Ex Parte Alary et al

Patent Trial and Appeal Board

Mar 21, 2013

11624057 (P.T.A.B. Mar. 21, 2013)

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.
11/624,057 01/17/2007 INV001Jean Andre Alary 09157.0011-01000 5941
22852 7590 03/21/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
03/21/2013 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 JEAN ANDRE ALARY and THOMAS PARIAS
____________

Appeal 2012-001919
Application 11/624,057
Technology Center 1700
____________

Before RICHARD E. SCHAFER, CATHERINE Q. TIMM, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek relief from the final rejection of claims 55-74 and 76-
80 directed to a method of making a high-strength proppant or anti-flowback
additive. The Examiner rejects claims 55-61, 63, 68-73 and 76-80 as
unpatentable under 35 U.S.C. § 103(a) over Cooke (US 4,068,718, issued
January 17, 1978) in view of Graham (US 3,497,008, issued February 24,
1970). Ans. 4. The Examiner rejects claims 62, 64-67 and 74 as
unpatentable under 35 U.S.C. § 103(a) over Cooke in view of Graham and
Brannon (US 2006/0258546, published November 16, 2006).
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Application 11/624,057

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We AFFIRM.1
The independent claims are 55 and 80. Appellants’ arguments are
directed to the patentability of claim 55. See App. Br. 10 (summary of
argument, focusing on claim 55); see also id. at 20 (raising no new
arguments as to claim 80). Our analysis of claim 55, which reads as follows,
is dispositive of all issues raised in this appeal:
55. A method of making a high-strength proppant or anti-flowback
additive comprising sintering a rod-shaped article made from a milled
composition comprising at least about 80% by weight alumina and
between about 0.15% and about 3.5% by weight TiO2.

There is agreement that Cooke discloses a method of making a high-
strength proppant comprising sintered bauxite. Ans. 4 (citing Cooke 3:26-
29); App. Br. 13 (challenging Cooke only to the extent that it fails to
disclose the specified range of TiO2 content and the specified rod shape).
Appellants challenge the Examiner’s finding that the applied art
suggests a proppant having a TiO2 content of “between about 0.15% and
about 3.5% by weight” as specified in claim 55, because “the only specific
example” disclosed in Cooke “includes 4.55% TiO2” by weight, using
ALUNDUM 75 brand bauxite. App. Br. 15 (citing Cooke 3:50).
Cooke identifies a second brand of acceptable bauxite (SA LIONITE)
and, furthermore, generally discloses that the proppants of “the present
invention may be prepared from natural bauxite.” Cooke 3:13-14, 4:19. It is
beyond dispute, and Appellants admit, that the TiO2 content of natural
bauxite is “typically from about 1% to about 5% by weight[,]” Spec. ¶ [017],

1 A hearing was held on March 13, 2013, in this case and related Appeal
No. 2012-007158. A decision in Appeal No. 2012-007158 is mailed
simultaneously herewith.
Appeal 2012-001919
Application 11/624,057

