Ex Parte Stehle et al

Patent Trial and Appeal Board

Sep 14, 2018

13933519 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/933,519 07/02/2013
123223 7590 09/18/2018
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Vladimir Stehle
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.
074048-0097 -US-287525 8000
EXAMINER
SUE-AKO, ANDREW B.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR STEHLE, LIUBOV AL TUNINA, and
VLADIMIR KUVSHINOV
Appeal2017-008560
Application 13/933,519
Technology Center 3600
Before JAMES P. CALVE, RICHARD H. MARSCHALL, and
ANTHONY KNIGHT, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 13, 17, 18, and 20-29. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants are the Applicants, Wintershall Holding GmbH and Institute of
Petroleum Chemistry of the Siberian Branch of the Russian Academy of
Sciences, which the Appeal Brief identifies as the real parties in interest.
Br. 2.
Appeal2017-008560
Application 13/933,519
THE CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a process for producing mineral
oil from mineral oil deposits having inhomogeneous permeability." Spec.
1:10-11. Claims 13 and 27 are independent. Claim 13 is reproduced below.
13. A process for tertiary production of mineral oil from
underground mineral oil deposits having a deposit temperature
TD, into which at least one injection well and at least one
production well have been sunk, comprising at least the
following process steps:
i) injecting a flooding composition through at least one
injection well into the mineral oil deposit, using, as the flooding
composition, a formulation (F) having a temperature T F higher
than the temperature TD,
ii) cooling the flooding composition from step i) in the mineral
oil deposit and
iii) injecting a further flooding composition through at least one
injection well into the mineral oil deposit and withdrawing
mineral oil through at least one production well, wherein the
formulation (F) comprises crude glycerol (CG) having the
following composition:
80 to 90% by weight of glycerol,
10 to 20% by weight of water,
0 to 10% by weight of inorganic salts and
0 to 1 % by weight of organic compounds,
where the percentages by weight are each based on the total
weight of the crude glycerol (CG);
wherein the mobility of the formulation (F) used in process step
i) under deposit conditions (final mobility) is less than the
mobility of the mineral oil and less than the mobility of the
further flooding composition from process step iii), the mobility
of the further flooding composition from process step iii) being
less than or equal to the mobility of the mineral oil;
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wherein the formulation (F) comprises at least 80% by weight
of the crude glycerol (CG), where the percentages by weight are
each based on the total weight of the formulation (F);
wherein the viscosity of the formulation (F) is such that the
formulation (F) achieves displacement of the mineral oil present
in the mineral oil deposit.
Br. 18-19 (Claims App.).
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 13, 17, 18, 21, and 23-25 under 35 U.S.C. § I03(a) as
unpatentable over Heam, 2 Robb, 3 and Properties of Glycerine. 4
2. Claims 20, 22, 27, and 28 under 35 U.S.C. § I03(a) as
unpatentable over Heam, Robb, Welton, 5 and Puerto. 6
3. Claim 26 under 35 U.S.C. § I03(a) as unpatentable over Heam,
Robb, and Bums. 7
4. Claim 29 under 35 U.S.C. § I03(a) as unpatentable over Heam,
Robb, Welton, Puerto, and Bums.
ANALYSIS
Claims 13, 17, 18, and 20---26
The Examiner found that Heam discloses several of the steps of
independent claim 13, including "injecting a flooding composition,"
2 U.S. Patent No. 3,601,195, issued August 24, 1971 ("Heam").
3 U.S. Patent Pub. No. 2011/0155376 Al, published June 30, 2011 ("Robb").
4 Physical Properties of Glycerine and its Solutions, GLYCERINE
PRODUCERS' ASSOCIATION, 1-27 (1969).
5 U.S. Patent No. 7,825,073 B2, issued November 2, 2010 ("Welton").
6 U.S. Patent No. 5,135,052, issued August 4, 1992 ("Puerto").
7 U.S. Patent Pub. No. 2008/0125334 Al, published May 29, 2008
("Bums").
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Application 13/933,519
"cooling the flooding composition," and "injecting a further flooding
composition." Final Act. 4 ( emphasis omitted). The Examiner further found
that Heam discloses that "[a]ny convenient preheating fluid" with the
necessary characteristics will work, including fluids with "low viscosity
when hot but which increases greatly in viscosity or sets up into a solid or
semisolid at temperature approaching reservoir temperature." Id. at 5.
Based on those teachings, the Examiner found that "Heam opens up the
possibility to a wide range of possible combinations of preheating and
plugging fluids" and noted that Heam discloses "other plugging agents and
preheating solutions are available which have not been mentioned." Id. at
5---6 ( quoting Heam, 6:44--46). The Examiner found that Heam did not
specify whether "crude glycerol is suitable," but further found that Robb
discloses a formulation comprising 80-90% crude glycerol, with the balance
of the formulation including water, inorganic salts, and other compounds.
Id. at 6. The Examiner determined that it would have been obvious "to have
modified Heam to substitute the preheating and plugging solutions of Heam
entirely (100%) with the crude glycerol of Robb," such that Heam included
a formulation having the claimed composition. Id. ( emphasis omitted). In
support of the combination, the Examiner found that Robb discloses the
environmental acceptability and low cost of crude glycerol, and Properties
of Glycerine discloses "that it is well-known in the art that glycerol-based
solutions have a viscosity-temperature relationship wherein viscosity
increases significantly as temperature decreases." Id. at 7. Regarding the
claimed "mobility," the Examiner found that Ream's method employing an
impermeable zone, and diversion of further flooding solutions, discloses the
limitation. Id.
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Appellants argue that Heam does not suggest the use of glycerol and
that Heam "makes clear that, in order to be useful for the invention disclosed
therein, the plugging fluid must be a 'solid or semisolid at the formation
temperature."' Br. 9. Appellants argue that "[t]here is nothing in the Robb
reference to suggest that the carrier fluid would fit this description, be
capable of gel formation and to block permeable zones." Id. Appellants
also argue that Robb fails to disclose a glycerol amount falling within the
claimed range, and that larger concentrations "would render the disclosed
process unfit for its intended purpose." Id. at 11. Appellants further contend
that Heam fails to disclose the claimed mobility, "has no disclosure of
relative mobility of the fluids being used," and that the Examiner
inappropriately relies on disclosures of viscosity as a basis to support the
findings regarding mobility. Id. at 12. Appellants also address what they
deem the Examiner's "alternative argument" based on Properties of
Glycerine, and argue that the "reference does not provide the required
suggestion to use crude glycerol in a plugging fluid according to Heam." Id.
at 13-14.
In the Answer, the Examiner provided additional analysis and findings
in support of the rejection. See Ans. 2-9. For example, the Examiner
acknowledges that the portions of Ream's disclosure that form the basis for
much of Appellants arguments "may be non-analogous to Robb's fluids."
Ans. 3. The Examiner points out, however, that Appellants fail to address
the more pertinent disclosures from Heam, such as the "highly viscous oils"
that Heam describes as solid or semisolid at the formation temperature, and
that the liquid plugging agent sets up as it cools, and increases in viscosity.
Ans. 3. The Examiner also pointed out that Properties of Glycerine was not
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used as Appellants contend, and was used as evidence that glycerol is well-
known as one of the fluids identified as useful in Ream's process, where the
fluid viscosity increases greatly as it cools. Id. at 4. This well-known
property, according to the Examiner's findings, supports the obviousness of
adding Robb's crude glycerol to Ream's process. Id. The Examiner also
further found that Heam discloses the claimed mobilities because if Heam' s
mobilities were not as claimed, Ream's process would not work. Id. at 5-
6. s
Appellants' arguments do not establish error in the Examiner's
findings or the determination that claim 13 would have been obvious over
Heam and Robb, as evidenced by Properties of Glycerine. The Examiner
pointed out in the Answer that Appellants base the majority of their
argument on an improperly narrow reading of Heam and the Examiner's
findings and reasoning that forms the basis for Heam' s combination with
Robb. Ans. 3--4. Appellants did not respond to the Examiner's
characterization of their argument, and Appellants' arguments do not
establish error in the Examiner's findings. We agree that the Appellants'
arguments directed to certain polysaccharide formulations in Heam and
alleged problems modifying those embodiments with Robb's teachings fail
to address the Examiner's findings based on the viscous oils of Heam. See
8 The Examiner also addressed Appellants argument that the use of crude
glycerol in the process showed a "significant improvement," and viewed the
assertion as a failed attempt to establish unexpected results. Ans. 6.
