Ex Parte Santa et al

Patent Trial and Appeal Board

Jun 27, 2018

13914061 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/914,061 06/10/2013
123223 7590 06/29/2018
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Monika Santa
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074008-1533-286332 6196
EXAMINER
SKAIST,AVIT.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONIKA SANTA, ANSGAR BEHLER,
and THOMAS VAN DER KOELEN
Appeal2017-004170
Application 13/914,061 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 24, 26-35, and 37--46 under (pre-AIA)
35 U.S.C. § 103(a) as unpatentable over Mao et al. (WO 2011/038745 Al,
pub. Apr. 7, 2011) ("Mao") and Mueller et al. (US 2007/0160652 Al, pub.
July 12, 2007) ("Mueller"). We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is BASF SE. Appeal
Br. 2.
Appeal2017-004170
Application 13/914,061
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 24, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
24. A method of recovering oil from a subterranean formation
comprising the step of injecting into said formation an
aqueous composition that contains a surface-active
amount of an alkyl or alkenyl oligoglycoside ( ether)
carboxylate according to formula (I)
wherein
R1 is a linear or branched alkyl and/or alkenyl group
having from 8 to 22 carbon atoms;
R2 is a linking group selected from the group of
R2a: hydrocarbon groups comprising 1 to 6 carbon
atoms,
R2b: ester groups -C(O)-O-R3-, wherein R3 is a
hydrocarbon group comprising 1 to 6 carbon
atoms;
X is hydrogen or an alkaline cation;
AO is one or more groups selected from the group of
ethylene oxide, propylene oxide and/or butylene
oxide groups;
G is a sugar unit having 5 or 6 carbon atoms;
n is a number from O to 50;
p is a number from 1 to 1 O; and
q is a number from 1 to 4;
wherein the aqueous composition is injected into the
subterranean formation through at least one injection borehole
and crude oil is withdrawn from the subterranean formation
through at least one production borehole;
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Application 13/914,061
wherein said aqueous composition additionally comprises a base
and has a pH from more than 7 to 13. 2
Note on Claim Objection
The Appellants acknowledge the Examiner's objection to claim 24
and request that the objection be held in abeyance. Appeal Br. 8; see also
Final Act. 2; Ans. 3. This matter is not within the jurisdiction of the Board,
rather it is reviewable by petition under 37 C.F.R. § 1.181 (see Manual of
Patent Examining Procedure (MPEP) §§ 1002 and 1201 (9th ed., rev. 8, Jan.
2018)).
ANALYSIS
The Appellants argue that the Mueller reference is not analogous art
because it is not directed to the Appellants' field of endeavor, (i.e., recovery
of oil from oil-bearing reservoirs), or reasonably pertinent to the particular
problem with which the inventor is involved, (i.e., a problem with
insufficient interfacial tensions in formulations to enhance supplemental oil
recovery techniques). See Appeal Br. 9--10; Spec 1:9;
At the outset, we note that:
[ t ]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
2 "Appendix A" in the Appeal Brief, which directed to the claims involved
in this Appeal, includes a non-entered amendment to claim 24. Appeal
Br. 14--15; see Advisory Act., Box 7(a) (mailed Apr. 28, 2016); Amendment
After Final Act. 3, 6 (filed Apr. 11, 2016) (amending claim 24, "more than7
~>7 to< 13"). The version of claim 24 filed January 13, 2016 and
rejected by the Examiner in the Final Office Action mailed February 11,
2016 is on appeal. See Response to Non-Final Office Action 3.
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Appeal2017-004170
Application 13/914,061
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted). As for
the first test, "[ t ]h[ e field of endeavor] test for analogous art requires the
PTO to determine the appropriate field of endeavor by reference to
explanations of the invention's subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention." Bigio at 1325-26 (emphasis added). As for the second test, "a
reference is reasonably pertinent if, ... it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem." In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992).
The Examiner does not cogently address whether the Mueller
reference is analogous art. Specifically, the Examiner does not identify
whether Mueller is: (1) within the same the field of endeavor as the
Appellants' invention; or (2) is reasonably pertinent to a problem with which
the Appellants (Inventors) are involved. Additionally, the Examiner does
not identify Muller's field of endeavor or explain that the matter with which
Muller deals logically would have commended itself to the attention of the
Appellants (Inventors) in considering their problem. To the extent the
Examiner responds to the Appellants' argument, the Examiner explains that
Mueller's surfactant may act as a substitute or equivalent for Mao's
surfactant. See Ans. 4--5. This explanation relies in-part on references other
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Application 13/914,061
than Mueller, e.g., Stoumas3 and Boudreau4. See id. However, whether
Mueller's surfactant may act as a substitute for Mao's surfactant does not, by
itself, cogently address the issue of whether Mueller is analogous art.
Thus, we do not sustain the Examiner's rejection of claims 24, 26-35,
and 37--46 as unpatentable over Mao and Mueller.
DECISION
We REVERSE the Examiner's decision rejecting claims 24, 26-35,
and 37--46.
REVERSED
3 Stoumas (US 4,216,097, iss. Aug. 5, 1980).
4 Boudreau (US 2003/0188864 Al, pub. Oct. 9, 2003).
5