Ex Parte Santra et al

Patent Trial and Appeal Board

Sep 5, 2017

13223081 (P.T.A.B. Sep. 5, 2017)

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.
13/223,081 08/31/2011 Ashok K. Santra 2009-IP-022613 6628
112903 7590 09/05/2017
McAfee & Taft
Tenth Floor, Two Leadership Square
211 North Robinson
Oklahoma City, OK 73102
EXAMINER
VARMA, ASHISH K
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
09/05/2017 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 ASHOK K. SANTRA and DAVID KULAKOFSKY
Appeal 2016-002271
Application 13/223,0811
Technology Center 3600
Before LINDA E. HORNER, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ashok K. Santra and David Kulakofsky (“Appellants”) seek our
review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims
10-20 under 35 U.S.C. § 103(a) as unpatentable over Bruckdorfer
(US 4,635,724, issued January 13, 1987). Final Office Action (November 7,
2014) (hereinafter “Final Act.”). Claims 1-9 are withdrawn from
consideration. Id. at 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Halliburton Energy Services, Inc. as the real party in
interest. Appeal Brief 1 (May 14, 2015) (hereinafter “Appeal Br.”).
Appeal 2016-002271
Application 13/223,081
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “a method of cementing
in a carbon dioxide environment.” Spec. 1 8. Claims 10 and 15 are the
independent claims on appeal. Claim 10 is illustrative and is reproduced
below.
10. A method of cementing in a carbon dioxide
environment, comprising:
preparing a carbon dioxide-resistant hydraulic cement
composition, said carbon dioxide-resistant hydraulic cement
composition including:
a Portland cement;
Class C fly ash present in an amount in a range of
from about 5% to less than about 30% by weight based on
the total weight the cementitious components in said
composition; and
water present in an amount sufficient to form a
slurry;
placing said carbon dioxide-resistant hydraulic cement
composition in said carbon dioxide environment; and
allowing said carbon dioxide-resistant hydraulic cement
composition to set.
Appeal Br. 13 (Claims Appendix).
ANALYSIS
Independent claims 10 and 15 each recite “Class C fly ash present in
an amount in a range of from about 5% to less than about 30% by weight
based on the total weight the cementitious components in said composition.”
Appeal Br. 13, 14 (Claims Appendix). The Examiner finds that
“Bruckdorfer discloses the Class C fly ash is present in a range from about
35-60%.” Final Act 2-3, 6 (citing Bruckdorfer, col. 3,11. 17-21). The
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Application 13/223,081
Examiner further determines that “because the instant claims disclose ‘from
ABOUT 5% to less than ABOUT 30%,’ the concentration of the Class C fly
ash disclosed by Bruckdorfer is included therein.” Id. at 3, 6; see also
Ans. 3.
Appellants argue that the Examiner erred in finding that Bruckdorfer’s
disclosed range of 35-60% Class C fly ash overlaps with the claimed range
of “from about 5% to less than about 30% by weight.” Appeal Br. 6
(arguing that the Examiner’s interpretation of “about” is unreasonably
broad). Appellants contend that the Examiner failed to provide a basis in
Bruckdorfer or the current application for such a broad interpretation of
“about.” Id. Appellants assert that “[sjince both of the current application
and Bruckdorfer report the percentages using only two significant figures
(ten’s place and one’s place), the most expansive interpretation of ‘about’
would mean that percentages between the number recited and the next whole
number are covered.” Id. at 7 (arguing “about” means “at most plus or
minus 1 wt%”). Appellants point to the upper limits on the three ranges
provided in the Specification (about 25%, about 28%, and about 30%),
which differ by 2 wt% and 3 wt% as support for this interpretation. Id. at 8
(citing Spec. 117).
The Examiner responds that “the [A]ppellant[s’] use of the term
‘about’ does not limit the claim to just 30%, but rather, allows for an amount
of fly ash that may be slightly more and/or less than 30%.” Ans. 3—4.
“When ‘about’ is used as part of a numeric range, the use of the word
‘about,’ avoids a strict numerical boundary to the specified parameter. Its
range must be interpreted in its technologic and stylistic context.” Cohesive
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Appeal 2016-002271
Application 13/223,081
Techs, Inc. v. Waters Corp., 543 F.3d 1351, 1368 (Fed. Cir. 2008) (quoting
Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995)
(internal quotation marks omitted). The question before us is whether the
use of the term “about” allows for an amount of fly ash of 5% more than
