2020006178 (P.T.A.B. Apr. 16, 2021)

Chad Williams

Patent Trials and Appeals BoardApr 16, 2021

2020006178 (P.T.A.B. Apr. 16, 2021)

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. 15/902,768 02/22/2018 Chad Williams PAK4-62562- USNP/BAO1681US 9060 44639 7590 04/16/2021 CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER PATEL, NEEL G ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 04/16/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHAD WILLIAMS ____________ Appeal 2020-006178 Application 15/902,768 Technology Center 3600 ____________ Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection of claims 1–11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART, and we enter a NEW GROUND OF REJECTION for claims 4 and 9, pursuant to our authority under 35 U.S.C. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Baker Hughes Incorporated as the real party in interest. Appeal Br. 1. Appeal 2020-006178 Application 15/902,768 2 THE INVENTION Appellant’s invention relates to an “Additively Manufactured Downhole Component including Fractal Geometry.” Spec., Title. Claims 1 and 6 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A resource exploration and recovery component comprising a fractal geometry. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Yeh US 2008/0128129 A1 June 5, 2008 Shkurti US 2012/0217025 A1 Aug. 30, 2012 The following rejections are before us for review: I. Claims 1–4 and 6–9 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Shkurti. II. Claims 5, 10, and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Shkurti and Yeh. OPINION Rejection I Independent claims 1 and 6, and dependent claims 2, 3, 7, and 8 Regarding independent claim 1, the Examiner provides a dictionary definition of the claim term “fractal”: “‘any of various extremely irregular curves or shapes for which any suitably chosen part is similar in shape to a Appeal 2020-006178 Application 15/902,768 3 given larger or smaller part when magnified or reduced to the same size.’” Ans. 8–9 (citing https://www.merriam-webster.com/dictionary/fractal). However, the Examiner refers to Appellant’s Specification, which discloses that Figures 2 and 3 illustrate fractal geometries, and construes the claim term “fractal” more broadly to mean “a repetitively shaped element”: though [F]igure 3 of the [Specification] may show the voids 128, 129 to be a “true fractal (i.e., defined by Appellant as having self- similarity at progressively smaller scales), [F]igure 2 of [the Specification] shows a different fractal geometry in which there is no self-similarity at progressively smaller scales. Essentially, the “fractal geometry of [F]igure 2 within the [Specification] depicts a repetitively shaped element . . . , comprising voids 86, looped to form a ring 46. Ans. 9. The Examiner finds that Shkurti discloses a resource exploration and recover component comprising a fractal geometry (i.e., a repetitively shaped element), as required by claim 1. Final Act. 3 (citing Shkurti ¶¶ 43, 44, Figs. 1–3); Ans. 9 (citing Shkurti’s backup ring 100 as shown in Figures 1, 2). In support, the Examiner determines that Shkurti shows an apparatus “consistent with” Figure 2 of the Specification, and thus, if the Specification’s Figure 2 shows a fractal, then Shkurti’s figures also show fractals. Adv. Act. 2. Appellant argues that “one of ordinary skill in the art would recognize that [when] the term ‘fractal’ describes an article, each part [must have] the same statistical character as the whole,” and the fractals must “possess self- similarity at progressively smaller scales.” Appeal Br. 4; see also Reply Br. 2 (defining “a physical object having fractal geometry” as “possess[ing] self-similarity to a finite number of progressively smaller scales”); id. 4 (“[a] fractal geometry is a very specific type of geometry”). Regarding Figure 2 Appeal 2020-006178 Application 15/902,768 4 of the Specification, Appellant submitted in a Response After Final Action, that FIGS. 2 and 3, as supported by paragraphs [0012] and [0014] clearly show a resource exploration and recovery component having a fractal geometry. . . . [D]epicting a fractal geometry in a 2-D, black and white figure required by the patent office is difficult. To the end, Applicant’s Representative relies on the known definition of ‘fractal’ which describes an article each part of which has the same statistical character as the whole. ‘Fractals’ possess self-similarity at progressively smaller scales. Response After Final Action (January 31, 2020), p. 4 (emphasis added). Appellant also submitted that “given the description in the specification, additional detail for FIGS. 2 and/or 3 is not necessary.” Id.; see also Interview Summary for Interview held on January 16, 2020 (“Applicant’s representative argues that the intended fractal drawing in figure 2 is extremely difficult to illustrate as it does not fully capture this self-similarity as the scale is shrunk or expanded”). Determining whether claims are anticipated involves a two-step analysis, wherein the first step involves construction of the claims, and the second step involves comparing the claims to the prior art. