Ali A. Al-Taq et al.

Patent Trials and Appeals Board

Aug 7, 2019

14227079 - (D) (P.T.A.B. Aug. 7, 2019)

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.
14/227,079 03/27/2014 Ali A. Al-Taq 213,409 4323
38137 7590 08/07/2019
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
SKAIST, AVI T.
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
08/07/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALI A. AL-TAQ, HABEEB H. HAJI,
JAFFAR ABDULLA SALEEM, AYMAN R. AL-NAKHLI,
DUANE BEVAN RAGBIR, and
ZADSON DE ALMEIDA FRANCO
____________________

Appeal 2018-004231
Application 14/227,079
Technology Center 3600
____________________

Before: JILL D. HILL, JEREMY M. PLENZLER, and SEAN P.
O’HANLON, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ali A. Al-Taq et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 7 and 9–12. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants’ identify the Applicant Saudi Arabian Oil Company as the real
party in interest. Appeal Br. 2.
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BACKGROUND
Appellants’ invention relates to a process for the removal of filtercake
from oil wells. Spec. ¶ 1. Sole independent claim 7, reproduced below,
represents the claimed subject matter:
7. A method for increasing the productivity of an oil well
wherein a flow restricting filtercake has formed in the wellbore
during a drilling operation, which comprises:
injecting each of (i) ammonium chloride, (ii) sodium
nitrite, (iii) acetic acid, said acetic acid at 10-12 vol% and (iv) an
emulsion breaker into the wellbore to dissolve the filtercake by
the evolution of heat and nitrogen from an exothermic reaction
resulting from said injected ammonium chloride, sodium nitrite,
and acetic acid.

REJECTIONS
I. Claims 7 and 9–11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Richardson (US 4,482,016, iss. Nov. 13, 1984) and
Markham (US 3,076,760, iss. Feb. 5, 1963).2 Final Act. 3.
II. Claim 12 stands rejected under 35 U.S.C. § 103 as unpatentable
over Richardson, Markham, and Nguyen et al., Kinetics and mechanism of
the reaction between ammonium and nitrite ions: experimental and

2 Following the Final Action of May 3, 2017, Appellants filed proposed
claim amendments on June 19, 2017 and July 10, 2017, which were entered
by the Examiner. See Advisory Action dated August 3, 2017. The
amendment of June 19, 2017 added the limitation of dependent claim 13 to
independent claim 7. Regarding amended claim 7, the Examiner indicated
that the rejection of claim 13 over Richardson and Markham, was applied to
claim 7, and its dependent claims 9–11 and 14. See id. The rejection of
claim 12, which depends from claim 7, is therefore over Richardson,
Markham, and Nguyen et al.
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theoretical studies, Chemical Engineering Science 58 (2003) 4351–4362.
Final Act. 5.
ANALYSIS
Rejection I: Claims 7 and 9–11
The Examiner finds that Richardson discloses
a method for increasing the productivity of an oil well wherein
a flow restricting filtercake has formed in the wellbore (col. 2
lines 18-47 and col. 4 lines 45-51), which comprises:
injecting ammonium chloride, sodium nitrite, and acetic
acid into the wellbore to dissolve the filtercake by the evolution
of heat and nitrogen from an exothermic reaction resulting from
said injected ammonium chloride, sodium nitrite, and acetic
acid (col. 2 lines 18-47, col. 4 lines 45-51, 54-56, and 60, col. 5
lines 6-8, 21-31, and 38-45, and col. 2 line 14).
Final Act. 3.
Regarding the limitation of acetic acid having a concentration of 10-
12 vol%, the Examiner concludes that, although Richardson does not
disclose a concentration of 10–12 vol% of acetic acid, it would have been
obvious for a skilled artisan to have provided 10–12 vol% of acetic acid
“because it has been held that ‘[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.’” Final Act. 4 (citing In re
Aller, 220 F. 2d 454, 456 (CCPA 1955)).
Appellants argue claims 7 and 9–11 as a group. Appeal Br. 5–7. We
select claim 7 as representative. Claims 9–11 stand or fall with claim 7.

