Ex Parte Barnes et al

Patent Trial and Appeal Board

Apr 24, 2017

13937317 (P.T.A.B. Apr. 24, 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.
13/937,317 07/09/2013 Julian Richard BARNES TH3500-US-DIV 2613
23632 7590 04/26/2017
SHF! T OH miUPANY EXAMINER
P O BOX 2463 FIGUEROA, JOHN J
HOUSTON, TX 77252-2463
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIAN RICHARD BARNES,
KIRK HERBERT RANEY, THOMAS CARL SEMPLE,
PAUL GREGORY SHIPAKOFF, and JOHAN PAUL SMIT1
Appeal 2016-007740
Application 13/937,317
Technology Center 1700
Before ROMULO H. DELMENDO, AVELYN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Shell Oil Company. Appeal
Br. 2.
2 In our Decision below, we refer to the Specification filed July 9, 2013
(“Spec.”), the Non-Final Office Action dated December 29, 2014 (“Non-
Final”); the Final Office Action dated July 16, 2015 (“Final Act.”), the
Appeal Brief filed November 16, 2015 (“Appeal Br.”), and the Examiner’s
Answer dated June 1, 2016 (“Ans.”).
Appeal 2016-007740
Application 13/937,317
STATEMENT OF CASE
The claims are directed to a composition for enhanced hydrocarbons
recovery from hydrocarbon containing formations. Spec. 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An injectable fluid for treating a hydrocarbon containing
formation, comprising (a) a hydrocarbon recovery composition
comprising a blend of a C20 24 internal olefin sulfonate and a C24
28 internal olefin sulfonate wherein the weight ratio of the C20-24
internal olefin sulfonate to the C24 28 internal olefin sulfonate is
from about 90:10 to about 70:30; admixed with (b) brine from
the formation, wherein the salinity of the brine is from about 2
wt% to about 4 wt%.
REJECTION3
The Examiner maintains the rejection of claims 1—12 under 35 U.S.C.
§ 103(a) as being unpatentable over Morita.4 Appellants request our reversal
of the rejection.
OPINION
The Examiner finds that Morita teaches the claimed composition.
Non-Final 4—5. The Examiner finds that Morita generally teaches IOS
blends having an IOS with between 10 and 30 carbons and a brine that
contains 0.5—12% salt. Id. More specifically, the Examiner finds that
sample 63 of Morita teaches an internal olefin sulfonate blend comprising an
IOS of C 18—20 and an IOS of C25-28—which meets the requirements of a C20 24
3 The Examiner withdrew the obviousness type double patenting rejection of
claims 1—12 over claims 10-15 of US Application No. 13/382,387. Final
Act. 2.
4 Morita et al., GB 2 135 713 A, published September 5, 1984 (“Morita”).
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Application 13/937,317
IOS and a C24 28IOS, respectively—in seawater having salinity of 3.5%. Id.
at 5. The Examiner further finds that Morita teaches that the amount of IOS
having 10 to 26 (or 30) carbon atoms should be at least 50% by weight,
desirably 60% by weight or more. Id. (citing Morita 2, lines 85—89 and 108—
113). Therefore, the Examiner reasons that
it would have been within the purview of one in the art to choose
a blend of IOSs having a larger concentration of the IOS
component with the higher carbon number chain in proportion to
IOSs present in the blend with smaller carbon number chains, in
accordance with the teachings in Morita.
Id.
Appellants first argue that Morita fails to teach or suggest the claimed
composition for the same reasons the Examiner stated that the prior art does
not teach the treatment method claimed in the parent application. Appeal
Br. 2. Appellants contend that in the parent case, the Examiner’s stated
reasons for allowance were that “Morita fails to disclose the composition
used in the method.” Id. at 3. Therefore, Appellants assert “[i]f Morita
fails to disclose the composition used in the method of the parent case, then
it is not clear how the Morita can now disclose the same composition when
the composition is the subject of the claims of this application.” Id. at 4.
Appellants’ arguments with respect to the Examiner’s reasons for
allowance for the treatment method taught in the parent case as relevant to
the composition claims of the instant application are not persuasive of
reversible error. As the Examiner explains, the invention claimed in the
parent case is different, i.e., a method as opposed to a composition. Ans. 6.
A method claim is unpatentable where each of the steps of the method are
identified or suggested in the prior art. The Examiner notes that the reasons
for allowance in the parent case are that Morita “does not teach of suggest
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Application 13/937,317
the step currently recited in the present claims, as amended, regarding
mixing brine from the formation with its fluid composition prior to its
injection.” Ans. 7. In particular, the Examiner explains that “the claims in
the ’ 168 patent were declared patentably distinct over Morita because the
reference did not teach or suggest a method of treating a hydrocarbon-
containing formation that included adding to the formation an 10S
surfactant composition that is admixed with brine recycled from the
formation.” Id. Thus, these reasons are not relevant to the composition
claim rejected here.
Next, Appellants argue that “Morita does not teach the subject matter
of the claims of this application that require blends of specific internal olefin
sulfonates in specific ratios.” Appeal Br. 4. Appellants urge that samples 63
and 64, the only examples teaching a blend of 10S, do not teach a
hydrocarbon recovery composition “wherein the weight ratio of the C20—24
internal olefin sulfonate to the 024—28 internal olefin sulfonate is from about
90:10 to about 70:30.” Id.
Appellants’ argument fails to identify error in the Examiner’s
rejection. As the Examiner finds (Non-Final 4—5; Ans. 9, 11), the broad
teachings of Morita encompass the subject matter of Appellants’ claims.
Morita teaches a composition for oil recovery (Morita 1,11., 5—15) that
includes internal olefin sulfonates having 10-30 carbon atoms (id. at 1,11.
110-15 and 2,11. 108—13)—including specifically, three internal olefin
sulfonates having C20-24, C25 28, and CA 20 (see id. at Tables 1—6)—mixed
with seawater having a salinity of 3.5% (id. at 2,11. 40-41 and 4,11. 21—23),
where the amount of higher internal olefin sulfonates is “desirably 60% by
weight or more” (id. at 2,11. 108—13). Morita also teaches that the
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Application 13/937,317
composition may include a blend of two or more of the internal olefin
sulfonates disclosed. Id. at 6,11. 10-12 and 8, Table 6. Therefore, the
Examiner’s findings and conclusions adequately support a prima facie case
of obviousness. Moreover, Appellants’ argument that sample 63 does not
teach the claimed ratio is unpersuasive because the teachings of Morita are
not limited to its working examples. In re Mills, 470 F.2d 649, 651 (CCPA
1972); In reMercier, 515 F.2d 1161, 1165 (CCPA 1975) (“[A]ll ofthe
relevant teachings of the cited references must be considered in determining
what they fairly teach to one having ordinary skill in the art.”).
“When an applicant seeks to overcome a prima facie case of
obviousness by showing improved performance in a range that is within or
overlaps with a range disclosed in the prior art, the applicant must ‘show that
the [claimed] range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.’” In re Geisler,
116 F.3d 1465, 1469—70 (Fed. Cir. 1997) (quoting In re Woodruff, 919 F.2d
at 1578). Here, however, Appellants present no evidence that the claimed
weight ratios are critical and, thus, fail to rebut the prima facie case of
obviousness. Ans. 11; see generally Appeal Br. Accordingly, we discern no
error in the Examiner’s findings and conclusions.
CONCFUSION
The Examiner did not err in rejecting claims 1—12 under 35 U.S.C.
§ 103(a) as unpatentable over Morita.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1—12 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)(1).
AFFIRMED
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