Ex Parte Johnson et al

Patent Trial and Appeal Board

Jul 30, 2018

14043425 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/043,425 10/01/2013 Michael H. Johnson
44639 7590 08/01/2018
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
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.
PRF4-50986-US-CIP 3087
EXAMINER
STEPHENSON, DANIEL P
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL H. JOHNSON and ZHIYUE XU
Appeal 2017-009916
Application 14/043,425 1
Technology Center 3600
Before LINDA E. HORNER, KEN B. BARRETT, and
ANTHONY KNIGHT,Administrative Patent Judges.
KNIGHT ,Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final Office
Action ("Non-Final") rejecting claims 1 and 4--10. 2 We have jurisdiction
under35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Baker Hughes
Incorporated. Appeal Br. 1.
2 Claims 2, 3, and 12 were canceled and claim 11 is indicated as allowable
by the Examiner. Appeal Br. 7-8 (Claims App'x.).
Appeal 2017-009916
Application 14/043,425
CLAIMED SUBJECT MATTER
The claims are directed to a downhole flow inhibition tool formed of
two components, with at least a portion of one of the components being
dissolvable. Spec. ,r,r 11. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. Downhole flow inhibition tool comprising at least a frrst
component and a mating component at least a portion of one of
the frrst component and the mating component being dissolvable
in a target environment to reduce flow inhibition upon
dissolution of the at least a portion of the one of the frrst
component and the mating component, wherein the frrst
component of the downhole tool is made of a powder metal
compact including a plurality of substantially contiguous coated
particles forming a substantially-continuous, cellular nanomatrix
material.
Appeal Br. 7 (Claims App'x.).
REJECTION
The Examiner made the following rejection:
Claims 1 and 4--10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vaidya et al. (US 2007/0107908 Al, published May 17,
2007) ("Vaidya") and Baker et al. (US 8,535,604 B 1, issued Sept. 17, 2013)
("Baker").
OPINION
The Examiner fmds that Vaidya discloses, inter alia, a downhole flow
inhibition tool including a frrst component and a mating second component
and at least a portion of one of the components being dissolvable. Non-Final
2 (citing Vaidya Figures la-le, 9). TheExaminerfmds that Vaidya
discloses all of the claim limitations except a frrst component made of a
powder metal compact having "a plurality of substantially contiguous coated
2
Appeal 2017-009916
Application 14/043,425
particles forming a substantially-continuous, cellular nanomatrix material."
Id. The Examiner relies upon Baker to teach this limitation missing from
Vaidya. Id. (citing Baker4:18--41 and Figure 5).
Appellants argue that Baker does not teach "substantially contiguous
coated particles forming substantially-continuous, cellular nanomatrix
material." Appeal Br. 4. Appellants refer to paragraph 65 of the
Specification as providing a defmition for the phrase. Id. Appellants
contend that "the term 'substantially-continuous' describes the extension of
the nanomatrix material throughout powder compact 200 such that it extends
between and envelopes substantially all of the dispersed particles 214." Id.
With regard to the term "cellular," Appellants contend that this term "is used
to indicate that the nanomatrix defmes a network of generally repeating,
interconnected, compartments or cells of nanomatrix material 220 that
encompass and also interconnectthe dispersed particles 214." Id. In the
Reply Brief, Appellants inform us of two inter partes review decisions,
IPR2017-00326 andIPR2017-00327,3 in which a similar claim limitation
was previously interpreted by the Board. Reply Br. 2-3.
In response to Appellants' Brief, the Examiner states that Baker
discloses a nanomatrix material that is both "substantially-continuous" and
"cellular." Ans. 3--4. The Examiner explains, "When looking at Fig. 5, [t]he
material ( 13) surrounding particles ( 10) extends between and envelopes
substantially all of the dispersed particles, thus meeting 'substantially-
continuous' and the particles ( 10) are viewed as generally repeating,
3 U.S. Patent No. 9,101,978 ("the '978 patent") was the subject ofIPR2017-
00326 and U.S. Patent No. 8,573,295 ("the '295 patent") was the subject of
IPR2017-00327. The application on appeal is a continuation-in-part of both
patents.
3
Appeal 2017-009916
Application 14/043,425
interconnected, compartments." Id. at 4. The Examiner points to the
Declaration of Karl T. Hartwig In Support of Petitioner Pursuant to 3 7
C.F .R. § 41.120 ("Hartwig Dec."), which was filed by the Petitioner in the
above-referenced inter part es review proceedings, as support for this
fmding. Id.
Both Appellants and the Examiner have differing views as to the
meaning of the phrase "substantially-continuous, cellular nanomatrix
material." Thus, we must determine the meaning of this phrase.
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
defmitions or otherwise that may be afforded by the written
description contained in applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (citation omitted)
("[ 0 ]ur cases recognize that the specification may reveal a special defmition
given to a claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor's lexicography governs.").
Appellants' Specification describes that "[ t ]he use of the term
substantially-continuous, cellular nanomatrix is intended to describe the
extensive, regular, continuous and interconnected nature of the distribution
of nanomatrix material 220 within powder compact 200." Spec. ,r 65. The
Specification defmes the term "substantially-continuous" as follows:
As used herein, "substantially-continuous" describes the
extension of the nanomatrix material throughout powder
compact 200 such that it extends between and envelopes
substantially all of the dispersed particles 214. Substantially-
continuous is used to indicate that complete continuity and
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Appeal 2017-009916
Application 14/043,425
regular order of the nanomatrix around each dispersed particle
214 is not required.
Id.
The Specification also defmes the phrase "cellular" stating, "As used
herein, 'cellular' is used to indicate that the nanomatrix defmes a network of
generally repeating, interconnected, compartments or cells of nanomatrix
material 220 that encompass and also interconnect the dispersed particles
214." Id. We note that the '978 patent and the '295 patent contain the same
defmitions of "substantially-continuous" and "cellular." The Board adopted
these defmitions to interpret the claim limitation "substantially-continuous,
cellular nanomatrix" in the related inter partes review proceedings. See
Bubbletight, LLCv. Baker Hughes Oilfield Operations, Inc., IPR2017-00326
(PT AB May 15, 2017) (Paper 10), at 9-10; Bubbletight, LLCv. Baker
Hughes Oilfield Operations, Inc., IPR2017-00327 (PTAB May 15, 2017)
(Paper 11 ), at 9-10.
An example of the claimed "substantially-continuous, cellular
nanomatrix" is depicted in Appellants' Figure 9. A copy of Appellants'
Figure 9 annotated by the Board appears below.
5
Appeal 2017-009916
Application 14/043,425
214 FIG. 9
218
Appellants' Figure 9 "is a photomicrograph of an exemplary
embodiment of a powder compact." Spec. ,r 22. Appellants' Figure 9
illustrates a nanoscale-thick network of generally repeating, interconnected
compartments or cells 216 that encompass and interconnect the dispersed
particles 214 by extending between and enveloping substantially all of the
dispersed particles 220. As can be seen in Figure 9, complete continuity and
regular order around each dispersed particle is not required.
Based on the defmitions discussed above, we determine that
Appellants acted as their own lexicographer. We adopt the interpretation of
the Board from the related inter partes review proceedings for purposes of
this decision and interpret the term "substantially-continuous, cellular
nanomatrix" to mean "a nanoscale-thick network of generally repeating,
6
Appeal 2017-009916
Application 14/043,425
interconnected compartments or cells that encompass and interconnect the
dispersed particles by extending between and enveloping substantially all of
the dispersed particles. Complete continuity and regular order around each
dispersed particle is not required." Bubbletight, IPR2017-00326 (Paper 10)
at 10; IPR2017-00327 (Paper 11) at 10.
We now examine Baker to determine if it discloses the claimed
material. The Examiner relies upon Figure 5 of Baker for the rejection. We
provide a copy Baker Figure 5, annotated by the Board below.
20
~
Fig. 5
Baker's Figure 5 shows two side-by-side cross-sectional views 4 of an
exemplary metal matrix composite 20 taken with a Scanning Electron
Microscope. Figure 5 shows solid magnesium particulates 10 coated with
aluminum 13. Baker 10:44--51.
