Ex Parte Becker

Patent Trial and Appeal Board

Jul 29, 2016

12365750 (P.T.A.B. Jul. 29, 2016)

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.
12/365,750 02/04/2009 Harold L. Becker S-1094-A 6576
73429 7590 07/29/2016
Baker Hughes Incorporated
Attn: Anthony F. Matheny
P.O. Box 4740
Houston, TX 77210-4740
EXAMINER
MICHENER, BLAKE E
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
07/29/2016 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 HAROLD L. BECKER
_____________

Appeal 2014-008307
Application 12/365,750
Technology Center 3600
____________

Before THOMAS F. SMEGAL, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Harold L. Becker (Appellant)1 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s Final Rejection2 under 35 U.S.C. § 103(a) of claims
1 and 4–29 as unpatentable over Haagensen (US 4,620,593, iss. Nov. 4,
1986); of claims 1, 4–7, 9–17, and 20–29 as provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims 21–
28 of copending Application No. 13/147,188; and of claims 8 and 18 as
provisionally rejected on the ground of nonstatutory obviousness-type

1 According to Appellant, the real party in interest is Baker-Hughes
Incorporated. Appeal Br. 1.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Action, dated September 24, 2013 (“Final Act.”).
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double patenting over claims 21–28 of copending Application No.
13/147,188 and Haagensen.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1 and 20 are independent. Claim 1 is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A method comprising exposing a substance to a first
type of electromagnetic waves generated by a first device, the
frequency of the first type of electromagnetic waves being in the
radio frequency range and the device consuming no more than
about 1,000 Watts of power, the exposure taking place for a
period of time and at a frequency sufficient to detectably alter at
least one physical property of the substance as it existed prior to
the exposure, and wherein the frequency of the first type of
electromagnetic waves is in the range of about 1 MHz to about
100 MHz.

ANALYSIS
Obviousness of Claims 1 and 4–29 over Haagensen
Claims 1, 5–8, 10–12, 20, and 26–294
Appellant argues claims 1, 5–8, 10–12, 20, and 26–29 together as a
group in contesting the rejection of these claims as obvious over Haagensen.
See Appeal Br. 6–16. We select claim 1 as the representative claim for this
group, and the remaining claims of the group stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv). We have considered Appellant’s arguments
raised in the Appeal Brief and Reply Brief, but for the reasons discussed

