Ex Parte Matthews et al

Board of Patent Appeals and Interferences

Sep 9, 2010

10740265 (B.P.A.I. Sep. 9, 2010)

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.
10/740,265 12/17/2003 Patrick N. Matthews T-6265 1917
95916 7590 09/10/2010
Merchant & Gould - Chevron
PO Box 2903
Minneapolis, MN 55402
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
09/10/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK N. MATTHEWS, SIVAKUMAR SUBRAMANIAN,
and JEFFERSON L. CREEK
____________

Appeal 2009-005142
Application 10/740,265
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-26. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005142
Application 10/740,265

Appellants claim a method for inhibiting hydrate formation blockage
in a flow line transporting a hydrocarbon containing fluid which comprises
adding water to a hydrocarbon containing fluid to produce a water cut
enhanced hydrocarbon containing fluid consisting essentially of hydrocarbon
containing fluid, water, and optionally salt or brine, whereby hydrate
formation blockage is inhibited (claim 1). In a particular embodiment, the
water cut of the water cut enhanced hydrocarbon containing fluid is at least
50% (claim 2). Appellants also claim a system for preventing the formation
of hydrate blockage in a flow line which comprises a flow line, a water
injection conduit, and a hydrocarbon source (claim 14).
Representative claims 1, 2, and 14 read as follows:

1. A method for inhibiting hydrate formation blockage in a flow
line transporting a hydrocarbon containing fluid, the method
comprising:

adding water to a hydrocarbon containing fluid to produce a
water cut enhanced hydrocarbon containing fluid, whereby the water
cut enhanced hydrocarbon containing fluid consists essentially of
hydrocarbon containing fluid, water, and optionally salt or brine; and

transporting the water cut enhanced hydrocarbon containing
fluid through a flow line under conditions that would be conducive for
the formation of hydrates in the original hydrocarbon containing fluid;

whereby hydrate formation blockage is inhibited from forming
within the flow line by the addition of the water.

2. The method of claim 1 wherein:

sufficient water is added such that the water cut of the water cut
enhanced hydrocarbon containing fluid is at least 50%.

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Appeal 2009-005142
Application 10/740,265

14. A system for preventing the formation of hydrate blockage in a
flow line, the system comprising:

a flow line for transporting a hydrocarbon containing fluid;

a water injection conduit fluidly connected to the flow line to
add water to the flow line, the water injection conduit being in fluid
communication with one of a source of sea water, a source of fresh
water, a subsea well or water produced from fluids from a
hydrocarbon producing well bore; and

a hydrocarbon source which is in fluid communication with the
flow line to provide a hydrocarbon containing fluid to the flow line;

wherein water may be added to the flow line from the water
injection conduit to [sic] to produce a water cut enhanced hydrocarbon
containing fluid, whereby the water cut enhanced hydrocarbon
containing fluid consists essentially of hydrocarbon containing fluid,
water, and optionally salt or brine.

The Examiner rejects all appealed claims under 35 U. S. C. § 103(a)
as being unpatentable over any one of Colle '269 (US Patent 5,491,269,
issued February 13, 1996), Colle '083 (US Patent 6,222,083 B1, issued April
24, 2001), or Peiffer (US Patent 6,194,622 B1, issued February 27, 2001)
(Ans. 3-6).
We will sustain these rejections for the reasons expressed in the
Answer and below.
The Examiner finds that each of the applied references teaches a
method for inhibiting hydrate formation blockage in a flow line by adding to
a hydrocarbon containing fluid water which contains about 0.01% by weight
of hydrate inhibitor (id.). The Examiner also finds that each of these
references teaches or would have suggested a system for preventing the
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Appeal 2009-005142
Application 10/740,265

