Ex Parte Loveless et al

Patent Trial and Appeal Board

Oct 26, 2016

12718382 (P.T.A.B. Oct. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121718,382 03/05/2010
99633 7590 10/28/2016
McDermott Will & Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
FIRST NAMED INVENTOR
David M. Loveless
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009-IP-022535Ul 4740
EXAMINER
RUNYAN, SILVANAC
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
10/28/2016 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):
mweipdocket@mwe.com
ikaiser@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. LOVELESS, PHILLIP C. HARRIS,
RAJESH K. SAINI, NARONGSAK TONMUKA Y AKUL,
and FENG LIANG
Appeal2014-007933
Application 12/718,3 82
Technology Center 3600
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David M. Loveless et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims
1-5 and 7-16 as unpatentable over Feraud (US 6,613,720 Bl; iss. Sept. 2,
2003); and (2) claims 6 and 17-20 as unpatentable over Feraud and Smith
(US 5,224,546; iss. July 6, 1993). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appeal2014-007933
Application 12/718,382
CLAIMED SUBJECT MATTER
The claimed subject matter relates "to treatment fluids comprising a
compliant cellulosic viscosifying agent having at least one ligand complex
crosslink, and methods of use employing such treatment fluids to treat
subterranean formations." Spec. para 1. Claims 1, 10, and 17 are
independent.
recite:
Claims 1 and 17 are illustrative of the claimed subject matter and
1. A method comprising:
providing a treatment fluid having a first viscosity
compnsmg:
an aqueous base fluid,
a compliant cellulosic viscosifying agent,
a crosslinking agent, and
a protective ligand; and
placing the treatment fluid in a subterranean
formation.
17. A method comprising:
providing a treatment fluid having a pH in the range
of about 3 .5 to about 5 comprising:
an aqueous base fluid,
a cellulosic, carboxylated viscosifying agent,
an aluminum crosslinking agent, and
a protective ligand; and
placing the treatment fluid in a subterranean
formation.
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Appeal2014-007933
Application 12/718,382
ANALYSIS
Obviousness over Feraud
Claims 1-5 and 7-16
Independent claim 1 calls for a method including the step of providing
a treatment fluid having a first viscosity including "a compliant cellulosic
viscosifying agent." Appeal Br., Appendix A: Claims App. (emphasis
added). The Examiner finds that Feraud discloses the method of claim 1
including a treatment fluid having a first viscosity including "a cellulosic
viscosifying agent, (Col. 7 lines 59-63; specifically
carboxymethylhydroxyethyl cellulose (CMHEC))." Final Act. 2 (emphasis
omitted). 1 The Examiner determines:
[T]he cellulosic viscosifying agent [of Feraud] would obviously
be a compliant [sic] as explained in the specification. If there is
any difference between the treating fluid of Feraud and that of
the instant claims, the difference would have been minor and
obvious. "Products of identical chemical composition cannot
have mutually exclusive properties". A chemical composition
and its properties are inseparable. Therefore, if the prior art
teaches the identical chemical structure, the properties applicant
disc loses [sic] and/ or claims are necessarily present.
Id. at 2-3; see also Ans. 11.
Appellants contend that the Examiner's "assertion attempts to read out
the limitation of 'compliant' and is factually incorrect." Appeal Br. 8.
Specifically, Appellants contend:
By definition, "compliant" materials [as defined in the
Specification] meet much stricter safety and purity protocols than
1 Feraud discloses: "Certain polyvinyl alcohol polymers can be prepared by
hydrolyzing vinyl acetate polymers. Preferably the polymer is water-soluble.
Specific examples of polymers that can be used include: . . .
carboxymethylhydroxyethyl cellulose." Feraud, 7:57----63.
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Appeal2014-007933
Application 12/718,382
the non-compliant (bulk or chemical grade) materials. Certainly
no one would suggest that "complaint" chemicals used, for
example, to purify municipal water could simply be replaced
with non-compliant versions of those chemicals with impunity.
Rather, a reasonable person would have arrived at the conclusion
that there is a chemically important distinction between the
complaint and non-compliant versions of the 'same' chemicals
that causes one to be safe for human contact while the other is
not. Thus, the prior art does not "teach the identical chemical
structure." And the claimed materials are not "identical" to those
disclosed in F eraud, thus F eraud does not teach the claimed
compliant cellulosic viscosifying agent.
Appeal Br. 8; see also id. at 7; Spec. para. 30.
At the outset, the Specification describes: "As used herein, the term
'compliant' refers to materials described in 21 CPR§§ 170-199 (substances
approved as food items, approved for contact for food, or approved for
use as an additive to food) and that are prepared from food-grade materials."
Spec. para 30. 2 The Specification further describes that (1) "the compliant
cellulosic viscosifying agents of the invention; as defined above potentially
eliminates the need for costly procedures needed to dispose of the treatment
fluids containing non-compliant viscosifying agents and may help reduce
negative impacts on the marine environment and groundwater"; and (2) "the
