Agienic, Inc.Download PDFPatent Trials and Appeals BoardDec 16, 20212021000352 (P.T.A.B. Dec. 16, 2021) Copy Citation 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. 16/216,225 12/11/2018 Anoop Agrawal 4534-102US2 1071 6449 7590 12/16/2021 ROTHWELL, FIGG, ERNST & MANBECK, P.C. 607 14TH STREET, N.W. SUITE 800 WASHINGTON, DC 20005 EXAMINER SHIN, MONICA A ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 12/16/2021 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): PTO-PAT-Email@rfem.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANOOP AGRAWAL, DONALD R. UHLMANN, and NICHOLAS R. KRASNOW Appeal 2021-000352 Application 16/216,225 Technology Center 1600 Before ULRIKE W. JENKS, TAWEN CHANG, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims to an oil field coated proppant as being obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Agienic Inc. (Appeal Br. 1.) Appeal 2021-000352 Application 16/216,225 2 STATEMENT OF THE CASE “Proppants used in the oil and gas industry are generally particles of sand and ceramics.” (Spec. 61.) Resin coatings that “increase the crush strengths of the proppants” are known. (Id.) These “durable resin coating[s]” also are able to “retain pieces of proppant . . . broken under the high downhole pressure” and “bond individual proppant particles together.” (Id.) “Generally, one finds mixtures of bacteria and biofilms of multi- species [of] bact[]eria in oil wells . . . .” (Id. at 58.) Narrow fissures “in rock . . . are most prone to getting blocked by biofilms or bacteria.” (Id. at 60.) Appellant’s invention is directed to incorporating antimicrobial agents into coatings on the proppant particles, which agent is released by the proppants in the narrow fissures in the rock, thereby “reduc[ing] the frequent cost of treating the well with biocides and provid[ing] local antimicrobial action for an extended period of time.” (Id. at 60–61.) Claims 1–7 and 10–19 are on appeal.2 Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. An oil field proppant comprising frac sand or an aluminum oxide-containing particulate wherein said proppant is coated with a thermoset polymer coating containing at least one antimicrobial material in the range of 0.05 to 70 wt. % as compared to the weight of said polymer coating wherein the said antimicrobial material does not react with the said thermoset polymer coating, and the thermoset polymer coating releases the antimicrobial material or a component of the antimicrobial 2 Claims 20 and 21 remain pending but are withdrawn from consideration. Appeal 2021-000352 Application 16/216,225 3 material with antimicrobial properties under conditions present in an oil well, thereby providing antimicrobial activity in the oil well. (Appeal Br. 71.) The prior art relied upon by the Examiner is: Name Reference Date Nguyen et al. US 2017/0191357 A1 July 6, 2017 Sherman et al. US 2016/0137911 A1 May 19, 2016 Shaikh et al. US 2012/0227967 A1 Sept. 13, 2012 Turakhia et al. US 2011/0024129 A1 Feb 3, 2011 McDonald US 4,413,931 Nov. 8, 1983 Aldcroft et al. US 6,905,698 B1 June 14, 2005 The Engineering ToolBox Polymers – Physical Properties: Thermoplastics, available at https://www.EngineeringToolBox.com, 1–5 2008 American Elements Silver Nanoparticles, available at https://www.americanelements.com, 1–8 1998 Haliburton Aldacide® G Product Data Sheet, available at halliburton.com/baroid 2016 The following grounds of rejection by the Examiner are before us on review3: Claims 7 and 12–14 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, The Engineering ToolBox, and American Elements. 3 In the Final Action the Examiner had also rejected claims 1–7 and 10–19 for non-statutory double patenting. However, in the Answer, the Examiner withdrew that rejection in light of the recordation of the terminal disclaimer over U.S. Patent 10,208,241 filed on July 13, 2020. (Ans. 4.) Appeal 2021-000352 Application 16/216,225 4 Claims 1, 2, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, The Engineering ToolBox, American Elements, Sherman, and Haliburton. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, Sherman, The Engineering ToolBox, American Elements, Haliburton, and Shaikh. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, Sherman, The Engineering ToolBox, American Elements, Haliburton, and Turakhia. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, Sherman, The Engineering ToolBox, American Elements, Haliburton, and McDonald. Claims 3, 11, and 15–18 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, Sherman, The Engineering ToolBox, American Elements, Haliburton, and Aldcroft. DISCUSSION Claim 7 The Examiner found that Nguyen discloses biocidal proppant particulates where a biocidal coating comprising a plurality of biocidal nanoparticles dispersed within a binder material is adhered to the proppant particulates. (Final Action 5.) The Examiner further found that Nguyen teaches that suitable proppant particulates “are not believed to be particularly limited” and include sand. (Id. at 6 (citing Nguyen ¶ 28).) The Examiner further found that Nguyen teaches the binder may be a curable resin, such as a thermosetting resin. (Id. (citing Nguyen ¶¶ 34, 41).) In Appeal 2021-000352 Application 16/216,225 5 addition, the Examiner found that Nguyen teaches that “the biocidal nanoparticles may comprise about 10% or less of the biocidal coating by weight (para.0032).” (Id.) The Examiner concluded that because this teaching overlaps with the range recited in claim 7, a prima facie case of obviousness exists. (Final Action 7.) The Examiner further concluded that because Nguyen discloses that the quantity of biocidal nanoparticles present may be dictated by the type, species, quantity, and/or location of bacteria in a subterranean environment that the amount of biocidal nanoparticles is clearly a result effective parameter that one of ordinary skill in the art “would routinely optimize.” (Id. at 7–8.)4 In light of the evidence of record, we do not agree with the Examiner’s assertion that Nguyen teaches a coated proppant where the biocidal nanoparticles may comprise about 10% or less of the biocidal coating composition by weight. Nguyen describes a proppant free biocidal coating that is applied to a fracture (Nguyen ¶¶ 18, 22), as well as a coating of biocidal nanoparticles on a proppant in which coated particulates are set into propped fractures (Nguyen ¶¶ 16, 22). Nguyen refers to the coated proppant particulates as “biocidal proppant particulates.” (Id. ¶¶ 22–23.) Nguyen teaches that “[t]he proppant-free pad fluid” that contains “the components of the biocidal coating” is “introduced to the subterranean formation” during a fracturing operation “resulting in the creation of one o[r] more fractures at the fracture face,” and “[b]y adhering th[at] biocidal coating upon the fracture face as the fractures form, such as through forming an adhesive bond, the likelihood of bacterial growth within inaccessible 4 The Examiner relied on American Element and the Engineering ToolBox to address density limitations in dependent claims. (Final Action 6.) Appeal 2021-000352 Application 16/216,225 6 regions of the subterranean formation can be decreased.” (Nguyen ¶ 18; see also id. ¶ 27.) Paragraph 32 of Nguyen states: In some embodiments, the biocidal nanoparticles may comprise about 10% or less of the biocidal coating by weight, or about 5% or less of the biocidal coating by weight. When disposed on proppant particulates, the biocidal proppant particulates may comprise about 5% or less of the biocidal coating by weight, or about 1% or less of the biocidal coating by weight. Notably, Nguyen does not teach that in all embodiments the biocidal nanoparticles may comprise about 10% or less of the biocidal coating by weight, only that this is the case in some embodiments. In paragraph 75, Nguyen notes that the pad fluid comprising a binder material that has a plurality of biocidal nanoparticles dispersed therein is introduced into a wellbore and is disposed as a biocidal coating on the fracture face. In paragraph 77, Nguyen further describes embodiments “[w]hen treating a fracture face and forming a biological coating thereon.” Nguyen states that in those embodiments “the pad fluid may comprise about 10% or less of the biocidal nanoparticles by weight relative to the weight of the pad fluid.” (Nguyen ¶ 77.) It is the pad fluid with all that it contains that forms the coating composition of the fracture face. In other words, paragraph 77 supports interpreting the “[i]n some embodiments” sentence of paragraph 32 as relating only to the biocidal coating on the fracture face that is proppant free. In contrast to the foregoing, nowhere in Nguyen, other than the Examiner’s interpretation of paragraph 32, is there a teaching of a percentage of biocidal nanoparticles relative to the weight of a coating on a proppant. Appeal 2021-000352 Application 16/216,225 7 During prosecution, Appellant provided the Declaration of one of the named inventors of the Application on Appeal, Dr. Donald Uhlmann, describing how one of ordinary skill in the art would have understood the teachings of Nguyen regarding the concentrations of biocidal nanoparticles. (Uhlmann Declaration dated April 13, 2020.) In particular, Dr. Uhlmann provides his conclusion that one of ordinary skill in the art reading Nguyen would have understood the “[i]n some embodiments” statement in paragraph 32 of Nguyen to refer to the amount of biocidal nanoparticles in a fracture face coating and the reasons for arriving at such a conclusion. (Uhlmann Declaration ¶¶ 6–7.) In particular, Dr. Uhlmann states that this sentence is “followed by specific teachings for coatings on proppant particles” and thus in light of the teachings of paragraph 18 of the reference to a biocidal coating that is applied directly to a fracture face without being carried on proppant particulates, one of ordinary skill in the art would have understood the “[i]n some embodiments sentence” to relate to coatings on a fracture face. (Id. ¶¶ 