Ex Parte Barnes et al

Patent Trial and Appeal Board

Nov 28, 2017

13578638 (P.T.A.B. Nov. 28, 2017)

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.
13/578,638 10/05/2012 Julian Richard Barnes TS 2483 USA P 1998
23632 7590 11/30/2017
SHF! T OH miUPANY
EXAMINER
P 0 BOX 576 BLAND, ALICIA
HOUSTON, TX 77001-0576
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
11/30/2017 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):
USPatents@Shell.com
Shelldocketing@cpaglobal.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIAN RICHARD BARNES, GEORGE J. HIRASAKI,
CLARENCE A. MILLER, and MAURA PUERTO1
Appeal 2017-004457
Application 13/578,638
Technology Center 1700
Before PETER F. KRATZ, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—6, 9, 10, 14—20, 22—26, and 30.
Claims 7, 8, 21, and 31—48 have been withdrawn from further consideration
by the Examiner (Final Act. 2).2 We have jurisdiction pursuant to 35 U.S.C.
§6.
1 Appellants identify Shell Oil Company as the real party in interest (App.
Br. 2).
2 Appellants mistakenly include withdrawn claims 7, 8, and 21 as being
among the rejected claims subject to appeal (App. Br. 2). While the
Examiner inadvertently lists claims 7, 8, and 21 as being among the rejected
claims on the cover page (Item 5 of Form PTOL-326) of the Final Office
Action, the Examiner plainly states that claims 7, 8, and 21 remain among
Appeal 2017-004457
Application 13/578,638
Appellants’ claimed invention is directed to a composition comprising
an internal olefin sulfonate (IOS) and an alkoxy glycidyl sulfonate (AGS)
that is useful for hydrocarbon recovery and having an IOS to AGS weight
ratio between about 45:55 and about 20:80 present within the composition.
Claim 1 is illustrative and reproduced below:
1. A hydrocarbon recovery composition comprising a
combination of an internal olefin sulfonate (IOS) and an alkoxy
glycidyl sulfonate (AGS), wherein the term alkoxy glycidyl
sulfonate (AGS) refers to the sulfonate derivative on an
alchohol alkoxylate, wherein the ratio of IOS to AGS in the
composition is between about 45.55 and about 20:80 &w/w.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Kalpakci US 4,979,564 Dec. 25, 1990
Ethyl Corporation GB 1 579 167 Nov. 12, 1980
The Examiner maintains the following grounds of rejection:
Claims 1—6, 9, 10, 14—20, 22—26, and 30 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kalpakci in view of Ethyl
Corporation (GB ’167).
After review of the opposing positions articulated by Appellants and
the Examiner, the applied prior art, and Appellants’ claims and Specification
disclosures, we determine that the Appellants’ arguments are insufficient to
the claims that continue to be withdrawn from further consideration by the
Examiner (Final Act. 2). Also, the Examiner does not identify claims 7, 8,
and 21 as being among the rejected claims in the rejection statement set forth
in the last decision of the Examiner from which this appeal is taken (Final
Rejection communicated February 11, 2016) and as maintained in the
Answer (Final Act. 4; Ans. 2).
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Appeal 2017-004457
Application 13/578,638
identify reversible error in the Examiner’s obviousness rejection over the
applied prior art. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejection for
substantially the fact findings and the reasons set forth by the Examiner in
the Examiner’s Answer and the Final Office Action. We offer the following
for emphasis.
Appellants argue the rejected claims together as a group. We select
claim 1 as the representative claim on which we focus in deciding this
appeal.
The Examiner finds that (Final Act. 4):
Kalpakci discloses aqueous surfactant compositions for
recovering oil from subterranean formations (abstract). The
compositions comprise a surfactant such as that of (A) of the
abstract, namely RO(R)nR”XY wherein R is an 8-24 alkyl
group, R1 may be ethoxy, R ” is an alkyl group and X may be
sulfonate. The composition may further comprise a
cosurfactant such as an internal olefin sulfonate having 10-28
carbon atoms (Column 6 lines 45-53).
The Examiner finds that Kalpakci “does not disclose the AGS of the
claims ” and that “Ethyl corporation [sic] discloses the use of alkyl glycidyl
ether sulfonates (those AGS compounds of the claims) comprising
R0(CH2CH20)n(CH2CH0HCH2S03M)m wherein R is an alkyl having 8-
20 carbons, n is from 2-10, m can be 1, Mis an alkali metal (page 1 lines
28-32).” (Final Act. 4).
The Examiner finds that “the Kalpakci surfactant” differs from
“the Ethyl Corporation surfactant" by its “linkage between the sulfonate and
the alkyl ether group'''’ and that the Ethyl Corporation surfactant is disclosed
as being useful for “the same purpose as Kalpakci, e.g. for oil recovery from
subterranean formations (page 1 lines 6-7)" (Final Act. 4).
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Appeal 2017-004457
Application 13/578,638
Appellants do not specifically dispute the Examiner’s findings with
respect to the teachings of Kalpakci and Ethyl Corporation (see generally
App. Br.). Rather, Appellants contend that the Examiner’s obviousness
rejection is grounded on mere conclusory statements, the Examiner has not
provided the requisite articulated reasoning for the Examiner’s proposed
modification of Kalpakci’s composition, and there is a lack of incentive for
an ordinarily skilled artisan “to substitute the surfactant of Kalpakci, let
alone with a specific surfactant taught by Ethyl Corporation” as proposed by
the Examiner (App. Br. 3).
In essence, Appellants contend that the “Examiner’s argument leads to
the statement that it would have been obvious to substitute any good
surfactant for the surfactant of Kalpakci” (App. Br. 3).
Appellants’ contentions fail to particularly address and articulate why
the Examiner’s undisputed factual findings are insufficient to have led one
of ordinary skill in the art to employ the alkyl glycidyl ether sulfonate of the
Ethyl Corporation as a suitable surfactant for use in place of or as an
addition to the surfactant A in the oil recovery composition of Kalpakci in
the manner to arrive at a composition corresponding to the representative
claim 1 composition based on the factual findings, and for the reasons as set
forth by the Examiner (Ans.2—6; Final Act. 3—6).
Appellants reference to the subject Specification with respect to oil
reservoirs having differing characteristics and the desirability of matching
added surfactants to oil reservoir conditions so as to achieve low crude
oil/water interfacial tension (IFT) is noted (App. Br. 3; Spec. 1,11. 34—37).
However, representative claim 1 is drawn to a composition and not a
method of formulating or using a composition for achieving a particular
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Appeal 2017-004457
Application 13/578,638
match of a surfactant combination to the characteristics of a particular
reservoir. Arguments directed to subject matter that is not required by the
claim lack substantive merit from the outset. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). Moreover, Appellants do not address the Examiner’s
findings as to the similarity of the formation situations/characteristics that
the surfactant compositions taught by the applied references would have
been reasonably expected to be useful for oil recovery operations (Ans. 6).
Consequently, Appellants’ arguments fall short of identifying
reversible error in the Examiner’s obviousness rejection.
It follows that we shall sustain the Examiner’s obviousness rejection.
CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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