Ex Parte Pisklak et al

Patent Trial and Appeal Board

Feb 8, 2018

14048463 (P.T.A.B. Feb. 8, 2018)

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.
14/048,463 10/08/2013 Thomas Jason Pisklak 2011-IP-051250U1P4 2720
112839 7590 02/12/2018
Tnmev T T P - HRS
EXAMINER
PO Box 22188
Houston, TX 77227-2188
AHUJA, ANURADHA
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
02/12/2018 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):
ctumey@tumeyllp.com
j Hook @ tumeyllp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS JASON PISKLAK and
LANCE EVERETT BROTHERS
Appeal 2017-000458
Application 14/048,463
Technology Center 3600
Before: BRETT C. MARTIN, LYNNE H. BROWNE, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3-12, and 17-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2017-000458
Application 14/048,463
CLAIMED SUBJECT MATTER
The claims are directed to a method of cementing and a cementing
system. Claims 1 and 17, reproduced below, are the sole independent
claims:
1. A method of cementing in a subterranean formation
comprising:
storing a set-delayed cement composition comprising
water, a pozzolan, hydrated lime, and a set retarder for at least
about one day;
adding a zeolite activator to the set-delayed cement
composition after the step of storing to activate the set-delayed
cement composition;
introducing the set-delayed cement composition into a
subterranean formation; and
allowing the set-delayed cement composition to set in the
subterranean formation.
17. A cementing system comprising:
a set-delayed cement composition comprising water, a
pozzolan, hydrated lime, and a set retarder;
a zeolite activator for activation of the set-delayed cement
composition;
mixing equipment for mixing the set-delayed cement
composition and the zeolite activator to form an activated cement
composition; and
pumping equipment for delivering the activated cement
composition into a well bore.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Baker US 4,462,837 July 31, 1984
US 2007/0056475 A1 Mar. 15, 2007
US 2010/0044043 A1 Feb. 25,2010
US 2011/0290493 A1 Dec. 1, 2011
Roddy ’475
Roddy ’043
James
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Application 14/048,463
REJECTIONS
Claims 1 and 3-12 are rejected under 35 U.S.C. § 112(b) as being
indefinite.
Claims 1, 3, 4, 7-9, 12, 17, and 18 are rejected under 35 U.S.C. § 103
as being unpatentable over Roddy ’043.
Claims 5 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Roddy ’043 and Roddy ’475.
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Roddy ’043 and James.
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over
Roddy ’043 and Baker.
OPINION
35 U.S.C. § 112(b)
The Examiner determines that it is unclear whether claim 1 ’s step of
“introducing the set-delayed cement composition into a subterranean
formation” “refers to the set-delayed cement composition before or after
adding the zeolite activator.” Final Act. 2.
Appellants counter that the Examiner’s rejection is not based on
clarity, but rather the Examiner’s reasoning is based on claim breadth i.e.,
“to encompass multiple alternatives.” Appeal Br. 8. We agree. Claim 1
uses the term “set-delayed cement composition” consistently throughout the
claim and does not specify whether the “zeolite activator” is also
“introduce[ed] . . . into the subterranean formation” with the “set-delayed
cement composition.” Thus, the claim can cover both “introducing the set-
delayed cement composition into a subterranean formation” before “adding a
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Application 14/048,463
zeolite activator to the set-delayed cement composition after the step of
storing to activate the set-delayed cement composition” or after the step of
“adding.” This is a question of timing and claim breadth, not indefmiteness
of the term “set-delayed cement composition.” For this reason we do not
sustain the 35 U.S.C. § 112(b) rejection.
35 U.S.C. §103-Claim 1
The Examiner finds that Roddy ’043 teaches all of the features of
claim 1, except that it “fails to explicitly disclose ‘storing’ the set-delayed
cement composition ‘for at least about one day’ and adding the zeolite ‘after
the step of storing’ as instantly claimed.” Final Act. 3. The Examiner
further finds that “Roddy [’043] fails to explicitly disclose the zeolite as an
‘activator’ to ‘activate the set-delayed cement composition,”’ as claimed. Id.
However, the Examiner determines that Roddy ’043 “teaches zeolite as an
additive” that “will perform as an activator” because it has the same
composition as that disclosed by Appellants. Id.
Because the Examiner finds that Roddy ’043 teaches the claimed
composition “wherein additives [such as zeolite] can be included in this
composition as desired,” the Examiner determines that “it would have been
obvious to one of ordinary skill in the art to store the cement composition
and add zeolite/additives to the composition when appropriate based on the
desired treatment in order to yield predictable results.” Id.
Roddy ’043 teaches that to reduce cost of a sealant composition, the
amount of Portland cement can be reduced or replaced by the presence of
other components. Roddy ’043 ^ 8. Zeolite is listed as one of these
components. Id. Though zeolite is included in a number of embodiments,
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Application 14/048,463
the function of zeolite, other than to replace Portland cement, is not
discussed. See e.g., id. at 30. Roddy ’043 also discusses sealant
compositions with a set retarding additive which is “an additive that retards
the setting of the sealant compositions.” Id. at 31. Roddy ’043 states that
“at a desired time for use, the extended sealant composition may be
activated, for example, by addition of a cement set accelerator.” Id. at 42.
A number of examples of cement set accelerators are given, notably
