Preferred Technology, LLC

Patent Trials and Appeals Board

May 25, 2021

2020003493 (P.T.A.B. May. 25, 2021)

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.
14/673,340 03/30/2015 Robert Ray McDaniel 141513.00511 3374
122192 7590 05/25/2021
Pepper Hamilton LLP
400 Berwyn Park
899 Cassatt Road
Berwyn, PA 19312-1183
EXAMINER
LI, AIQUN
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
05/25/2021 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):
bwdocket@pepperlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte ROBERT RAY McDANIEL and AVIS LLOYD McCRARY
_______________
Appeal 2020-003493
Application 14/673,340
Technology Center 1700
_______________

Before TERRY J. OWENS, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 36 and 38–45 of Application

1 In our Decision, we refer to the Specification filed Mar. 30, 2015 (“Spec.”)
of Application 14/673,340 (“the ’340Application”); the Final Office Action
dated Apr. 12, 2019 (“Final Act.”); the Appeal Brief filed Dec. 12, 2019
(“Appeal Br.”); the Examiner’s Answer dated Feb. 4, 2020 (“Ans.”); and
the Reply Brief filed Apr. 6, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Preferred Technology, LLC as the real party in interest. Appeal
Br. 3.
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Application 14/673,340

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14/673,340. See Final Act. 1; Appeal Br. 6. We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The subject matter of the ’340 Application relates to methods for
production of coated proppants used in well fracturing of oil and gas wells.
Spec. ¶¶ 1–2. Solid proppants are employed to keep strata cracks open as
oil, gas, water, and other fluids found in wells flow through the cracks. Id.
¶ 3.
Claim 36 is representative of the ’340 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
36. A process for making a coated proppant solid comprising
a solid proppant core particle substantially covered with a
isocyanate-polyol condensation reaction product, wherein the
isocyanate is present in an amount of about 105 wt% to less
than 300 wt% of isocyanate base value relative to the weight of
the polyol and the polyol is a hydroxy-functional polyether, and
wherein the polyol is not a phenolic polyol, the process
comprising continuously mixing a solid proppant core particle
with an isocyanate and a polyol under conditions to coat the
proppant solid with a isocyanate-polyol condensation reaction
product to make the coated proppant,
wherein the polyol is a hydroxy-functional polyether and
the isocyanate is present in an amount of about 105 wt% to less
than 300 wt of isocyanate base value relative to the weight of
the polyol, and
wherein the polyol is not a phenolic polyol.
Appeal Br. 15 (Claims App.).
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Application 14/673,340

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REFERENCES
The Examiner relies on the following references in rejecting the
claims:
Name Reference Date
Wiser-Halladay US 4,920,192 Apr. 24, 1990
Kaufman et al.
(“Kaufman”)
US 2007/0209794 A1 Sept. 13, 2007
Tanguay et al.
(“Tanguay”)
WO 2010/049467 A1 May 6, 2010
REJECTIONS
The Examiner maintains the following rejections under 35
U.S.C. § 1033 as obvious: (1) claims 36, 38–40, and 42–45 over Tanguay in
view of Wiser-Halladay; and (2) claim 41 over Tanguay in view of Wiser-
Halladay and Kaufman. Final Act. 3–5.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in the Examiner’s
rejections.

3 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
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Application 14/673,340

