HALLIBURTON ENERGY SERVICES, INC.

Patent Trials and Appeals Board

Jan 28, 2022

2021004114 (P.T.A.B. Jan. 28, 2022)

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. 15/113,163 07/21/2016 Thomas Jason Pisklak 2013-IP-082788U1 US 7703 112839 7590 01/28/2022 C. Tumey Law Group PLLC - HES C. Tumey Law PO Box 890226 Houston, TX 77062-9998 EXAMINER NOLD, CHARLES R ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 01/28/2022 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): bdempsey@ctumeylawgroup.com ctumey@ctumeylawgroup.com docketing@ctumeylawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS JASON PISKLAK, PAULINE AKINYI OTIENO, KYRIACOS AGAPIOU, and SAMUEL JASON LEWIS Appeal 2021-004114 Application 15/113,163 Technology Center 3600 Before PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-8, 11, and 12, which constitute all the claims pending in this application. See Appeal Br. 3. Claims 9, 10, and 13- 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Halliburton Energy Services, Inc. as the real party in interest. See Appeal Br. 2. Appeal 2021-004114 Application 15/113,163 2 23 have been cancelled. See id. at 16-18 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The application is titled “Passivated Cement Accelerator.” Spec. 1. Claim 1 is the sole independent claim (see Appeal Br. 16-18 (Claims App.)) and is reproduced below with emphasis added to two limitations addressed in our decision: 1. A method of cementing comprising: providing a liquid additive comprising a passivated cement accelerator, the passivated cement accelerator comprising particles of a cementitious material and, comprising a passivating layer said passivating layer comprising of a hydration reaction product formed by adding the particles to water that encapsulates the particles of the cementitious material, the passivated cement accelerator being prepared a process comprising: mixing the particles of the cementitious material with an amount of water such that the particles of the cementitious material do not agglomerate; and agitating the particles of the cementitious material and water at a rate such that the particles of the cementitious material do not settle in the water; storing the liquid additive in a pumpable fluid state for at least one day; after storing the liquid additive, combining the liquid additive comprising the passivated cement accelerator with at least a cement and water to prepare a cement composition, wherein the passivated cement accelerator includes the passivating layer when combined with the water, and wherein the passivating layer at least partially dissolves in an alkaline environment formed by the water and the cement; and allowing the cement composition to set. Appeal 2021-004114 Application 15/113,163 3 Id. at 16 (Claims App.) (emphases added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Roddy US 2009/0200029 A1 Aug. 13, 2009 Al-Yami US 2015/0107494 A1 Apr. 23, 2015 Mitchell Robert F. Mitchell, Petroleum Engineering Handbook, Drilling Engineering, Society of Petroleum Engineering: 2006 Society of Petroleum Engineers, vol. II, p. 11- 393 2006 REJECTIONS The following rejections are before us on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis 1-3, 5, 6, 8, 11, 12 103 Roddy, Mitchell 4, 7 103 Roddy, Mitchell, Al-Yami See Final Act. 4-10. I. Rejection Over Roddy and Mitchell The Examiner rejects claims 1-3, 5, 6, 8, 11, and 12 as unpatentable under 35 U.S.C. § 103 over Roddy in view of Mitchell. Final Act. 4. a. Examiner’s Rejection In rejecting sole independent claim 1, the Examiner finds that Roddy teaches all of the claimed steps with the exception of: Appeal 2021-004114 Application 15/113,163 4 (a) mixing the particles of the cementitious material with an amount of water such that the particles of the cementitious materials do not agglomerate; and (b) agitating the particles of the cementitious material and water at a rate such that the particles of the cementitious material do not settle in the water. Final Act. 4-6. To address missing limitations (a) and (b), the Examiner relies on Mitchell, and finds that Mitchell teaches that when a passivated cement accelerator such as gypsum is added to cement certain chemistries may happen resulting in the formation of hemihydrates and/or soluble anhydrites that can rehydrate to give “secondary gypsum, causing a rapid set”, which is agglomeration. The solution is taught to add more water or