3 Claims 2 and 3 have been canceled. Appeal Br. 3.
4 We include claims 26–29, as Appellant has not otherwise separately argued
these claims. See generally Appeal Br.
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below, do not find them persuasive to demonstrate error in the Examiner’s
rejection of claim 1 as being obvious over Haagensen.
In rejecting claim 1, the Examiner finds that Haagensen discloses,
inter alia, “exposing a substance to a first type of electromagnetic waves
generated by a first device . . . for a period of time and at a frequency
sufficient to detectably alter at least one physical property of the substance
as it existed prior to the exposure.” Final Act. 3–4. While acknowledging
that “Haagensen does not explicitly disclose the use of radio waves in the
range of 1 MHz to 100 MHz,” the Examiner determines that
[i]t would have been considered obvious . . . to use a first
frequency in the range of about 1 to about 100 MHz (which are
within the radio frequency range), since it has been held that
where the general conditions of a claim are disclosed in the prior
art (using radio waves to treat “a substance”), discovering the
optimum or workable range (radio waves between 1-100 MHz)
involves only routine skill in the art.
Id. at 5 (citing In re Aller, 220 F.2d 456 (CCPA 1955); In re Boesch, 617
F.2d 272 (CCPA 1980)).
In contesting the rejection, Appellant acknowledges that Haagensen
“is directed to heating of oil-bearing formations with microwave energy”
and that “[a]t the time this invention was made, it would have been generally
known to one of ordinary skill in the art that the amount of power necessary
for a radio frequency generator to heat a geological formation to any
practical degree would at least be very significant.” Appeal Br. 11 (citing
Haagensen, col. 1, ll. 6–9, 29–35, 52–60); see also Becker Declaration,
paras. 3–4.
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However, Appellant asserts, inter alia, that
[Appellant’s] invention pertains to the surprising discovery that
the use of a very low power level, one realistically incapable of
heating to the degree believed necessary by those of skill in the
art at the time of the invention, can modify the physical
properties of treated substances in surprisingly beneficial ways.
Appeal Br. 12 (emphasis added). Appellant further asserts that
[Appellant] has illustrated, with actual experimental data,
unexpectedly beneficial results using radio frequency waves
power levels far below those which might possibly be suggested
to one of ordinary skill in the art from the teachings of the cited
reference, to modify physical characteristics of the treated
substance.
Id. (emphasis added).
Appellant continues by contending that in
The Examples [that] appear on Pages 11-17 of the
Specification[,] Example[s] 4 and 5 show that irradiation of oil
wells with 40.68 MHz at 40 Watts and 24.4 GHz at one Watt
increased oil production and fluid flow of the treated wells [,
while in] Example 8, samples of formation material were
exposed to 40 MHz at 50 Watts and 24 GHz at one Watt; the
formation material became more permeable to oil (at irreducible
water saturation) and more permeable to water (at residual oil
saturation).
Id.
We are instructed by the Court of Appeals for the Federal Circuit that
“[a] greater than expected result is an evidentiary factor pertinent to the legal
conclusion of. . . obviousness [of the claimed subject matter].” In re Corkill,
771 F.2d 1496, 1501 (Fed. Cir. 1985) (citing United States v. Adams, 383
U.S. 39, 51–52 (1966)). Furthermore, in cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims, it has consistently been held that “the applicant
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must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.” In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
In response, the Examiner points out that, “[of t]he Examples [that]
appear on Pages 11-17 of the Specification[,] Example[s] 4 and 5 show that
irradiation of oil wells with 40.68 MHz at 40 Watts and 24.4 GHz at one
Watt increased oil production and fluid flow of the treated wells,” and that
“[f]or Example 8, samples of formation material were exposed to 40 MHz at
50 Watts and 24 GHz at one Watt.” Ans. 16. The Examiner also explains
that “the ‘objective evidence of nonobviousness must be commensurate in
scope with the claims which the evidence is offered to support’ (MPEP
§716.02(d)),” but that “[t]he generic nature of Appellant’s claims is prima
facie evidence against Appellant’s assertions of unexpected results.” Id.
Furthermore, the Examiner points out that “assertions of unexpected results
can not be supported by an umbrella statement which attempts to include as
many different results as possible,” and that “all of Appellant[’]s specific
examples of supposedly unexpected results have the ‘substance’ exposed to
two frequencies, and only one frequency is recited in the independent
claims.” Id. at 17 (emphasis omitted).
We also find that the examples in the Specification identified by
Appellant do not contain a comparison with results obtained from treating a
substance with “radio frequency waves power levels” outside of the range
recited by claim 1. For example, Figure 1 is described at paragraph 31 of the
Specification as illustrating data obtained “by exposing samples to be treated
to radio frequency (76 MHz) electromagnetic waves and microwaves (29
Ghz) for a period of 2.5 hours.” However, Figure 1 merely compares the
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treated sample data with data identified as having been obtained from
untreated samples. Thus, Figure 1 does not provide the necessary
comparison. Similarly, Examples 11 and 12 only compare cement exposed
to 18 MHz at 20 to 50 Watts with untreated cement.
Based on the foregoing, we find that Appellant provides no factual
comparison between data for the claimed radio frequency waves power
levels and data for radio frequency waves power levels over which the
claimed levels are purported to be unexpected. Arguments relying on
factually unsupported assumptions to rebut a prima facie case of
obviousness “can hardly be considered factual evidence.” See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). We find that Appellant has not
established that the claimed radio frequency range of electromagnetic waves
recited by claim 1 produces unexpected results when compared to the results
that would be obtained at frequencies outside that recited range.

Claims 24 and 25
Regarding dependent claims 24 and 25, Appellant repeats the
arguments we have not found persuasive regarding claims 1 and 20, and
further contend that claims 24 and 25 “are directed to a power level of no
more than about 8 Watts for the second frequency (the microwave
frequency).” Appeal Br. 16. However, as with the radio frequency range
recited by claim 20, Appellant fails to provide any comparative data
showing that the narrower claimed range achieves unexpected results when
compared to data from outside the claimed range.
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Claims 4, 9, 13–19, and 21–23
Regarding dependent claims 4, 9, 13–19, and 21–23, Appellant
repeats the arguments we have not found persuasive regarding claims 1 and
20, and further contend that the claims “are directed to first frequencies or
radio frequencies of about 30 to about 50 MHz (Claim 4), or about 40 to
about 50 MHz (Claims 9, 13, and 21).” Appeal Br. 17. However, as with
the radio frequency range recited by claims 1 and 20, Appellant fails to
provide any comparative data showing that the narrower claimed ranges
achieve unexpected results when compared to data obtained with radio
frequencies from outside the claimed range.
For the foregoing reasons, we sustain the rejection of claims 1 and 4–
29 as unpatentable over Haagensen.

Nonstatutory double patenting rejections
Appellant does not present arguments directed to the Examiner’s
nonstatutory double patenting rejection of claims 1, 4–7, 9–17, and 20–29 as
provisionally rejected on the ground of nonstatutory obviousness-type
double patenting over claims 21–28 of copending Application No.
13/147,188; and of claims 8 and 18 as provisionally rejected on the ground
of nonstatutory obviousness-type double patenting over claims 21–28 of
copending Application No. 13/147,188 and Haagensen. Ans. 4; See also
Reply Br. 4. However, we do not reach the merits of the Examiner’s
provisional double patenting rejection because it would be premature to do
so at this time, consistent with the holding of Ex parte Moncla, 95 USPQ2d
1884, 1885 (BPAI 2010) (precedential).

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DECISION
The Examiner’s prior-art rejection is affirmed. We do not reach the
merits of the provisional double-patenting rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED