Ex Parte Kakadjian et al

Board of Patent Appeals and Interferences

Jan 26, 2009

10342852 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SARKIS KAKADJIAN,
JACQUES REINALDO GABAY,
and GERARDO ALONSO SANCHEZ
__________

Appeal 2008-006355
Application 10/342,852
Technology Center 1700
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Decided: 1 June 5, 2009
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Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellants request rehearing of a DECISION ON APPEAL
dated January 26, 2009,2 affirming the rejection of claim 24 under 35 U.S.C.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

2 Hereinafter “Decision.”
Appeal 2008-006355
Application 10/342,852

§ 103(a) as unpatentable over the combination of Dobson,3 Vaussard,4 and
Elphingstone5 and the combination of Sifferman,6 Vaussard, and
Elphingstone.
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in the request for
rehearing except as permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See
37 C.F.R. § 41.52(a)(1) (2007).
Discussion
In the Request for Rehearing, the Appellants do not point to any error
in the Board’s conclusion that the subject matter of claim 24 would have
been prima facie obvious over the combined teachings of Dobson, Vaussard,
and Elphingstone or the combined teachings of Sifferman, Vaussard, and
Elphingstone. Rather, the Appellants focus on the Board’s treatment of their
objective evidence of nonobviousness, i.e., Example 1 in the Specification.
In the Decision, the Board observed that the Appellants failed to
demonstrate that (1) Formulations D and E are commensurate in scope with
claim 24, (2) Formulations D and E were compared to the closest prior art,
and (3) the results reported in Example 1 would have been unexpected. See
Decision 5-6.
As to item (1), the Appellants do not point to any error in the Board’s
observation that Formulation E is not commensurate in scope with claim 24.

3 US 5,514,644 issued to Dobson on May 7, 1996.
4 US 5,612,294 issued to Vaussard et al. on March 18, 1997.
5 US 6,001,158 issued to Elphingstone et al. on December 14, 1999.
6 US 6,180,571 B1 issued to Sifferman et al. on January 30, 2001.
2
Appeal 2008-006355
Application 10/342,852

See Decision 6. Rather, the Appellants focus their arguments on
Formulation D. Request 3-4.
The Board found that Formulation D does not contain a pH
controlling agent within the scope of claim 24. Decision 6. However, in the
Request, the Appellants argue that Formulation D contains potassium
chloride “which is a well known equivalent to the pH controlling agent set
forth in Claim 24.” Request 3-4.
Significantly, the Appellants have failed to direct the Board to any
evidence demonstrating that potassium chloride controls the pH in the
claimed drilling fluid in the same manner as the recited pH controlling
agents.7 In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (“Argument in the
brief does not take the place of evidence in the record.”). Moreover, claim
24 encompasses numerous drilling fluids, and thus, is broader in scope than
the single Formulation D. The Appellants have failed to provide any basis
for reasonably concluding that the large number and variety of drilling fluids
encompassed by claim 24 would behave in the same manner as the single
tested Formulation D. For these reasons, the Appellants have failed to
establish that the objective evidence of nonobviousness is commensurate in
scope with claim 24. In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
As to item (2), the Appellants argue that Example 1 “compares the
fluid in accordance with the present invention with the then available closest
commercial product” which “compare[s] reasonably to the teachings of each
of Dobson and Sifferman.” Request 3.

7 As noted in the Decision, the Appellants have also failed to show that a
biocide within the scope of claim 24 was used in Formulation D. See
Decision 6.
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Appeal 2008-006355
Application 10/342,852

As explained in In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984),
“an applicant relying on comparative tests to rebut a prima facie case of
obviousness must compare his claimed invention to the closest prior art.” In
this case, the claimed drilling fluid has not been compared with the closest
prior art (i.e., Dobson and Sifferman). Although the commercial product
may “compare reasonably” to the drilling fluids of Dobson and Sifferman,
the products are different. The Appellants have failed to explain why,
despite the differences, the commercial product is representative of the
performance of the drilling fluids of Dobson and Sifferman.
As to item (3), the Appellants argue that the data reported in Example
1 “shows beneficial results obtained by utilizing schleroglucan” which “are
far in excess of what could possibly have been expected from any teachings
of Vaussard.” Request 3.
It is well established that unexpected results must be established by
factual evidence. Arguments or conclusory statements in the Specification
are not sufficient. De Blauwe, 736 F.2d at 705. Thus, to the extent that
better results are observed with drilling fluids containing schleroglucan (i.e.,
Formulations D and E) compared to drilling fluids that do not contain
schleroglucan (i.e., fluids in Tables 3-5), the Appellants have failed to direct
the Board to any evidence establishing that these better results would have
been unexpected. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973).
For the reasons set forth above, the Board correctly concluded that the
prior art of record and the Appellants’ objective evidence of
nonobviousness, on balance, do not establish that the subject matter of claim
24 is patentable over the prior art of record.
Conclusion
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Appeal 2008-006355
Application 10/342,852

The Appellants’ Request for Rehearing has been granted to the extent
that the DECISION ON APPEAL dated January 26, 2009, has been
reconsidered in light of the Appellants’ arguments. However, the Request is
denied because the Decision is not modified in any respect.
REHEARING DENIED

tc

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