Ex Parte 9026646 et al

Patent Trial and Appeal Board

Sep 5, 2018

90013943 (P.T.A.B. Sep. 5, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/013,943 04/20/2017 9026646 113911-0001-501 3256
28120 7590 09/05/2018
ROPES & GRAY LLP
IPRM Docketing - Floor 43
PRUDENTIAL TOWER
800 BOYLSTON STREET
BOSTON, MA 02199-3600
UNITED STATES OF AMERICA
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/05/2018 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BULLDOG CHEMICALS, LLC,
Patent Owner and Appellant
____________

Appeal No. 2018-006735
Reexamination Control 90/013,943
Patent 9,206,646 B2
Technology Center 3900

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL
Bulldog Chemicals, LLC (“Patent Owner”), the real party in interest
of U.S. Patent No. 9,206,646 B2 (“the ’646 Patent”),1 appeals under
35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1–10. Appeal
Brief filed March 15, 2018 (“App. Br.”), 2; Final Office Action mailed
November 24, 2017 (“Final Act.”). We have jurisdiction under 35 U.S.C.
§§ 6, 134(b), and 306.
We affirm.

1 U.S. Patent No. 9,206,646 B2 to Johnson et al., issued December 8, 2015.
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STATEMENT OF THE CASE
This reexamination proceeding arose out of a third-party request for
ex parte reexamination of the ’646 Patent filed by Prince Energy LLC,
through its counsel Jeffrey S. Berman of the law firm Osha Liang LLP, on
October 13, 2014.
We heard Patent Owner’s oral arguments on August 8, 2018. A
written transcript of the hearing was entered into the record on August 23,
2018 (“Transcript”).
The ’646 Patent states that the invention relates to “drilling of wells,
well fluids, and well fluid additives” (col. 1, ll. 23–24) and, more
particularly, to “[a] well fluid additive having a heavier first bead and a
lighter second bead, with the first bead that exceeds the specific gravity of
the second bead” (Abstract).
Independent claim 1—the sole independent claim—is representative
and reads as follows:
1. A method of operating a well, wherein the well
defines a horizontal wellbore portion, wherein a dynamic drill
string is positioned in the horizontal wellbore portion, wherein
the drill string divides the horizontal well portion into an upper
portion above the drill string and a lower portion below the drill
string, the method comprises:
circulating a drilling fluid, in the horizontal wellbore
portion into contact with the dynamic drill string, wherein the
drilling fluid has a drilling fluid specific gravity, and comprises
a drilling fluid component and a drilling fluid additive, wherein,
the drilling fluid additive comprises:
first beads and second beads, with the first beads having
a specific gravity greater than the drilling fluid specific gravity
with the first beads circulating into the lower portion, and the
second beads having a specific gravity less than the drilling
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fluid specific gravity with the second beads circulating into the
upper portion.
App. Br. (Claims App’x) 9.
The claims stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hoskins2 in view of Lee.3 See Examiner’s Answer mailed April 13,
2018 (“Ans.”), 2–9.
Hoskins relates to a drilling fluid additive comprising particles of wax
or waxy substance that obviates or mitigates disadvantages associated with
previous drilling fluid additives for improving lubricity or increasing rate of
penetration in a drilling operation. Hoskins, Abstract, ¶ 9.
The Examiner relies on Hoskins for its disclosure of a process for
drilling a well into an oil and gas bearing formation that includes the use of a
“drilling fluid or mud and lubricating additives . . . pumped into a
developing well bore through a drill pipe (‘drill string’) . . . exit[ing] through
nozzles in a rotating bit . . . [and] then circulat[ing] back to the surface
through . . . space between the drill pipe and a wall of the well bore.” Ans. 2
(citing Hoskins ¶ 2). The Examiner finds Hoskins discloses that the
“drilling fluid may be aqueous based, oil based, synthetic based or an
emulsion” (id. (citing Hoskins ¶ 39)) and that “[t]he lubricating additive is
added to the drilling fluid for improving lubricity or a rate of penetration in
the drilling operation . . . including [in] a horizontal well drilling operation”
(id. at 2–3 (citing Hoskins ¶¶ 4, 10, 120, 126)).
The Examiner also finds that the disclosed “lubricating additive
comprises a wax or waxy substance . . . in the form of particles” (id. at 2