compliant viscosifying agent may provide effective treatment of the
formation without excessive damage caused by the use of multiple or
non-compliant viscosifiers." Id. at para. 31; see also Appeal Br. 7; Reply
Br. 3. Where an explicit definition is provided by the applicant for a term,
the definition will control interpretation of the term as it is used in the claim.
2 Appellants state that "the Specification is clear on its face . . . that
'compliant' refers to ('means') materials described in 21 CPR§§ 170-199."
Reply Br. 2.
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Appeal2014-007933
Application 12/718,382
Toro Co. v. White Consolid. Industries, Inc., 199 F.3d 1295, 1301 (Fed. Cir.
1999). Further, claims are construed with an eye toward giving effect to all
terms in the claim. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
Cir. 2006).
In this case, the Examiner's interpretation of the
"carboxymethylhydroxyethyl cellulose" of Feraud as "obviously [being]
compliant," essentially reads the term "compliant" out of the claims. See
Appeal Br. 8. The Examiner fails to establish, by evidence or technical
reasoning, that "the cellulosic viscosifying agent" of Feraud necessarily has
the "identical chemical structure" to the claimed "compliant cellulosic
viscosifying agent." See Final Act. 2-3; see also Appeal Br. 8; Spec. para.
30; Appeal Br., Appendix A: Claims App. (emphasis added). Although food
grade carboxymethylhydroxyethyl cellulose is well-known, the Examiner
fails to establish, by evidence or technical reasoning, that the
"carboxymethylhydroxyethyl cellulose" of F eraud is a "compliant"
carboxymethylhydroxyethyl cellulose (i.e., "a compliant cellulosic
viscosifying agent," as claimed). See Ans. 12, 15; see also Reply Br. 3;
Spec. para. 30; Appeal Br., Appendix A: Claims App. (emphasis added).
Similar to claim 1, independent claim 10 is directed to a method
including the step of providing a fracturing fluid having a first viscosity
including "a compliant cellulosic viscosifying agent" (Appeal Br., Appendix
A: Claims App.), and thus, the Examiner's findings with respect to Feraud
are deficient for claim 10 as well. See Final Act. 5---6.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1 and 10 and their respective
dependent claims 2-5, 7-9, and 11-16 as unpatentable over Feraud.
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Appeal2014-007933
Application 12/718,382
Obviousness over Feraud and Smith
Claim 6
The Examiner's rejection of claim 6 as unpatentable over Feraud and
Smith is based on the same unsupported findings discussed above with
respect to independent claim 1. See Final Act. 7. The Examiner does not
rely on Smith to remedy the deficiency of Feraud. Accordingly, for similar
reasons, we do not sustain the Examiner's rejection of claim 6 as
unpatentable over Feraud and Smith.
Claims 17-203
Appellants argue claims 17 and 20 as a group. Appeal Br. 9. We
select claim 17 as representative of the group. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claim 20 stands or falls with claim 17. 4
As noted supra, claim 1 recites "a compliant cellulosic viscosifying
agent." Appeal Br., Appendix A: Claims App. In contrast, claim 17 merely
recites "a cellulosic, carboxylated viscosifying agent." Id.
Appellants contend that "F eraud does not teach or suggest 'a
compliant cellulosic viscosifying agent.' Moreover, Smith does not remedy
3 Appellants amended claim 18 to depend from claim 1 7 to overcome a double
patenting rejection by the Examiner. See Amendment 4, 5 (filed June 12,
2013); see also Final Act. 10; Non-Final Act. 8 (mailed Mar. 13, 2013).
Claim 18 recites "the compliant cellulosic viscosifying agent." Because claim
17 merely recites "a cellulosic, carboxylated viscosifying agent" (Appeal Br.,
Appendix A: Claims App.), "the compliant cellulosic viscosifying agent" of
claim 18 lacks antecedent basis. Id. (emphasis added).
4 We note that claim 20 refers to the "protective ligand" of claim 17 and does
not recite "a compliant cellulosic viscosifying agent." Appeal Br., Appendix
A: Claims App.; see also Appeal Br. 9. We further note that claim 20 is not
numbered in the Claims Appendix. See Appeal Br., Appendix A: Claims App.
We consider this a typographical error.
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Appeal2014-007933
Application 12/718,382
the deficiencies of Feraud." Appeal Br. 9. However, claim 17 does not
recite a "compliant" cellulosic, carboxylated viscosifying agent. Appeal Br.,
Appendix A: Claims App. Appellants do not apprise us of error in the
Examiner's findings and conclusions regarding the combined teachings of
Feraud and Smith. Appeal Br. 9; see also Final Act. 8-9.
Accordingly, we sustain the Examiner's rejection of independent
claim 17 as unpatentable over Feraud and Smith. We further sustain the
Examiner's rejection of claim 20, which falls with claim 17. Additionally,
as Appellants do not separately argue the rejection of dependent claims 18
and 19 (see Appeal Br. 9), we likewise sustain the Examiner's rejection of
these claims. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We REVERSE the decision of the Examiner to reject claims 1-5 and
7-16 as unpatentable over Feraud.
We REVERSE the decision of the Examiner to reject claim 6 as
unpatentable over Feraud and Smith.
We AFFIRM the decision of the Examiner to reject claims 17-20 as
unpatentable over Feraud and Smith.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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