Ex Parte Gatlin et al

Patent Trials and Appeals Board

Oct 29, 2014

10745290 - (D) (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/745,290 12/23/2003 Larry W. Gatlin 03015/02UTL 7422
23873 7590 10/29/2014
ROBERT W STROZIER, P.L.L.C
PO BOX 429
BELLAIRE, TX 77402-0429
EXAMINER
OGDEN JR, NECHOLUS
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
10/29/2014 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 LARRY W. GATLIN, GARTH SHEWCHUK
and COLBY P. RODRIGUEZ
____________________

Appeal 2013-001479
Application 10/745,290
Technology Center 1700
____________________

Before TERRY J. OWENS, JEFFREY T. SMITH,
and GEORGE C. BEST, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 4, 5, 7, 9 through 29 and 31 through 40. We
have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2013-001479
Application 10/745,290

2
The claims are directed to foaming compositions. App. Br. 7-9.
Claim 1 illustrates the subject matter on appeal and is reproduced below:
1. An aqueous foaming composition for use in oil
field applications comprising from about 8 to about 16 wt. % of
a first anionic alcohol ether sulfate surfactant comprising short
chain sodium or ammonium alcohol ether sulfate surfactants
having between 2 and about 10 carbon atoms, from about 40 to
about 60 wt. % of a second anionic alcohol ether sulfate
surfactant comprising long chain sodium or ammonium alcohol
ether sulfate surfactants having between about 10 to about 24
carbon atoms, and from about 15 wt. % to about 35 wt. % of at
least one zwitterionic compounds [sic, compound], where the
composition is biodegradable, is heat stable at a temperature of
280°F, has a near zero Zeta value, produces no residuals at
temperatures up to 280°F and is capable of being recycled.

The Examiner relied on the following reference in rejecting the
appealed subject matter:
Yeung US 6,864,314 B1 Mar. 8, 2005

Appellants (App. Br. 10) request review of the following rejection
from the Examiner’s Final Office Action:
Claims 1, 4, 5, 7, 9–29 and 31–40 rejected under 35 U.S.C. § 103(a)
as unpatentable over Yeung.

OPINION

Prior Art Rejection under 35 U.S.C. § 103(a)
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE for the reasons presented by Appellants.
The Examiner found that Yeung discloses a well treating foaming
composition comprising anionic surfactants having carbon chain lengths of 8
Appeal 2013-001479
Application 10/745,290

3
to 22 carbon atoms. Final Act. 2; Yeung col. 63, l. 65–col. 65. l. 56; col. 69,
ll. 15–40. The Examiner found that Yeung does not disclose combining
each of the claimed components in their requisite proportions or the zeta
value required by the claimed invention. Final Act. 2. The Examiner found
that it would have been obvious to one of ordinary skill in the art to
formulate the foaming compositions having the claimed Zeta values because
Yeung teaches the claimed components for making foaming compositions
useful in oil fields or drilling. Id.
Appellants argue the compositions of the present invention include
two classes of anionic surfactants, one short chained and one long chained.
App. Br. 13. According to Appellants, Yeung does not teach or direct one
skilled in the art to use a combination of two anionic surfactant classes,
especially in conjunction with zwitterionic components, to produce foaming
compositions as claimed. Id.
We agree with Appellants. As noted by Appellants, Yeung’s
examples only use long chained anionic surfactants. App. Br. 13. The
Examiner directs attention to Examples 13 and 14 of Yeung as teaching the
combination of an anionic surfactant with a zwitterionic compound. Ans. 7.
However, as recognized by the Examiner, these Examples only use long
chain anionic surfactants. Id. The Examiner does not identify a section of
Yeung that would provide sufficient guidance for one skilled in the art to a
foaming composition comprising one short chained and one long chained
anionic surfactant as required by the subject matter of independent claim 1.
Further, the Examiner has not adequately explained how Yeung would lead
one skilled in the art to a foaming composition having a near zero Zeta
value.
Appeal 2013-001479
Application 10/745,290

4
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing a prima facie case of obviousness
under 35 U.S.C. § 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we reverse the
Examiner’s prior art rejection of claims 1, 4, 5, 7, 9–29 and 31–40 under 35
U.S.C. § 103(a) for the reasons presented by Appellants and given above.

ORDER
The Examiner’s prior art rejection of claims 1, 4, 5, 7, 9–29 and
31–40 under 35 U.S.C. § 103(a) is reversed.

REVERSED

tc