2 Hoskins, US 2010/0204067 A1, published August 12, 2010.
3 Lee, US 4,232,981, issued November 11, 1980.
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(citing Hoskins ¶ 44)), which “can be of any desired shape including
spherical beads” (id. at 3 (citing Hoskins ¶ 58)), and that “the additive may
comprise a mixture of two or more types of particles having at least one
property distinct from one another (id. at 3 (citing Hoskins ¶ 10)). As to the
properties, the Examiner relies on Hoskins’ disclosure that “[t]he waxes and
waxy substances are available . . . in a wide range of melt points, hardness,
density, viscosity, etc. for engineering of particles having optimum
performance for a particular operation.” Id. (citing Hoskins ¶ 79) (Emphasis
added). The Examiner also finds that “[t]he different types of particles may
be selected to provide specific functions.” Id. (citing Hoskins ¶ 59).
The Examiner further relies on Hoskins’ disclosure that “the drilling
fluid . . . may include one or more secondary lubricating additives selected
from known liquid and solid lubricants” (id. at 3 (citing Hoskins ¶ 105)) and
that known solid lubricants include “plastic and metal particle lubricants”
(id. at 10 (citing Hoskins ¶ 5)).
The Examiner notes, however, that
Hoskins does not specifically disclose that the drilling fluid
system comprises first beads and second beads, with the first
beads having a specific gravity greater than the drilling fluid
specific gravity and circulating into the lower portion of the
well, and the second beads having a specific gravity less than
the drilling fluid specific gravity and circulating into the upper
portion of the well as recited in claim 1.
Id. at 3.
Lee relates to a liquid product including beads and the use of the
product to reduce the coefficient of friction between the inner surface of a
support, such as a larger conduit, and the outer surface of a smaller, inner
conduit. Lee, Title, Abstract.
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The Examiner relies on Lee as teaching the use of a mixture of
spherical beads in a fluid to reduce friction between an outer conduit and an
inner member where the beads “contact[ing] both the inner surface of the
outer conduit and the outer surface of the inner member . . . produce a planar
ball bearing effect.” Id. at 4 (citing Lee, Abstract, 1:5–15). The Examiner
further finds Lee to “[teach] that the outer conduit can be an underground or
undersea conduit and suggests that the method . . . can be used to improve
lubricity and reduce friction in oil drilling operations.” Id. (citing Lee,
1:37–47, 2:13–30).
The Examiner also relies on Lee as teaching that
“the liquid and the beads can be selected so that their specific
gravities are such that the beads can be near the bottom of the
conduit, near the top of the conduit, or near the top and bottom
of the conduit to accommodate turns, grades and other conduit
configurations and to accommodate the specific gravity of the
inner member itself to facilitate the movement of the inner
member along the conduit with minimum force, tension or
compression, and wear”
Id. (quoting Lee, 3:26-35) (Emphasis added). Accounting for the relative
specific gravities of the beads and of the liquid, the Examiner finds Lee
teaches that by “using beads of two different density/specific gravities, beads
can be maintained both near the top and near the bottom of the conduit.” Id.
(citing Lee, 2:52–58).
The Examiner concludes that
it would have been obvious to one of ordinary skill in the art to
apply a mixture of beads with high and low specific gravities,
as taught by Lee, in Hoskins’ drilling fluid system to provide
additives circulating near both the top and bottom portions of
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the wellbore in order to further improve the lubricity and reduce
friction of the drilling operation.
Id. at 5.
The rejection, as set forth, encompasses both the circumstances in
which: (i) Hoskins’ more than one type of wax or waxy substance particles
are selected to have specific gravities higher and lower than the fluid, as
taught by Lee, to provide additives circulating near both the top and bottom
portions of the wellbore; and (ii) Hoskins’ drilling fluid is modified by
including Lee’s particles having specific gravities both higher and lower
than the fluid to provide additives circulating near both the top and bottom
portions of the wellbore.
Patent Owner contends that the rejection is limited to the inclusion of
Lee’s beads into Hoskins’ drilling fluid (Transcript, 2:19–24, 3:10–11, 3:21–
4:2, 8:13–21, 9:8–11, 13:5–13:10; see also App. Br. 3, 6) and, grounded on
that contention, argues that the rejection must be overturned “because it
renders Hoskins unsatisfactory for its intended purpose” (App. Br. 3–6) and
“because it changes Hoskins’s principle of operation” (id. at 6–7).
Patent Owner summarizes the Examiner’s rejection relying on the
cited portions of Hoskins and Lee discussed above. App. Br. 2–3 (citing
Final Act. 3–64; Hoskins ¶¶ 2, 4, 10, 39, 44, 58, 59, 105, 120, 126; Lee,
Abstract, col. 1:5–15, 2:52–58, 3:26–35). Patent Owner further sets forth
“the Examiner’s proposed combination of Hoskins and Lee [as] seek[ing] to
‘modify Hoskins’ system with Lee’s particles having high and low specific

