d
1325, 1329-30 (Fed. Cir. 2003). “[W]hen, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap.” Id. at 1330.
The Examiner acknowledges that “Cooke discloses a preference for
spherical shaped proppants” whereas claim 1 specifies rod-shaped
proppants. Ans. 10; see Ans. 8, 30; Cooke 3:36-37. The Examiner
concludes, however, that “the teachings of Graham render obvious rod-
shaped sintered alumina proppants.” Ans. 10 (citing Graham 3:25-33, 66-
69). The evidence supports that conclusion: Graham discloses that,
although “[s]pherical particles” are “generally acknowledged to be the most
effective proppants” for use in subterranean hydraulic fracturing methods,
selecting proppants “having opposing parallel linear surface elements[,]”
such as “rods,” in fact provides “improved fracture conductivity due to the
superior ability of such particles to resist crushing and embedment, and due
to their ability to provide increased proppant permeability in multilayer
packs.” Graham 2:6-8; 3:25-33, 35.
Appellants appear to select a rod shape over a spherical shape for the
exact same reasons as Graham, namely, to achieve “superior conductivity
and permeability of the rod-shaped proppants” as well as a desired “breaking
behavior under closing pressure.” Spec. [055].2 Appellants’ argument that
Graham does not relate to high-strength proppants is unconvincing, where

2 A proppant is designed to resist closure stress when packed in a fracture
formed by hydraulic fracturing of an oil well bore. See Spec. [001]-[008].
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Graham discloses “sintered alumina” proppants, Graham 3:66-69, which
according to Appellants’ written description, are “high strength” proppants.
Spec. [030]; see id. at [015], [018]. In any event, a skilled artisan would
have expected Graham’s reasons for selecting a rod shape, which include
“the superior ability of such particles to resist crushing[,]” Graham 3:30-31,
to be “applicable to the full range of proppants regardless of the particular
strength category they are in.” Ans. 35.
Appellants argue that Cooke “teaches away from rod-shaped
proppants” but, by way of support, rely on Cooke’s stated preference for
spheres over other shapes. App. Br. 29 (citing Cooke 3:36-41). Appellants
also argue that Cooke’s preference for spheres is “more credible” than
Graham’s teachings because Cooke is a more recent reference. Reply Br. 5;
see App. Br. 16. However, the rod shape patented by Graham does not
become patentable again by virtue of Cooke’s stated preference for spheres
over other shapes. See In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994).
Moreover, “[t]he mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).
Regarding the limitation requiring “a permeability of at least 300
Darcies after 50 hours at 250°F and 5,000 psi,” the Examiner points out that
Cooke discloses proppants having a permeability of 800 Darcies (using
ALUNDUM 75 brand bauxite) and 400 Darcies (using SA LIONITE brand
bauxite) under a temperature of 315°F and a pressure of 10,000 psi. Ans. 5
(citing Cooke Table 1 at Samples 1 and 5). Cooke does not disclose the
duration of the applied stress. Id. at 25. The Examiner finds, however, that
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the conditions of high stress disclosed in Cooke (under which the Sample 1
proppant has a permeability of 800 Darcies at 10,000 psi) “are greater than
those contemplated by appellants” in claim 1 and, therefore, “would have
provided a suggestion to the skilled artisan that the proppants of Cooke
would have enhanced durability under less stressful conditions and longer
periods of time.” Id. Moreover, in the Examiner’s view, “there is no factual
evidence on this record that the proppants of Cooke would not function as
required by present independent claim 1.” Id.
In our view, where Cooke discloses that the Sample 1 proppant has a
permeability of 800 Darcies under a temperature of 315°F and a pressure of
10,000 psi, the Examiner reasonably finds that a skilled artisan would have
expected that proppant to exhibit a permeability of at least 300 Darcies
under the “less stressful conditions” recited in claim 1. Id. at 15-16, 25
(citing Cooke Table 1 at Sample 1). On this record, we discern no error in
the Examiner’s shifting of the burden to Appellants to refute that finding.
Id. at 25. As a practical matter, “the Patent Office is not equipped to
manufacture products by the myriad of processes put before it and then
obtain prior art products and make physical comparisons therewith.” In re
Brown, 459 F.2d 531, 535 (CCPA 1972). Appellants challenge the burden
shift, but come forward with no persuasive argument or evidence sufficient
to rebut the factual basis for that finding. App. Br. 26-27.
On this record, the Examiner makes out a prima facie case that the
subject matter of claim 1 would have been obvious over the applied art.
