Ex Parte Santra et alDownload PDFPatent Trial and Appeal BoardSep 5, 201713223081 (P.T.A.B. Sep. 5, 2017) 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. 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 Claims 1-9 are withdrawn from consideration.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 2 Appeal 2016-002271 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 3 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 4 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). 5 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 6 Copy with citationCopy as parenthetical citation