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). Regarding claim construction, “[d]uring examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.”’ Id. (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). “Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation” (In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)), recognizing that even under the Appeal 2020-006178 Application 15/902,768 5 broadest reasonable interpretation, the Board’s construction “cannot be divorced from the specification and the record evidence” (In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)). Critically, when a patent applicant has elected to be a lexicographer by providing an explicit definition in the specification for a claim term, such definition controls. Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); see also Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (stating that the specification “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”). On the record before us, the Specification is not silent as to whether Figure 2 illustrates a fractal geometry, as claimed. Indeed, the Specification explicitly identifies fractal geometry 78 as depicted in Figure 2 as an example of what is meant by the claim term “fractal geometry”: “Reference will now follow to FIG. 2 describing first backup ring 46,” wherein “backup ring 46 includes a body 70 that defines a fractal geometry 78.” Spec. ¶ 12. Moreover, Appellant maintains on the record supra that Figure 2 clearly shows a fractal geometry. Thus, although one of ordinary skill in the art would interpret “fractal geometry” as a repeating pattern of varying scales, as argued by Appellant, the Specification explicitly presents fractal geometry 78, as depicted in Figure 2, as a pattern within the meaning of the claim term “fractal geometry.” Figure 2 of the Specification is reproduced below. Appeal 2020-006178 Application 15/902,768 6 Figure 2 depicts backup ring 46, comprised of fused layers 73, having repeating shapes spaced apart by voids 86 and identified in the Specification as fractal geometry 78. See, e.g., Spec. ¶¶ 12, 13. For comparison, Figure 3 of the Specification is reproduced below. Appeal 2020-006178 Application 15/902,768 7 Figure 3 depicts “[s]and screen assembly 60 . . . formed from a plurality of layers,” wherein “[f]irst layer 110 includes a first fractal geometry 118, second layer 116 includes a second fractal geometry 120 and third layer 114 includes a third fractal geometry 122.” Id. ¶ 14. We agree with the Examiner that Figure 2 of the Specification depicts fractal pattern 78 as a geometric pattern of substantially uniformly sized, repeating shapes. Thus, we construe the claim term “fractal geometry,” in view of the express disclosures in the Specification, as a pattern of repeating shapes, which shapes may (i.e., fractal geometries 118, 120, 122, as depicted in Figure 3) or may not (i.e., fractal geometry 78 as depicted in Figure 2) vary progressively in size. In other words, we are not persuaded by Appellant’s representations supra that Figure 2 clearly shows a pattern of a repeating shape having progressively varying sizes. Next, Appellant argues that “it is improper for the Examiner to consider FIGS. 2 and 3 of Shkurti as having fractal geometry without support in the published application itself.” Id. at 5 (citing Shkurti, paragraphs 43 and 44 for the lack of disclosure of fractal geometry) (“[a]t no point is the backup ring . . . shown or described as having a fractal geometry”). We do not find this argument persuasive because although patent drawings not designated as being drawn to scale cannot be relied upon to define precise proportions of elements if the specification is completely silent on the issue (Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000)) that does not mean “that things patent drawings show clearly are to be disregarded” (In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972)). Appeal 2020-006178 Application 15/902,768 8 Appellant also argues that the Examiner fails to identify with specificity the fractal geometry on which the Examiner relies for disclosing the claimed fractal geometry, as allegedly depicted in Shkurti’s Figures 2 and 3. Appeal Br. 5. Appellant submits that FIGS. 2 and 3 of Shkurti may depict a downhole tool having a repeating pattern, [however] not every part of the repeating pattern has the same statistical character as the whole and thus does not define a fractal geometry as would be understood by one of ordinary skill in the art. Id.; see also Reply