A question remains whether Appellants come forward with evidence
sufficient to rebut that prima facie case. Appellants argue that the Examiner
fails to consider evidence in the Parias Declaration. App. Br. 34 (Examiner
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“discounts and appears to ignore” paragraphs 12 and 13 of the Parias
Declaration). It is apparent from the record before us that the Examiner
fully considers that evidence but accords it very little weight. See, e.g.,
Ans. 33 (“The examiner has fully considered the statements by Thomas
Parias in paragraphs 12 and 13 of the Declaration. The examiner finds them
to be insufficient to establish criticality of the claimed range of TiO2.”); id.
at 34 (“[T]he examiner has fully considered the statements of those in the
proppant field as relayed in the Declaration. This argument is not found to
be persuasive because Graham has already patented rod-shaped proppants
that have a superior ability to resist crushing” among other advantages.).
Like the Examiner, we have thoroughly considered the evidence in the
Parias Declaration, but in view of significant shortcomings therein, which
we discuss below, that evidence is insufficient to overcome the strong prima
facie showing of obviousness made out by the Examiner in this case. See
Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir.
2009) (“evidence of unexpected results and other secondary considerations
will not necessarily overcome a strong prima facie showing of
obviousness”).
For example, regarding the criticality of the range of TiO2 content
specified in claim 1, Appellants’ evidence is unconvincing because it
consists of the uncorroborated opinion of a named inventor. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (citations
omitted) (explaining that the Board is entitled to weigh the declarations and
conclude the lack of factual corroboration warrants discounting the opinions
expressed in the declarations). The inventor’s opinion that TiO2 contents
below 0.15% by weight would result in unacceptably brittle proppants, and
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that contents greater than 3.5% by weight would result in unacceptably weak
proppants, is unsupported by experimental data or any other objective
evidence. Parias Decl. ¶¶ 12-13. The crush tests advanced by Appellants
are probative of two rod-shaped proppants representing the extreme upper
end (between about 3.2% and about 3.4% by weight) of the much broader
range of TiO2 content specified in claim 1 (between about 0.15% and about
3.5% by weight). See id. at ¶ 32. Thus, Appellants’ evidence is not
commensurate with the full scope of claim 1. Nor do Appellants come
forward with any comparative examples of proppants having TiO2 contents
that fall outside of the specified range. On this record, we have no way of
knowing whether proppants having TiO2 contents below 0.15% by weight or
above 3.5% by weight perform any differently in a crush test than proppants
having TiO2 contents that fall within the specified range. Appellants thus
fail to establish criticality of the specified range.
Regarding the alleged skepticism of skilled artisans in the field, the
inventor relays the hearsay opinions of others working in the field who
purportedly considered spherical proppants to be superior to rod-shaped
proppants in terms of crush resistance and were skeptical that rod-shaped
proppants could withstand the crush stresses encountered in oil well bores.
Id. at ¶¶ 19-26. Critically lacking is any indication that these skeptics were
aware of Graham’s disclosure that rod-shaped proppants are superior in
terms of strength to spherical proppants. Id. Appellants’ evidence is
unconvincing because it consists of hearsay statements and contains no
indication that those trying to solve the need were familiar with the relevant
prior art. See In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit
by an applicant or co-applicant as to the advantages of his invention is less
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persuasive than one made by a disinterested person.”); In re Allen, 324 F.2d
993, 997 (CCPA 1963) (citing Toledo Pressed Steel Co. v. Standard Parts,
Inc., 307 U.S. 350, 356 (1939)) (an allegation that there was an unsolved
problem in the art is not evidence of unobviousness unless it is shown that
the widespread efforts of skilled workers having knowledge of the prior art
had failed to find a solution to the problem).
Appellants also argue that the evidence establishes that rod-shaped
proppants exhibit unexpectedly superior results compared to spherical
proppants in terms of crush resistance. Appellants’ evidence on this point,
however, is based on a comparison of two rod-shaped proppants, having a
TiO2 content of about 3.2% by weight and about 3.4% by weight,
respectively, to a spherical proppant having a TiO2 content of 2.5% by
weight. Compare Parias Decl. ¶ 32 (describing composition of rod-shaped
proppants) to Parias Decl. ¶ 35 (describing composition of spherical
proppant). We have no way of knowing whether the somewhat better crush
resistance of the rod-shaped proppants compared to the spherical proppant
(namely, about 19% compared to about 22% at 15,000 psi, id. at ¶¶ 34, 35, is
attributable to the shape chosen or some other variable, for example, the
different TiO2 contents of the compositions. See Ans. 37 (“a clear
comparison would include the dimensions to show comparable results based
upon proppants of the same composition and the same or similar dimensions
where the only change is the shape”). In any event, we agree with the
Examiner that the crush test results advanced by Appellants are not
unexpected but in fact directly flow from Graham’s teaching that rod-shaped
proppants will “resist crushing” better than spherical proppants. Ans. 36;
Graham 2:6-8; 3:25-33.
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We have carefully considered Appellants’ other arguments but find
them unpersuasive for the reasons stated in the Answer. On this record, we
affirm the rejections of claims 1-6, 8-16, 18-41, 107, 109-111, and 124-141.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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