4 Pages 3 to 6 of the Final Office Action correspond to pages 2 to 5 of the
Examiner’s Answer, cited above, which reproduce the ground of rejection.
Compare Final Act. 3–6, with Ans. 2–5.
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gravities’” (App. Br. 3 (citing Final Act. 12); id. at 6 (citing Final Act. 12)).
While this portion of the Final Office Action does refer to “modifying
Hoskins’ system with Lee’s particles,” it does so in rebutting Patent Owner’s
argument raised against one aspect of the ground of rejection. Final Act. 12
(“Patent Owner has not provided sufficient evidence to show that modifying
Hoskins’ system with Lee’s particles having high and low specific gravities
would have change [sic] the principle of operation of Hoskins.”).
Patent Owner also refers to the Examiner’s reliance on the “ball
bearing effect” as indicating that the rejection is limited to inclusion of Lee’s
hard spherical beads. Transcript, 9:4–11 (citing Final Act. 5). We do not
find this dispositive, however, in the absence of an explicit statement
limiting the combination to including Lee’s beads in the stated ground of
rejection. See Final Act. 5–6; Ans. 5. The difficulty with the position that
the “ball bearing effect” statement should be dispositive is evident in that the
Examiner also relies on Hoskins teaching that its additive can comprise a
mixture of two or more types of wax beads having different properties,
wherein density is a highlighted property (Ans. 3 (citing Hoskins ¶¶ 10, 58,
78, 79)), which, if Patent Owner’s approach was proper, would contrarily
support limiting the combination to drilling fluids having wax beads with
higher and lower specific gravities than the fluid.
On this record, the Patent and Trademark Office has carried its
procedural burden to establish a prima facie case that includes both
(i) modifying the specific gravity of Hoskins’ beads as taught by Lee, and
(ii) incorporating the hard beads of Lee into Hoskins’ drilling fluid. As
explained by our reviewing court, ““[t]he PTO carries its procedural burden
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of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132
in ‘notify[ing] the applicant . . . [by] stating the reasons for [its] rejection . . .
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution of [the] application.’” In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). “That section ‘is [only]
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.” Id.
(citing Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)).
Patent Owner raises two general arguments that the Examiner erred,
that the proposed combination of Hoskins and Lee renders Hoskins
unsatisfactory for its intended purpose and that it changes Hoskins’ principle
of operation.
As to the combination rendering Hoskins unsatisfactory for its
intended purpose, Patent Owner maintains that “Hoskins’s expressed
purpose [is] to provide lubricant that is fully disposable and not
environmentally damaging.” App. Br. 5 (citing Hoskins ¶ 7); see also Reply
Brief filed June 4, 2018 (“Reply Br.”), 3 (“Hoskins’s basic goal and
principle of operation of providing ‘a drilling fluid that is fully
disposable.’”). Patent Owner refers to Hoskins’ paragraph 5 for its
disclosure relating to disadvantages resulting from solid lubricants,
particularly “‘ball bearing type’ lubricants, . . . like plastic, glass, and
polymer beads [that] ‘interfere with solids control and are highly damaging
if they become embedded in the [oil or gas bearing] formation since they do
not degrade and cannot be easily removed.” App. Br. 4 (quoting Hoskins
¶ 5 (with added emphasis)); see also id. at 5; Reply Br. 2–3. Patent Owner
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refers to paragraph 7 for its disclosure and states that “[a]ccording to
Hoskins, lubricants that are present in the drilling fluid cause microtoxicity
problems” and that “‘[i]n addition to the environmental benefits, a drilling
fluid that is fully disposable is highly desirable since treatment and
alternative disposal of drilling waste adds to the overall cost of a drilling
operation.’” App. Br. 4 (citing Hoskins ¶ 7); see also Reply Br. 3. Patent
Owner further contends that Hoskins “desires to avoid hard ball-bearing type
