Ex Parte Parsche et al

Patent Trial and Appeal Board

Feb 9, 2017

13215663 (P.T.A.B. Feb. 9, 2017)

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.
13/215,663 08/23/2011 Francis Eugene Parsche GCSD-2434 (61785) 2638
74701 7590 02/13/2017
ADOMPt - Harris EXAMINER
255 S ORANGE AVENUE GRAY, GEORGE STERLING
SUITE 1401
ORLANDO, EL 32801 ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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):
creganoa@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS EUGENE PARSCHE and
MARK TRAUTMAN
Appeal 2015-004305
Application 13/215,663
Technology Center 3600
Before LYNNE H. BROWNE, JILL D. HILL, and PAUL J. KORNICZKY,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Francis Eugene Parsche and Mark Trautman (Appellants) appeal
under 35 U.S.C. § 134 from the rejection of claims 1—7, 9-14, and 16—19.* 1
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Claims 8, 15, 20, and 21 are withdrawn from consideration. See Final Act.
1.
Appeal 2015-004305
Application 13/215,663
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of hydrocarbon resource recovery from a
subterranean formation comprising:
forming a plurality of spaced apart injector/producer well
pairs in the subterranean formation, each injector/producer well
pair comprising a laterally extending producer well and a
laterally extending injector well spaced thereabove;
determining a failed injector/producer well pair from
among the plurality thereof;
when a failed injector/producer well pair is determined,
repairing the failed injector/producer well pair by at least
forming a repair well adjacent the failed injector/producer
well pair, and
applying radio frequency (RF) heating from the repair well
to the subterranean formation adjacent the failed
injector/producer well pair; and
recovering hydrocarbon resources from the plurality of
injector/producer well pairs including the repaired
injector/producer well pair.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brown US 4,166,504 Sept. 4, 1979
Bridges US 5,293,936 Mar. 15, 1994
Kasevich US 7,891,421 B2 Feb. 22,2011
Banerjee US 7,975,763 B2 July 12, 2011
Arthur US 2007/0295499 A1 Dec. 27, 2007
Parsche2 US 8,997,864 B2 Apr. 7,2015
2 US Application 13/215,710 (cited by the Examiner) matured into Parsche.
Final Act. 5.
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REJECTIONS
I. Claim 1 stands rejected on the ground of nonstatutory double
patenting as unpatentable over claim 1 of Parsche.
II. Claims 1—5 and 10—12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Arthur and Banerjee.
III. Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arthur, Banerjee, and Bridges.
IV. Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arthur, Banerjee, Bridges, and Kasevich.
V. Claims 1—5, 9-12, and 16—18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Banerjee and Brown.
VI. Claims 6, 13, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Banerjee, Brown, and Bridges.
VII. Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Banerjee, Brown, Bridges, and Kasevich.
DISCUSSION
Rejection I
The Examiner provisionally rejects claim 1 of the instant application
on the ground of nonstatutory obviousness-type double patenting as
unpatentable over claim 1 of U.S. Application 13/215,710, now issued as US
8,997,864 B2. Final Act. 5—6. U.S. Application 13/215,710 issued on April
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7, 2015, as US 8,997,864 B2. For that reason, the rejection before us is
moot.3
Rejection II
Appellants argue claims 1—5 and 10-12 together. See Appeal Br. 6—
10. We select independent claim 1 as the illustrative claim, and claims 2—5
and 10—12 stand or fall with claim 1.
The Examiner finds that Arthur discloses all of the limitations of
claim 1 except for “applying radio frequency (RF) heating from the repair
well 210 to the subterranean formation adjacent the failed injector/producer
well pair.” Final Act. 7. The Examiner further finds that
Banerjee discloses an intermediate well through which RF
heating is applied to the subterranean formation adjacent an
injector/producer well pair in an SAGD project in order to
improve production by lowering the viscosity of the oil and by
supplementing a conventional SAGD project, including
reheating condensed steam from liquid to steam.
Id. (citing Banerjee Figs. 1, 2; Abstract, 4:44^45). Based on these findings,
the Examiner determines that it would have been obvious
to have repaired the failure of insufficient fluid flow from either
of the Arthur Pair One or Pair Two well pairs using an infill,
adjacent well, and to establish the required increase in mobility
in the reservoir surrounding the infill well using Banerjee’s RF
heating as the “alternative mode” for increasing such mobility.
Id. The Examiner further explains that “[tjhis would have achieved the
predictable result that the mobility in the reservoir surrounding the infill well
would be increased, thus enabling the Arthur technique to proceed such that
3 The Examiner may wish to consider whether or not a rejection of claim 1
based on nonstatutory obviousness-type double patenting as unpatentable
over US 8,997,864 B2 would be appropriate.
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increased oil production from the well pairs adjacent to the infill well would
occur.” Id.
Appellants contend that “[t]he Examiner’s combination of references
is improper” because “Banerjee et al. makes no mention of a failed
injector/producer well pair. In stark contrast, Arthur et al., fails to disclose
any type of RF heating, and expressly discloses injecting a mobilization
fluid in an infill well.” Appeal Br. 6—7 (emphasis omitted).
Appellants’ argument attacks the references separately and does not
address their combined teachings. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
Appellants further contend that
A combination of Arthur et al. and Banerjee et al. would likely
result in RF being applied at the beginning of the recovery
process from a wellbore between the injector/producer well pair
or infill well, and then when “the gravity controlled recovery
process comes to an end,” fluid being injected in the infill well.
Appeal Br. 7 (emphasis omitted). In support of this contention, Appellants
note that Arthur stresses “the importance of the timing of the activation of
the infill well and notes that any attempt to establish communication ‘must’
wait until the merger of the mobilized zones. ‘Only’ after the first and
second mobilized zones merge is the linkage with the infill well effected.”
Id. (emphasis omitted).
Responding to this argument, the Examiner notes that
(a) Banerjee is silent as to when the RF heating of the infill
well occurs, (b) Banerjee’s purpose in applying heating is the
reduction of the hydrocarbon viscosity adjacent the infill well
and (c) the rejection does not rely on Banerjee for timing.
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Arthur sets forth timing for heat in the infill well in direct
correspondence with the timing of claims 1 and 10.
Ans. 3. Thus, we understand the Examiner’s position to be that claim 1 does
not specify the timing of the heat infill, and to the extent that any such
timing can be implied, Arthur meets such implied limitation. Moreover, the
Examiner correctly notes that Banerjee is not relied upon to teach timing.
In the Reply Brief, Appellants argue that the Examiner’s response
does not consider Banerjee in its entirety in that the Examiner does not
consider “portions that teach away from the claimed invention.” Reply Br.
2. However, Appellants do not identify where Banerjee teaches away from
the claimed invention. Banerjee’s failure to mention “a failed
injector/producer well pair and the fact that RF should be applied from the
start of the recovery process” does not constitute a teaching away. We will
not read into a reference a teaching away from a proposed combination
when no such language exists. See Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Thus, Appellants’ argument is unconvincing.
Noting that although Arthur “provides a laundry list of [alternative]
‘modes’ which include circulating steam and fracturing, [] Arthur et al. fails
to disclose or suggest RF as one of these ‘alternative modes,”’ Appellants
argue that “if the use of RF in the infill were so obvious, Arthur et al. would
have at least mentioned or suggested the use of RF.” Appeal Br. 8—9
(emphasis omitted).
Responding to this argument, the Examiner notes that the list provided
in Arthur is non-exclusive. See Ans. 3. The Examiner further explains that
a person of ordinary skill in the art will not ignore known heat-
based techniques for reducing viscosity. Instead, having seen
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from Arthur that heat is a winning proposition as a first step in
establishing mobility at the infill well, such a person would
explore all such heating techniques and realize the Banerjee RF
heating in a SAGD infill well was readily available.
Id. We agree. The combined teachings of Arthur and Banerjee would
suggest that RF heating could be used in Arthur’s method. The test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Next, Appellants argue that “there is nothing in Banerjee[] that
suggests its ‘alternative mode’ is better than the mode of Arthur et al.”
Appeal Br. 9. However, Appellants do not identify any authority for, and we
are not aware of, any requirement that an alternative (i.e., known substitute)
be better than the disclosed alternative. Rather, a prima facie conclusion of
obviousness may be supported by a showing that the claims are directed to a
process, machine, manufacture, or composition of matter already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, and such modification yields a predictable result.
See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United
States v. Adams, 383 U.S. 39, 40 (1966)).
In addition, Appellants contend that the Examiner failed to make the
proper findings to establish that the result of the proposed combination
would be predictable. See Appeal Br. 9-10; see also Reply Br. 3. However,
as discussed supra, the Examiner finds that the only difference between the
claimed invention and Arthur is the use of RF heating. See Final Act. 7.
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Further, the Examiner finds that Banerjee’s RF heating would perform the
same function in the proposed combination, as it does separately. See id. In
addition, the Examiner finds that one skilled in the art would recognize that
the results of the combination were predictable. See Ans. 4. Thus,
Appellants do not apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2—5 and 10—12, which fall therewith, as unpatentable over
Arthur and Banerjee.
Rejection III
Appellants argue that “[f]or at least the reasons set forth above . . .
dependent Claims 6 and 13 are also patentable.” Appeal Br. 11. These
arguments, including the separately repeated argument pertaining to
predictability, are not convincing for the reasons discussed supra.
Appellants further contend that “[tjhere is nothing in Bridges that
teaches or suggests the specific arrangement of Bridges in combination with
the prior art” and that “[t]he Examiner is improperly using Appellants’
specification as a roadmap to selective combine disjoint pieces of the prior
art.” Appeal Br. 11. However, as discussed supra, there is no requirement
that the claimed invention be expressly suggested in any one or all of the
references. Moreover, the Supreme Court, in KSR, has provided guidance
when addressing a concern about picking and choosing.
For over a half century, the Court has held that a “patent for a
combination which only unites old elements with no change in
their respective functions ... obviously withdraws what already is
known into the field of its monopoly and diminishes the
resources available to skillful men.” Great Atlantic & Pacific Tea
Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152—153
(1950). This is a principal reason for declining to allow patents
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for what is obvious. The combination of familiar elements
according to known methods is likely to be obvious when it does
no more than yield predictable results.
KSR, 550 U.S. at 415—16. Furthermore, Appellants do not identify any
kno wledge relied upon by the Examiner that was gleaned only from
Appellants’ disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention, thereby obviating Appellants’
assertion of hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971). Thus, Appellants’ arguments are unconvincing.
For these reasons, we sustain the Examiner’s decision rejecting claims
6 and 13 as unpatentable over Arthur, Banerjee, and Bridges.
Rejection IV
Appellants argue that “[f]or at the least the reasons set forth above . . .,
Appellants submit that dependent Claims 7 and 14 are patentable.” Appeal
Br. 12. For these reasons discussed supra, Appellants’ arguments, including
the separate argument pertaining to predictability, are unconvincing.
In addition, Appellants argue that “the Examiner mischaracterized
Kasevich as it fails to disclose positioning a dielectric layer on each of a
plurality of tubular conductors.” Id. However, as noted by the Examiner,
“Bridges is relied on for the plurality of conductors.” Ans. 5. Accordingly,
Appellants’ argument is not responsive to the rejection as articulated by the
Examiner. Thus, Appellants do not apprise us of error.
Appellants further argue that “[t]he Examiner’s rationale is in error as
the Examiner fails to consider the electrical characteristics of the
combination.” Appeal Br. 12. However, Appellants fail to identify which
electrical characteristics are not considered and how such characteristics
pertain to the claims at issue. Thus, Appellants do not apprise us of error.
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We sustain the Examiner’s decision rejecting claims 7 and 14 as
unpatentable over Arthur, Banerjee, Bridges, and Kasevich.
Rejection V
Appellants argue claims 1—5, 9-12, and 16—18 together. See Appeal
Br. 13—16. We select independent claim 1 as the illustrative claim, and
claims 2—5, 9-12, and 16—18 stand or fall with claim 1.
The Examiner finds that Banerjee discloses all the limitations of claim
1 except for
when the third well is drilled and does not expressly disclose (a)
determining a failed injector/producer well pair from among the
plurality thereof, and (b) when a failed injector/producer well
pair is determined, repairing the failed injector/producer well
pair by at least forming the third well (“repair well”) and
applying the RF heating.