what is claimed. “In determining how far beyond the claimed range the term
“about” extends the claim, ‘[w]e must focus ... on the criticality of the
[numerical limitation] to the invention.’” Cohesive, 543 F.3d at 1368
(quoting Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d
1321, 1327 (Fed. Cir. 2007)). In other words, we must look to the purpose
that the “less than about 30% by weight” limitation serves, to determine how
much larger than 30 wt% the amount of Class C fly ash can be and still serve
that purpose. Id.
We find that the Examiner’s interpretation of “less than about 30% by
weight” to overlap with a disclosure of “about 35-60%” is unreasonably
broad. As noted by Appellants, the Examiner has failed to point to any
support in either Bruckdorfer or Appellants’ Specification to support an
interpretation of “about” that would cover the 5% gap between the lower end
of the prior art range and the upper end of the claimed range. Appeal Br. 6.
In fact, as shown below, Appellants’ Specification makes clear that “less
than about 30%” was not intended to encompass 35%.
Appellants’ Specification describes, “[t]he Class C fly ash is present
in the composition in an amount in the range of from about 5% to less than
about 30% by weight, preferably in the range of from about 15% to about
28% by weight, and most preferably about 25% by weight, based on the total
weight of the cementitious components in the composition.” Spec. 116; see
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Appeal 2016-002271
Application 13/223,081
also id. 117. The Specification describes the reason for the claimed upper
limit of 30 wt% of Class C fly ash as follows:
Many advantages are achieved by the inventive
compositions and methods. For example, the inventive carbon
dioxide-resistant hydraulic cement composition is very effective
in resisting corrosion by high concentrations of carbon dioxide
in water under harsh temperature and pressure conditions even
though it includes a relatively low amount of Class C fly ash
(when compared to certain prior carbon dioxide-resistant
hydraulic cement compositions). In fact, in accordance with the
invention, it has been discovered that a relatively low amount of
Class C fly ash (when compared to certain prior carbon dioxide-
resistant hydraulic cement compositions) actually provides better
resistance to carbonic acid penetration into set hydraulic cement
compositions.
Id. 133.
The Specification also details the results of testing conducted to
determine the effect of varying the amount of the Class C fly ash utilized in
the composition on the carbon dioxide corrosion resistance of hardened
cement samples. Id. 135. The Specification describes that the Class C fly
ash significantly improved the resistance of the cement core samples to
penetration and corrosion by carbon dioxide and that the degree of
penetration and corrosion by carbon dioxide surprisingly decreased as the
amount of Class C fly ash in the composition decreased. Id. 142. The
Specification states, “For example, the carbon dioxide (carbonic acid)
penetration depth in the samples utilizing 25% by weight Class C fly ash
(0.25 mm) was significantly less than the carbon dioxide (carbonic acid)
penetration depth in the core samples formed using 35% by weight Class C
fly ash.” Id.', see also id. 141 (Table 2) (showing the penetration depth at
25% was 0.25 mm and at 35% was 1 mm).
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Appeal 2016-002271
Application 13/223,081
The Specification thus describes the reason for the claimed upper limit
of less than about 30 wt% of Class C fly ash is to improve and optimize the
penetration and corrosion resistance of hardened cement. Appellants
discovered that as the amount of fly ash was reduced, the penetration and
corrosion resistance improved. The Specification clearly distinguishes the
significantly decreased penetration amount achieved using 25 wt% Class C
fly ash with the penetration results achieved using 35 wt% Class C fly ash.
Thus, it is clear from the Specification that Appellants did not intend “less
than about 30% by weight” to encompass 35%. Otherwise, the improvement
in penetration and corrosion resistance of cement would not be achieved.
For these reasons, the Examiner erred in finding that Bruckdorfer’s
disclosure of 35 wt% overlaps with the claimed range of “from about 5% to
less than about 30%.” Because this finding serves as the basis for the
Examiner’s prima facie case of obviousness of independent claims 10 and
15, we are constrained to reverse the Examiner’s rejection.
DECISION
The rejection of claims 10-20 is reversed.
REVERSED
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