Ex Parte Sandberg et al

Board of Patent Appeals and Interferences

Jan 3, 2012

10693820 (B.P.A.I. Jan. 3, 2012)

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.
10/693,820 10/24/2003 Chester Ledlie Sandberg 5659-20900/EBM 1426
7590 01/03/2012
DEL CHRISTENSEN
SHELL OIL COMPANY
P.O. BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
01/03/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CHESTER LEDLIE SANDBERG,
HAROLD J. VINEGAR, CHRISTOPHER KELVIN HARRIS,
JAIME SANTOS SON and
FREDERICK GORDON CARL JR.
________________

Appeal 2010-001121
Application 10/693,820
Technology Center 3700
________________

Before LINDA E. HORNER, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 2010-001121
Application No. 10/693,820

2
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 1
rejection of claims 1691-96, 1698-1716, 1718-34 and 1736-53. Claims 1-2
1690, 1697, 1717 and 1735 are cancelled. We have jurisdiction under 35 3
U.S.C. § 6(b). 4
The Examiner finally rejects claims 1691-96, 1699-1716, 1719-34 and 5
1736-53 under 35 U.S.C. § 103(a) as unpatentable over Eastlund (US 6
4,716,960, issued Jan. 5, 1988); either Van Egmond (US 5,065,818, issued 7
Nov. 19, 1991) or Bell (US 4,382,469, iss. May 10, 1983); and Rose (EP 0 8
130 671 A2, pub. Jan. 9, 1985). 9
The Examiner also finally rejects claims 1698 and 1718 under 10
§ 103(a) as unpatentable over Eastlund; either Van Egmond or Bell; Rose; 11
and Bridges (CA 2,152,521, issued Jun. 20, 2000). 12
The Examiner provisionally rejects claims 1691-96, 1698-1716, 1718-13
34 and 1736-53 for non-statutory obviousness-type double patenting as 14
unpatentable over one or more claims of Sandberg '700 (US Appl’n 15
10/693,700, filed Oct. 24, 2003, pub. Jan. 13, 2005 as US 2005/0006097 A1) 16
or of Sandberg '840 (US Appl’n 10/693,840, filed Oct. 24, 2003, pub. Jul. 17
22, 2004 as US 2004/0140096 A1). 18
We REVERSE the final rejections of claims 1691-96, 1698-1716, 19
1718-34 and 1736-53. We do not reach the provisional rejection of these 20
claims. 21
Claims 1691, 1711 and 1731 are independent. Claim 1691 recites: 22
1691. A system configured to heat a hydrocarbon containing 23
formation, comprising: 24
a heater well extending from a surface of the earth 25
through an overburden of the formation and into a hydrocarbon 26
containing layer in the formation; 27
Appeal No. 2010-001121
Application No. 10/693,820

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an AC supply configured to provide AC at a voltage 1
above about 200 volts; and 2
one or more electrical conductors located in the heater 3
well and extending from the surface into the hydrocarbon 4
containing layer, the electrical conductors being electrically 5
coupled to the AC supply; 6
at least one electrical conductor comprising one or more 7
ferromagnetic sections, and being configured to provide an 8
electrically resistive heat output during application of AC to the 9
electrical conductor such that heat transfers from the electrical 10
conductor to hydrocarbons in the hydrocarbon containing layer 11
to at least mobilize some hydrocarbons in the layer; 12
wherein one or more of the ferromagnetic sections 13
provides a reduced amount of heat above or near a selected 14
temperature during use, wherein the selected temperature is at 15
or about the Curie temperature of the ferromagnetic section. 16
Claim 1691 and 1711 each recite a system including one or more 17
electrical conductors located in the heater well and extending from the 18
surface and into the hydrocarbon containing layer. At least one of the 19
electrical conductors is “configured to provide an electrically resistive heat 20
output during application of AC to the electrical conductor such that heat 21
transfers from the electrical conductor to hydrocarbons in the hydrocarbon 22
containing layer to at least mobilize some hydrocarbons in the layer.” The 23
latter recitation limits the system to one including an electrical conductor 24
which not only heats hydrocarbons which originated in the hydrocarbon 25
containing formation, but also heats the hydrocarbons while the 26
hydrocarbons are in the formation. This interpretation is consistent with the 27
disclosure of the Specification. 28
An interpretation of the recitation broad enough to encompass heating 29
hydrocarbons which originated in the hydrocarbon containing formation 30
Appeal No. 2010-001121
Application No. 10/693,820