formation of hydrate blockage in a flow line (id.). These findings have not
been disputed by Appellants.
Appellants argue claims 1 and 5-26 as a group and claims 2-4 as a
group (Br. 7, 10). Accordingly, we select independent claim 1 and
dependent claim 2 to represent these respectively argued claim groups.
Independent system claim 14 and the claims which depend therefrom are
deserving of separate attention for the reasons discussed below.
The issue presented by the rejections of representative claim 1 is
whether the claim phrase "consists essentially of" excludes the about 0.01%
by weight of hydrate inhibitor taught by the applied references.
It is a well established principle of law that the phrase "consists
essentially of" includes the listed ingredients of the claim and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention. PPG Indus. v. Guardian Indus. Corp., 156 F.3d
1351, 1354 (Fed. Cir. 1998). Appellants have the burden of showing that
unlisted ingredients would materially affect the basic and novel properties or
characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870,
873-74 (CCPA 1964).
Appellants argue that the inclusion of hydrate inhibitors (e.g., at low
concentrations of about 0.01%) would materially affect the basic and novel
characteristics of their claimed invention (Br. 7-10). As support for this
argument, Appellants cite to disclosures at page 8, lines 15-28, and at page
2, lines 8-22, of their Specification (id.). Appellants' argument is
unpersuasive.
The Specification disclosures cited by Appellants do not support the
proposition that low concentrations (e.g., 0.01% by weight) of hydrate
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Appeal 2009-005142
Application 10/740,265

inhibitors would materially affect the basic and novel characteristics of the
claim 1 Invention. To the contrary, the Specification disclosure on page 8
expressly teaches that "[s]witching to water or high salinity brine injection
as the hydrate inhibition strategy is also expected to reduce chemical
inhibitor presence in water and the oil phase” (Spec. 8: 18-20; emphasis
added). This teaching evinces that the method defined by claim 1
encompasses the presence of reduced amounts of hydrate inhibitor.
For this reason, Appellants have failed to carry their burden of
showing that the about 0.01% by weight of hydrate inhibitor taught by the
references would materially affect the basic and novel characteristics of the
claim 1 invention.
In addition to the deficiencies discussed above, Appellants' argument
has no apparent relevance to the system defined by independent claim 14
and dependent claims 15-23. That is, Appellants have not explained how
their claimed system would be modified by the fluids flowing therethrough
regardless of whether these fluids contained hydrate inhibitors. This
apparent lack of relevance is highlighted by the fact, indicated previously,
that Appellants have not disputed the Examiner's finding that each of the
applied references teaches or would have suggested a system for preventing
the formation of hydrate blockage in a flow line (Ans. 3-6).
Finally, Appellants argue that the Examiner has not explained in what
way any of the applied references discloses or suggests the water cut
percentages required by claims 2-4 such as the "at least 50%" water cut
requirement of claim 2 (Br. 10).
However, the Examiner finds that in each of the references, "[w]hen
the water is initially added to the hydrocarbon fluid, the water cut is
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Appeal 2009-005142
Application 10/740,265

essentially 100% before it mixes with the hydrocarbon fluid and the water
cut % decreases as the water mixes in with the hydrocarbon fluid" (Ans. 7).
Appellants have not contested this finding with any reasonable specificity in
the record of this appeal. Furthermore, the Examiner's finding is supported
by the established proposition that a composition contains the specified
ingredients at any time from the moment at which the ingredients are mixed
together. See Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553,
1558 (Fed. Cir 1995) (claims are to a composition that contains the specified
ingredients at any time from the moment at which the ingredients are mixed
together).2
For the reasons set forth above and in the Answer, we sustain the
Examiner's § 103 rejections of all appealed claims.
The decision of the Examiner 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) (2008).
AFFIRMED

Ssl

MERCHANT & GOULD - CHEVRON
PO BOX 2903
MINNEAPOLIS, MN 55402

2 The Examiner's unpatentability determination for claims 2-4 is reinforced
by Appellants' admission that prior art hydrate inhibitors "are usually
recommended for application for water cuts of less than 50%" (Spec. 2:6;
emphasis added). This is because Appellants' admission implies that prior
art hydrate inhibitors are sometimes recommended for water cuts of 50% or
more.
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