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Reliance on Aller
Appellants argue that the Examiner’s reliance in Aller is misplaced,
because the general conditions of Richardson (i.e., the volume percent of
acetic acid) are not known. Appeal Br. 5–6.
The Examiner responds that “Richardson expressly recites ‘a total of
384 gallons of acetic acid was used and one-half of this was neutralized by
sodium hydroxide,’” and therefore Richardson “expressly recite[s] ‘how
much acetic acid was left.’” Ans. 3. The Examiner also responds that the
claims recite the chemical composition at the time of injection, and
Richardson’s composition, at the time of injection, is “‘a total of 384 gallons
of acetic acid.’” Id. The Examiner next responds that “acetic acid and
sodium hydroxide are not the only components in the composition of
Richardson,” and “[i]t is overly simplistic to narrow the reaction to one
comprising two components when in fact other components may play a part
in the reaction.” Id.
In response to Appellants’ argument that the starting concentration of
acetic acid in Richardson is unknown (Appeal Br. 5–6), the Examiner
counters that an “exemplary composition which is explicitly recited by
Richardson (col. 3 lines 13–19) is comprised of two solutions [that are]
mixed” according to the following table:

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Ans. 4. The Examiner then applies the equation for density and known
densities of the tabled components to determine that the concentration of
acetic acid in Richardson by volume percent is:

Id. at 3–5. The Examiner further finds that “Richardson explicitly discloses
9.1 vol%” in stating that “[f]or the 100-bbl treatment a total of 384 gallons
of acetic acid was used,” because “384 gallons per 100 bbl (4200 gallons) is
the equivalent of 9.1 vol%.” Id. at 5 (citing Richardson (3:62–63)).
The Examiner then argues that, given the above calculation of 9.1
vol% of acetic acid, “Richardson does, in fact, disclose the same ‘general
conditions’ as instantly claimed,” and demonstrates that acetic acid is a
result effective variable in stating that “acetic acid is for ‘acidization of
materials encountered in and around the borehole,’ and ‘in various situations
... relatively high concentration of weak acids are desirable.’” Ans. 5. The
Examiner concludes that a skilled artisan would have been motivated “to
find the optimal amount of acetic acid; for example, an increase in the
concentration of acetic acid would decrease the time required to complete
acidization.” Id. at 5–6. The Examiner further concludes that, because a
claimed process performed with an acid concentration between 25% and
70% was held to be obvious over a reference process that differed from the
claims only in that the reference process was performed at an acid
concentration of 10% (see In re Aller, 220 F.2d 454, 456 (CCPA 1955)),
Appellants’ claimed “10-12 vol%” is obvious over Richardson’s disclosure
of 9.1 vol%. Ans. 6.
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Appellants reply that “the Examiner’s calculations are incorrect.”
Reply Br. 1. Appellants re-calculate the concentration of acetic acid in the
injected solution to be 4.55%, which is supported by Richardson’s statement
that “[t]his mixture of weak acid and weak acid salt provided an acetic acid
concentration of about 5% in the injected solution.” Id. at 2–3 (quoting
Richardson 3:36–39).
We agree with Appellants that Richardson discloses an acetic acid
concentration of about 5% in its injected solution. Appellants, however,
previously argued that “Aller is not applicable because the ‘general
conditions’ are not known.” Appeal Br. 5 (“How much acetic acid was left,
as acetic acid, is not known. Nor is the starting concentration of acetic acid
known. Hence, this is not a case where one is modifying known
percentages.”). According to Appellants, “Aller involved prior art where . . .
concentrations of re[a]gents were known,” and a skilled artisan cannot
determine concentration information from Richardson’s disclosure. Id. at 6.
Appellants now establish that the concentration of acetic acid in
Richardson is known to be about 5%, and we consider the applicability of
Aller in light of this established fact. The Examiner finds that Richardson
employs the same chemical components in the same method, and therefore
discloses the same “general conditions” as claimed. Ans. 5. Additionally,
Richardson discloses that its “acetic acid is for ‘acidization of materials
encountered in and around the borehole,’ and ‘in various situations ...
relatively high concentration of weak acids are desirable’ for this task,
clearly demonstrating how acetic acid is a result effective variable.” Id. The
Examiner contends, therefore, that a skilled artisan would have been
motivated to find an optimal amount of acetic acid; “for example, an
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increase in the concentration of acetic acid would decrease the time required
to complete acidization.” Id. at 5–6. The Examiner notes that, in Aller, the
“‘claimed process which was performed at ... an acid concentration between
25% and 70% was held to be prima facie obvious over a reference process
which differed from the claims only on that the reference process was
performed at ... an acid concentration of 10%.’” Id. at 6 (citing In re Aller,
220 F.2d at 456).
The Aller court began its analysis with the following discussion:
Normally, it is to be expected that a change in
temperature, or in concentration, or in both, would be an
unpatentable modification. Under some circumstances,
however, changes such as these may impart patentability to a
process if the particular ranges claimed produce a new and
unexpected result which is different in kind and not merely in
degree from the results of the prior art. . . . Such ranges are
termed ‘critical’ ranges, and the applicant has the burden of
proving such criticality. . . . However, even though applicant's
modification results in great improvement and utility over the
prior art, it may still not be patentable if the modification was
within the capabilities of one skilled in the art. . . . More
particularly, where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.
Id. (citations omitted). In Aller, the CCPA determined that, because the
difference in temperature and concentration between the claims and the prior
art was “merely different in degree and not in kind,” and criticality of the
claimed range had not been established, the difference in temperature and
concentration was obvious. Here, as in Aller, the difference in concentration
between Richardson and the claims is a difference in degree, rather than
kind. Further, Appellants do not contend that the difference in concentration
is critical or a difference in kind. We are not persuaded that the Examiner
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has erred in concluding that the difference in concentration would have been
obvious.
Combining Richardson and Markham
Regarding combining Richardson with Markham to teach an emulsion
breaker, the Examiner finds that Richardson discloses, after its acidizing
treatment injection, “‘a post-treatment shut-in time of one to three days . . .
to allow the heat to dissipate and break any emulsion’” (Final Act. 6 (citing
Richardson 3:44–46)), but “fails to expressly disclose including an emulsion
breaker in the acidizing treatment fluid.” Id. The Examiner finds, however,
that Markham teaches including an emulsion breaker in an acidizing
treatment fluid. Id. (citing Markham 1:21–26). The Examiner concludes
that “breaking an emulsion by including an emulsion breaker in the
treatment fluid, rather than by waiting, is nothing but the simple substitution
of one known equivalent technique for another, used for a comparable
device in a comparable situation,” making it obvious to employ Markham’s
emulsion breaker in Richardson. Id. at 6–7.
Appellants argue that (1) “[t]here is no suggestion within Markham
that HCl could be replaced by acetic acid,” (2) “there is no teaching or
motivation within Markham to combine it with Richardson,” and (3) a
skilled artisan would not have found “[a] suggestion within Richardson or
Markham to combine 10-12% acetic acid and an emulsion breaker, together
with the other components of claim 7 et seq.” Appeal Br. 7.
We are not persuaded by Appellants’ argument, because the Examiner
is not proposing replacement of HCl with acetic acid. Appellants’
arguments therefore, do not address the actual combination proposed by the
Examiner.
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The Examiner further responds that multiple rationales for the
combination of Richardson and Markham were “set forth in the Final
Rejection mailed 05/03/2017 . . . (e.g. both references teach acidizing
treatment fluids comprising various additional agents),” and “[t]o discount
these rationales based upon a minor difference - and not a clear teaching
away - is not” persuasive of Examiner error. We agree with the Examiner.
The Examiner contends that replacing Richardson’s emulsion breaking via
“post-treatment shut-in time of one to three days” with utilizing an emulsion
breaker is a simple substitution, because it has been held that “[i]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious,” and “[a] court must ask whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 401 (2007).
The Examiner reasons that both Markham and Richardson teach “an
acidizing treatment fluid” comprising “various agents (e.g. demulsifier,
corrosion inhibitor, surfactant, etc.),” and adding one of Markham’s agents
(i.e., the emulsion breaker) to Robinson would have been obvious “because
it amounts to nothing more than the combination of familiar elements to
yield a predictable result.” Final Act. 7.
Appellants have not persuaded us that the result of adding Markham’s
emulsion breaker to Richardson’s treatment fluid, or substituting emulsion
breaking over time with utilizing a specific emulsion breaker would have
yielded an unpredictable result.

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Conclusion
For the reasons for forth above, we sustain the Examiner’s rejection of
claim 7 as unpatentable over Richardson and Markham. Claims 9–11 fall
with claim 7.
Rejection II: Claim 12
Appellants make no argument that claim 12 would be patentable over
Richardson, Markham, and Nguyen et al., if claim 7 is not patentable over
Richardson and Markham.

DECISION
We AFFIRM the Examiner’s rejection of claims 7 and 9–11 as
unpatentable over Richardson and Markham.
We AFFIRM the Examiner’s rejection of claim 12 as unpatentable
over Richardson, Markham, and Nguyen et al.

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)(1)(iv).

AFFIRMED