beads and to provide ‘a drilling fluid that is fully disposable,’ thus avoiding
damaging effects on the formation and well production.” Reply Br. 3 (citing
Hoskins ¶¶ 7, 66).
On this record, we are not persuaded that the purpose of Hoskins is
rendered unsatisfactory by the combination with Lee.
First, as explained above, the rejection is not limited to including the
hard beads of Lee into Hoskins’ drilling fluid. “The test for obviousness is
. . . what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA).
On this record, that includes modifying the specific gravity of Hoskins’
beads as taught by Lee. “[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference, but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968);
see also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994 (quoting In re
Samour, 571 F.2d 559, 562 (CCPA 1978) (“[A] prior art reference must be
‘considered together with the knowledge of one of ordinary skill in the
pertinent art.’”).
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While the thrust of Patent Owner’s arguments is not directed to
modifying the wax or waxy material beads of Hoskins, some argument is
relevant to the issue, although not persuasive. In addressing whether Lee
teaches beads of other materials, Patent Owner argues that “the Examiner’s
Answer interprets Lee’s teachings too broadly” and that “[t]here is simply no
suggestion that Lee’s teachings would have been used for wax and waxy
materials” because Lee is directed to the use of “hard plastic, glass or
metal.” Reply Br. 4. Patent Owner does not, however, sufficiently explain
why Lee’s teaching of different density beads to maintain beads both near
the top and near the bottom of a conduit does not reasonably teach the same
for other beads, including those disclosed in Hoskins, to one of ordinary skill
in the art. See generally App. Br.; Reply Br. Patent Owner further fails to
address squarely what the combined teachings, including Lee’s relevant
teaching as to density applicable to Hoskins’ beads, would have suggested to
one of ordinary skill in the art. Keller, 642 F.2d at 425.
Second, the preponderance of evidence does not support Patent
Owner’s contention that incorporating the hard beads of Lee into Hoskins’
drilling fluid results in a method that is unsatisfactory for its intended
purpose. While cited by Patent Owner as teaching that “lubricants . . . in the
drilling fluid cause microtoxicity problems” (App. Br. 4, emphasis added),
Hoskins states rather that they “can cause the fluid to fail microtoxicity
testing and render the fluid ineligible for full disposal” (Hoskins ¶ 7,
emphasis added). Moreover, while teaching that “a drilling fluid that is fully
disposable is highly desirable” (id.), this does not constitute a requirement,
and Hoskins does not limit its invention to fluids that fully eliminate solid
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additives, such as plastic and glass beads, as it expressly recites “includ[ing]
one or more secondary lubricating additives selected from known liquid and
solid lubricants (id. at ¶ 105). Having identified plastic and glass beads as
exemplary solid lubricants (id. at ¶ 5), and having set forth an object of its
“invention to obviate or mitigate at least one disadvantage . . . [of] previous
drilling fluid additives” (id. at 9, emphasis added), Hoskins is wholly
consistent with the Examiner’s determination that “Hoskins does not
disclose that traditional lubricating particles [including plastic and glass
beads] cannot be employed in [Hoskins’] drilling fluid” (Ans. 10).
Patent Owner further contends that “one of ordinary skill in the art
still would not have looked to Lee’s teachings of beads” despite “Hoskins’s
statement that the drilling fluid ‘may optionally include one or more
secondary lubricating additives selected from known liquid and solid
lubricants’” (citing Hoskins ¶ 105) “because Hoskins directly criticizes,
discredits, and discourages the use of hard beads.” App. Br. 5; see also
Reply Br. 2–3, 5–6. Patent Owner maintains that Hoskins’ paragraph 105
“cannot be read in a vacuum . . . [because] prior art must be considered in its
entirety, including disclosures that teach away from the claims.” App. Br. 5
