10693840 (B.P.A.I. Jan. 3, 2012)

Ex Parte Sandberg et al

Board of Patent Appeals and InterferencesJan 3, 2012

10693840 (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. 10/693,840 10/24/2003 Chester Ledlie Sandberg 5659-21100/EBM 9992 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 2010-001042 Application 10/693,840 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. 2010-001042 Application No. 10/693,840 2 The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 1 rejection of claims 1691-94, 1696-99, 1701-1718, 1720-1723, 1725-1742, 2 and 1744-59. Claims 1-1690, 1695, 1719 and 1743 are cancelled. The 3 Examiner objects to claims 1700 and 1724. We have jurisdiction under 35 4 U.S.C. § 6(b). 5 The Examiner finally rejects: 6 claims 1691-94, 1696-99, 1701, 1704-12, 1714-18, 1720-7 23, 1725, 1728-36, 1738-42 and 1744-59 under 35 U.S.C. 8 § 103(a) as unpatentable over Eastlund (US 4,716,960, issued 9 Jan. 5, 1988); either Van Egmond (US 5,065,818, issued Nov. 10 19, 1991) or Bell (US 4,382,469, issued May 10, 1983); and 11 Rose (EP 0 130 671 A2, pub. Jan. 9, 1985); 12 claims 1702, 1703, 1726 and 1727 under § 103(a) as 13 unpatentable over Eastlund; either Van Egmond or Bell; Rose 14 and Ando (US 3,629,551, issued Dec. 21, 1971); and 15 claims 1713 and 1737 under § 103(a) as unpatentable 16 over Eastlund; either Van Egmond or Bell; Rose; and Lennox 17 (US 2,942,223, issued Jun. 21, 1960). 18 The Examiner also provisionally rejects: 19 claims 1691-94, 1696-99, 1701, 1704-12, 1714-18, 1720-20 23, 1725, 1728-36, and 1738-42 for non-statutory obviousness-21 type double patenting as unpatentable over one or more of 22 claims 1691-94, 1696-1713, 1715-32 and 1734-49 of Sandberg 23 '700 (US Appl’n 10/693,700, filed Oct. 24, 2003, pub. Jan. 13, 24 1 The Appellants identify the real party in interest as Shell Oil Company. Appeal No. 2010-001042 Application No. 10/693,840 3 2005 as US 2005/0006097 A1) and claims 1691-96, 1698-1716, 1 1718-34 and 1736-53 of Sandberg '820 (US Appl’n 10/693,820, 2 filed Oct. 24, 2003, pub. Jul. 29, 2004 as US 2004/0144540 A1) 3 in view of Rose; 4 claims 1702, 1703, 1726 and 1727 for non-statutory 5 obviousness-type double patenting as unpatentable over one or 6 more claims of Sandberg ‘700 or of Sandberg '820; Rose; and 7 Ando; and 8 claims 1713 and 1737 for non-statutory obviousness-type 9 double patenting as unpatentable over one or more claims of 10 Sandberg '700 or of Sandberg '820; Rose; and either Lennox or 11 Eastlund. 12 We REVERSE the final rejection of claims 1691-94, 1696-99, 1701-13 18, 1720-23, 1725-42, and 1744-59. We do not reach the provisional 14 rejections. 15 Claims 1691, 1715 and 1739 are independent. Claim 1691 recites: 16 1691. A system configured to heat a hydrocarbon containing 17 formation, comprising: 18 a heater well extending from a surface of the earth 19 through an overburden of the formation and into a hydrocarbon 20 containing layer in the formation; 21 an electrical conductor located in the heater well and 22 extending from the surface and into the hydrocarbon containing 23 layer, the electrical conductor being configured to generate an 24 electrically resistive heat output during application of AC to the 25 electrical conductor such that heat transfers from the electrical 26 conductor to hydrocarbons in the hydrocarbon containing layer 27 to at least mobilize some hydrocarbons in the layer; 28 wherein the electrical conductor comprises an electrically 29 resistive ferromagnetic material at least partially surrounding a 30 Appeal No. 2010-001042 Application No. 10/693,840 4 non-ferromagnetic material such that the heater provides a 1 reduced amount of heat above or near a selected temperature; 2 an electrical insulator at least partially surrounding the 3 electrical conductor; and 4 a sheath at least partially surrounding the electrical 5 insulator. 6 Claim 1691 and 1715 each recite a system including “an electrical 7 conductor located in the heater well and extending from the surface and into 8 the hydrocarbon containing layer, the electrical conductor being configured 9 to generate an electrically resistive heat output during application of AC to 10 the electrical conductor such that heat transfers from the electrical conductor 11 to hydrocarbons in the hydrocarbon containing layer to at least mobilize 12 some hydrocarbons in the layer.” The latter recitation limits the system to 13 one including an electrical conductor which not only heats hydrocarbons 14 which originated in the hydrocarbon containing formation, but also heats the 15 hydrocarbons while the hydrocarbons are in the formation. This 16 interpretation is consistent with the disclosure of the Specification. 17 An interpretation of the recitation broad enough to encompass heating 18 hydrocarbons which originated in the hydrocarbon containing formation 19 only while the hydrocarbons are outside the formation would be inconsistent 20 with the preamble of each of claims 1691 and 1715, that is, with a system 21 “configured to heat a hydrocarbon containing formation.” Such an 22 interpretation also would be inconsistent with the recitation that the heating 23 is “to at least mobilize some hydrocarbons in the layer.” (Cf. App. Br. 11 24 (arguing that “Eastlund only teaches the heating of fluids that have already 25 been mobilized and have moved into the well tubing through perforations 12 26 (Figure 1) or perforations 113 (Figure 7A).”).) 27 Appeal No. 2010-001042 Application No. 10/693,840 5 Claim 1739 recites a method of heating a hydrocarbon containing 1 formation. The method includes “allowing heat to transfer from the 2 electrical conductors2 to hydrocarbons in the hydrocarbon containing layer 3 to at least mobilize some hydrocarbons in the layer.” For reasons similar to 4 those discussed in the last paragraph infra, this step is limited to allowing 5 heat to transfer from the electrical conductors to hydrocarbons while the 6 hydrocarbons are in the hydrocarbon containing layer. 7 Eastlund describes a well having an upper tubing section 13a and a 8 lower tubing section 13b suspended in a casing 10. (Eastlund, col. 3, ll. 20-9 24.) A lead 19 electrically connects a power source with the lower tubing 10 section 13b. (Eastlund, col. 3, ll. 64-68.) Another lead 21 electrically 11 connects the power source with a wellhead. (Eastlund, col. 4, ll. 6-7.) The 12 casing 10 is secured to the wellhead. (Eastlund, col. 3, ll. 13-15.) A 13 “scratcher” 17 electrically connects the lower tubing section 13b and the 14 casing 10 to complete an electrical circuit at and above the scratcher 17. 15 (Eastlund, col. 3, ll. 55-63.) 16 Eastlund teaches using an electrical circuit to heat the tubing to 17 prevent solids such as paraffin from depositing within the tubing. (See 18 Eastlund, col. 4, ll. 22-25). Eastlund teaches connecting the casing 10 and 19 the lower tubular section 13b below the normal level of solids formation in 20 the tubing. (See Eastlund, col. 3, ll. 40-54.) Nevertheless, Figure 1 of 21 Eastlund implies that the scratcher 17 defines the lowest extent of the 22 electrical circuit significantly above the hydrocarbon containing formation 23 as indicated by the casing perforations 12. (See Eastlund, col. 3, ll. 17-19.) 24 2 Claim 1739 appears to provide antecedent basis for only one electrical conductor. Appeal No. 2010-001042 Application No. 10/693,840 6 The Examiner does not provide a sound, non-conclusory basis for finding 1 that the electrical circuit is capable of heating hydrocarbons while in the 2 hydrocarbon containing formation. (See generally Ans. 3-4 and 11-12; see 3 also App. Br. 11-13.) 4 Van Egmond describes a heater “particularly useful in enhanced 5 recovery of heavy oils from oil bearing strata, and in recovery of 6 hydrocarbons from oil shales.” (Van Egmond, col. 2, ll. 6-8.) The heater 7 includes heating cables 1, 2. (See Van Egmond, col. 3, ll. 35-37.) Figure 1 8 of Van Egmond depicts the cables 1, 2 extending from the surface to heat a 9 subterranean zone 2 located below the overburden. (See Van Egmond, col. 10 3, ll. 32-34.) 11 Bell teaches a method for producing fuel gas from an underground 12 formation of carbonaceous material. The method includes contacting the 13 carbonaceous material with an aqueous electrolyte and passing a controlled 14 amount of direct current through the formation to produce the gas by electro-15 chemical action. (Bell, col. 2, l. 54 – col. 3, l. 2.) 16 The Examiner concludes that: 17 it would have been obvious . . . to adapt Eastlund with the 18 heater well that extends through an overburden formation and 19 into the hydrocarbon containing formation at least about 10 m 20 or more to effectively heat such hydrocarbon containing layer. 21 (Ans. 4.) Eastlund’s electrical circuit is designed to heat and mobilize 22 hydrocarbons within the tubing, however. Eastlund’s circuit is not designed 23 to heat and mobilize hydrocarbons in a hydrocarbon containing formation as 24 claimed. The adaptation that the Examiner proposes would require adapting 25 Eastlund’s circuit to address a problem for which the circuit was not 26 designed. Van Egmond and Bell describe different systems for addressing 27 Appeal No. 2010-001042 Application No. 10/693,840 7 different problems. The Examiner’s reasoning does not persuade us that the 1 teachings of either Van Egmond or Bell would have provided one of 2 ordinary skill in the art reason to try to adapt an electrical circuit such as that 3 described by Eastlund to heat hydrocarbons in a hydrocarbon containing 4 formation. (See App. Br. 14.) 