BULK CHEMICAL SERVICES, LLC.

Patent Trials and Appeals Board

May 29, 2020

2019004667 (P.T.A.B. May. 29, 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.
14/755,185 06/30/2015 Seth SPURLOCK 12324-0002 1331
22902 7590 05/29/2020
CLARK & BRODY
1700 Diagonal Road
Suite 310
Alexandria, VA 22314
EXAMINER
HAVLIN, ROBERT H
ART UNIT PAPER NUMBER
1639
MAIL DATE DELIVERY MODE
05/29/2020 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 SETH SPURLOCK1
Appeal 2019-004667
Application 14/755,185
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and TAWEN CHANG,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of treating water used in an oilfield application, which have been
rejected on the grounds of obviousness and obviousness-type double
patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the double patenting rejection.

1 Appellant identifies the real party in interest as Bulk Chemical Services,
LLC. Appeal Br. 3. We use the word Appellant to refer to “applicant” as
defined in 37 C.F.R. § 1.42(a).
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Application 14/755,185

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STATEMENT OF THE CASE
The Specification states that “[t]here are a limited number of biocides
with the appropriate EPA and FDA clearances for use in mineral slurries to
inhibit bacteria growth,” one of which is known as thione or dazomet. Spec.
1:13–16. “Thione also has . . . oilfield applications.” Id. at 2:5–8. “Thione is
a good broad spectrum biocide and is versatile but has limited application
because it creates odor and has other health and safety issues due to the
presence of formaldehyde.” Id. at 2:18–20.
The Specification discloses “an improvement in the treating of water
used in oil field applications, wherein methylammonium monomethyl-
dithiocarbamate can be used as an effective biocide in these types of
applications.” Id. at 4:1–3. Methylammonium monomethyldithiocarbamate
is also referred to as MDTCMA. Id. at 5:7–8.
“MDTCMA produce[s] the breakdown component
methylisothiocyanate (MITC), which provides the efficacy of the biocide.
MITC is also the break-down component in thione.” Id. at 5:11–13.
However, “MDTCMA do[es] not contain formaldehyde or other aldehydes.
In essence, using . . . MDTCMA represents a non-formaldehyde based
microbiocide chemistry for preserving mineral slurries” or for oilfield
applications. Id. at 5:15–17.
Claims 7–9, 16, and 17 are on appeal. Claim 7, reproduced below, is
the only independent claim and is illustrative:
7. In a method of treating water used in an oil field
application to inhibit bacterial growth by adding an effective
amount of a biocide to the water, the improvement comprising
adding an effective amount of methylammonium
monomethyldithiocarbamate to the water to inhibit bacterial
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Application 14/755,185

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growth, the effective amount of methylammonium
monomethyldithiocarbamate being at least 1000 ppm weight
based on the total formulation.

The claims stand rejected as follows:
Claims 7–9, 16, and 17 for obviousness-type double patenting based
on claims 1–12 of U.S. Patent 9,695,071 (Ans. 10);
Claims 7–9 under 35 U.S.C. § 103 as obvious based on Seth,2
Dorman,3 Mirakyan,4 and Pesticideinfo5 (Ans. 3);
Claims 7–9, 16, and 17 under 35 U.S.C. § 103 as obvious based on
Seth, La Zonby,6 Dorman, Mirakyan, and Pesticideinfo (Ans. 8); and
Claims 7–9, 16, and 17 under 35 U.S.C. § 103 as obvious based on
Campbell7 and Pesticideinfo (Ans. 6).
OPINION
Obviousness-type double patenting
Claims 7–9, 16, and 17 stand rejected for obviousness-type double
patenting based on claims 1–12 of U.S. Patent 9,695,071. The Examiner
finds that, “[a]lthough the claims at issue are not identical, they are not

2 US 2014/0374103 A1, published Dec. 25, 2014.
3 US 2,766,554, issued Oct. 16, 1956.
4 US 2012/0285693 A1, published Nov. 15, 2012.
5 Methylammonium N-methyldithiocarbamate- Identification, toxicity, use,
water pollution potential, ecological toxicity and regulatory information,
https://web.archive.org/web/20140801202059/http://pesticideinfo. org/
Detail_ Chemical.jsp?Rec_Id=PC39764 (2014).
6 US 5,209,824, issued May 11, 1993.
7 US 2014/0303045 A1, published Oct. 9, 2014.
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Application 14/755,185

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patentably distinct from each other because the claims of the patent would
anticipate the instant claims.” Ans. 10.
In the Appeal Brief, Appellant does not include the double patenting
rejection as being among the grounds of rejection to be reviewed on appeal.
Appeal Br. 8. In the Reply Brief, Appellant states that “the non-statutory
obviousness-type double patenting rejection based on Appellant’s United
States Patent No. 9,695,071 . . . is now moot as a Terminal Disclaimer has
been filed.” Reply Br. 1.
However, Appellant did not indicate when a terminal disclaimer was
filed, and USPTO records do not indicate that a terminal disclaimer has in
fact been filed in this application. Therefore, and because Appellant does not
contest the merits of the double patenting rejection, the rejection of claims
7–9, 16, and 17 for obviousness-type double patenting based on claims 1–12
of U.S. Patent 9,695,071 is affirmed.
Obviousness based on Seth, Dorman, Mirakyan, and Pesticideinfo
Claims 7–9 stand rejected as obvious based on Seth, Dorman,
Mirakyan, and Pesticideinfo. The Examiner finds that Seth “teaches the
process of adding a biocide to oilfield waste water sufficient to decrease the
number of bacteria in the water.” Ans. 3. Specifically, “Seth teaches the use
of . . . hydrogen peroxide and a secondary [biocide] selected from a group
including ammonium salts and methyldithiocarbamate.” Id. The Examiner
finds that Seth also teaches “a range of effective amounts of biocide
including 1–10000 ppm.” Id. The Examiner finds that Mirakyan similarly
“teaches the use of biocides in oilfield applications . . . . Mirakyan teaches
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examples of commonly available biocides useful in such an application
includes methyldithiocarbamate . . . and dithiocarbamates.” Id. at 4.
The Examiner finds that Dorman “teaches a method of sterilizing soil
by applying N-methyldithiocarbamates ‘which will completely kill any plant
or animal life existing’ which are non-selective in action. . . . Dorman
specifically teaches the methylammonium salt of N-methyl
dithiocarbamate.” Id. at 3.
The Examiner finds that Pesticideinfo “teaches that MDTCMA
belongs to the chemical class dithiocarbamate-MITC which is useful as a
fumigant, fungicide, herbicide and nematicide (page 1). Pesticideinfo
teaches the dithiocarbamate class includes metam-sodium and metam-
potassium of which metam-sodium is considered the ‘parent’ compound.”
Id. at 4.8
The Examiner concludes that “one of ordinary skill in the art
following the teaching of Seth would use ‘methylammonium monomethyl-
dithiocarbamate’ (abbreviated MDTCMA)” (Ans. 4) because “one of
ordinary skill in the art would select a methyldithiocarbamate as a biocide
from Seth’s teaching, including the known species of MDTCMA with an
expectation of success due to the known use of the compound as specifically
taught by Dorman and Pesticideinfo.” Id. at 5. “Thus, one of ordinary skill in
the art would recognize that the biocide treatment of oil well water with
alternate biocidal compounds such as taught by Dorman would be successful
because it is used for the very same purpose (as suggested by Seth).” Id.

8 “Metam sodium” is another name for sodium N-methyldithiocarbamate.
Spec. 5:6–8.
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Appellant argues, among other things, that “[a]n important teaching of
Pesticideinfo is that the uses identified for MDTCMA, i.e., fumigant,
fungicide, herbicide, and nematicide, do not include a microbiocide use.
This alone is a clear indication that prior art does not teach that this
compound is a recognized microbiocide.” Appeal Br. 15. Appellant argues
that, in fact, “no prior art cited by the Examiner teaches that MDTCMA is
known as a biocide for oilfield applications.” Id. at 19.
Appellant also argues that the Examiner’s reliance on the antifungal
activity of MDTCMA is misplaced:
Regarding the statement about fungi, the Examiner seems
to suggest that since Dorman treats fungi, this is equivalent to
treatment of bacteria. The Sharp Declaration[9] was submitted
to show that this stance is error. As Sharp explains, Dorman is
concerned with eukaryotes, e.g., fungi, which are not
prokaryotes, e.g., bacteria like the sulfate-reducing and acid-
producing bacteria that are found in subterranean oilfield
application.
Id. at 21. Thus, Appellant argues, “the Examiner cannot reasonably conclude
that Dorman provides any suggestion of an expectation that MDTCMA
would be effective against prokaryotes in a subterranean environment.” Id.
at 21–22.
We agree with Appellant that the Examiner has not shown that it
would have been obvious based on the cited references to use MDTCMA in
Seth’s oilfield applications. Seth states that “[w]ater is used for stimulation
of hydrocarbon and natural gas wells as well as in hydraulic fracturing. . . .
However, reuse of oilfield waste water poses a challenge to the industry, and

