HALLIBURTON ENERGY SERVICES, INC.

Patent Trials and Appeals Board

Jul 28, 2020

14768280 - (D) (P.T.A.B. Jul. 28, 2020)

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.
14/768,280 08/17/2015 James Marshall Barker 140846-020303US 6303
127406 7590 07/28/2020
Chamberlain Hrdlicka
Halliburton Energy Services, Inc.
1200 Smith St., 14th Floor
Houston, TX 77002
EXAMINER
BEMKO, TARAS P
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
Patents@chamberlainlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MARSHALL BARKER and CORBIN SEAN GLENN
Appeal 2019-006450
Application 14/768,280
Technology Center 3600
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–28.1 See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Halliburton Energy Services, Inc. as the real
party in interest. Appeal Br. 3.
Appeal 2019-006450
Application 14/768,280

2
THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a shaped charge liner with
nanoparticles. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for forming a liner for use in a shaped-charge
comprising:
mixing a powdered metal, a powdered metal binder, and
a selected amount of nanoparticle material to increase a density
of the liner, to produce a mixture; and
compressively forming the mixture into a rigid body.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Clark US 2002/0129726 A1 Sept. 19, 2002
Marya US 2009/0151949 A1 June 18, 2009
Scott US 2012/0085585 A1 Apr. 12, 2012
Onbattuvelli The effects of nanoparticle
addition on SiC and AlN
powder-polymer mixtures:
Packing and flow behavior,
International Journal of
Refractory Metals and
Hard Materials, Vol. 36,
183–190, (2013)
2013

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REJECTIONS
I. Claims 1–3, 8–10, 17–19, and 23–25 are rejected under 35
U.S.C. § 103 as unpatentable over Marya and Onbattuvelli.
II. Claims 4–7, 11–16, 20–22, and 26–28 are rejected under 35
U.S.C. § 103 as unpatentable over Marya, Onbattuvelli, Clark, and Scott.
OPINION
Rejection I; Marya and Onbattuvelli
The Examiner finds that Marya discloses each of the recited elements
including “mixing a powdered metal, a powdered metal binder, and a
selected amount of nanoparticle material to create or produce a mixture,”
except Marya does not explicitly disclose the use of nanoparticles to increase
density. Final Act. 3. The Examiner finds that Onbattuvelli discloses that
adding nanoparticles will increase the density of a mixture.2 Id. (citing
Onbattuvelli, Abstr.). The Examiner considers it would have been obvious
to add nanoparticle material to Marya’s mixture to form a material with a
desired density as taught by Onbattuvelli. Id. According to the Examiner,
adding nanoparticle materials to the mixture to increase density would have
been within the abilities of one of ordinary skill, would have been
predictable, and would have had a reasonable expectation of success. Id.
Appellant argues claims 1–3, 8–10, 17–19, and 23–25 as a group with
no argument directed to any one claim. Appeal Br. 10–12. We select claim
1 as representative of the group and claims 2, 3, 8–10, 17–19, and 23–25
stand or fall with claim 1.