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only while the hydrocarbons are outside the formation would be inconsistent 1
with the preamble of each of claims 1691 and 1711, that is, with a system 2
“configured to heat a hydrocarbon containing formation.” Such an 3
interpretation also would be inconsistent with the recitation that the heating 4
is “to at least mobilize some hydrocarbons in the layer.” (Cf. App. Br. 9 5
(arguing that “Eastlund only teaches the heating of fluids that have already 6
been mobilized and have moved into the well tubing through perforations 12 7
(Figure 1) or perforations 113 (Figure 7A).”).) 8
Claim 1731 recites a method of heating a hydrocarbon containing 9
formation. The method includes “allowing heat to transfer from the 10
electrical conductors to hydrocarbons in the hydrocarbon containing layer to 11
at least mobilize some hydrocarbons in the layer.” For reasons similar to 12
those discussed in the last paragraph of this opinion infra, this step is limited 13
to allowing heat to transfer from the electrical conductors to hydrocarbons 14
while the hydrocarbons are in the hydrocarbon containing layer. 15
Eastlund describes a well having an upper tubing section 13a and a 16
lower tubing section 13b suspended in a casing 10. (Eastlund, col. 3, ll. 20-17
24.) A lead 19 electrically connects a power source with the lower tubing 18
section 13b. (Eastlund, col. 3, ll. 64-68.) Another lead 21 electrically 19
connects the power source with a wellhead. (Eastlund, col. 4, ll. 6-7.) The 20
casing 10 is secured to the wellhead. (Eastlund, col. 3, ll. 13-15.) A 21
“scratcher” 17 electrically connects the lower tubing section 13b and the 22
casing 10 to complete an electrical circuit at and above the scratcher 17. 23
(Eastlund, col. 3, ll. 55-63.) 24
Eastlund teaches using an electrical circuit to heat the tubing to 25
prevent solids such as paraffin from depositing within the tubing. (Eastlund, 26
Appeal No. 2010-001121
Application No. 10/693,820

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col. 4, ll. 22-25). Eastlund teaches connecting the casing 10 and the lower 1
tubular section 13b below the normal level of solids formation in the tubing. 2
(Eastlund, col. 3, ll. 40-54.) Nevertheless, Figure 1 of Eastlund implies that 3
the scratcher 17 defines the lowest extent of the electrical circuit 4
significantly above the hydrocarbon containing formation as indicated by the 5
casing perforations 12. (See Eastlund, col. 3, ll. 17-19.) The Examiner does 6
not provide a sound, non-conclusory basis for finding that the electrical 7
circuit is capable of heating hydrocarbons while in the hydrocarbon 8
containing formation. (See generally Ans. 3 and 7-8; see also App. Br. 9-9
11.) 10
Van Egmond describes a heater “particularly useful in enhanced 11
recovery of heavy oils from oil bearing strata, and in recovery of 12
hydrocarbons from oil shales.” (Van Egmond, col. 2, ll. 6-8.) The heater 13
includes heating cables 1, 2. (See Van Egmond, col. 3, ll. 35-37.) Figure 1 14
of Van Egmond depicts the cables 1, 2 as extending from the surface to heat 15
a subterranean zone 2 located below the overburden. (See Van Egmond, col. 16
3, ll. 32-34.) 17
Bell teaches a method for producing fuel gas from an underground 18
formation of carbonaceous material. The method includes contacting the 19
carbonaceous material with an aqueous electrolyte and passing a controlled 20
amount of direct current through the formation to produce the gas by electro-21
chemical action. (Bell, col. 2, l. 54 – col. 3, l. 2.) 22
The Examiner concludes that: 23
it would have been obvious . . . to adapt Eastlund with the 24
heater well that extends through an overburden formation and 25
into the hydrocarbon containing formation at least about 10 m 26
or more to effectively heat such hydrocarbon containing layer. 27
Appeal No. 2010-001121
Application No. 10/693,820