9 Declaration under 37 C.F.R. § 1.132 of Jonathan O. Sharp, filed Jan. 11,
2018.
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the high level of bacteria present in waste water is a technical obstacle.” Seth
¶ 2. Seth discloses “a process for treating oilfield waste water [that]
comprises combining oilfield waste water and a biocide comprising
hydrogen peroxide, the biocide being present in an amount effective to
decrease a number density of bacteria in the oilfield waste water.” Id. ¶ 4.
Seth discloses that “[b]esides the hydrogen peroxide, a secondary
biocide is introduced into the oilfield waste water in some embodiments.” Id.
¶ 18. “Exemplary non-oxidizing secondary biocides include . . .
methyldithiocarbamate.” Id. ¶ 19.
Mirakyan states that “the process of water flooding is used in the
petroleum industry to increase the recovery of oil.” Mirakyan ¶ 4.
“However, water flooding systems provide an ideal environment for growth
and proliferation of biofilms.” Id. ¶ 5. “Biofouling caused by anaerobic
bacteria is compounded in water floods by the practice of removing oxygen
from the water before injection . . . provid[ing] an ideal environment for the
growth of sulfate reducing bacteria (SRB) in the biofilms.” Id. ¶ 6.
Mirakyan discloses “methods of controlling the release of biocides in
various oilfield applications” Id. ¶ 2. Mirakyan states that biocides suitable
for use in its methods include “methyldithiocarbamate.” Id. ¶ 40.
Dorman discloses “a method of temporarily sterilizing soil” by
treating it with “a compound which will completely kill any plant or animal
life existing in the bed and yet will disappear in a short time so that the bed
can be planted with the seeds of some useful plant.” Dorman 1:16–21.
Dorman describes treatments with various N-methyl dithiocarbamate salts to
kill wireworm larvae, nematodes, fungi, and plants. Id. at 2:3 to 3:50
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(Examples 1–8). Dorman discloses that methylammonium N-methyl
dithiocarbamate effectively killed morning glory plants and inhibited
germination of oat seeds. Id. at 2:42–67.
Pesticideinfo discloses that methylammonium N-methyldithio-
carbamate has uses as a fumigant, fungicide, herbicide, and nematicide.
Pesticideinfo 1 (“Use Type”), 5–6 (“Chem Use Type”). By contrast,
Pesticideinfo discloses that metam sodium (aka sodium N-methyldithio-
carbamate) has uses as a fumigant, herbicide, fungicide, microbiocide, and
algaecide, and that metam potassium (aka potassium N-methyldithio-
carbamate) has uses as a fumigant, fungicide, microbiocide, algaecide, and
nematicide. Id. at 5–6.
In summary, Seth and Mirakyan disclose treating water in oilfield
applications with biocides to kill or inhibit the growth of bacteria. Dorman
discloses that MDTCMA kills plants (i.e., morning glory and oats) but does
not disclose that it has any antibacterial effect. Pesticideinfo discloses that
metam sodium and metam potassium are microbiocides, but does not
disclose the same activity for MDTCMA. Thus, the evidence cited by the
Examiner does not show that MDTCMA has any antibacterial effect that
would make it useful in the methods disclosed by Seth and Mirakyan.
In short, the evidence relied on does not provide a reason that would
lead a skilled artisan to use the MDTCMA disclosed by Dorman and
Pesticideinfo in the oilfield applications of Seth and Mirakyan. The rejection
of claim 7, and dependent claims 8 and 9, under 35 U.S.C. § 103 based on
Seth, Dorman, Mirakyan, and Pesticideinfo is reversed.
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Claims 7–9, 16, and 17 stand rejected as obvious based on Seth, La
Zonby, Dorman, Mirakyan, and Pesticideinfo. This rejection, however, relies
on the same findings and reasoning as the rejection based on Seth, Dorman,
Mirakyan, and Pesticideinfo. Ans. 8. La Zonby is relied on only to teach
“controlling microorganisms in an aqueous paper mill system by treating the
system with the combination of biocides glutaraldehyde and a
dithiocarbamate.” Id. Thus, the Examiner has not pointed to any teaching in
La Zonby that makes up for the deficiency discussed above with respect to
Seth, Dorman, Mirakyan, and Pesticideinfo. The rejection of claims 7–9, 16,
and 17 under 35 U.S.C. § 103 based on Seth, La Zonby, Dorman, Mirakyan,
