Ex Parte MCDANIEL et al

Patent Trials and Appeals Board

Feb 28, 2019

13857639 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/857,639 04/05/2013
27683 7590 03/04/2019
HA YNES AND BOONE, LLP
IP Section
2323 Victory A venue
Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
Cato Russell MCDANIEL
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.
7523.1376US01_08217 6010
EXAMINER
W ASHVILLE, JEFFREY D
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CATO RUSSELL MCDANIEL
and ERIC DAVIDSON
Appeal2018-004200
Application 13/857 ,639
Technology Center 1700
Before A VEL YN M. ROSS, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1, 9, 10, 12, and 13. We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE.
1 In our Decision, we refer to the Specification filed April 5, 2013 ("Spec.");
the Non-Final Office Action dated February 1, 2017 ("Non-Final Act."); the
Appeal Brief filed July 24, 2017 ("App. Br."); the Examiner's Answer dated
January 16, 2018 ("Ans."); and the Reply Brief filed March 12, 2018
("Reply Br.").
2 Appellant is the Applicant, Halliburton Energy Services, Inc., identified as
the real party in interest. App. Br. 2.
Appeal2018-004200
Application 13/857,639
The claims are directed to wellbore servicing compositions and
methods of making and using same. Claim 1, reproduced below from the
Claims Appendix of the Appeal Brief, illustrates the claimed subject matter:
1. A method of servicing a well bore in a subterranean
formation comprising:
preparing a wellbore servicing fluid comprising a
breaking agent precursor and an aqueous base fluid, wherein the
breaking agent precursor is present in an amount from about 10
wt.% to about 30 wt.% based on a total weight of the wellbore
servicing fluid;
contacting the well bore servicing fluid with a filter cake
on a surface of interest in the wellbore and/or subterranean
formation;
producing a breaking agent from the breaking agent
precursor; and
removing at least a portion of the filter cake from the
surface of interest by reacting a portion of the filter cake with
the breaking agent.
REFERENCE
The Examiner relies on U.S. Patent Application Publication
2010/0252267 Al to Harris et al., published October 7, 2010 ("Harris"), in
rejecting the claims on appeal.
REJECTIONS
The Examiner maintains and Appellant seeks review of the rejections
of claims 1, 9, 10, 12, and 13 as (1) anticipated under 35 U.S.C. § I02(a)(l)
over Harris; and (2) obvious under 35 U.S.C. § 103 over Harris. Ans. 2--4;
App. Br. 5-10.
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Appeal2018-004200
Application 13/857,639
OPINION
Appellant argues the claims as a group, stipulating that claims 9, 10,
12, and 13 will stand or fall with claim 1. App. Br. 3.
The Examiner finds that Harris discloses treatment of an underground
formation with a treatment fluid comprising an organic acid precursor
injected into the formation, and that the treatment fluid may be aqueous.
Ans. 2 ( citing Harris ,r 20). The Examiner finds that Harris discloses the
precursor may be esters of hydrocarboxylic acids such as glycolic and lactic
acids, and preferably have a concentration of 5 to 20% w/v or higher, which,
according to the Examiner, overlaps the claimed range of 10 wt.% to 30
wt.% precursor. Id.at 2, 6 (citing Harris ,r,r 30-32). The Examiner finds that
Harris discloses that the precursor breaks down into an organic acid to treat
the formation. Id. ( citing Harris ,r 20).
The Examiner finds:
One skilled in the art knows that the specificity gravity
aka density of the hydrocarboxylic [sic] acid precursor of
paragraph [0030] [of Harris] is about I.2[3J and one knows that
water is about 1.0[,] therefore the density is still within 20%
and thus w/v is nearly equivalent to weight of the precursor
(80%) based on total weight of the aqueous composition ....
[That] Harris instead describes 5 to 20% w/v "and not the
3 In the Non-Final Office Action, the Examiner mistakenly wrote "1.02"
instead of "1.2" as the specific gravity of "the hydrocarboxylic acid
precursor" in Harris. Ans. 4--5. The Examiner corrects this unintentional
error in the Answer. Id. at 5. The Examiner takes the position that
Appellant admits that the range disclosed in Harris is anticipatory or obvious
because Appellant argued against the Examiner's calculations, but not
against the underlying premise of range disclosure. Id. Appellant responds
to both the typographical error and the Examiner's assumption of
Appellant's admission in the Reply Brief. See Reply Br. 4--7. We disagree
with the Examiner that Appellant makes the asserted admission.
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Appeal2018-004200
Application 13/857,639
weight" is irrelevant as the specific gravity of the precursor is
1.2 that is similar to the specific gravity of the aqueous fluid
and therefore thew/vis approximately the same being based on
the total weight of the fluid of 4% to 16% OR HIGHER when
converted to weight percent from volume, which clearly
overlaps a major portion of Applicant['s] 10 to 30% range and
encompasses the whole range with "higher than 20%.
Id. at 5---6. The Examiner finds that the range disclosed in Harris is merely
stated in different units than the claimed range, but expresses an overlapping
concentration range. Id. at 6.
Appellant argues that Harris fails to expressly or inherently disclose a
"breaking agent precursor present in an amount from about 10 wt.% to about
30 wt.% based on a total weight of the wellbore servicing fluid." App. Br. 5.
Appellant contends that Harris's disclosure of "5% to 20% w/v ester" does
not read on claim 1 's range of breaking agent precursor. Id. at 6.
We agree with Appellant. Claim 1 requires the presence of a
specified wt.% range of breaking agent precursor. See App. Br. 11 (Claims
App.). However, the Examiner's findings are related to the specific gravity
of unspecified hydrocarboxylic [sic] acids, not the specific gravity of esters
of hydroxycarboxylic acids, which esters the Examiner finds are the claimed
breaking agent precursors. See Ans. 2.
Harris discusses the use of an acid precursor that is an ester of a
carboxylic acid or of a hydroxycarboxylic acid ( as opposed to merely a
carboxylic acid or hydroxycarboxylic acid). Harris ,r,r 29, 30. Harris
discloses particular hydroxycarboxylic acids that are suitable for reaction
with alcohols to produce an acid precursor. Harris ,r,r 30, 34, 35. As
Appellant argues, however, the Examiner fails to identify any teaching in
Harris of particular esters of hydroxycarboxylic acids that are suitable
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Appeal2018-004200
Application 13/857,639
organic acid precursors for use in Harris' treatment process. Reply Br. 5.
As a result, the Examiner's finding that "[ o ]ne skilled in the art knows that
the specific gravity ... of the [hydroxycarboxylic] acid precursor of
[Harris'] paragraph [0030] is about 1.2" is unsupported. Ans. 5---6 (emphasis
added). The Examiner fails to direct us to sufficient evidence to show that
Harris' s disclosure overlaps the claimed wt.% range of breaking agent
precursor.
We do not sustain the rejections of claim 1 as either anticipated or
obvious over Harris. For the same reasons, we do not sustain the rejections
of claims 9, 10, 12, and 13.
DECISION
The rejections of claims 1, 9, 10, 12, and 13 are reversed.
REVERSED
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