Ex Parte Rose

Patent Trial and Appeal Board

Aug 25, 2017

13124383 (P.T.A.B. Aug. 25, 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.
13/124,383 07/08/2011 Peter Rose 00846-U4398.PCT.US 5878
20551 7590 08/29/2017
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
EXAMINER
LI, AIQUN
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
patentdocket @ tn w. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER ROSE
Appeal 2016-005066
Application 13/124,3831
Technology Center 1700
Before PETER F. KRATZ, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant requests review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—12 of Application 13/124,383. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellant identifies the real party in interest as the University of Utah and
its wholly owned subsidiary, University of Utah Research Foundation. Br.
2.
2 This Decision refers to the Final Action dated Feb. 26, 2015 (“Final Act.”),
Appeal Brief dated Sept. 28, 2015 (“Br.”), and Examiner’s Answer dated
Feb. 9, 2016 (“Ans.”). Citations herein to the Specification (“Spec.”) refer
to the International Patent Application No. PCT/US2009/060660, to which
the Examiner cites and Appellant does not object.
Appeal 2016-005066
Application 13/124,383
BACKGROUND
The subject matter on appeal relates to a method of dissolving silica,
silicate, and calcium carbonate minerals in subterranean geothermal
formations in order to increase their permeability. Br. 7. According to the
Specification, injecting a caustic chelating solution into the subterranean
formation avoids the deleterious effect of strong acids on steel used in
wellbores, negative environmental impact of the acids, and associated
increased handling hazards and high cost. Spec. 1,11. 16—21. Claim 1, the
sole independent claim, is reproduced below from the Claims Appendix with
paragraphing and indentation added for readability (Br. 24):
1. A method of dissolving minerals in subterranean,
geothermal formations to increase a permeability of the
subterranean formation, comprising
injecting a chelating solution into the subterranean
geothermal formation and maintaining the chelating solution in
the subterranean geothermal formation for a period of time
sufficient to dissolve a desired amount of minerals,
said chelating solution comprising a chelating
agent and which is caustic to elevate the pH to 9-13,
wherein the chelating agent is chemically stable at
geothermal temperatures and geothermal pressures, and
wherein the chelating solution simultaneously
dissolves silica, silicates, and calcite in the subterranean
geothermal formation.
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Appeal 2016-005066
Application 13/124,383
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1—3, 5—6, and 8—12 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Mouche.3 Final Act. 3.
2. Claims 4 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mouche and Gallup.4 Final
Act. 5.
DISCUSSION
Rejection 1
Appellant argues claim 1 and dependent claims 10 and 11, and does
not separately argue other dependent claims. Br. 13—20. Claims 2, 3, 5, 6,
8, 9, and 12 therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv)
(2013). With regard to claim 1, Appellant argues that the Examiner fails to
establish a prima facie case of obviousness because Mouche does not teach
the following: “injecting a chelating solution into a subterranean geothermal
formation” (Br. 14); dissolving minerals in the subterranean geothermal
formation (id. at 16); and increasing the permeability of the subterranean
geothermal formation (id. at 19).
Having considered Appellant’s arguments in light of this appeal
record, we are not persuaded that Appellant identifies reversible error.
Accordingly, we affirm Rejection 1 for the reasons set forth in the Final
Action and Examiner’s Answer (Ans. 2-4, 5—6), which we adopt as our
own. We add the following primarily for emphasis.
3 U.S. Patent No. 5,403,493 (Apr. 4, 1995) (“Mouche”).
4 U.S. Patent No. 5,858,245 (Jan. 12, 1999) (“Gallup”).
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Appeal 2016-005066
Application 13/124,383
Mouche teaches a mineral scale inhibitor for a geothermal well,
comprising an aqueous solution having a pH preferably within the range
from about 8 to 12. Mouche 3:25—30. The Examiner finds that Mouche
teaches geothermal wells are drilled into geothermal reservoirs comprised of
volumes of rock of high porosity and permeability (Ans. 5 (citing Mouche
1:25—45)), and further finds that injecting scale inhibitor solution into the
wellbore of a geothermal well, at a point from about 200-400 feet below the
lowest encountered scale formation site, so that it mixes with production
fluid from the reservoir rock, meets the limitation of “injecting a chelating