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which significantly overlaps the specified range of “between about 0.15%
and about 3.5% by weight[.]” Claim 55; Ans. 4-5.
The evidence supports the Examiner’s view that Cooke is not limited
by the specific example that discloses a proppant having a TiO2 content of
4.55% by weight. Ans. 8-9. The Examiner’s position is based on the fact
that the prior art TiO2 range significantly overlaps the specified range.
Compare Claim 55 (specifying a TiO2 range “between about 0.15% and
3.5% by weight”) to Cooke (specifying natural bauxite as the proppant
material) and Spec. ¶ [017] (admitting that natural bauxite “typically”
comprises TiO2 in a range “from about 1% to about 5% by weight”). When
a range recited in a claim overlaps a range disclosed in the prior art, a prima
facie case of obviousness typically exists and the burden of proof is shifted
to the applicant to show that the invention would not have been obvious. In
re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003).
The Examiner acknowledges that “Cooke does not disclose that the
proppant be rod shaped” as specified in claim 55. Ans. 5. On the contrary,
“Cooke discloses [that] the proppants are preferably spherical[.]” Ans. 11
(citing Cooke 3:36-44). The Examiner thus turns to Graham, which
discloses that, although “[s]pherical particles” are “generally acknowledged
to be the most effective proppants” for use in subterranean hydraulic
fracturing methods, selecting proppants “having opposing parallel linear
surface elements[,]” such as “rods,” in fact provides “improved fracture
conductivity due to the superior ability of such particles to resist crushing
and embedment, and due to their ability to provide increased proppant
permeability in multilayer packs.” Graham 2:6-8; 3:25-33, 35.
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Appellants appear to select a rod shape over a spherical shape for the
exact same reasons as Graham, namely, to achieve “superior conductivity
and permeability of the rod-shaped proppants” as well as a desired “breaking
behavior under closing pressure.” Spec. [061].2 Appellants’ argument that
Graham does not relate to high-strength proppants is unconvincing, App.
Br. 17, because Graham discloses “sintered alumina” proppants, Graham
3:66-69, which according to Appellants’ written description, are “high
strength” proppants. Spec. [029]-[030]; see id.at [016], [019]. In any event,
a skilled artisan would have expected Graham’s reasons for selecting a rod
shape, which include “the superior ability of such particles to resist
crushing[,]” Graham 3:30-31, to be “applicable to the full range of
proppants, no matter what strength category they are in.” Ans. 10.
Appellants argue that Cooke teaches away from rod-shaped proppants
but, by way of support, rely on Cooke’s stated preference for spheres over
other shapes. App. Br. 18 (citing Cooke 2:13-15; 3:36-44; 8:32-36).
Appellants also argue that Cooke’s preference for spheres is “more credible”
than Graham’s teachings because Cooke is a more recent reference. Reply
Br. 5; see App. Br. 16. However, the rod shape patented by Graham does
not become patentable again by virtue of Cooke’s stated preference for
spheres over other shapes. See In re Gurley, 27 F.3d 551, 554 (Fed. Cir.
1994). Moreover, “[t]he mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).

2 A proppant is designed to resist closure stress when packed in a fracture
formed by hydraulic fracturing of an oil well bore. See Spec. [001]-[009].
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Application 11/624,057