5 The Examiner correctly finds that Rose describes “an electric heater 6 comprising ferromagnetic materials 31 and 37 surrounding non-7 ferromagnetic material 27, insulator 35 surrounding the conductor, and 8 sheath (39, 49) made of electrically conductive material such as copper 9 surrounding the insulation.” (Ans. 4; see Rose 9, ll. 1-18.) Rose does not 10 appear to suggest use of the heater for heating hydrocarbons in a 11 hydrocarbon containing formation. Therefore, Rose does not remedy the 12 deficiencies in the combined teachings of Eastlund with Van Egmond or 13 Bell. We thus do not sustain the rejection of claims 1691-94, 1696-99, 1701, 14 1704-12, 1714-18, 1720-23, 1725, 1728-36, 1738-42 and 1744-59 under 15 § 103(a) as unpatentable over Eastlund; Van Egmond or Bell; and Rose. 16 Ando describes varying the material or dimensions of a heat-17 generating pipe including ferromagnetic material to locally control the 18 amount of heat generated by the pipe. (Ando, col. 3, ll. 23-38.) Ando 19 suggests use of the heat-generating pipe in a fluid-transporting pipeline or 20 for heating structural elements. (Ando, col. 3, ll. 61-64 and col. 4, ll. 60-68.) 21 The Examiner cites Ando for the teaching that ferromagnetic pipes may be 22 welded together at a junction. (Ans. 6.) The Examiner does not adequately 23 explain how the teachings of Ando might remedy the deficiencies in the 24 combined teachings of Eastlund; either Van Egmond or Bell; and Rose as 25 discussed with respect to the rejections of independent claims 1691, 1715 26 Appeal No. 2010-001042 Application No. 10/693,840 8 and 1739. (See App. Br. 28.) We thus do not sustain the rejection of claims 1 1702, 1703, 1726 and 1727 under § 103(a) as unpatentable over Eastlund; 2 either Van Egmond or Bell; Rose and Ando. 3 Lennox describes a sheathed electrical resistance heater including a 4 tubular heating element 2 embedded in a densely compacted mass of 5 electrically-insulating, heat conducting material 6. Lennox identifies 6 magnesium oxide as a suitable material 6. (Lennox, col. 3, ll. 31-42.) The 7 Examiner cites Lennox for the teaching that metal oxide is known to be 8 electrically insulating and yet thermally conductive. (Ans. 7.) The 9 Examiner does not adequately explain how the teachings of Lennox might 10 remedy the deficiencies in the combined teachings of Eastlund; either Van 11 Egmond or Bell; and Rose as discussed with respect to the rejections of 12 independent claims 1691, 1715 and 1739. (See App. Br. 28.) We thus do 13 not sustain the rejection of claims 1713 and 1737 under § 103(a) as 14 unpatentable over Eastlund; either Van Egmond or Bell; Rose and Lennox. 15 The Examiner provisionally rejects appealed claims 1691-94, 1696-16 99, 1701, 1704-12, 1714-18, 1720-23, 1725, 1728-36, and 1738-42 for non-17 statutory obviousness-type double patenting as unpatentable over one or 18 more claims of Sandberg '700 or of Sandberg '820 in view of Rose. The 19 Appellants do not contest this rejection. Instead, the Appellants represent 20 that they will provide a terminal disclaimer once the application underlying 21 this appeal is in condition for allowance. (App. Br. 29.) Based on this 22 representation, we do not reach the provisional rejection. Nevertheless, we 23 note that Sandberg '700 and Sandberg '820 appear to have the same filing 24 date as the application underlying this appeal. We direct the Examiner’s 25 Appeal No. 2010-001042 Application No. 10/693,840 9 attention to the second paragraph of § 804 I.B.1. of the MANUAL OF PATENT 1 EXAMINING PROCEDURE (“MPEP”). 2 The Examiner provisionally rejects appealed claims 1702, 1703, 1726 3 and 1727 for non-statutory obviousness-type double patenting as 4 unpatentable over one or more claims of Sandberg '700 or of Sandberg '820; 5 Rose; and Ando. The Examiner also provisionally rejects appealed claims 6 1713 and 1737 for non-statutory obviousness-type double patenting as 7 unpatentable over one or more claims of Sandberg '700 or of Sandberg '820; 8 Rose; and either Lennox or Eastlund. The Appellants represent that they 9 will provide a terminal disclaimer once the application underlying this 10 appeal is in condition for allowance in order to obviate the double patenting 11 rejection of appealed claims 1691-94, 1696-99, 1701, 1704-12, 1714-18, 12 1720-23, 1725, 1728-36, and 1738-42. (App. Br. 29.) Since a terminal 13 disclaimer, when filed to obviate judicially created double patenting in a 14 patent application, must specify a portion of the term of the patent being 15 disclaimed, the proposed terminal disclaimer might resolve these provisional 16 rejections as well. Based on the representation, we do not reach these 17 provisional rejections, either. Once again, we direct the Examiner’s 18 attention to MPEP § 804 I.B.1, second paragraph. 19 DECISION 20 We REVERSE the Examiner’s decision finally rejecting claims 1691-21 94, 1696-99, 1701-18, 1720-23, 1725-42, and 1744-59. 22 We do not reach the Examiner’s decision provisionally rejecting 23 claims 1691-94, 1696-99, 1701-18, 1720-23, and 1725-42. 24 REVERSED 25 nlk 26