SHELL OIL COMPANY

Patent Trials and Appeals Board

Sep 9, 2020

15156833 - (D) (P.T.A.B. Sep. 9, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/156,833 05/17/2016 Ernesto Rafael FONSECA OCAMPOS SP1184-US-NP 2144
23632 7590 09/09/2020
SHELL OIL COMPANY
P O BOX 576
HOUSTON, TX 77001-0576
EXAMINER
SUE-AKO, ANDREW B.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
09/09/2020 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):
Shelldocketing@cpaglobal.com
USPatents@Shell.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERNESTO RAFAEL FONSECA OCAMPOS,
CLAUDIA JANE HACKBARTH, ARTHUR HERMAN HALE,
MAURICIO JOSE FARINAS MOYA,
GUY LODE MAGDA MARIA VERBIST, BENJAMIN MOWAD, and
PRASAD BALOO KERKAR

Appeal 2019-005412
Application 15/156,833
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 5, and 8–12. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Shell Oil
Company. Appeal Br. 1.
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Application 15/156,833

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BACKGROUND
The Specification discloses that “the invention relates to a method of
treating a subterranean formation using a mortar slurry including
cementitious material, water, and aggregates and optionally admixtures
and/or additives.” Spec. ¶ 2.

ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A method of treating a subterranean formation,
comprising:
preparing a mortar slurry designed to set to form a mortar
with a compressive strength between 12 MPa and 84 MPa and
that is also below a fracture closure pressure of the subterranean
formation, the mortar slurry comprising a cementitious material
and water;
injecting the mortar slurry into the subterranean formation
at a pressure sufficient to create a fracture in the subterranean
formation;
while maintaining a pressure higher than the fracture
closure pressure, allowing the mortar slurry to set, forming the
mortar in the fracture;
reducing the pressure below the fracture closure pressure;
allowing the mortar in the fracture to crack, forming a set
cracked mortar; and
inducing additional permeability in the set cracked mortar
by applying a pulse of pressure provided by a compressible gas
or water [to] the fracture.
Appeal Br. 10.
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REJECTION
The Examiner rejects claims 1, 4, 5, and 8–12 under 35 U.S.C. § 103
as unpatentable over Fonseca2 in view of Kaminsky.3
DISCUSSION
As discussed below, we are persuaded of error in the Examiner’s
reasoning in the rejection of claim 1.
With respect to claim 1, the Examiner finds that Fonseca discloses a
method for treating a subterranean formation including preparing a mortar
slurry; injecting the mortar slurry into a subterranean formation to create a
fracture; allowing the slurry to set while maintaining a pressure above the
fracture closure pressure; reducing the pressure below the fracture closure
pressure; and allowing the fracture to crack, forming a set cracked mortar.
Final Act. 2–3 (citing Fonseca ¶¶ 13, 14, 19, 42–46). The Examiner also
finds that:
Fonseca describes some means of additional cracking, e.g.,
application of formation stress and slurry components that shrink
or expand ([0011]). Fonseca also analogizes the mortar to
proppant (e.g., [0016] “the mortar may crack while remaining in
place and serving as a proppant” and [0030] “conventional
proppant material may be added to the mortar slurry”).
Id. at 3. The Examiner also finds that “Fonseca does not describe reopening
the fracture.” Id. The Examiner then relies on Kaminsky as teaching “a
method of re-opening/re-fracturing a propped fracture (abstract)” that
includes a first injecting step and a second injecting step using “slick water;
carbon dioxide; propane; nitrogen; etc.” that “takes advantage of the flow