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(Ans. 4.) Eastlund’s electrical circuit is designed to heat and mobilize 1
hydrocarbons within the tubing, however. Eastlund’s circuit is not designed 2
to heat and mobilize hydrocarbons in a hydrocarbon containing formation as 3
claimed. The adaptation that the Examiner proposes would require adapting 4
Eastlund’s circuit to address a problem for which the circuit was not 5
designed. Van Egmond and Bell describe different systems for addressing 6
different problems. The Examiner’s reasoning does not persuade us that the 7
teachings of either Van Egmond or Bell would have provided one of 8
ordinary skill in the art reason to try to adapt an electrical circuit such as that 9
described by Eastlund to heat hydrocarbons in a hydrocarbon containing 10
formation. (See App. Br. 12.) 11
The Examiner correctly finds that Rose describes “a heating element 12
having an inner core made of copper with an outer conductor made of a 13
ferromagnetic carbon steel which allows the heating element to be self-14
regulating.” (Ans. 4; see Rose 9, ll. 1-18.) Rose does not appear to suggest 15
use of the heating element for heating hydrocarbons in a hydrocarbon 16
containing formation. Therefore, Rose does not remedy the deficiencies in 17
the combined teachings of Eastlund with Van Egmond or Bell. We thus do 18
not sustain the rejection of claims 1691-96, 1699-1716, 1719-34 and 1736-19
53 under § 103(a) as unpatentable over Eastlund; Van Egmond or Bell; and 20
Rose. 21
Bridges describes a heating system for delivering electric power to a 22
hydrocarbon-containing reservoir in a production well. (See Bridges 13, 23
l. 12 – 14, l. 6.) Bridges also teaches that a three-phase power supply may 24
be used to supply electrical power for the heating system. (See Bridges 12, 25
l. 16 – 13, l. 11.) The Examiner cites Bridges solely for the latter teaching. 26
Appeal No. 2010-001121
Application No. 10/693,820

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(See Ans. 6.) The Examiner does not adequately explain how the teachings 1
of Bridges might remedy the deficiencies in the combined teachings of 2
Eastlund; either Van Egmond or Bell; and Rose as discussed with respect to 3
the rejections of independent claims 1691, 1711 and 1731. (See App. Br. 4
24.) We thus do not sustain the rejection of claims 1698 and 1718 under 5
§ 103(a) as unpatentable over Eastlund; Van Egmond or Bell; Rose and 6
Bridges. 7
The Examiner also provisionally rejects appealed claims 1691-96, 8
1698-1716, 1718-34 and 1736-53 for non-statutory obviousness-type double 9
patenting as unpatentable over one or more claims of Sandberg '700 or of 10
Sandberg '840. The Appellants do not contest this rejection. Instead, the 11
Appellants represent that they will provide a terminal disclaimer once the 12
application underlying this appeal is in condition for allowance. (See App. 13
Br. 24.) Based on this representation, we do not reach the provisional 14
rejection. Nevertheless, we note that Sandberg '700 and Sandberg '840 15
appear to have the same filing date as the application underlying this appeal. 16
We direct the Examiner’s attention to the second paragraph of § 804 I.B.1. 17
of the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”). 18
19
DECISION 20
We REVERSE the Examiner’s decision finally rejecting claims 1691-21
96, 1698-1716, 1718-34 and 1736-53. 22
We do not reach the Examiner’s decision provisionally rejecting 23
claims 1691-96, 1698-1716, 1718-34 and 1736-53. 24
REVERSED 25
nlk 26