Ex Parte Stehle et alDownload PDFPatent Trial and Appeal BoardSep 14, 201813933519 (P.T.A.B. Sep. 14, 2018) Copy Citation 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 DBRIPDocket@dbr.com 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; 2 Appeal2017-008560 Application 13/933,519 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"). 3 Appeal2017-008560 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. 4 Appeal2017-008560 Application 13/933,519 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 5 Appeal2017-008560 Application 13/933,519 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. 6 Appeal2017-008560 Application 13/933,519 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 7 Appeal2017-008560 Application 13/933,519 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 8 Appeal2017-008560 Application 13/933,519 "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. 9 Appeal2017-008560 Application 13/933,519 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 10 Appeal2017-008560 Application 13/933,519 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 11 Copy with citationCopy as parenthetical citation