mixing . . . . ‘Pump ability can be regained on further mixing or addition of water, assuming the quantity of secondary gypsum is not too great.’” Final Act. 6 (citing Mitchell, p. 11-393, ll. 24-28). In modifying Roddy based on Mitchell’s teachings, the Examiner reasons that “[i]t would have been obvious to one having ordinary skill in the art to modify Roddy and mix and add water to prevent agglomeration and settling because Mitchel teaches that this is the solution to a problem caused during adding Gypsum to cement.” Id. at 7. b. Appellant’s Argument In contesting the rejection, Appellant argues, inter alia, that “the combination of Roddy and Mitchell does not teach each limitation of the claim.” Appeal Br. 5. In particular, Appellant contends that: Appeal 2021-004114 Application 15/113,163 5 (1) “the references fail to teach the limitation of ‘after storing the liquid additive, combining the liquid additive comprising the passivated cement accelerator with at least a cement and water to prepare a cement composition’ as required by claim 1” (id. at 10 (emphasis added); see also Reply Br. 4)); and (2) “The Examiner has not addressed the limitation of ‘agitating the particles of the cementitious material and water at a rate such that the particles of the cementitious material do not settle in the water’” (Reply Br. 3 (emphasis added)). c. Analysis Appellant’s two arguments are persuasive. As to (1), claim 1 recites, “after storing the liquid additive, combining the liquid additive comprising the passivated cement accelerator with at least a cement and water to prepare a cement composition.” Appeal Br. 16 (Claims App.) (emphasis added). We agree with Appellant that “[t]here is nothing in Roddy to teach or suggest combining the liquid additive comprising the passivated cement accelerator with a cement and water to prepare a cement composition after the step of storing the liquid additive.” Reply Br. 4. When addressing this limitation, the Examiner fails to consider the order of steps required by the claim. Claim 1 requires that “the passivated cement accelerator” is prepared by a process comprising the sub-steps of “mixing the particles of cementitious material with an amount of water . . . ,” “agitating the particles of cementitious material and water . . . [so as to prevent settling],” and “storing the liquid additive in a pumpable fluid state for at least one day.” Appeal 2021-004114 Application 15/113,163 6 Appeal Br. 16 (Claims App.). Claim 1 further requires that “after storing the liquid additive,” the “liquid additive comprising the passivated cement accelerator [is combined] with at least a cement and water to prepare a cement composition.” Id. The Examiner cites to paragraph 16 of Roddy for satisfying the “after storing” limitation (Final Act. 5), yet we do not find anything in this paragraph that teaches the claimed order of steps. To illustrate, we reproduce the entirety of Roddy’s paragraph 16, below: The settable compositions of the present invention generally may comprise water and a natural pozzolan, in accordance with embodiments of the present invention. In addition, the settable compositions of the present invention further may comprise at least one of cement or cement kiln dust. For example, a settable composition of the present invention may comprise hydraulic cement, cement kiln dust, a natural pozzolan, and water. In certain embodiments, the cement may comprise Portland cement interground with burned shale. By way of example, a settable composition of the present invention may comprise cement, a natural pozzolan, and water, wherein the cement comprises Portland cement interground with burned shale. As described in more detail herein, embodiments of the settable compositions of the present invention may be foamed and/or extended as desired by those of ordinary skill in the art. Roddy ¶ 16. We find no teaching in Roddy’s paragraph 16 that addresses “combining the liquid additive comprising the passivated cement accelerator with at least a cement and water to prepare a cement composition” “after storing the liquid additive,” as required by claim 1. Appeal Br. 16 (Claims App.) (emphasis added). Moreover, the Examiner does not address this particular argument in the Answer. See Ans. 4-6. Furthermore, and in response to Appellant’s argument (2), we agree with Appellant that the rejection fails to account for the step of “agitating the particles of the cementitious