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On this record, the Examiner makes out a prima facie case that the
subject matter of claim 55 would have been obvious over the applied art.
A question remains whether Appellants come forward with evidence
sufficient to rebut that prima facie case. Appellants argue that the Examiner
fails to consider evidence in this regard. App. Br. 34 (Examiner “discounts
and appears to ignore” paragraphs 12 and 13 of the Parias Declaration). It is
apparent from the record before us that the Examiner fully considers the
evidence advanced by Appellants but accords it very little weight. See, e.g.,
Ans. 11 (acknowledging that Appellants’ arguments regarding “the claimed
titania range” are made “with support from the Parias declaration” but
determining that Appellants’ evidence is “not entitled to the weight desired”
by Appellants because it is based “mainly [on] the belief of the inventor, and
[is] unsupported by data”); see Ans. 12-13 (discussing Appellants’ proffered
evidence regarding skepticism of others in the field, and properly weighing
that evidence against the facts that support a conclusion of obviousness).
Like the Examiner, we have thoroughly considered the evidence
advanced by Appellants, but in view of significant shortcomings therein,
which we discuss below, that evidence is insufficient to overcome the strong
prima facie showing of obviousness made out by the Examiner in this case.
See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed.
Cir. 2009) (“evidence of unexpected results and other secondary
considerations will not necessarily overcome a strong prima facie showing
of obviousness”).
For example, regarding the criticality of the range of TiO2 content
specified in claim 55, Appellants’ evidence is unconvincing because it
consists of the uncorroborated opinion of a named inventor. See In re Am.
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Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (citations
omitted) (explaining that the Board is entitled to weigh the declarations and
conclude the lack of factual corroboration warrants discounting the opinions
expressed in the declarations). The inventor’s opinion that TiO2 contents
below 0.15% by weight would result in unacceptably brittle proppants, and
that contents greater than 3.5% by weight would result in unacceptably weak
proppants, is unsupported by experimental data or any other objective
evidence. Supp. Parias Decl. ¶ 21. The crush tests advanced by Appellants
are probative of two rod-shaped proppants representing the extreme upper
end (between about 3.2% and about 3.4% by weight) of the much broader
range of TiO2 content specified in claim 55 (between about 0.15% and about
3.5% by weight). See Supp. Parias Decl. ¶ 14; see Ans. 15 (noting this
deficiency in the evidence). Thus, we agree with the Examiner that
Appellants’ evidence is not commensurate with the full scope of claim 55.
Ans. 15. Nor do Appellants come forward with any comparative examples
of proppants having TiO2 contents that fall outside of the specified range.
See id. at 12 (regarding criticality of the specified TiO2 range, Appellants’
“data is not compared with the closest prior art, nor is it compared to
anything”). On this record, we have no way of knowing whether proppants
having TiO2 contents below 0.15% by weight or above 3.5% by weight
perform any differently in a crush test than proppants having TiO2 contents
that fall within the specified range. Appellants thus fail to establish
criticality of the specified range.
Regarding the alleged skepticism of skilled artisans in the field, the
inventor relays the hearsay opinions of others who purportedly considered
spherical proppants to be superior to rod-shaped proppants in terms of crush
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resistance and were skeptical that rod-shaped proppants could withstand the
crush stresses encountered in oil well bores. Supp. Parias Decl. ¶¶ 29-35.
Critically lacking is any indication that these skeptics were aware of
Graham’s disclosure that rod-shaped proppants are superior in terms of
strength to spherical proppants. Id. Appellants’ evidence is unconvincing
because it consists of hearsay statements and contains no indication that
those trying to solve the need were familiar with the relevant prior art. See
In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit by an
applicant or co-applicant as to the advantages of his invention is less
persuasive than one made by a disinterested person.”); In re Allen, 324 F.2d
993, 997 (CCPA 1963) (citing Toledo Pressed Steel Co. v. Standard Parts,
Inc., 307 U.S. 350, 356 (1939)) (an allegation that there was an unsolved
problem in the art is not evidence of unobviousness unless it is shown that
the widespread efforts of skilled workers having knowledge of the prior art
had failed to find a solution to the problem).
Appellants also argue that the evidence establishes that rod-shaped
proppants exhibit unexpectedly superior results compared to spherical
proppants in terms of crush resistance. Appellants’ evidence on this point,
however, is based on a comparison of two rod-shaped proppants, having a
TiO2 content of about 3.2% by weight and about 3.4% by weight,
respectively, to a spherical proppant having a TiO2 content of 2.5% by
weight. Compare Supp. Parias Decl. ¶ 14 (describing composition of rod-
shaped proppants) to Supp. Parias Decl. ¶ 17 (describing composition of
spherical proppant). We have no way of knowing whether the somewhat
better crush resistance of the rod-shaped proppants compared to the
spherical proppant (namely, about 19% compared to about 22% at 15,000
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Application 11/624,057

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psi, (Supp. Parias Decl. ¶¶ 16, 17)), is attributable to the shape chosen or
some other variable, for example, the different TiO2 contents of the
compositions. In any event, we agree with the Examiner that the crush test
results advanced by Appellants are not unexpected but in fact directly flow
from Graham’s teaching that rod-shaped proppants will “resist crushing”
better than spherical proppants. Graham 2:6-8; 3:25-33; see Ans. 13 (“the
obviousness of proppants using a material taught to result in high strength
(bauxite from Cooke) in a shape taught to have a higher crush resistance
(rods from Graham) can not be overcome by experts who are skeptical of
precisely what those references disclose”).
We have carefully considered Appellants’ other arguments but find
them unpersuasive for the reasons stated in the Answer. On this record, we
affirm the rejections of claims 55-74 and 76-80.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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