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Appellant argues claims 36–38, 40, and 42–45 as a group. Appeal Br.
6. We select claim 36 as representative of the group. Claims 38 and 40–45
stand or fall with claim 36. 37 C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner finds that Tanguay teaches the limitations of claim 36
except Tanguay does not teach the isocyanate is in excess relative to the
polyol. Final Act. 3. The Examiner finds that Wiser-Halladay teaches a
stoichiometric excess of isocyanate to polyol with a weight ratio of
isocyanate to polyol within the range of 12:1 to 2:1, with a ratio of at least
3:1 preferred. Ans. 3, 5–6. The Examiner determines that it would have
been obvious to one of ordinary skill in the art to employ a weight ratio of
isocyanate to polyol in the range taught by Wiser-Halladay in the method of
Tanguay to provide a more viscous polyurethane resin for better
consolidation. Id. at 3–4 (citing Wiser-Halladay col. 1, ll. 58–65, col. 2, ll.
5–10, col. 5, ll. 60–65).
Appellant argues that one of ordinary skill in the art would have had
no reasonable expectation of success in combining the teachings of Tanguay
with those of Wiser-Halladay because Wiser-Halladay teaches away from
such a combination. Appeal Br. 8–11. Appellant contends that Wiser-
Halladay indicates that an isocyanate to polyol weight “ratio of less than 3:1
is not ‘useful.’” Id. at 10; Reply Br. 3.
Appellant’s argument is not persuasive of reversible error.
Wiser-Halladay discloses that “[t]he 2:1 ratio of MDI [(isocyanate)] to
DPG [(polyol)] makes a very viscous admixture so it is preferred to use at
least 3:1 or more” of isocyanate to polyol. Wiser-Halladay col. 5, ll. 60–62
(emphasis added). In Table 1 of the reference, a 2:1 ratio is said to be “too
viscous to be useful” but a 3:1 ratio “worked but [is] not quantified.” Id. at
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col. 8, ll. 1–10. Claim 2 of the reference claims a method wherein the
weight ratio of isocyanate to polyol with “within the range of 12:1 to 2:1.”
Id. at col. 8, ll. 30–32.
When references teach away from the claimed combination, it is
improper to combine them in an obviousness rejection. In re Grasselli, 713
F.2d 731, 743 (Fed. Cir. 1983). However, teaching away requires that a
reference “criticize, discredit, or otherwise discourage the solution claimed”
by Appellant. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We find
no such criticism, discrediting, or discouragement here. A “teaching away”
requires more than the mere expression of a general preference. Galderma
Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (citing
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009)). Merely because better alternatives exist in the prior art
does not mean that an inferior combination is inapt for obviousness
purposes. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Disclosed examples, such as
those in Wiser-Halladay, do not constitute a teaching away from a broader
disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). “[A]ll of the
relevant teachings of the cited references must be considered in determining
what they fairly teach to one having ordinary skill in the art.” In re Mercier,
515 F.2d 1161, 1165 (CCPA 1975). Wiser-Halladay discloses and claims
isocyanate to polyol weight ratios of 2:1 to 12:1. Wiser-Halladay col. 5, ll.
60–62, claim 2.
Claim 36 recites, “wherein the isocyanate is present in an amount of
about 105 wt% to less than 300 wt%.” Appeal Br. 15 (Claims App.). Use of
“about” and “less than” in claim 36 allow for values of isocyanate wt% only
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slightly below the recited value. See In re Woodruff, 919 F.2d 1575, 1577
(Fed. Cir. 1990); see also Titanium Metals Corp. of Am. v. Banner, 778 F.2d
775, 783 (Fed. Cir. 1985) (holding as proper a rejection of a claim directed
to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1%
maximum iron, balance titanium” as obvious over a reference disclosing
alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94%
nickel, 0.31% molybdenum, balance titanium because “[t]he proportions are
so close that prima facie one skilled in the art would have expected them to
have the same properties”).
The teachings in Wiser-Halladay support using a weight ratio of
isocyanate to polyol within the claimed range of “less than 300 wt% of
isocyanate base value relative to the weight of the polyol,” even though a