Br. 2 (arguing, with respect to Shkurti, that “a repeating pattern in a single layer would not be understood by one of ordinary skill in the art to be a fractal”). Appellant also submits that “[t]he prior art cited by the Examiner does not teach self-similarity for any number of scales,” but rather, “Shkurti simply depicts a backup ring having a repeating pattern that exists in a single magnification level or scale.” Reply Br. 2; see also id. (“[a] single scale is not the same as a finite number of progressively smaller scales”). The Examiner carries the procedural burden of establishing a prima facie case when the rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant ... [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed.Cir.1990). Here, we find that the Examiner’s reference to Shkurti’s backup ring 100 is sufficient to state a prima facie case by notifying Appellant of the component onto which the Examiner reads the fractal Appeal 2020-006178 Application 15/902,768 9 geometry requirement of claim 1. Further, Appellant acknowledges that backup ring 100 has a repeating pattern, as required by claim 1. We do not understand Appellant’s argument regarding every part of the pattern exhibiting the same statistical character as the whole, in view of Figure 2 also merely being comprised of a repeating pattern. Accordingly, we sustain the Examiner’s rejection of independent claim 1, under 35 U.S.C. § 102(a)(1), as anticipated by Shkurti. Appellant relies largely on the same arguments for independent claim 6 as relied on in the rejection of claim 1 supra, and therefore, we also sustain the Examiner’s rejection of claim 6, under 35 U.S.C. § 102(a)(1), as anticipated by Shkurti.2 Appellant also does not present arguments for the patentability of dependent claims 2, 3, 7, and 8, which depend from independent claims 1 or 6, apart from the arguments presented for independent claims 1 and 6, and therefore, for essentially the same reasons stated supra, we also sustain the Examiner’s rejection of claims 2, 3, 7, and 8, under 35 U.S.C. § 102(a)(1), as anticipated by Shkurti. Dependent claims 43 and 9 Claims 4 and 9, which depend from independent claims 1 and 6, respectively, recite in relevant part, wherein the component or tool comprising or including the fractal geometry is “additively manufactured.” Appeal Br. 9, 10 (Claims App.). The Examiner finds that Shkurti discloses the backup ring “may be formed from any material known in the art, for example, stainless steel, metal alloys, plastics, etc.” Final Act. 4 (quoting 2 We are not persuaded by Appellant’s conclusory argument that “Shkurti also does not teach or suggest the tool described in claim 6.” Appeal Br. 5. 3 We apply Appellant’s arguments as stated with respect to claim 9 to claim 4. Appeal Br. 5; Reply Br. 2–3. Appeal 2020-006178 Application 15/902,768 10 Shkurti ¶ 43); cf. Spec. ¶ 13 (disclosing making body 70 from “stainless Steel 316L, Titanium Ti64, Nickel Alloy IN625” or “other materials”). Appellant argues that there is “no such teaching” of additively manufacturing a tool in Shkurti. Appeal Br. 5. Appellant submits that “additive manufacturing or 3D printing is a process by which an object is built or constructed one layer at a time,” wherein “an additive manufacturing device deposits one layer of material over or onto another layer of material” and “the layers are bonded or fused together to form the final object.” Reply Br. 2. We agree with Appellant that Shkurti fails to disclose additively manufacturing backup ring 100, and we also find the Examiner’s reliance on making Shkurti’s backup ring 100 from the same materials as the claimed component or tool insufficient to meet the limitation of additive manufacturing. However, claims 4 and 9 are directed to articles of manufacture, not methods of making articles of manufacture. As such, the recitation of additively manufacturing the article is a product-by-process limitation. The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Shkurti, titled, “Metal Expandable Element Back-Up Ring for High Pressure/High Temperature Packer,” discloses “an expandable ring that does not separate into distinct segments once the sealing element is set,” because the backup ring is “designed to flex radially outward without breaking.” Shkurti ¶ 41. Shkurti discloses that Appeal 2020-006178 Application 15/902,768 11 [t]his may be accomplished by thin cuts into the outer diameter of the ring, as well as corresponding cuts, which create furrows in the inner diameter of the ring offset from the outer diameter cuts. The cuts may allow for the ring to deform so that it can increase in diameter. This may provide a solid support for an inner backup ring when pressure is applied to a rubber element. . . . A guide ring promotes consistent deformation of the expandable backup ring so that there is substantially