13631798 (P.T.A.B. Oct. 9, 2018)

Ex Parte Lumsden

Patent Trial and Appeal BoardOct 9, 2018

13631798 (P.T.A.B. Oct. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/631,798 27569 7590 PAUL AND PAUL FILING DATE 09/28/2012 10/11/2018 1717 Arch Street Three Logan Square SUITE 3740 PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Charles A. Lumsden 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. 2012-102 1211 EXAMINER SUE-AKO, ANDREW B. ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 10/11/2018 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): INFO@PAULANDPAUL.COM claire@paulandpaul.com fpanna@paulandpaul.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES A. LUMSDEN Appeal2017-000255 Application 13/631, 798 Technology Center 3600 Before LINDA E. HORNER, LYNNE H. BROWNE, and BRENT M. DOUGAL, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from the rejection of claims 1-7, 10-13, and 16-18. Appellant's representative presented oral arguments on September 26, 2018. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Appeal2017-000255 Application 13/631,798 CLAIMED SUBJECT MATTER Claims 1 and 16 are independent. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A process for preparing a flooding fluid for use in petroleum recovery from a petroleum-bearing formation, the process compnsmg: (a) providing an input fluid having oxygen dissolved therein; (b) mixing an oxygen scavenger consisting essentially of an alkaline aqueous solution of at least one water-soluble borohydride with the input fluid to reduce the level of dissolved oxygen in the input fluid; ( c) mixing at least one polymeric material with the input fluid containing the oxygen scavenger to dissolve or disperse the at least one polymeric material in the input fluid to provide a flooding fluid, the quantity of the oxygen scavenger being at least great enough to reduce the level of dissolved oxygen in the flooding fluid to less than a detectable amount; wherein the water soluble borohydride is sodium borohydride, and the alkaline aqueous solution includes from about 2 to about 10 percent by weight sodium borohydride, and from about 10 to about 3 0 percent by weight sodium hydroxide, and wherein the polymeric material is an anionic synthetic polymeric material selected from the group consisting of polyacrylamides, homopolymers thereof and copolymers thereof with at least one ethylenically unsaturated carboxylic acid. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Chang Philips Hou us 4,018,281 us 4,458,753 US 6,828,281 Bl 2 Apr. 19, 1977 July 10, 1984 Dec. 7, 2004 Appeal2017-000255 Application 13/631,798 Welton Lumsden US 2008/0039347 Al US 8,662,171 B2 Feb. 14,2008 Mar. 4, 2014 Product Information Bulletin MontBrite 1240Â® Sodium Borohydride Solution, MONTGOMERY CHEMICALS, LLC (2009) ("MontBrite"). REJECTIONS I. Claims 1-7 and 16-18 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Philips, as evidenced by MontBrite and Chang. II. Claims 10 and 11 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Philips, as evidenced MontBrite and Chang, and Welton. III. Claims 12 and 13 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Philips, as evidenced by MontBrite and Chang, and Hou. IV. Claims 1-7, 10-13, and 16-18 stand rejected on the ground of nonstatutory double patenting as unpatentable over claims 1-19 of Lumsden, as evidenced by Welton. DISCUSSION Rejection I: Obviousness of claims 1-7 and 16-18 Based on Phillips with Evidence Provided by MontBrite and Chang The Examiner finds that Phillips discloses or suggests all of the limitations of claim 1. See Final Act. 2-5. In particular, the Examiner finds that Phillips "details exemplary oxygen scavenger solutions including adding solid sodium borohydride and further that the flooding fluid pH should be alkaline/basic." Id. at 3 (citations omitted). The Examiner 3 Appeal2017-000255 Application 13/631,798 determines that this disclosure suggests use of "an oxygen scavenger that is an alkaline aqueous solution including sodium borohydride (NaBH4) and sodium hydroxide (NaOH)" "in order to alternatively provide for the oxygen scavenger (via the NaBH4) and alkaline/basic pH (via the NaOH) of the flooding fluid, that would result in 'a substantially oxygen-free polymer control solution' as in Philips et al." Id. at 3, 4. The Examiner further determines that the percent by weight of sodium borohydride and the percent by weight of sodium hydroxide "are both acknowledged by Philips et al. as result[]-effective variables." Final Act. 4 ( emphasis omitted). In support of this determination, the Examiner notes that: Philips et al. acknowledges that the NaBH4 content affects the oxygen scavenging degree (Col. 3, lines 24-29 "This normally requires the addition of borohydride to the solution in the amount of from about 5 to 100 ppm, preferably 10 to 50 ppm, by weight of the control solution, whereby undesirable oxidizing species or transition