Ex Parte Becker

Patent Trial and Appeal Board

Jul 29, 2016

13147188 (P.T.A.B. Jul. 29, 2016)

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.
13/147,188 07/29/2011 Harold L. Becker S-1094-B-US 1604
73429 7590 07/29/2016
Baker Hughes Incorporated
Attn: Anthony F. Matheny
P.O. Box 4740
Houston, TX 77210-4740
EXAMINER
MICHENER, BLAKE E
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
07/29/2016 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 HAROLD L. BECKER
_____________

Appeal 2014–005675
Application 13/147,188
Technology Center 3600
____________

Before THOMAS F. SMEGAL, LISA M. GUIJT and
PAUL J. KORNICZKY, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Harold L. Becker (Appellant)1 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision2 under 35 U.S.C. § 103(a) to reject claims
21–28 as unpatentable over Haagensen (US 4,620,593, iss. Nov. 4, 1986);
and as provisionally rejected on the ground of nonstatutory obviousness-type
double patenting over claims of copending Application No. 12/365,750.3
We have jurisdiction under 35 U.S.C. § 6(b).

1 According to Appellant, the real party in interest is Baker-Hughes
Incorporated. Appeal Br. 1.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Non–Final Action, dated June 12, 2013 (“Non–Final Act.”).
3 Claims 1–20, 29, and 30 have been canceled and claims 31–44 are
withdrawn. Appeal Br. 3.
Appeal 2014–005675
Application 13/147,188

2
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 21, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
21. A method comprising exposing a substance to a first
type of electromagnetic waves generated by a first device, the
frequency of the first type of electromagnetic waves being in the
radio frequency range, the exposure taking place for a period of
time and at a frequency sufficient to detectably alter at least one
physical property of the substance as it existed prior to the
exposure, wherein
a) the substance is selected from the group consisting of
built-up clay, cement which has not yet set, a completion fluid,
and iron sulfide in an acid solution, or
b) the substance is selected from the group consisting of a
hydrate, a water and oil emulsion, scale, and tank sediment,
wherein the frequency of the first type of electromagnetic waves
is 1 MHz to 100 MHz, and wherein the first device consumes no
more than about 1,000 Watts of power.

ANALYSIS
Obviousness of Claims 21–28 over Haagensen
Claims 21–26
Appellant argues claims 21–26 together as a group in contesting the
rejection of these claims as obvious over Haagensen. See Appeal Br. 5–14;
Reply Br. 3–7. We select claim 21 as the representative claim for this group,
and the remaining claims of the group stand or fall with claim 21. See 37
C.F.R. § 41.37(c)(1)(iv). We have considered Appellant’s arguments raised
in the Appeal Brief and Reply Brief, but for the reasons discussed below, do
not find them persuasive to demonstrate error in the Examiner’s rejection of
claim 21 as being obvious over Haagensen.
Appeal 2014–005675
Application 13/147,188

3
In rejecting claim 21, the Examiner finds that Haagensen discloses,
inter alia, “exposing a substance to a first type of electromagnetic waves
generated by a first device . . . for a period of time and at a frequency
sufficient to detectably alter at least one physical property of the substance
as it existed prior to the exposure.” Non–Final Act. 8. While
acknowledging that “Haagensen does not disclose the use of radio waves in
the range of 1 MHz to 100 MHz,” the Examiner determines that
it would have been considered obvious . . . to use a first frequency
in the range of about 1 to about 100 MHz (which are within the
radio frequency range), since it has been held that where the
general conditions of a claim are disclosed in the prior art (using
radio waves to treat “a substance”), discovering the optimum or
workable range (radio waves between 1-100 MHz) involves only
routine skill in the art.
Id. at 9 (citing In re Aller, 220 F.2d 456 (CCPA 1955) and In re Boesch, 617
F.2d 272 (CCPA 1980)).
In contesting the rejection, Appellant acknowledges that Haagensen
“is directed to heating of oil-bearing formations with microwave energy”
and that “[a]t the time this invention was made, it would have been generally
known to one of ordinary skill in the art that the amount of power necessary
for a radio frequency generator to heat a geological formation to any
practical degree would at least be very significant.” Appeal Br. 9 (citing
Haagensen, col. 1, ll. 6–9, 29–35, 52–60); see also Becker Declaration,
paras. 3–5.
However, Appellant asserts, inter alia, that
[Appellant’s] invention pertains to the surprising discovery that
the use of a very low power level, one realistically incapable of
heating to the degree believed necessary by those of skill in the
art at the time of the invention, can modify the physical
Appeal 2014–005675
Application 13/147,188

4
properties of treated substances in surprisingly beneficial
ways[,]
and that
Appellant has illustrated, with actual experimental data,
unexpectedly beneficial results using radio frequency waves
power levels far below those which might possibly be suggested
to one of ordinary skill in the art from the teachings of the cited
reference, to modify physical characteristics of the treated
substance.