equal spacing between each segment. This facilitates application of a consistent pressure on the rubber element and inner backup ring. Id. ¶ 42; see also id. ¶¶ 43–46, Figs. 2A, 2B. Appellant states supra that additive manufacturing results in a product that exhibits bonded layers or a fused together construction. Here, Shkurti appears to disclose a backup ring formed as a single, solid piece with selective cuts therein to allow for flexing of the backup ring without breaking. Thus, a preponderance of the evidence supports a finding that Shkurti’s product is the same as the claimed product, when the claimed product is additively manufactured by fusing depositing layers together to form a single, solid piece. Accordingly, we reverse the Examiner’s rejection and enter a NEW GROUND OF REJECTION of claims 4 and 9, under 35 U.S.C. § 102(a)(1), as anticipated by Shkurti. Rejection II Regarding claims 5, 10, and 11, which depend from independent claims 1 and 6, and which further require, inter alia, the component or tool to be a sand screen, wherein the fractal geometry defines openings in the sand screen (Appeal Br. 10, 11), the Examiner finds Yeh discloses sand screens where Shkurti does not. Final Act. 6 (citing Yeh ¶¶ 40–48). The Examiner also finds that Yeh “teaches an analogous ‘fractal geometry’ of a Appeal 2020-006178 Application 15/902,768 12 resource exploration and recovery component,” as required by the claims, because “Yeh discloses sand screen(s) 138, 314 can include a wire-mesh screen layer which forms identically shaped repetitive voids therein to establish a ‘fractal geometry’ for purposes of keeping out sand/debris.” Ans. 9. The Examiner reasons that it would have been obvious to have modified Shkurti’s component to include a sand screen, as taught by Yeh, “to allow for filtering out debris during open-hole operation for production purposes.” Final Act. 6–7. The Examiner determines that “Shkurti and Yeh do not teach away from using any of the elements (i.e., backup ring and sand screen) with one another.” Ans. 11. Appellant argues that “backup rings and sand screens are not interchangeable,” and “[g]iven the disparity between the technology of backup rings and sand screens,” the Examiner’s proposed modification is conclusory and lacks the required rational underpinning. Appeal Br. 6–7. Alternatively, Appellant argues that “[if] the Examiner is suggesting that it would [have been] obvious to form the sand screen in Yeh to include a fractal geometry, . . . the Examiner has not provided any references that teach an article having a fractal geometry, let alone a downhole component of any type having a fractal geometry.” Id. at 7. Shkurti’s backup ring is placed adjacent to a sealing element to provide an extrusion path for the sealing element, for use with a packer, which is a downhole tool for sealing the tubing or other pipe in a casing of a well. See, e.g., Shkurti ¶¶ 4–6. Yeh discloses that “a [hydrocarbon] production system may utilize various devices, such as sand screens and other tools, for specific tasks within a well,” for example, “to provide a flow path for formation fluids.” Yeh ¶ 5; see also id. ¶ 37 (“sand control devices Appeal 2020-006178 Application 15/902,768 13 138a-138n may include slotted liners, stand-alone screens (SAS); pre- packed screens; wire-wrapped screens, sintered metal screens, membrane screens, expandable screens and/or wire-mesh screens”); ¶ 38 (“sand control devices 138a-138n may be coupled to one or more of the packers 134a- 134n, which may be herein referred to as packer9(s) 134 or other well tools”). In view of the Examiner’s Answer, we understand that Examiner is proposing to incorporate into Shkurti’s packer, which includes backup ring(s), a sand screen having a fractal geometry (i.e., a pattern of repeating shapes, as construed supra), as taught in Yeh, to allow for filtering out debris during open-hole operation for production purposes. Indeed, Yeh discloses that packers may include sand screens. We do not understand the Examiner’s rejection as proposing to interchange Shkurti’s backup ring 100 with Yeh’s sand screen, as argued by Appellant. Addressing Appellant’s secondary argument, as discussed supra, Appellant’s argument does not apprise us of error in the Examiner’s findings with respect to both Shkurti and Yeh disclosing a fractal geometry, as that claim term is construed to mean a pattern of repeating shapes. Accordingly, we sustain the Examiner’s rejection of claims 5, 10, and 11, under 35 U.S.C. § 103, as unpatentable in view of Shkurti and Yeh. Appeal 2020-006178 Application 15/902,768 14 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–4, 6–9 102(a)(1) Shkurti 1–3, 6–8 4, 9 4, 9 5, 10, 11 103 Yeh 5, 10, 11 Overall Outcome 1–3, 5–8, 10, 11 4, 9 4, 9 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRM IN PART; 37 C.F.R. § 41.50(b)