material and water at a rate such that the Appeal 2021-004114 Application 15/113,163 7 particles of the cementitious material do not settle in the water.” Reply Br. 3. The Examiner acknowledges that Roddy does not teach this limitation (Final Act. 6), but nevertheless fails to fully address it. As explained above, the Examiner finds that Roddy does not disclose the steps of: (a) “mixing the particles of the cementitious material with an amount of water such that the particles of the cementitious materials do not agglomerate”; and (b) “agitating the particles of the cementitious material and water at a rate such that the particles of the cementitious material do not settle in the water.” Id. In modifying Roddy based on Mitchell’s teachings, the Examiner addresses step (a), but not step (b). In particular, the Examiner relies on Mitchell for teaching that “[p]ump ability can be regained on further mixing or addition of water, assuming the quantity of secondary gypsum is not too great” (Final Act. 6 (citing Mitchell p. 11-393, ll. 24-28)) and reasons that “[i]t would have been obvious to one having ordinary skill in the art to modify Roddy and mix and add water to prevent agglomeration and settling because Mitchell teaches that this is the solution to a problem caused during adding Gypsum to cement” (id. at 7). Although the Examiner’s reasoning fully satisfies step (a) of “mixing the particles of the cementitious material with an amount of water such that the particles of the cementitious materials do not agglomerate,” it does not address the step (b) of “agitating” to prevent settling. In other words, even if Mitchell teaches adding water or mixing to improve “pump ability,” nothing in Mitchell teaches agitating the mixture to prevent settling, as required by the claim. See Mitchell p. 11-393. If the Examiner’s position is that the steps of “mixing” and “agitating” are both satisfied by Mitchell’s teaching of “mixing,” we disagree. Appeal 2021-004114 Application 15/113,163 8 Although the terms “mixing” and “agitating” may be similar, we infer that the terms have different meanings. See, e.g., Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004) (“[T]he use of [two similar but different] terms in close proximity in the same claim gives rise to an inference that a different meaning should be assigned to each.”). If the Examiner’s position is that settling is inherently prevented when water is mixed with Roddy’s composition, we further disagree. Notably, there may be multiple solutions to prevent settling of cementitious material in water, not just agitation. For instance, suspension aids may also be used to prevent cementitious material from settling. See cf. Spec ¶ 41 (“the particles of the cementitious material should not be allowed to settle, therefore, although very large amounts of water may keep the particles from agglomerating they may also require very vigorous agitation or large amounts of suspension aids to keep the particles from settling.”). In the present case, the Examiner has not explained whether the proposed modification would yield a mixture that requires or would otherwise benefit from agitation. See Final Act. 6-7; see also Ans. 4-6. For all we know, Roddy’s composition utilizes suspension aids or some other technology that prevent settling, and agitation would not be needed to prevent settling. For this additional reason, we cannot sustain the rejection. Accordingly, we do not sustain the rejection of independent claim 1, or of its dependent claims 2, 3, 5, 6, 8, 11, and 12, which inherit the same rejection infirmities (see Final Act. 7-9), as unpatentable over Roddy and Mitchell. Appeal 2021-004114 Application 15/113,163 9 II. Rejection Over Roddy, Mitchell, and Al-Yami In rejecting dependent claims 4 and 7 as unpatentable over Roddy, Mitchell, and Al-Yami, the Examiner relies on the same unsupported analysis discussed above. See Final Act. 9-10. For the same reasons we do not sustain the rejection of independent claim 1 as unpatentable over Roddy and Mitchell, we do not sustain the rejection of dependent claims 4 and 7 as unpatentable over Roddy, Mitchell, and Al-Yami. III. Conclusion For the foregoing reasons, we reverse the Examiner’s rejections of claims 1-8, 11, and 12. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1-3, 5, 6, 8, 11, 12 103 Roddy, Mitchell 1-3, 5, 6, 8, 11, 12 4, 7 103 Roddy, Mitchell, Al-Yami 4, 7 Overall Outcome 1-8, 11, 12 REVERSED