however, zeolite is not included as a set accelerator. See e.g., id.
Appellants admit that Roddy ’043 teaches using zeolite as an optional
additive for sealant compositions, however, they argue that “[a]t most,
Roddy ’043 discloses that the zeolite may be included when the whole
sealant composition is blended all at once.” Appeal Br. 13. Appellants
argue that “Roddy ’043 does not teach or suggest the use [of] a zeolite
activator” or “any step of storing and then later adding a zeolite activator.”
Id. at 14.
The Examiner does not identify any teaching of Roddy ’043 that
would suggest adding zeolite after “storing a set-delayed cement
composition comprising water, a pozzolan, hydrated lime, and a set retarder
for at least about one day,” as required by claim 1. Further, though the
Examiner found that zeolite will inherently act as an activator (Final Act. 3-
4), Roddy ’043 does not teach its use as an activator. Thus, nothing in
Roddy ’043 suggests “adding a zeolite activator to the set-delayed cement
composition after the step of storing to activate the set-delayed cement
composition,” as required by claim 1. Therefore, the Examiner’s
determination that Roddy ’043 suggests that it would be appropriate to add
zeolite at a time other than the initial mixing and formation of the cement
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composition is not supported by a preponderance of evidence. For this
reason we do not sustain the 35 U.S.C. § 103 rejection of independent claim
1.
35 U.S.C. §103- Claims 3 10 & 12
Claims 3-10 and 12 depend from claim 1. Though the Examiner
relies on the additional references of Roddy ’475, James, and Baker for the
rejection of some of these dependent claims, all of the 35 U.S.C. § 103
rejections of these claims depend on the unsupported findings and
determinations of claim 1 discussed above. Thus, we do not sustain the 35
U.S.C. § 103 rejections of claims 3-10 and 12 for the same reasons.
35 U.S.C. §103- Claims 17 & 18
Claims 18 and 19 depend from independent claim 17. Appellants
argue the rejection of claims 17 and 18 together. We select claim 17 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that Roddy ’043 teaches “a set-delayed
cement composition comprising water . . . , a pozzolan . . . , hydrated lime . .
., a set retarder . . ., and a zeolite.” Final Act. 6. The Examiner determines
that Roddy ’043’s “zeolite will perform as an activator” because “Roddy
[’043] teaches the same cement composition as . . . Applicants.” Id. (citing
Roddy’043 Tj 30 and Spec. Tj 30).
The Examiner further finds that Roddy ’043 “teaches combining
components of the composition and forming a pumpable composition.” Id.
The Examiner determines that though Roddy ’043 does not explicitly
disclose mixing equipment and pumping equipment, “it would have been
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Application 14/048,463
obvious to one of ordinary skill in the art to provide mixing equipment to
combine components and pumping equipment to deliver a pumpable
composition.” Id. at 6-7.
Appellants admit that Roddy ’043 teaches a sealant composition
including pozzolan, lime, water, and zeolite. Appeal Br. 13, 17. Appellants
further admit that Roddy ’043 teaches extended, or set-delayed, sealant
compositions. Id. at 14, 18. However, Appellants argue that Roddy ’043
does not teach “set-delayed cement compositions and a separate zeolite
activator for activation of the set-delayed cement composition.” Id. at 17.
Appellants argue that “[a]t most, Roddy ’043 discloses that the zeolite may
be included when the whole sealant composition is blended all at once.” Id.
However, nothing in claim 17 requires that the zeolite be separate
from the rest of the set-delayed cement composition, or that the activation
process cannot start once the whole sealant composition is blended. Thus,
we are not informed of error in the Examiner’s rejection.
Appellants argue that Roddy ’043 does not teach or suggest “a zeolite
activator.” Id. at 17-18. As noted above, the Examiner does not find that
Roddy ’043 explicitly teaches a zeolite activator, but rather finds that the
zeolite taught by Roddy ’043 will inherently “perform as an activator.”
Final Act. 6. Appellants do not contest this finding of inherency. Thus, we
are not informed of error in the Examiner’s rejection.
Appellants also argue that “[t]he Examiner relies on an improper
obvious to try rationale.” Appeal Br. 18. Appellants identify a number of
reasons why they assert it is not obvious to try zeolite as an activator. Id. at
18-20. However, the rejection of claim 17 is not based on the proposition
that it would have been obvious to try zeolite as an activator. As noted
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Application 14/048,463
above, the Examiner found that zeolite would inherently “perform as an
activator” which finding Appellants do not contest. Arguments presented in
an appeal must address the grounds of rejection set forth by the Examiner.
37 C.F.R. § 41.37(c)(l)(iv). Thus, Appellants arguments addressed to
grounds not present in the rejection do not inform us of error in the
Examiner’s rejection.
35 U.S.C. § 103 — Claim 19
Appellants argue that claim 19 is allowable because Roddy ’475 does
not overcome the deficiencies identified in Roddy ’043 with respect to claim
17. Appeal Br. 22-23. Thus, we are not informed of error in the Examiner’s
rejection of claim 19, for the reasons previously discussed with respect to
claim 17.
DECISION
The Examiner’s 35 U.S.C. § 112(b) rejection of claims 1 and 3-12 is
reversed.
The Examiner’s 35 U.S.C. § 103 rejections of claims 1, 3-10, and 12
are reversed.
The Examiner’s 35 U.S.C. § 103 rejections of claims 17-19 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-IN-PART
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