6–7.) The Examiner does not provide a factual basis for disregarding Dr. Uhlmann’s Declaration evidence or reconciling the teachings of paragraph 77 of Nguyen with paragraph 32. Instead, the Examiner simply states that based on her reading of paragraphs 15–18 and 32 of Nguyen that it is reasonable to interpret the sentence in paragraph 32 as “Nguyen discloses a single type of coating composition that may be used in different embodiments.” (Advisory Action, dated May 18, 2020, 2–3.) We, however, determine that it is just as reasonable to conclude from the entirety of Nguyen’s disclosure that the disputed sentence in paragraph 32 of Nguyen only refers to the percentage of biocidal nanoparticles that is part of the non- Appeal 2021-000352 Application 16/216,225 8 proppant coating composition on the fracture face. And, given the Declaration evidence, we conclude that the preponderance of the evidence favors Appellant’s position. (Appeal Br. 23–25.) We agree with Appellant and Appellant’s Declarant that nowhere in Nguyen is there a teaching of the weight percent of the biocidal nanoparticles in the coating to be used to coat the proppant particles, and that one of ordinary skill in the art would not have taken the teaching with respect to the weight percent in a fracture coating to be relevant to the weight percent of biocidal nanoparticle to be used in a composition to coat proppant. (See Appeal Br. 25–32; Uhlmann Declaration ¶¶ 10–12.) We also agree with Appellant that because the general condition for a weight percentage of biocidal nanoparticle to be used in the proppant coating composition is not provided, there is insufficient guidance to arrive at the claimed percentages through routine optimization. (Appeal Br. 32–35.) The fact that Nguyen discloses that the quantity of biocidal nanoparticles may be dictated by species, quantity, and/or location of bacteria in a subterranean environment does not provide a reason to provide a particular weight percentage of biocidal nanoparticle in the composition that is to be used to coat the proppant. That is because there are other ways to adjust the quantity of biocidal nanoparticle, such as by adding more coated proppant. Thus, we reverse the Examiner’s rejection of claims 7 and 12–14 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, The Engineering ToolBox, and American Elements. Appeal 2021-000352 Application 16/216,225 9 Claim 1 The Examiner relies on the teachings of Sherman for the obviousness of modifying the amount of antimicrobial material to between 20 and 70 weight % of the proppant coating of Nguyen. (See Final Action 11.) The Examiner urges that Sherman teaches that fillers, such as nanoparticles, can be combined with a thermosetting resin for a polymer coating to be used to coat sand proppant used in subterranean operations. (Id. (citing Sherman Title, abstract, and ¶¶ 2, 19, 14, 66).) As discussed above, we do not agree that Nguyen teaches even the broader range recited in claim 7. Furthermore, we also do not agree with the Examiner’s findings regarding Sherman. Sherman teaches that additives that improve mechanical properties and/or cure strength of the polymer can be added in between 0–50% by weight of the polymer coating. (Sherman ¶¶ 14, 40, 66.) Sherman also discloses that the filler can be a chemical additive, such as antimicrobial metals, to improve in situ properties/activities. (Id. ¶¶ 14, 41.) However, Sherman does not disclose that the same 0–50% by weight range applies to such chemical additives. (Id.) Thus, like Nguyen, Sherman is silent regarding the percent by weight antimicrobial metal that is present in the coating that includes a thermosetting resin to be applied on a proppant. Consequently, we agree with Appellant that Sherman does not cure the deficiency in the Examiner’s rejection noted above. (Appeal Br. 41–45.) Thus, we reverse the Examiner’s rejection of claims 1, 2, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, The Engineering ToolBox, American Elements, Sherman, and Haliburton. Appeal 2021-000352 Application 16/216,225 10 Furthermore, none of Shaikh, Turakhia, McDonald, or Aldcroft cure the deficiencies of Nguyen or Sherman. Consequently, we also reverse the Examiner’s rejections of claims 3, 4, 10, 11, and 15–19 for obviousness. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7, 12–14 103 Nguyen, The Engineering ToolBox, American Elements, 7, 12–14 1, 2, 5, 6 103 Nguyen, The Engineering ToolBox, American Elements, Sherman, Haliburton 1, 2, 5, 6 19 103 Nguyen, Sherman, The Engineering ToolBox, American Elements, Haliburton, Shaikh 19 10 103 Nguyen, Sherman, The Engineering ToolBox, American Elements, Haliburton, McDonald 10 Appeal 2021-000352 Application 16/216,225 11 4 103 Nguyen, Sherman, The Engineering ToolBox, American Elements, Haliburton, Turakhia 4 3, 11, 15–18 103 Nguyen, Sherman, The Engineering ToolBox, American Elements, Haliburton, Aldcroft 3, 11, 15–18 Overall Outcome 1–7, 10–19 REVERSED Copy with citationCopy as parenthetical citation