Ex Parte Pariag et al

Patent Trial and Appeal Board

Jul 18, 2013

11830942 (P.T.A.B. Jul. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHIVA PARIAG, HENDRY LOPEZ, LUIS MANUEL DORIA,
and UMBERTO MARSEGLIA
Appeal 2011-0008921
Application 11/830,942
Technology Center 2800
____________________

Before JEAN R. HOMERE, ELENI MANTIS MERCADER, and
HUNG H. BUI, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Schlumberger Technology Corp. (App. Br. 1.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 3, 5-9 and 13-23. Claims 1, 2, 4, 10-12 have been
canceled. (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ Invention
Appellants invented a method and system for producing hydrocarbon
(HC) from a HC containing well. In particular, upon extracting from the
well a mixture of HC oil, gas, water, and solids, the extracted mixture is
analyzed to determine the relative amount of each substance with respect to
the mixture as a whole. (Spec. [005]-[0008].) The extracted mixture is then
separated into individual components (oil/gas/water/solids), which are
further treated if they do not meet a predetermined standard. (Id.)
Illustrative Claim
Independent claim 3 further illustrates the invention as follows:

3. A method of hydrocarbon production from a well,
comprising:
a first analyzing step of analyzing phases of hydrocarbon
oil, gas and water in a mixture at flowing conditions as the
mixture is extracted from the well to determine a relative
amount of the hydrocarbon oil with respect to the mixture as a
whole, a relative amount of the gas with respect to the mixture
as a whole, and a relative amount of the water with respect to
the mixture as a whole; and
substantially separating the mixture into a hydrocarbon
oil portion, a water portion, and a gas portion, wherein each
respective portion contains substantially only the hydrocarbon
oil, water or gas, respectively;
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a second analyzing step of analyzing the hydrocarbon oil
portion and determining if the hydrocarbon oil portion meets a
predetermined hydrocarbon oil standard, and treating any
hydrocarbon oil portion that does not meet the predetermined
hydrocarbon oil standard to meet the predetermined
hydrocarbon oil standard; and
a third analyzing step of analyzing the water portion to
determine if the water portion meets a predetermined water
standard and treating any water portion that does not meet the
predetermined water standard to meet the predetermined water
standard.
Prior Art Relied Upon
The Examiner relied upon the following prior art as evidence of
unpatentability:
Ingram US 1,973,901 Sep. 18, 1934
Smith US 2,461,932 Feb. 15, 1949
Boston US 3,163,745 Dec. 29, 1964
Cole US 5,531,865 Jul. 2, 1996
Dutton US 2005/0016292A1 Jan. 27, 2005
Irani US 2007/0240514A1 Oct. 18, 2007
(filed Nov. 20, 2006)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 3, 5-9, 13-17, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Dutton,
Ingram, and Cole.
2. Claims 18, 19, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Dutton, Ingram, Cole,
and Irani.
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3. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dutton, Ingram, Cole, and
Boston.
4. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dutton, Ingram, Cole,
Boston, and Smith.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 6-14, and the Reply Brief, pages 1-7.
Dispositive Issue: Have Appellants shown that the Examiner erred in
finding that the combination of Duton, Ingram, and Cole teaches or suggests
upon determining an analyzed HC oil/water portions of a mixture extracted
from a well do not meet predetermined standards, treating the HC oil/water
portions, as recited in claim 3?
Appellants argue that the cited references are not properly combined
to teach or suggest the disputed limitations emphasized above. According to
Appellants, the Examiner has used impermissible hindsight and benefited
from Appellants’ own disclosure to piece together the references relied upon
in the rejection. (App. Br. 6-9, Reply Br. 1-5.) Appellants recognize that
Dutton discloses a technique for separating a mixture extracted from a well
into its HC oil, gas and water components to find the production volume of
each component of the mixture. (Reply 2-3.) Further, Appellants also
recognize that Ingram discloses using sulfuric acid to treat and refine an
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extracted HC oil from a mixture. (Id.) Additionally, Appellants recognize
that Cole discloses treating waste waterways and ground water that have
become polluted. (Id.) However, Appellants argue that the Examiner has not
explained how such refining of HC oil/water is relevant to Dutton’s system
of determining the density of HC oil/water in a mixture. (Id. at 4.)
Similarly, Appellants argue that the Examiner has failed to identify a reason
that would motivate the ordinary skilled artisan to arrive at the proffered
combination. (Id. at 5.) Therefore, Appellants submit that the combination
of Dutton, Ingram, and Cole does not render claim 3 unpatentable. (Id.)
In response, the Examiner finds that Ingram’s disclosure of treating
HC oil, taken in combination with Cole’s disclosure of treating water
complements Dutton’s disclosure of separating a mixture of HC oil, gas, and
water extracted from a well to teach the disputed limitations. (Ans. 22-27.)
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. We note at the outset that Appellants do
not particularly dispute the Examiner’s finding that the individual references
in the proffered combination do, individually, teach the limitations for which
they are relied upon. Rather, Appellants take issue with the Examiner’s
motivation to combine the references in the suggested manner to arrive at
the disputed limitations. Therefore, the pivotal issue before us turns on
whether the ordinarily skilled artisan would have been led to combine the
references as suggested by the Examiner, absent the guidance provided in
Appellants’ Specification, to teach or suggest the disputed limitations. We
answer this inquiry in the affirmative. The U.S. Supreme Court has held that
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“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court further
instructs that:
[o]ften it will be necessary for a court to look to interrelated teachings
of multiple patents; . . . and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine
whether there was an apparent reason to combine the known elements
in the fashion claimed by the patent at issue.