Final Act. 10. In addition, the Examiner finds that “Brown teaches
determining when the well pair fails and then drilling a third well [5:11-19]
between the injector well and producer well in the failed well pair in order to
take remedial steps to improve the production from the failed well pair [Figs.
1-9; Summary of the Invention].” Id. (emphasis omitted). Based on these
findings, the Examiner determines that it would have been obvious “to have
included delayed drilling of the Banerjee repair well until a failure (such as
low oil production from the well pair) occurred, and then using the
production improving RF heating techniques of Banerjee to repair the failure
by increasing the oil production from the injector/producer well pair.” Id. at
11.
Appellants argue that “a person having ordinary skill in the art would
not combine Banerjee et al. and Brown et al.” because “Banerjee et al.
makes no mention of a failed injector/producer well pair” and Arthur “fails
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to disclose any type of RF heating, and expressly discloses injecting a fluid
in an infill well.” Appeal Br. 14 (emphasis omitted).
Appellants’ argument attacks the references separately and does not
address their combined teachings. As discussed supra, nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. Thus,
Appellants do not apprise us of error.
Appellants further posit that
A combination of Brown et al. and Banerjee et al. would likely
result in RF being applied at the beginning of the recovery
process from a wellbore between the injector/producer well pair
or infill well, and then at different parts of the recovery process,
for example, when “steam breakthrough at the production well
occurs” recovering hydrocarbon resources from the infill well,
and then when “the fluid being recovered from the infill well
reaches a predetermined value” converting the infill well to an
injector well.
Appeal Br. 14—15.
However, Brown’s teachings are not so limited. As noted by the
Examiner (Final Act. 10), Brown states:
ft is immaterial for the purpose of practicing our process,
whether infill well 6 is drilled and completed at the same time as
injection well 2 and production well 3, or if such drilling and
completion of infill well 6 is deferred until steam breakthrough
has occurred at production well 3, or if the well is drilled at some
intermediate time. If completed prior to use, infill well B is
simply shut in during the first phase of the process of our
invention.
Brown 5:11—19. Thus, one skilled in the art considering the combined
teachings of Banerjee and Brown is just as likely to modify Banerjee’s
method to form the infill (repair) well after failure is determined as required
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by claim 1, as to form it at the time suggested by Appellants. Accordingly,
Appellants’ argument is unconvincing.
In addition, Appellants argue that “the Examiner is improperly
selectively assembling disjoint pieces of the prior art to arrive at the claimed
invention, and improperly based upon Appellants’ specification.” Appeal
Br. 15. However, as discussed supra, the combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. KSR, 550 U.S. at 415—16. Moreover, as
discussed supra, Appellants do not identity any knowledge relied upon by
the Examiner that was gleaned only from Appellants’ disclosure and that
was not otherwise within the level of ordinary skill at the time of the
invention, thereby obviating Appellants’ assertion of hi ndsight.
Accordingly, Appellants’ arguments are unconvincing.
For these reasons, we sustain the Examiner s decision rejecting claim
1, and claims 2-5, 9 12. and 16-48, which fall therewith, as unpatentable
over Banerjee and Brown.
Rejection VI
Appellants argue that “[f]or at least the reasons set forth
above . . . dependent Claims 6, 13, and 19 are patentable over Banerjee et
al., Brown et al., and Bridges.” Appeal Br. 16. As none of Appellants’
arguments are convincing, as discussed supra, we sustain the Examiner’s
decision rejecting claims 6, 13, and 19 as unpatentable over Banerjee,
Brown, and Bridges.
Rejection VII
Appellants argue that “[f]or at least the reasons set forth above . . .
dependent Claims 7 and 14 are patentable over Banerjee et al., Brown et al.,
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Bridges, and Kasevich.” Appeal Br. 16—17. As none of Appellants’
arguments are convincing, as discussed supra, we sustain the Examiner’s
decision rejecting claims 7 and 14 as unpatentable over Banerjee, Brown,
Bridges, and Kasevich.
DECISION
The Examiner’s rejections of claims 1—7, 9—14, and 16—19 are
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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