Appeal Br. 10, 11 (emphases added).
We are instructed by the Court of Appeals for the Federal Circuit that
“[a] greater than expected result is an evidentiary factor pertinent to the legal
conclusion of . . . obviousness [of the claimed subject matter].” In re
Corkill, 771 F.2d 1496, 1501 (Fed. Cir. 1985) (citing U.S. v. Adams, 383
U.S. 39, 51–52 (1966). Furthermore, in cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims, it has consistently been held that “the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.” In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). However, Appellant’s
only alleged evidence of unexpected results is with reference to “[s]ome of
the Examples in the case [that] are highlighted here to show this,” further
identified by Appellant as “[t]he Examples [that] appear on Pages 11-22 of
the Specification.” Appeal Br. 11–12.
We agree with the Examiner that “the specification and claims do not
support this assertion of unexpected results,” and adopt as our own, the
Examiner’s factual findings and legal analysis set forth at pages 16–18 of the
Appeal 2014–005675
Application 13/147,188

5
Answer.4 See, e.g., In re Paulsen, 30 F.3d 1475, 1478 n.6 (Fed. Cir. 1994).
In particular, Appellant has not identified any example in the Specification
in which there is a comparison between results obtained from treating a
substance with “radio frequency waves power levels” outside of the range
recited by claim 21 and the results obtained with power levels in the range
recited by claim 21. While Appellant alleges that Figure 1, as described at
paragraph 33 of the Specification, illustrates data obtained “by exposing
samples to [both] radio frequency (76 MHz) electromagnetic waves and
microwaves (29 Ghz) for a period of 2.5 hours,” Figure 1 merely compares
the treated sample data with data identified as having been obtained from
untreated samples.5 Similarly, Examples 11 and 12 (Spec. paras. 48–50)
only compare cement exposed to 18 MHz at 20 to 50 Watts with untreated
cement.6
Thus, Appellant provides no comparison between data for the range of
radio frequency waves power levels recited in claim 21 and data for radio
frequency waves power levels outside the claimed range, over which the
claimed levels are argued to produce unexpected results. Arguments relying
on factually unsupported assumptions to rebut a prima facie case of
obviousness “can hardly be considered factual evidence.” See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Thus, Appellant has not

4 Among the reasons stated by the Examiner is that Appellant’s Specification
at paragraph 62 discloses to the contrary.
5 The data illustrated in Figure 1 does not even relate to claim 21, which
only recites exposing a substance to electromagnetic waves, not to a
combination with microwaves. See Appeal Br., Claims App. A1–1.
6 See Tables 7–9 on pages 20–22 of the Specification.
Appeal 2014–005675
Application 13/147,188

6
established that the claimed radio frequency range of electromagnetic waves
produces unexpected results.

Claims 27–28
Regarding dependent claims 27 and 28, Appellant repeats the
arguments we have not found persuasive regarding claim 21, and further
contends that claims 27 and 28 “are directed to a ‘power level of no more
than about 8 Watts for the second frequency (the microwave frequency).’”
Appeal Br. 14–15. However, as with the range recited by claim 21,
Appellant fails to provide any comparative data showing that the claimed
range achieves unexpected results when compared to data for power levels
from outside the claimed range.
For the foregoing reasons, we sustain the rejection of claims 21–28 as
unpatentable over Haagensen.

Nonstatutory double patenting rejection of claims 21–28
Appellant does not present arguments directed to the Examiner’s
nonstatutory double patenting rejection of claims 21–28 as unpatentable over
the claims of copending Application No. 12/365,750. Ans. 3; see also Reply
Br. 3. However, we do not reach the merits of the Examiner's provisional
double patenting rejection because it would be premature to do so at this
time, consistent with the holding of Ex Parte Moncla, 95 USPQ2d 1884,
1885 (BPAI 2010) (precedential).

Appeal 2014–005675
Application 13/147,188

7
DECISION
The Examiner’s prior-art rejection is affirmed. We do not reach the
merits of the provisional double-patenting rejection.
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