(internal citation omitted). Patent Owner also contends that “[o]ne of
ordinary skill in the art would not have read Hoskins to broadly suggest
including any known lubricant, especially not hard ball-bearing type beads”
because these are “in a class of lubricants that Hoskins disparages as being
‘highly damaging’ and that others in the art ‘avoid drilling with.’” Reply Br.
2 (citing Hoskins ¶ 5). Further, Patent Owner argues that the Examiner’s
analysis is deficient because it fails to properly consider whether, taken
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together, Hoskins’s statements “establishing that hard ball-bearing type
beads are highly damaging” and its “suggest[ion] to include a ‘known liquid
[or] solid’ as a secondary lubricant . . . would have motivated one of
ordinary skill in the art to combine Hoskins with . . . [Lee] which uses hard
ball-bearing type beads.” Id. at 5–6 (citing Polaris Indus., Inc. v. Arctic Cat,
Inc., 882 F.3d 1056, 1068–69 (Fed. Cir. 2018)). Patent Owner argues, in
particular, that “the two statements cannot be reconciled in favor of a
combination with Lee.” Id. at 6.
Patent Owner’s arguments fail to adequately address that, despite
identifying ball-bearing type beads as being highly damaging, Hoskins
expressly discloses using solid lubricants (Hoskins ¶ 105) and identifies
“plastic and glass beads” as “exemplary solids . . . added to drilling fluid
systems . . . to improve lubricity” (id. at ¶ 5). Nor does Patent Owner’s
argument address that Hoskins also discloses that the “[g]lass beads and
polymer beads provide a ball bearing type of lubricating effect.” Id. Patent
Owner, thus, provides no basis for there being any difference between the
ball-bearing type plastic and glass beads of Hoskins and Lee. See generally
App. Br.; Reply Br. Modifying Hoskins’ fluid system to include ball-
bearing type beads is, thus, not contrary to its teachings as a whole because
Hoskins itself teaches including such beads. See In re Bode, 550 F.2d 656,
661 (CCPA 1977) (stating that a “reference must be evaluated for all it
teaches”); cf. In re Mills, 470 F.2d 649, 651 (CCPA 1972) (finding even a
cursory explicit teaching in a patent contrary to the “patent as a whole . . .
point[ing] away from the [taught] use”).
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Moreover, even if Hoskins did not teach including ball-bearing type
plastic and glass beads in its inventive drilling fluid additive, its criticism of
this class of lubricants does not rise to a teaching away. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) (a known or obvious device or method “does
not become patentable simply because it has been described as somewhat
inferior to some other product [or method] for the same use”). In Gurley, a
reference taught that the use of an epoxy for Gurley’s purpose was known,
but the reference criticized epoxy as inferior to polyester-imide resins. Id.
In like manner, Hopkins teaches that the use of ball-bearing type plastic and
glass beads in drilling fluid systems to reduce friction was known, but
criticizes these beads as inferior to Hopkins’ beads in respect to solids
control and damage that occurs with their use. Hopkins ¶¶ 4–7, Abstract.
To the extent that the claims on appeal read on the use of such beads that
have been described in the prior art as inferior, the claimed invention has not
been shown to be immune from the disadvantages described in the prior art.
On this record, accordingly, we find that Hopkins does not teach away from
including the ball-bearing type plastic and glass beads in a drilling fluid
system, and from the invention as claimed. In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005) (whether a reference teaches away from a claimed
invention is a question of fact).
Patent Owner’s further argument that the Examiner’s analysis is
deficient is grounded on the contention that the Examiner failed to properly
consider relevant evidence as to whether one of ordinary skill in the art
would have been motivated to combine Hoskins and Lee. Reply Br. 5–6
(citing Polaris, 882 F.3d at 1068–69). In Polaris, the Board’s analysis was
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found lacking because it treated a reference’s teaching as a mere “subjective
