Ex Parte PONE et al

Patent Trial and Appeal Board

Oct 17, 2017

13537268 (P.T.A.B. Oct. 17, 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.
13/537,268 06/29/2012 Jean Denis PONE 41582US 4796
28841 7590 10/19/2017
PnnnonPhillins; Pnmnanv
EXAMINER
600 North Dairy Ashford
Houston, TX 77079-1175
SUE-AKO, ANDREW B.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
Legal-IP@conocophillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN DENIS PONE and DAVID J. BLUMER
Appeal 2016-002767
Application 13/537,268
Technology Center 3600
Before JILL D. HILL, NATHAN A. ENGELS, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jean Denis Pone and David J. Blumer (“Appellants”)1 seek review
under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated December 23, 2014 (“Final Act.”), rejecting claims 1—
16 under 35 U.S.C. § 103(a) as unpatentable over Shaw (US 4,732,690,
issued Mar. 22, 1988) and Berger (US 2008/0312108 Al, published Dec. 18,
2008). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify CONOCOPHILLIPS COMPANY as the real
party in interest. Br. 1.
Appeal 2016-002767
Application 13/537,268
BACKGROUND
The disclosed subject matter “relates to a method of improving post­
primary oil recovery by using a surfactant system.” Spec. 12. Claims 1, 6,
and 12 are independent. Claim 1 is reproduced below, with emphasis added:
1. A post-primary process for the displacement
and recovery of oil from a subterranean formation
comprising the steps of:
(a) injecting into a crude oil-bearing
subterranean formation an aqueous saline
surfactant composition comprising (1) brine, (2)
Alkyl Polyglucoside, (3) Linear Primary Alcohol
Ethoxylate, (4) sodium hydroxide and (5) alcohols;
(b) thereafter displacing the aqueous
composition through the oil-bearing formation and
driving oil from the oil-bearing formation; and
(c) recovering oil displaced from the
subterranean formation.
DISCUSSION
Appellants argue the patentability of the three independent claims
(claims 1, 6, and 12) as a group and do not provide separate arguments for
any dependent claims. Br. 3. We select independent claim 1 as
representative, with the remaining claims standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
Claim 1 recites the step of “injecting into a crude oil-bearing
subterranean formation an aqueous saline surfactant composition
comprising,” inter alia, “sodium hydroxide.” Br. 5 (Claims App.). In the
Final Office Action, the Examiner relied on Shaw as teaching the “injecting”
step, but the Examiner stated, “it appears that Shaw fails to disclose the
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Application 13/537,268
exact composition” recited. Final Act. 2. The Examiner found, however,
that Berger teaches the claimed “composition.” Id. at 2—3. The Examiner
also provided reasoning as to why it would have been obvious for one of
ordinary skill in the art at the time of the invention to modify Shaw with the
composition purportedly taught in Berger. Id. at 3. As to the presence of
“sodium hydroxide” in the “composition” of Berger, the Examiner stated
sodium hydroxide ([0026] “Green non-toxic biodegradable
strong alkali metal salts of polymerized weak acids include salts
formed by reacting a polymerized weak acid with a strong alkali.
[ . . . ] Strong alkalis include, but are not limited to, sodium
hydroxide,” [0036]—[0041] “when using inorganic alkali such as
sodium hydroxide,” and e.g., [0004]).
Final Act. 3.2
Appellants argue that “Berger teaches that sodium hydroxide is used
to react with a polymerized weak acid such as ‘polylactic acid and
polyaspartic acid’ to form non-toxic biodegradable strong alkali metal salts
of polymerized weak acids” and, “[m]oreover, Berger teaches that this green
non-toxic biodegradable strong alkali metal salt of polymerized weak acid
may be combined with one or more surfactants, an aqueous solvent,
optionally mobility control agents, and optionally one or more co-solvents.”
Br. 3 (citing Berger 126 and claim 1, respectively). From these assertions,
Appellants conclude that “it is clear that the composition that Berger intends
to form and inject cannot be the same or equivalent composition as recited in
the present application.” Id. Appellants argue that Berger teaches that
“sodium hydroxide is used as a reagent (in a precursor reaction) to form an
2 The bracketed text in this quotation indicates paragraphs from