2 Fonseca et al., US 2013/0341024 A1, pub. Dec. 26, 2013.
3 Kaminsky et al., US 2013/0306315 A1, pub. Nov. 21, 2013.
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paths created in the first injecting step to re-open the fracture.” Id. at 3–4
(citing Kaminsky ¶ 18). The Examiner determines:
Therefore, it would have been obvious to one having ordinary
skill in the art before the effective filing date of the claimed
invention to have modified Fonseca to include re-opening/re-
fracturing the fracture with a second fracturing fluid comprising
slick water; carbon dioxide; propane; nitrogen; etc., as in
Kaminsky, in order to “[take] advantage of the flow paths created
in the first injecting step” and produce a narrower second fracture
that is “better able to retain proppant in a well-distributed manner
when pressure is released from the formation” and benefit from
“the volume of proppant needed to fill the fracture is reduced
over that of a wide fracture, thereby reducing overall cost.”
Id. at 4 (citing Kaminsky ¶ 116). The Examiner also determines that the
combination would result in inducing additional permeability in the set
cracked mortar of Fonseca because “Kaminsky teaches ‘applying a pulse of
pressure provided by a compressible gas or water to the fracture,’ and
Fonseca provides evidence that Kaminsky’s re-opening/re-fracturing step
would necessarily ‘[induce] additional permeability in the set cracked
mortar,’ similar to the formation stress or to the components that
shrink/grow (Fonseca [0011]).” Id.
The key to supporting a conclusion of obviousness under 35 U.S.C.
§ 103 is the clear articulation of a reason why the claimed invention would
have been obvious. The Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) indicated that the analysis supporting a rejection
under 35 U.S.C. § 103 should be made explicit. The Federal Circuit has
stated that “rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418.
Here, we determine that none of the proposed reasons provided by the
Examiner amount to a sufficient articulated reason with rational
underpinning to support the conclusion that the claimed method would have
been obvious. As an initial matter, we note that the Examiner’s findings are
problematic to the extent that the Examiner finds that “Fonseca does not
describe reopening the fracture.” Final Act. 3. This finding indicates that
the Examiner is interpreting the claim to require the reopening of a fracture.
However, the claim does not appear to require that the pulse of pressure is
used to reopen a fracture. Rather, we agree with Appellant that claim 1
provides a method in which “the pulse of pressure provided by the
compressed gas or water is provided to an open fracture containing a
cracked mortar,” i.e., the fracture is open and remains open because of the
cracked mortar therein. Appeal Br. 8. Further, although we agree with the
Examiner that Fonseca does not describe reopening a fracture, Fonseca does
not describe doing so because Fonseca does not contemplate the fracture
closing, much like the claimed fracture. Fonseca discloses using a mortar
slurry to create a fracture and then allowing the mortar slurry to set and
crack within the fracture. See Fonseca ¶ 5. Fonseca also discloses that as
the mortar hardens, the fracture remains open. Id. ¶ 7. Thus, Fonseca does
not contemplate reopening a fracture because the set mortar prevents the
fracture from closing.
Based on the Examiner’s finding that “Fonseca does not describe
reopening the fracture,” the Examiner relies on Kaminsky as teaching a
method of reopening a fracture. See Final Act. 3–4. And the reasoning
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relied upon by the Examiner relates only to a method of reopening a
fracture. Id. at 4. Yet, the Examiner does not explain adequately how
Kaminsky’s method and stated advantages might be related to a method of
inducing additional permeability in a cracked set mortar within a fracture
that is already open. To the extent the Examiner determines that the
combination would have been obvious to take advantage of flow paths
created by a first injecting step, any advantage obtained by Kaminsky’s
method appears to relate to a second injecting step that occurs after a
fracture is allowed to “substantially close.” See Kaminsky ¶¶ 17, 18. It is
not clear, without further explanation, how or whether such an advantage
would be obtained by introducing a second injecting step into an open
fracture with a set cracked mortar therein. Similarly, the proposed reasoning
that the modification would produce a narrower second fracture that is better
able to retain proppant and reduce the volume of proppant required relates to
advantages of introducing a second injecting step to open a substantially
closed fracture, and the Examiner does not explain adequately how this
reasoning would apply with respect to the addition of a second injecting step
into an open fracture with a set cracked mortar therein. See Kaminsky
¶ 116. In short, Kaminsky discloses methods, and advantages thereof,
related to creating a second fracture in a substantially closed first fracture;
the Examiner relies on such advantages to support the conclusion of
obviousness; and the Examiner does not explain adequately how this
reasoning would apply to a situation in which the fracture is not closed and
instead remains open with a set cracked mortar therein.
Based on the foregoing, we determine that the Examiner has not set
forth an adequate reason to support the conclusion that claim 1 would have
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been obvious over Fonseca in view of Kaminsky. Accordingly, we do not
sustain the rejection of claim 1. With respect to the rejection of the
remaining claims, the Examiner does not provide any further evidence or
reasoning that cures the deficiency in the rejection of claim 1. Thus, we also
do not sustain the rejection of dependent claims 4, 5, and 8–12.

CONCLUSION
We REVERSE the rejection of claims 1, 4, 5, and 8–12.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4, 5, 8–12 103 Fonseca,
Kaminsky
1, 4, 5,
8–12

REVERSED