preference” that was then not properly considered as a teaching of the
reference, including as to the motivation to combine the reference with
another. Polaris, 882 F.3d at 1068–69. Here, however, the Examiner
considers that “Hoskins disclose[s] that it is advantageous to use wax
particles as lubricating additives” (Ans. 10), and then cites to paragraph 5
that, in addition to setting forth the types of solids that can be included in
Hoskins’ drilling fluid system (id.), identifies the disadvantages with their
use (Hoskins ¶ 5). The Examiner’s analysis, thus, takes the disadvantages—
what is avoided by using Hoskins’ wax particles—into account when
determining, nonetheless, that “Hoskins does not disclose that traditional
lubricating particles cannot be employed in his drilling system.” Ans. 10.
Patent Owner’s related argument that Hoskins’ “statements cannot be
reconciled in favor of a combination with Lee” ignores that, while Hoskins
identifies disadvantages to the use of ball-bearing type plastic and glass
beads, it neither excludes them from its drilling fluid system, nor teaches
away from including them, as discussed above. Further, the Examiner did
not merely set forth what one of skill in the art could have done, as
contended by Patent Owner (Reply Br. 6), but rather sets forth what they
would have been motivated to do in order to obtain the benefit of
“provid[ing] additives circulating near both the top and bottom portions of
the wellbore in order to further improve the lubricity and reduce friction of
the drilling operation” (Ans. 5).
We now turn to Patent Owner’s contention that the proposed
combination of Hoskins and Lee changes Hoskins’ principle of operation.
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Patent Owner relies on the M.P.E.P. § 2143.01(VI) as explaining that “‘[i]f
the proposed . . . combination of the prior art would change the principle of
operation of the prior art invention being modified, then the teachings are
not sufficient to render the claims prima facie obvious.’” App. Br. 6–7. The
authority underlying, and quoted in, § 2143.01 (VI) is In re Ratti, 270 F.2d
810 (CCPA 1959). The court in Ratti held that a ground of rejection was not
proper because the “suggested combination of references would require a
substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principles under which
[the primary reference] was designed to operate.” Ratti, 270 F.2d at 813.
Patent Owner contends that “Hoskins emphasizes several problems
with ‘ball bearing type’ lubricants arising from the fact that ‘they do not
degrade and cannot be easily removed’ . . . [and] propos[es] . . . us[ing] wax
particles that melt, aiming to provide ‘a drilling fluid that is fully
disposable’” such that “Hoskins does not require any special machinery or
process to remove the melted wax particle.” App. Br. 6 (citing Hoskins ¶¶ 5,
7, 66). Patent Owner argues that “additional removal processing and
environmental considerations” would be required upon including Lee’s
particles in Hoskins method” and that “[i]n order to reconfigure Hoskins’s
system to include Lee’s particles, the drilling process utilizing Hoskins’s
waxy particles would need to be re-engineered . . . to physically remove
Lee’s particles from a well.” Id. at 7.
In similar manner as to Patent Owner’s first argument, it is manifest
that modifying the specific gravity of Hoskins’ beads as taught by Lee does
not change Hoskins’ principle of operation as argued because Lee’s
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ball-bearing type plastic and glass beads are not included in the modified
drilling fluid system in this circumstance.
In regard to a drilling fluid system that includes the hard beads of Lee,
the preponderance of evidence is also contrary to the argued change in the
principle of operation of Hoskins. As discussed above, Hoskins does not
exclude ball-bearing type beads, including those made of plastic or glass.
Nor does Hoskins require that the disadvantages associated with their use be
eliminated. Rather, Hoskins expressly discloses that an object of the
invention is to obviate or mitigate disadvantages of previous drilling fluid
additives. Hoskins ¶ 9. Patent Owner’s reliance on paragraphs 5, 7, and 66