metals are believed to be rapidly reduced") and the pH of the solution affects the stability of the stabilizing agent and the polymer (Col. 3, lines 14-18 "The pH of the saline polymer solution at the time of preparation should be 5 or greater to prevent the deterioration of the stabilizing agent and the acid catalyzed hydrolysis of the polysaccharide, a pH of from about 7 to 8 being preferred"). Id. ( emphasis omitted). Further noting that "it has been held '[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,"' the Examiner reasons that it would have been obvious "to have included wherein the alkaline aqueous solution includes from about 2 to about 10 percent by weight sodium borohydride, and from about 10 to about 30 4 Appeal2017-000255 Application 13/631,798 percent by weight sodium hydroxide, as claimed." Id. ( citation and emphasis omitted). Appellant contends that "[ n Jone of the art applied by the Examiner teaches the limitation that the oxygen scavenger composition is added in an amount sufficient to reduce oxygen in the flooding fluid to below detectable levels." Appeal Br. 8. In support of this contention, Appellant argues that routine experimentation would not lead to the invention as claimed. See Reply Br. 6-7. Specifically, Appellant argues that "[ o ]ne of ordinary skill in the art guided by the teachings of Philips would look to optimize the solution pH within Philips['] preferred range and not experiment with pH values entirely removed from that preferred range." Id. at 7. Philips discloses a poly-saccharide biopolymer dissolved in aqueous saline solution at a pH of about 5 or greater. Philips 3: 5-7. Philips further discloses a preferred pH range of 7 to 8. Id. at 3: 17-18. The Examiner does not adequately explain why-absent the desire to reduce oxygen in the flooding fluid as described and claimed in the instant application- one skilled in the art would have experimented with this range. In other words, the Examiner does not explain what result would be optimized by experimentation with this range and what reason one skilled in the art would have for seeking such a result. Thus, the rejection is grounded in improper hindsight reasoning. The evidence provided by MontBrite and Chang does not cure this deficiency in the rejection. For this reason, we do not sustain the Examiner's decision rejecting claim 1, and claims 2-7, which depend therefrom, as unpatentable over Philips, MontBrite, and Chang. The rejection of claim 16 suffers from the same deficiencies as the rejection of claim 1. Accordingly, for the same 5 Appeal2017-000255 Application 13/631,798 reason, we do not sustain the Examiner's decision rejecting claim16, and claims 17 and 18, which depend therefrom. Rejections II and III Rejections II and III rely on the same flawed reasoning as Rejection I. See Final Act. 13-15. Accordingly, we do not sustain the Examiner's decision rejecting claims 10-13 for the same reason we do not sustain the Examiner's decision rejecting claim 1. Rejection IV: Unpatentability of Claims 1-7, 10-13, and 16-18 Based on Nonstatutory Double Patenting The Examiner determines that claims 1-7, 10-13, and 16-18 are not patentably distinct from claims 1-19 of Lumsden as evidenced by Welton. See Final Act. 15. The Examiner finds that: Id. the concentration ranges of the NaBH4 and NaOH in the "oxygen scavenging" composition ( claims 1-4 and 16), the excess amounts of borohydride in the final solution ( claims 6, 7, and 18), the polymer types (claims 8, 9, and 19), the surfactant ( claims 12 and 13), and the mixing times ( claims 5 and 17) all appear to be minor and/or obvious adjustments that would be within the capabilities of one of ordinary skill in the art at the time to perform over Patent 8,662,171 to Lumsden et al. Noting that " [ c] laims 1 and 16 require the step of adding an aqueous oxygen scavenger composition to the base fluid that includes from about 2 to about 10 percent by weight sodium borohydride and from about 10 to about 30 percent by weight sodium hydroxide," Appellant contends that "Lumsden et al. uses 12 percent borohydride and 40 percent sodium hydroxide." Appeal Br. 10-11. 6 Appeal2017-000255 Application 13/631,798 Responding to this argument, the Examiner opines that "hypothetically, current claim 1 could be narrowed" in a manner outlined in pages 7-8 of the Answer. The Examiner then compares the hypothetically narrowed claim to Lumsden's claim 1 and determines that the hypothetical claim closely match's Lumsden's claim 1. We are unaware of any precedent which sanctions the Examiner's analysis. Accordingly, the Examiner fails to demonstrate that claims 1-7, 10-13, and 16-18 are not patentably distinct from Lumsden. For this reason, we do not sustain the Examiner's decision rejecting claims 1-7, 10-13, and 16-18 as unpatentable based on nonstatutory double patenting. DECISION The Examiner's rejections of claims 1-7, 10-13, and 16-18 are REVERSED. REVERSED 7