Appellants did not tie the short discussion of the alleged "significant
improvement" to any particular secondary consideration, however, and we,
therefore, do not find the assertion as probative of the obviousness issue
before us. See Br. 14. Moreover, the assertion of an improvement did not
establish any unexpected results, as the Examiner found. Ans. 6.
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id. In those teachings, Heam suggests that other fluids that increase in
viscosity as temperature drops would be suitable in Ream's process, and the
Examiner found that Properties of Glycerine establishes that it is well-
known that glycerol increases in viscosity as it cools. Id. These findings,
not disputed directly by Appellants in the manner used in the Examiner's
analysis, support the Examiner's findings and the Examiner's use of Robb's
crude glycerol in Ream's process, particularly where Robb teaches the
suitability of crude glycerol as a viscous treatment fluid. See Final Act. 6.
Appellants also contend that Robb does not disclose the required
concentration of glycerol, but Robb discloses a formulation of crude glycerol
containing at least 80-90% crude glycerol, the same as the claimed range.
Robb ,r 41. Appellants' argument that Robb teaches further diluting that
formulation mischaracterizes the Examiner's rejection. Br. 11; Final Act. 6;
Robb ,r 41. The Examiner proposes substitution of Heam' s solutions
"entirely (100%) with the crude glycerol of Robb," meaning Robb's
formulation with 80-90% crude glycerol, and not including other fluids
Robb discloses that may result in a lesser concentration of crude glycerol.
See Final Act. 6 ( emphasis omitted).
We are also not persuaded that the Examiner erred in finding that
Heam discloses the claimed mobilities. Appellants' argument that Heam
fails to disclose the claimed mobilities rests on the Examiner's alleged
misinterpretation of Heam' s diversion of fluids and Heam' s alleged failure
to disclose relative mobilities of the fluids it uses. Br. 12. Claim 13 requires
the mobility of the formulation in step (i) under deposit conditions-
meaning after cooling and raising viscosity-to be "less than the mobility of
the mineral oil and less than the mobility of the further flooding
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composition." Br. 19 (Claims App.). The claim also requires a mobility of
the formulation in step (iii) to be less than or equal to the mobility of the
mineral oil. Id. As the specification points out, the relative mobilities
enable "efficient displacement of the mineral oil." Spec. 17:23. Although
Appellants criticize the Examiner's use of Ream's teachings of viscosity as
an indicator of mobility, the specification points out that as viscosity
"increases as a result of cooling, ... mobility of the formulation (F)
decreases." Id. at 16: 12-14; see also id. at 11:39-12:2. Accordingly, claim
13 's mobility limitations require the mobility of the initial injection of
formulation to be less mobile (i.e., generally less flowable or more viscous)
than the mineral oil and the second injection fluid, while the mobility of the
second injection fluid is less than or equal to the mineral oil-if it were not,
the second injection fluid could not efficiently displace the mineral oil and
move it towards the production well.
The Examiner found that Heam discloses a similar process that would
not function properly if the relative mobilities were not as claimed. The
Examiner found that Heam discloses preheating/plugging solutions that
"plug high-permeability zones such that the oil and the further flooding
solutions are diverted by the plug to less permeable zones, and wherein the
flooding solutions displace[] the oil to production wells." Ans. 5. The
Examiner also found that if Heam employed mobilities that did not
correspond to those claimed-using a first injection fluid with greater
mobility than the mineral oil or second injection fluid-the first injection
fluid "would continue flowing and not plug the formation as in Heam." Id.
at 5---6. The Examiner found that even though Heam did not discuss
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"mobility" explicitly, "Heam implicitly9 discloses" the claimed mobilities.