of Hopkins is not persuasive that there is principle of operation that excludes
the use of ball-bearing type plastic or glass beads. App. Br. 6. As discussed
above, paragraph 5 sets forth disadvantages of their use, but does not teach
they cannot be used. Paragraph 7 further sets forth that “a drilling fluid that
is fully disposable is highly desirable” (Hoskins ¶ 7), but this does not
establish that Hoskins’ principle of operation requires eliminating ball-
bearing type plastic or glass beads. Paragraph 66 likewise sets forth that “it
is preferable that the additives of the present invention do not have a
permanent or damaging effect on the formation or on well production” (id. at
¶ 66), but, again, this preference does not establish that the principle of
operation requires excluding ball-bearing type beads.
Patent Owner’s counsel contends further that any level of glass or
metallic beads necessitate disposal efforts and damage formations and that
excluding such beads is Hoskins’ principle of operation (Transcript, 3:1–13,
4:12–16; 12:19–16), however, there is no persuasive evidence of record
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establishing that Hoskins should be read to so strictly to exclude glass and
plastic beads when it merely identifies disadvantages associated with their
use, and preferences for other additives.
It is not disputed that Hoskins’ drilling fluid including, or modified to
further include, ball-bearing type plastic or glass beads still includes its wax
or waxy material beads that substitute for some quantity of solid materials
otherwise required to provide the necessary lubricity. See generally App.
Br.; Reply Br. Also, Patent Owner fails to provide any persuasive argument
or evidence that such substitution does not mitigate the disadvantages of
ball-bearing type plastic and glass beads in reducing the levels of these from
what would otherwise be required. See generally id.; Transcript, 3:1–13,
4:12–16, 5:14–6:2, 11:20–12:5, 12:10–16. On this record, accordingly,
Patent Owner has failed to establish that modifying Hoskins to include Lee’s
particles alters Hoskins’ operating principle. Patent Owner’s argument is,
therefore, unpersuasive of error. See In re Umbarger, 407 F.2d 425, 430–31
(CCPA 1969) (finding Ratti inapplicable where the modified apparatus will
operate “on the same principles as before”).
Moreover, even assuming that Patent Owner had established that
Hoskins’ principle of operation was modified by the inclusion of Lee’s
ball-bearing type beads, Patent Owner’s contentions fail to establish that the
combination “would require a substantial reconstruction and redesign of the
elements shown in [the primary reference].” Ratti, 270 F.2d at 813. All that
is required is the inclusion of the beads. Patent Owner’s arguments to the
contrary are grounded on what is contended to be necessary for removing
Lee’s particles, including from a well, to preserve the contended benefits of
Appeal No. 2018-006735
Reexamination Control 90/013,943
Patent 9,206,646 B2

18
Hoskins. App. Br. 6–7. None of this, however, requires substantial
reconstruction or redesign of the elements from Hoskins that are included in
the combination. Further, the claims on appeal do not require that the
drilling fluid is disposable or that the “first beads and second beads” are
removed from the well. App. Br. 9–10; see also Transcript, 12:20–22. As
such, it is not necessary to preserve the contended benefits of Hoskins in the
combination, and thus no reconstruction or redesign is required for obtaining
those benefits. Cf. In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”).
For these reasons, we are not persuaded that the Examiner erred in
rejecting claims 1–10 under 35 U.S.C. § 103(a) over Hoskins and Lee.
On this record, the evidence weighs most heavily in favor of the
Examiner’s conclusion of obviousness, and we sustain the rejection.

DECISION
The Examiner’s decision to reject claims 1–10 under 35 U.S.C.
§ 103(a) is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

Appeal No. 2018-006735
Reexamination Control 90/013,943
Patent 9,206,646 B2

19

pgc

Appeal No. 2018-006735
Reexamination Control 90/013,943
Patent 9,206,646 B2

20
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