and Pesticideinfo is reversed for the same reasons discussed above.
Obviousness based on Campbell and Pesticideinfo
Claims 7–9, 16, and 17 stand rejected as obvious based on Campbell
and Pesticideinfo. The Examiner finds that “Campbell teaches a method for
treating an aqueous oilfield fluid . . . comprising adding a first biocide . . . ,
waiting, and then adding a second biocide (including
monoalkyldithiocarbamate salt[)].” Ans. 6. The Examiner finds that
“Campbell teaches that the biocide monoalkyldithiocarbamate salt example
is a salt of N-methyldithiocarbamic acid, such as sodium N-methyldithio-
carbamate or potassium N-methyldithiocarbamate.” Id.
The Examiner finds that “Pesticideinfo teaches that sodium N-
methyldithiocarbamate (metam-sodium) and potassium N-methyldithio-
carbamate (metam-potassium) are in the same chemical class as MDTCMA
with metam-sodium being the parent compound of MDTCMA.” Id. at 7. The
Examiner concludes that
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[o]ne of ordinary skill in the art would consider substituting
compounds within what Campbell suggested – salts within the
same class and specifically taught as such by Pesticideinfo. One
of ordinary skill in the art would have an expectation that . . .
interchanging the two compounds would have a similar utility
because of the close structural similarity and same chemical
class.
Id.
“Appellant reiterates the argument made above for the Seth rejection.”
Appeal Br. 32. “As pointed out above, the Pesticideinfo database itself
recognizes that the uses for metam sodium and MDTCMA are not the
same.” Id. at 33.
We agree with Appellant with respect to this rejection as well.
Campbell discloses that “[i]t is desirable for the efficiency and success of
any oil or natural gas production operation to protect water-based fluids
from microbial contamination.” Campbell ¶ 4. Campbell discloses
a method of treating a gas field fluid or oil field fluid,
comprising: a) adding a first biocide component to the gas field
fluid or oil field fluid; and b) after a delay, adding a second
biocide component in an amount effective to control microbial
activity to the gas field fluid or oil field fluid.
Id. ¶ 9.
Campbell states that “[a]s used herein, the term ‘biocide’ refers to a
substance that can control growth or activity of a microorganism (e.g., a
bacterium) by chemical or biological means.” Id. ¶ 42. Campbell does not
identify any non-bacterial microorganisms that are targets of its method, and
Campbell’s examples measure the efficacy of its method against general
aerobic bacteria (GHB), acid producing bacteria (APB), and sulfate reducing
bacteria (SRB). See id. ¶ 125; see generally id. ¶¶ 122–146.
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Thus, like Seth and Mirakyan, Campbell’s method requires biocidal
components with antibacterial activity. Campbell discloses that either the
first or second biocide used in its method can be sodium N-methyldithio-
carbamate (metam sodium) or potassium N-methyldithiocarbamate (metam
potassium). Id. ¶¶ 53, 61.
Consistent with Campbell’s disclosure, Pesticideinfo describes both
metam sodium and metam potassium as being useful as microbiocides.
Pesticideinfo 5–6 (“Chem Use Type”). However, Pesticideinfo describes
MDTCMA as being useful only as a fumigant, fungicide, herbicide, and
nematicide. Id. at 1 (“Use Type”), 5–6. Pesticideinfo does not describe
MDTCMA as being useful as a microbiocide.
Thus, the evidence cited by the Examiner does not show that
MDTCMA has any microbiocidal or antibacterial effect that would make it
useful in the method disclosed by Campbell. The evidence relied on
therefore does not provide a reason that would lead a skilled artisan to use
the MDTCMA disclosed by Pesticideinfo in the oilfield application of
Campbell. The rejection of claim 7, and dependent claims 8, 9, 16, and 17,
under 35 U.S.C. § 103 based on Campbell and Pesticideinfo is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/B
asis
Affirmed Reversed
7–9, 16, 17 Obviousness-
type double
patenting
7–9, 16, 17
7–9 103 Seth, Dorman,
Mirakyan,
Pesticideinfo
7–9
7–9, 16, 17 103 Seth, La Zonby,
Dorman,
Mirakyan,
Pesticideinfo
7–9, 16, 17
7–9, 16, 17 103 Campbell,
Pesticideinfo
7–9, 16, 17
Overall
Outcome
7–9, 16, 17
TIME PERIOD FOR RESPONSE
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