2 The Examiner refers to Onbattuvelli as “Nano.” Final Act. 2.
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Appellant argues that Onbattuvelli teaches away from using
nanoparticles to increase density of a metallic mixture, because Onbattuvelli
is limited to “SiC and AlN powder-polymer mixtures and only where
nanoscale particles are combined with sub-micrometer particles in a bimodal
mixture.” Appeal Br. 10. According to Appellant, for all other materials,
Onbattuvelli’s disclosure that “nanoparticles are known to inherently exhibit
poor packing behavior (i.e., decrease the density)” applies. Id. at 11.
The Examiner responds that the teachings of Onbattuvelli are not
limited to the disclosed examples and that Onbattuvelli broadly teaches how
to achieve higher density using nanoparticles. Ans. 4–5.
Appellant replies that the Examiner impermissibly expands the
teachings of Onbattuvelli to apply to metallic mixtures, whereas
Onbattuvelli’s disclosure of nanoparticles affecting density only applies to a
powder-polymer mixture of the same type of ceramic particles. Reply Br.
6. Appellant contends Onbattuvelli’s disclosure “does not support the
performance of adding nanoparticles to anything other than SiC and AlN
powder-polymer mixtures and certainly does not support the performance of
adding nanoparticles to any bimodal mixture as the Examiner suggests.” Id.
Appellant concludes that Onbattuvelli’s teachings do not suggest that
Marya’s mixtures fall within Onbattuvelli’s limited examples and instead are
subject to conventional understanding that nanoparticles decrease density.
Id. at 7.
Appellant’s teaching away arguments are not persuasive. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
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was taken by the applicant.” DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citation omitted). We
agree with the Examiner that Onbattuvelli is not limited to SiC and AlN
mixtures because Onbattuvelli discloses that the “principle of bimodal μ-n
powder mixtures can also be applied to other material systems and
applications through the use of the approach reported in this work.”
Onbattuvelli, 188. Because Onbattuvelli does not discourage adding
nanoparticles to a bimodal μ-n metal powder mixture to increase density, we
are not persuaded that Onbattuvelli teaches away from the claimed
invention.
Appellant also argues that because Marya already uses metallic
nanoparticles for exothermic reactions, whereas Onbattuvelli uses
nanoparticles with ceramic mixtures there is no reason to modify Marya’s
metallic nanoparticles with the nanoparticles of Onbattuvelli. Appeal Br. 11.
The Examiner responds that Appellant appears to attack the references
individually, because Onbattuvelli was cited to teach that nanoparticles can
be used to increase density of a mixture, which is a separate teaching from
Marya’s use of nanoparticles for exothermic reactions. Ans. 7.
Appellant replies that a motivation to combine Onbattuvelli with
Marya requires that nanoparticles produce an exothermic reaction. Appeal
Br. 7–8. We are not persuaded by Appellant’s argument.
We agree with the Examiner that Appellant’s arguments are an attack
on Onbattuvelli individually whereas the rejection is based on the combined
teachings of Marya and Onbattuvelli. See In re Keller, 642 F.2d 413, 425
(CCPA 1981) (explaining that one cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
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references). The Examiner does not propose to modify Marya’s use of
nanoparticles that produce an exothermic reaction but rather, finds that it
would have been obvious “to have added a selected amount of nanoparticle
material, as disclosed by [Onbattuvelli], to the mixture of Marya to form a
material having a desired density for use in subterranean drilling.” Final
Act. 3 (emphasis added). That nanoparticles may be used for different
purposes is of no import where the purposes are not adverse to each other
and the Examiner proposes to use them for their intended purposes. See id.
(“The use of the same nanoparticles to create multiple benefits (i.e. the
benefits attained by Marya and the benefits attained by Nano) would have
been predictable.”). Onbattuvelli’s nanoparticles would predictably
“increase packing density of a powdered mixture by allowing particles to fill
otherwise open voids.” Ans. 7.
Appellant also contends, in the Reply Brief (and for the first time in
this Appeal), that “neither Onbattuvelli nor Marya teach or suggest a mixture
that includes a powdered metal, a powdered metal binder, and a nanoparticle
material.” Reply Br. 8–9. We note that as discussed above, in the Final
Office Action, the Examiner found that Marya discloses a mixture of a
powdered metal, a powdered metal binder, and a selected amount of
nanoparticle material and Appellant did not dispute that finding in the
Appeal Brief. This argument is not persuasive in light of the Examiner’s
undisputed finding. In any event, the argument is also untimely and
Appellant does not present any evidence or explanation to show good cause
why it should be considered by the Board at this time. See 37 C.F.R.
§ 41.41(b)(2) (“Any argument raised in the reply brief which was not raised
in the appeal brief, or is not responsive to an argument raised in the
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[Examiner’s] answer . . . will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”).
We have considered all of Appellant’s arguments in support of the
patentability of claim 1, but find them unavailing. Accordingly, we sustain
the rejection of claim 1 as unpatentable over Marya and Onbattuvelli.
Claims 2, 3, 8–10, 17–19, and 23–25 fall with claim 1.

Rejection II; Marya, Onbattuvelli, Clark, and Scott
Claims 4–7, 11–16, 20–22, and 26–28 depend from one of claim 1, 8,
17, and 23. Appellant does not separately argue for the patentability of
claims 4–7, 11–16, 20–22, and 26–28. See Appeal Br. 12–13. Accordingly,
we sustain the rejection of claims 4–7, 11–16, 20–22, and 26–28 as
unpatentable over Marya, Onbattuvelli, Clark, and Scott for the same
reasons discussed above for Rejection I.
DECISION
The Examiner’s rejections are affirmed.
More specifically,

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 8–10,
17–19, 23–25
103 Marya, Onbattuvelli,
Clark, Scott
1–3, 8–10,
17–19, 23–25

4–7, 11–16,
20–22, 26–28
103 Marya, Onbattuvelli,
Clark, Scott
4–7, 11–16,
20–22, 26–28

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome:
1–28
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED