Ex Parte Rickman et al

Board of Patent Appeals and Interferences

Jul 29, 2012

11482601 (B.P.A.I. Jul. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD D. RICKMAN and PHILIP D. NGUYEN
____________

Appeal 2009-015426
Application 11/482,601
Technology Center 3600
____________

Before LINDA E. HORNER, JOHN C. KERINS, and HYUN J. JUNG,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Richard D. Rickman and Philip D. Nguyen (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-
20 under 35 U.S.C. § 103(a) as unpatentable over Murphey (US 4,665,988;
iss. May 19, 1987) and Young (US 4,669,543; iss. Jun. 2, 1987). We have
jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM.
THE INVENTION
Appellants’ claimed invention relates to methods for enhancing
proppant pack conductivity and strength in the treatment of subterranean
formations. Spec. 1, para. [0001]. Claim 7, reproduced below, is
representative of the subject matter on appeal.1
7. A method comprising:
providing a curable resin composition that comprises a
curable resin and at least a plurality of filler particles; and
coating at least a plurality of particulates with the curable
resin composition on-the-fly to form curable resin coated
particulates.
CONTENTIONS AND ISSUE
The Examiner determined that Murphey discloses “various
embodiments in which a curable resin, large particulate, and finer particulate
for the purposes of producing a fill material, are admixed and pumped into
the well bore for the purpose of filling voids in a subterranean formation to
provide for a fill having substantially uniform permeability.” Ans. 3-4
(citing Murphey, col. 8, l. 27 – col. 9, l. 24; col. 12, ll. 39-68; col. 16, ll. 30-
60). The Examiner found that Murphey “fails to explicitly disclose ‘on the
fly’ coating of the particulate.” Ans. 4. The Examiner found that Young
teaches a method of mixing a fluid carrier and consolidating components on-

1 Appellants argue claims 1-20 as a group. App. Br. 5-6. We select claim 7
as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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the-fly “for the purpose of efficiently coating the solids therein with the
consolidating fluid.” Id. The Examiner concluded:
Therefore, it would have been obvious to one having
ordinary skill in the art at the time the invention was made to
coat the larger particulates of the composition of Murphey et al.
with the curable resin composition disclosed therein “on the
fly” as the particulate fill material composition is mixed and
subsequently introduced into the well bore in order to obtain the
predictable result of more efficiently coating the larger
particulates with the curable resin composition, thereby
enhancing the operation of providing a more uniform
permeability therein.
Ans. 4-5.
Appellants argue that “[t]he particular embodiment of Murphey that
the Examiner is relying upon makes it clear that ‘this order of addition
requires substantial additional mixing time.’” App. Br. 5 (quoting Murphey,
col. 9, ll. 1-5). See also Reply Br. 4. Appellants also argue that “other
embodiments of Murphey require mixing and coating times of up to two
hours.” Id. (citing Murphey, col. 12, ll. 53-54). Based on these statements,
Appellants assert that “Murphey clearly teaches away from the use of on-
the-fly coating because its mixing and coating processes require substantial
amounts of time.” App. Br. 5-6.
The issue presented by this appeal is whether Murphey teaches away
from the Examiner’s proposed modification to coat the larger particulates of
the composition of Murphey with the curable resin composition “on-the-
fly.”
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PRINCIPLES OF LAW
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “[I]n general, a reference will teach away if it suggests that
the line of development flowing from the reference’s disclosure is unlikely
to be productive of the result sought by the applicant.” Id. (citations
omitted). “[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citing U.S. v. Adams, 383 U.S. 39, 51-52 (1966)).
ANALYSIS
As noted by the Examiner (Ans. 4), Murphey discloses various
methods for preparing a variable permeability material for the filling of
voids in a subterranean formation. Col. 1, ll. 8-10 and col. 8, ll. 27-68. In
one embodiment, Murphey discloses admixing a resin with large particulate
to coat the large particulate, and then admixing finer particulate with
aqueous fluid, so that at least a portion of the fine particulate clusters upon
the surface of the resin coated large particulate. Col. 8, ll. 27-51. In an
alternate embodiment, Murphey discloses admixing a resin with a
viscosified fluid and then adding large particulate, and thereafter adding fine
particulate to produce the fill material. Col. 8, ll. 57-61. In yet another
embodiment, Murphey discloses admixing the large and fine particulate with
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viscosified fluid, and thereafter adding a resin to coat the particulate. Col. 8,
ll. 62-66. Murphey discloses that this third embodiment is “least preferred”
among the disclosed embodiments because this order of combination
“requires substantial additional mixing time in comparison to the other
methods to effect coating of the large particulate and agglomeration of the
finer particulate upon the larger particulate” and because “a larger quantity
of resin often is required to coat the particulate in comparison to the other
described methods.” Col. 8, l. 66 – col. 9, l. 8.
Contrary to Appellants’ assertion (App. Br. 5), the Examiner did not
rely only on this third embodiment in the rejection. See Ans. 3-4 (Examiner
referring to “various embodiments” and citing portions of Murphey
disclosing all three embodiments). The statement in Murphey that this third
embodiment requires substantial additional mixing time as compared to the
first and second embodiments is not a teaching away from coating the
particulates with the resin on-the-fly because the statement in Murphey
about “substantial additional mixing time” is directed only to the third
disclosed embodiment. The Examiner appears to rely on the various
embodiments disclosed in Murphey, including the remaining two methods
that do not require the “substantial additional mixing time.”
Further, Appellants’ assertion that the other methods, i.e., the first and
second embodiments, require two hours of mixing time is without sufficient
basis in fact. Murphey describes an example in which a viscosified fluid
was prepared and “then was admixed with 25,250 pounds of particulate and
resin in accordance with the method of the present invention in a paddle
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mixer.” Col. 12, ll. 38-48. Murphey does not disclose the specific order of
combination of the large and fine particulate and the resin in this example.
As such, while Murphey discloses that “[t]he mixing process took
approximately two hours to complete” (col. 12, ll. 53-54), we cannot discern
from this disclosure in Murphey which of the embodiments was used in this
example. In any event, this statement would not discourage one of ordinary
skill in the art from coating the particulate with the resin on-the-fly. Further,
Murphey does not describe a minimum mixing time or teach that the
duration or amount of mixing are critical to the disclosed methods, nor does
Murphey explicitly discredit or discourage coating the particulates on-the-
fly. As such, Appellants have not shown that the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Murphey and
Young.
CONCLUSION
Murphey does not teach away from the Examiner’s proposed
modification to coat the larger particulates of the composition of Murphey
with the curable resin composition “on-the-fly.”
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-20.
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)(1)(iv).
AFFIRMED

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