solution into the subterranean geothermal formation.” Ans. 5—6 (citing
Mouche 1:35—45). The Examiner determines that it would have been
obvious to a person of ordinary skill in the art to optimize the pH of
Mouche’s chemically stable chelant such as EDTA or NT A, which overlaps
with the claimed pH range. Ans. 2—3 (providing citations to Mouche).
The Examiner responds to Appellant’s argument that Mouche’s
chelant is not injected into a geothermal formation, but merely into a
wellbore, by reasoning that Mouche’s chelant will inevitably reach the
geothermal formation because the wellbore is connected to the formation,
and the rock is highly porous and permeable. Ans. 5—6. In light of the
Examiner’s reasoning, Appellant’s arguments that injecting scale inhibitor
into the wellbore “is not the same as injecting the scale inhibitor into the
formation itself’ (Br. 17) and that Mouche’s “scale inhibitor can be injected
at a location that is inside a well casing, so that the scale inhibitor never even
comes in contact with the formation” (id. at 17—18) do not sufficiently
explain why a person of ordinary skill in the would have understood
Mouche’s apparatus as injecting chelant in a way so differently from
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Appeal 2016-005066
Application 13/124,383
Appellant’s that it would not permeate the geothermal formation. In
particular, Appellant’s Specification describes that “injection can be done
using any method known in the art” including deploying tubing “down the
wellbore and the reagent solution is injected through the tubing” (Spec. 6,1.
31— 7,1. 1), similarly to how Mouche describes injecting its scale inhibitor.
Similarly, Appellant’s argument that Mouche’s scale inhibitor does
not maintain chelating solution in the geothermal formation for a time
sufficient to dissolve minerals in the formation itself is not persuasive
because Mouche teaches a test method where the flow of scale inhibitor is
stopped for up to three days to simulate a shut-in geothermal well. Mouche
16:37—17:4. Appellant does not dispute the conditions of Mouche’s test, but
argues that it is a mere simulation and not “actually carried out in a
geothermal well.” Br. 18. Appellant also argues that Mouche does not
“inject” scale inhibitor into the geothermal formation, and that the
Examiner’s finding that Mouche’s scale inhibitor will infiltrate the formation
is based on speculation. Id. at 19. We do not find those arguments
persuasive for the reasons discussed above.
With regard to Appellant’s argument that Mouche fails to teach
dissolving minerals in the geothermal formation to increase permeability
{id.), the Examiner responds that Mouche’s injection of scale inhibitor into
the formation would inherently increase permeability of the formation. Ans.
6. In response to that inherency finding, Appellant does not point to
anything in the Specification or Mouche to show that permeability of the
formation would not necessarily be increased by Mouche’s injection of scale
inhibitor. Appellant merely repeats that Mouche’s scale inhibitor does not
enter into the formation and “most likely does not even come in contact with
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Application 13/124,383
the formation.” Br. 19. These statements are not persuasive for reasons
discussed above.
Claims 10 and 11 additionally recite that “the chelating solution is
extracted from the subterranean geothermal formation or pumped deeper
into the subterranean geothermal formation.” Claims App’x. Appellant
argues that Mouche does not teach “the possibility of pumping the chelating
solution deeper into the formation after waiting for a period of time.” Br.
20. Appellant’s argument is not persuasive because “pumping the chelating
solution deeper” is recited as an alternative requirement of the claims. The
Examiner finds, and Appellant does not dispute, that Mouche teaches
extracting the chelating solution.
Accordingly, we sustain Rejection 1.
Rejection 2
Claims 4 and 7 additionally recite that the chelating agent is phthalate
or sodium citrate. The Examiner relies on Gallup as teaching that citric acid,
phthalic acid, EDTA, NT A and sodium salts thereof can decrease mineral
scale in geothermal processes. Final Act. 6 (providing citations to Gallup).
Appellant does not dispute that finding, but argues that Gallup does not cure
the deficiencies of Mouche for the reasons argued against Rejection 1. The
Examiner does not rely on Gallup, however, as teaching the limitations of
claim 1. Accordingly, we sustain Rejection 2.
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Application 13/124,383
SUMMARY
We affirm the rejections of claims 1—12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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