ratio of “at least 3:1 or more” is preferred. See Wiser-Halladay col. 7, ll. 55–
60. At most, Wiser-Halladay conveys that a weight ratio of 2:1 for a
particular isocyanate and a particular polyol was too viscous (see Table 1),
but a weight ratio of 3:1 was successful. Id. at col. 7, ll. 55–60, col. 8, ll. 1–
10. The record does not support Appellant’s characterization of Wiser-
Halladay as limiting the isocyanate to polyol weight ratio to at least 3:1.
Whether a single combination of a particular isocyanate and a particular
polyol at a weight ratio of 2:1 may be unsuitable does not negate Wiser-
Halladay’s broader teachings.
We sustain the rejection of claim 36 as obvious over Tanguay in view
of Wiser-Halladay. For the same reasoning, we sustain the rejection of
claims 38, 40, and 42–45 as obvious over these references. We sustain the
rejection of claim 41 over Tanguay, Wiser-Halladay, and Kaufman.
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Claim 39
Claim 39 depends from claim 36 and recites, “further comprising
mixing the solid proppant core particle with a silane prior to mixing the
proppant core particle with the isocyanate and polyol.” Appeal Br. 15
(Claims App.).
The Examiner rejects claim 39 as obvious over Tanguay in view of
Wiser-Halladay, finding that Tanguay teaches application of an adhesion
promoter to the proppant prior to coating wherein the adhesion promotor
includes aminopropyltriethoxysilane. Final Act. 4; Ans. 4.
Appellant argues that Wiser-Halladay teaches away from the presence
of a silane in a proppant, and including a silane would destroy the intended
purpose of the reference. Appeal Br. 11–13 (citing Wiser-Halladay col. 2, ll.
10–12, col. 3, ll. 6–8). Appellant contends that the Examiner misinterprets
Wiser-Halladay. Reply Br. 4.
Appellant’s arguments are not persuasive.
As discussed supra, teaching away requires that a reference “criticize,
discredit, or otherwise discourage the solution claimed” by Appellant.
Fulton, 391 F.3d at 1201. What the prior art teaches and whether it teaches
toward or away from the claimed invention is a determination of fact. In re
Bell, 991 F.2d 781, 784 (Fed. Cir. 1993) (citing Raytheon Co. v. Roper
Corp., 724 F.2d 951, 960–61 (Fed. Cir. 1983)). Wiser-Halladay discloses
that silanation—required in earlier systems—is not necessary in the
invention. Wiser-Halladay col. 6, ll. 6–8, col. 2, ll. 10–12. That Wiser-
Halladay does not require use of a silane—whose use was known in the prior
art according to the reference—does not warn one of ordinary skill in the art
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against employing silane, does not teach that silane cannot be used, does not
require a finding of “teaching away.”
Moreover, the teachings of a reference that arguably teaches away
from a claimed feature (Wiser-Halladay, according to Appellant) must be
weighed alongside the teachings of a cited reference that teaches the
propriety of using that feature (Tanguay). Para-Ordnance Mfg., Inc. v. SGS
Imps. Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). In the case at hand,
Tanguay teaches that the proppant may further include a silicon-containing
adhesion promoter, which typically has organofunctional silane groups to
improve adhesion of the coating to the particle. Tanguay ¶ 80. Tanguay’s
explanation of the benefit of including a silane outweighs Wiser-Halladay’s
disclosure that a silane is not needed in its specific proppant. Nothing in
Tanguay and Wiser-Halladay suggests that their combined teachings would
produce a “seemingly inoperative device.” See In re Sponnoble, 405 F.2d
578, 587 (CCPA 1969).
We sustain the rejection of claim 39 over Tanguay in view of Wiser-
Halladay.
Claim 41
Claim 41 depends from claim 36. Appeal Br. 15 (Claims App.). The
Examiner rejects claim 41 over Tanguay in view of Wiser-Halladay, further
in view of Kaufman. Ans. 5.
Appellant does not argue for patentability of claim 41 separately from
claim 36. We sustain the rejection of claim 41 for the reasons stated above
in relation to claim 36.
DECISION SUMMARY
In summary:
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Application 14/673,340

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Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
36, 38–40,
42–45 103
Tanguay, Wiser-
Halladay
36, 38–40,
42–45
41 103 Tanguay, Wiser-Halladay, Kaufman 41
Overall
Outcome
36, 38–45
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)(1)(iv).
AFFIRMED