Ex Parte Sheehy et al

Patent Trial and Appeal Board

Apr 13, 2018

14307133 (P.T.A.B. Apr. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/307,133 06/17/2014
34082 7590 04/17/2018
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
Alan James Sheehy
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.
P07686US1 1186
EXAMINER
RUNYAN, SILVANAC
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
04/17/2018 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):
kconrad@zarleylaw.com
crasmussen@zarleylaw.com
emarty@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN JAMES SHEEHY, BRADLEY RAY GOVREAU,
COLIN KENNETH HILL, MICHAEL THOMAS CARROLL,
and BRIAN W. G. MARCOTTE
Appeal2017-008333 1
Application 14/307,133 2
Technology Center 3600
Before ANTON W. PETTING, KENNETH G. SCHOPPER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-12. We have jurisdiction under 35 U.S.C. § 6(b ).
1 Our decision references the Appeal Brief ("Appeal Br.," filed Jan. 5, 2017),
the Reply Brief ("Reply Br.," filed May 15, 2017), the Examiner's Answer
("Ans.," mailed Mar. 14, 2017), and Final Office Action ("Final Act.,"
mailed July 11, 2016).
2 The Briefs do not list a real party in interest. However, Titan Oil
Recovery, Inc. is listed as an applicant and "TITAN OIL RECOVERY,
INC." is the assignee recorded (January 8, 2015 with the USPTO as per
reel/frame number 034662/0127.
Appeal2017-008333
Application 14/307, 133
We REVERSE.
BACKGROUND
The Specification relates to "a method of enhancing oil recovery of
low salinity water flooding" and "a method of oil recovery by causing
changes in wettability or fluid relative permeability." Spec. 1, 1. 29--2, 1. 3.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A method for enhancing oil recovery, comprising the steps
of:
determining a specific nutrient package used to initiate a
microbiological response under actual reservoir conditions in
combination with low salinity water injection;
applying the specific nutrient package to at least one
targeted well to stimulate resident microorganisms to alter
hydrophobic properties so that interaction with oil contained in a
reservoir rock formation is improved and optimize an effect of
lower salinity water injection.
Appeal Br. 6.
REJECTION
The Examiner rejects claims 1-12 under 35 U.S.C. § 103(a) as
unpatentable over Converse3 in view of Sheehy. 4
3 Converse et al., US 2001/0045279 Al, pub. Nov. 29, 2001.
4 Sheehy, US 4,971,151, iss. Nov. 20, 1990.
2
Appeal2017-008333
Application 14/307, 133
DISCUSSION
We are persuaded by Appellants' argument that the Examiner has
failed to adequately support the conclusion that it would have been obvious
to combine Converse and Sheehy as proposed.
With respect to claim 1, the Examiner finds that Converse discloses a
method as claimed except that Converse does not disclose that the specific
nutrient package stimulates resident microorganisms to alter hydrophobic
properties. Final Act. 3--4 (citing Converse i-fi-f 14, 51, 58, 71, 81, 82, 90).
With respect to this claim requirement, the Examiner relies on Sheehy.
Specifically, the Examiner finds that Sheehy teaches that the resident
microorganisms alter hydrophobic properties so that "trapped oil in [] rock
material [may] be readily flushed by outgoing water from a well." Id. at 4--5
(citing Sheehy col. 4, 11. 26-32, 48-64; col. 5, 11. 55-58). The Examiner
concludes that it would have been obvious to apply a nutrient package to
stimulate resident microorganisms to alter hydrophobic properties in
Converse "as taught by Sheehy, in order [for] the microorganisms [to]
permeate rock pores to act as surfactants to enable the trapped oil in the rock
material to be readily flushed by outgoing water from a well." Id. The
Examiner asserts that an additional rationale for making the proposed
combination is that it will "enhanc[ e] oil recovery by reducing interfacial
tension of oil in the reservoir." Ans. 14 (citing Sheehy col. 2, 11. 27-35)
(emphasis omitted).
We are persuaded that the rejection, with respect to the inclusion of
Sheehy as described above, lacks articulated reasoning with the requisite
rational underpinnings to support the conclusion of obviousness. See KSR
Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). As discussed below,
3
Appeal2017-008333
Application 14/307, 133
we agree with Appellants that the Examiner has not provided adequate
support to show why a person of ordinary skill in the art would have sought
to produce a nutrient package that stimulates microorganisms to alter
hydrophobic properties in Converse's method of converting hydrocarbons to
methane.
Converse is directed to a method of "stimulating the activity of
microbial consortia ... to convert hydrocarbons to methane." Converse
Abstract. Converse discloses that
The process of this invention stimulates and sustains the
activity of a mixture of different microorganisms in a
hydrocarbon-bearing, subterranean formation to convert
hydrocarbons to methane and other gases, which can be
produced. While not wishing to be held to any specific theory, it
is believed that a mixture of microorganisms converts
hydrocarbons to methane in multiple acts.
Converse i-f 14. Thus, Converse discloses that the microorganisms
themselves convert hydrocarbons to methane for recovery of methane. In
contrast, Sheehy is directed to methods of "recovery of oil from oil
reservoirs with assistance from microorganisms." Sheehy Abstract. In
particular, Sheehy discloses that oil recovery can be enhanced "under
pressure by reducing interfacial tension of oil in [an oil] reservoir" and
where "microorganisms permeate rock pores to act as surfactants to enable
the trapped oils in the rock material to be readily flushed by outgoing water
from a well." Id. at col. 2, 11. 27-35; col. 5, 11. 55-58. Without further
evidence or explanation from the Examiner, it has not been adequately
shown that one of ordinary skill in the art would have recognized that the
benefits of Sheehy's method, related to oil recovery and relied upon the
Examiner as motivation for the proposed combination, would also be
4
Appeal2017-008333
Application 14/307, 133
realized in a method of using microorganisms to produce methane as
disclosed by Converse. In short, the Examiner has not provided the requisite
rational underpinnings to support the conclusion that it would have been
obvious to alter the method of Converse as proposed.
Based on the foregoing, we are persuaded of reversible error with
respect to the rejection of claim 1. Accordingly, we do not sustain the
rejection of claim 1. We also do not sustain the rejection of dependent
claims 2-12 for the same reasons.
CONCLUSION
We REVERSE the rejection of claims 1-12.
REVERSED
5