Id. at 418.

Additionally, the Court instructs that:
[r]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness.… [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.

Id. (citation omitted).

We find that the ordinarily skilled artisan would have been able to fit
the teachings of the cited references (including established knowledge in the
art) together like pieces of a puzzle to predictably result in the disputed
limitations. That is, the proffered combination of Dutton, Ingram and Cole
would predictably result in a system whereupon separating a mixture of HC
oil, gas, and water, the water and oil components are treated to meet a
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predetermined standard. While it may be necessary for an Examiner to
identify a reason for combining the familiar elements obtained from the prior
art in establishing a prima facie case of obviousness, the identification of
such a reason is not a sine qua non requirement. So long as the Examiner
provides an articulated reasoning with some rational underpinning to
substantiate the obviousness rejection, such a conclusion is proper. In this
case, the Examiner provides more than just a mere conclusory statement.
The Examiner notes that at the time of the claimed invention, an ordinarily
skilled artisan would have been motivated to treat the oil and water extracted
from the mixture to thereby produce “commercially viable products.” (Ans.
30-31.) In our view, such a statement suffices as an articulated reason with a
rational underpinning to support the cited modification. As noted above, the
case law allows the Examiner to look to the state of the prior art, including
the knowledge of the ordinarily skilled artisan to arrive at such a reason for
combining or modifying the known elements of the prior art. Consequently,
the Examiner’s reliance upon the cited references in order to arrive at an
articulated reason with a rational underpinning to support the proffered
modification is proper.
It therefore follows that Appellants have not shown that the
Examiner erred in finding that the combination of Dutton, Ingram, and Cole
teaches the disputed limitations of claim 3. Claims 5, 8, 9, 13, 14, 17, and
23, not separately argued fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

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Regarding the rejection of claim 6, Appellants argue that the proffered
combination does not teach or suggest that the analysis of the mixture and
the analyses of the oil and water extracted therefrom occur simultaneously
because the Examiner relied upon different references for each of the
claimed analyses. (App. Br. 9-10, Reply Br. 6.) We agree with Appellants.
While the Examiner correctly finds that Dutton discloses the solutions for
the respective density of oil, gas, and water within a mixture are obtained
simultaneously (Ans. 28), the separate analyses of the water and oil to
determine if a subsequent treatment of either of those components is needed
are performed individually by Ingram and Cole. It follows Appellants have
shown error in the Examiner’s rejection of claim 6, as well as claims 7, 15,
and 16, which recite commensurate limitations.

Regarding the rejection of claim 21, Appellants argue that the
proffered combination of Dutton, Ingram, Cole, Boston, and Smith does not
teach or suggest injecting a chemical into the mixture to maximize the
separation efficiency thereof. (App. Br. 12, Reply Br. 6-7.) According to
Appellants, while Smith discloses adding a catalyst to a HC oil to thereby
produce a high octane gasoline, Smith does not cure the noted deficiency of
the Dutton-Ingram-Cole-Boston combination. Id. We agree with Appellants.
That is, while the proffered combination teaches separating the components
within a mixture and subsequently treating the components to thereby make
them commercially viable, the combination does not teach adding chemical
reactants to the mixture to accelerate the separation of the components
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therein. It follows that Appellants have shown error in the Examiner’s
rejection of claim 21.
Regarding the rejection of claims 18, 19, 20, and 22, Appellants
present similar arguments as those previously raised for patentability of
claim 1. (App. Br. 11.) As discussed above, these arguments are not
persuasive. Therefore, Appellants have not shown error in the Examiner’s
rejection of claims 18, 19, 20, and 22.
DECISION
We affirm the Examiner’s rejections of claims 3, 5, 8, 9, 13, 14, 17,
18-20, 22, and 23 as set forth above. However, we reverse the Examiner’s
rejections of claims 6, 7, 15, 16, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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