Ex Parte Santa et alDownload PDFPatent Trial and Appeal BoardJun 27, 201813914061 (P.T.A.B. Jun. 27, 2018) Copy Citation 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; 2 Appeal2017-004170 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. 3 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 4 Appeal2017-004170 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 Copy with citationCopy as parenthetical citation