Berger cited by the Examiner and does not indicate text added by the panel
in this appeal.
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Application 13/537,268
intermediate compound (i.e., non-toxic biodegradable strong alkali metal
salts) that is used ... to form the ‘composition for recovering oil.’” Id.
(quoting Berger, claim 1). According to Appellants, “it cannot be concluded
that sodium hydroxide is part of the composition described in Berger.” Id.
Under the broadest reasonable interpretation, “comprises” in the claim
language at issue means “includes but is not limited to.” See Versa Corp. v.
Ag-Bag Inti Ltd., 392 F.3d 1325, 1329 (Fed. Cir. 2004) (addressing
“comprising” in the body of a claim and stating that “‘comprising’ language
is not limiting and may include features not recited in the claim”). In the
context of the claim language here, this understanding of “comprises” means
that the five listed aspects (e.g., brine, Alkyl Polyglucoside, etc.) must be
included in (i.e., present in) the composition used to perform step (a).
We first address the teachings of paragraph 26 of Berger. As argued
by Appellants, this paragraph describes “reacting a polymerized weak acid
with a strong alkali,” such as sodium hydroxide, to form certain salts (which
Berger refers to generally as “[gjreen non-toxic biodegradable strong alkali
metal salts of polymerized weak acids” (hereinafter “strong alkali metal
salts”). Berger 126. We agree with Appellants that Berger discloses using
strong alkali metal salts in compositions to “enhance oil recovery.” Id. 127;
see also id., claim 1. For the reasons argued by Appellants, however, the
record does not support a finding (to the extent made) that sodium hydroxide
is present in the compositions described in, for example, paragraphs 26 and
27, and claim 1. Instead, as argued by Appellants (Br. 3), Berger indicates
that the sodium hydroxide is used up in the reaction that forms the strong
alkali metal salts. Berger 126 (“Green non-toxic biodegradable strong alkali
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Application 13/537,268
metal salts of polymerized weak acids include salts formed by reacting a
polymerized weak acid with a strong alkali.”).
Appellants’ arguments do not demonstrate error, however, in the
Examiner’s reliance on other teachings in Berger regarding sodium
hydroxide. See Ans. 3 (citing Berger 126, and also H 4, 36-41). For
example, paragraphs 36 through 39 describe comparative testing of various
“injection fluid compositions”—some including “[ijnorganic alkali” (such
as, for example, sodium hydroxide) and some, instead, including the strong
alkali metal salts described above. Berger 136 (“Table 2 shows the
injection fluid compositions used for testing. Inorganic alkali and the green
non-toxic biodegradable strong alkali metal salt of polymerized weak acids
are used in the formulation to compare their effect on [interfacial tension]
and oil recovery.”); see id. 138 (discussing “when using inorganic alkali
such as sodium hydroxide”), quoted at Final Act. 3. Although Berger
teaches that fluid compositions with strong alkali metal salts provide
“unexpected oil recovery improvements” over fluid compositions with
“inorganic alkali” {id. 137), Berger also teaches the use of fluid
compositions that include sodium hydroxide {see, e.g., id. 138, Table 2
(listing “Na2C03 or NaOH or Baypure® DS-100/40% or Baypure® DS 100
solid” as the “Alkali or alkali substitute”), Table 3 (describing tests 3 and 4,
each using 1.0% NaOH by weight as an alkali)). Appellants do not address
these teachings in Berger, and thus have not demonstrated error in the
Examiner’s reliance on these teachings. See Final Act. 3 (citing Berger
1136-41), 4 (“Therefore, ‘sodium hydroxide’ as a compositional element is
reasonably construed to encompass wherein the sodium hydroxide would be
present by virtue of e.g., being . . . added to (i.e., ‘when using inorganic
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Application 13/537,268
alkali such as sodium hydroxide’ [(see Berger 138)]) the composition, as in
Berger et al.”).
For these reasons, we sustain the rejection of claim 1. Claims 2—16
fall with claim 1.
DECISION
We affirm the decision to reject claims 1—16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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