Id. at 6. Appellants do not respond to any of the Examiner's additional
analysis and findings in the Answer, and have not established error in the
Examiner's finding that Heam inherently discloses the claimed mobilities.
We are also not apprised of error in the Examiner's determination that
it would have been obvious to combine Robb's crude glycerol formulation
with Ream's process, as evidenced by Properties of Glycerine. In addition
to the unrebutted findings regarding Properties of Glycerine noted above,
and the support that teaching provides for the proposed modification of
Ream's process with Robb's crude glycerol, the Examiner provided further
rationales for the proposed combination, including Robb's disclosure that
the use of crude glycerol was cost effective and environmentally sound. See
Final Act. 6; see also id. at 7 (providing further rationales for the proposed
combination); Ans. 4. The Examiner's findings and rationales adequately
support the proposed combination.
Based on the foregoing, we sustain the rejection of claim 13.
Appellants do not raise any additional arguments with respect to claims 17,
18, and 20-26, which ultimately depend from claim 13, and we, therefore,
sustain the rejection of those claims for the same reasons. See Br. 8-14.
Claims 27-29
Independent claim 27 contains limitations similar to claim 13, but
includes more specific concentrations of the components in the crude
glycerol formulation, including 80-82% crude glycerol, 10-15% water, and
5-7% inorganic salts that comprise sodium chloride. Br. 20-21 (Claims
9 We interpret the Examiner's use of the term "implicitly" as synonymous
with "inherently" in this context.
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App.). Appellants rely in part on the same arguments we found
unconvincing above in the context of claim 13. Br. 16. Appellants also
argue that the Examiner provided insufficient reasons in the Final Office
Action "why the exact percentages required by claim 27 would be selected
by a person of ordinary skill in the art." Id. Appellants further contend the
Examiner incorrectly found that Robb discloses "salt water" for use in the
formulation. Id.
Appellants' arguments do not apprise us of error in the rejection of
claim 27. As the Examiner found in the Answer, Robb discloses a crude
glycerol formulation made by the same process as that disclosed in the
specification-both showing that crude glycerol is obtained as a byproduct
ofbiodiesel production. Ans. 7 (citing Spec. 6:33-7:2; Robb ,r,r 41--42).
The Examiner properly supported the finding that Robb discloses the
claimed composition by pointing out that the prior art and claim use the
same term to describe the formulation, "crude glycerol," the same process to
make the material, and presumably produce the same composition. See Ans.
8. Appellants have not responded to these findings, or otherwise pointed to
any differences in the crude glycerol it discloses in the specification with the
composition of claim 27, and created as a byproduct ofbiodiesel production,
and the composition with the same name made in the same manner in Robb.
See Spec. 6:8-7:24. In addition, Appellants do not address the Examiner's
finding in the Final Office Action that it would have been obvious to arrive
at the specific percentages in claim 27 through routine experimentation
because the general conditions of the claim are disclosed in the prior art as
result effective variables. See Final Act. 13 ( citing In re Aller, 220 F .2d 454,
456 (CCPA 1955)). Finally, Appellants are incorrect in asserting that
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Robb's paragraph 44 does not disclose "salt water." Robb ,r 44 ("It is
further believed it can be advantageous to include an inorganic salt in any
water of the carrier fluid in the case of a certain water-soluble
polysaccharides that are less soluble in salt water." (emphasis added)). The
Examiner adequately supported the finding that Robb, using the same
production method as Appellants, discloses the same inorganic salt that
includes sodium chloride in the formulation.
Based on the foregoing, we are not apprised of error in the Examiner's
rejection of claim 27. Appellants do not raise any additional arguments with
respect to claims 28 and 29, which ultimately depend from claim 27, and we
therefore sustain the rejection of those claims for the same reasons. See Br.
15-17.
DECISION
We affirm the decision of the Examiner to reject claims 13, 17, 18,
and 20-29 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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