4 The left view is less magnified than the right view as noted by the scale
markings in the Figure.
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Appeal 2017-009916
Application 14/043,425
Appellants argue that Baker's matrix is not "substantially continuous"
because "in Baker et al., large gaps can be seen between magnesium
particles 10." Appeal Br. 5. Appellants further contend that Baker's matrix
is not "cellular" because "magnesium particles 10 are not arranged as
generally repeating interconnected compartments." Id. In response, the
Examiner states that " [ o] f course the entire surface of the material is not in
view of Fig. 5, however in step 108 of Fig. 1, it is shown schematically that
the particles would have a generally repeating, interconnected,
compartmental nature. The material is also on a nanoscale." Ans. 4 ( citing
Baker4:18--41 and HartwigDecl. ,r 59).
Appellants' have the better view. Looking at Appellants' Figure 9, it
is apparent that the scale for the drawing is 200 microns as shown in the
lower right hand comer. See In re Meng, 492 F.2d 843, 847 (CCP A 1974)
("a drawing is available as a reference for all that it teaches a person of
ordinary skill in the art."). As can be seen in Appellants' Figure 9, the
particles are roughly about 100-200 microns in diameter with a relatively
thin layer of the cellular nanomatrix extending between the particles. The
image on the left hand side of Baker's Figure 5 is shown with a scale of 100
microns. Baker's particles are about 100 microns in diameter with the
spacing between the particles about the same as the diameter of the particles,
100 microns. Thus, Appellants' position regarding large gaps existing
between the particles in Baker is supported by Baker's Figure 5.
Accordingly, Baker's matrix is not "substantially continuous" matrix as
interpreted above. Accordingly, we agree with Appellants that Baker does
not disclose a "plurality of substantially contiguous coated particles forming
a substantially-continuous, cellular nanomatrix material."
8
Appeal 2017-009916
Application 14/043,425
As to the "cellular" nature of the material, the Examiner refers to
Baker's Figure 1, step 108 as showing "schematically" that the particles of
Figure 5, if the entire surface of the material was shown, would have a
generally repeating, interconnected, compartmental nature. Ans. 4. Below
is a copy of Baker Figure 1.
100
'--.,.
102
i2
100 1!0 11~
Fig. 1
Above is a copy of Baker Figure 1 illustrating a "schematic drawing
of steps in the method of producing the property specific metal matrix
composites, according to the invention." Baker 3 :26-28. It is noted that
Figure 1 of Baker is a schematic and does not contain a scale to allow for
comparison. See Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222
F.3d 951,956 (Fed. Cir. 2000) ("patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue"); In re Wright, 569 F.2d
1124, 1127 (CCPA 1977) ("Absent any written description in the
specification of quantitative values, arguments based on measurement of a
9
Appeal 2017-009916
Application 14/043,425
drawing are of little value."). Thus Baker Figure 1 does not provide
adequate evidentiary support for the Examiner's position. 5
Accordingly, for the reasons as stated above, we do not sustain the
rejection of claim 1.
Claims 4--10 depend on claim 1. Appeal Br. 7-8 ( Claims App 'x. ). In
the rejection of claims 4-10, the Examiner relies on the same deficient
fmdings and reasoning based on Vaidya and Baker discussed above,
regarding claim 1. Thus, for the same reasons discussed above, we do not
sustain the rejection of claims 4--10.
DECISION
For the above reasons, the Examiner's rejection of claims 1 and 4--10
is reversed.
REVERSED
5 Further, to the extent the Examiner's fmding is based on the Hartwig
Declaration submitted in the above-referenced inter partes reviews, we note
that the Board in its decisions denying institution in these proceedings
determined that Mr. Hartwig' s reliance on two separate embodiments, i.e.,
the embodiments of Figures 1 and 5, to support disclosure of a
"substantially-continuous, cellular nanomatrix" was improper because the
embodiments are "incompatible with one another." Bubbletight, IPR2017-
00326 (Paper 10), at 17; IPR2017-00327 (Paper 11), at 20.
10