Ex Parte Savari et al

Patent Trial and Appeal Board

Dec 27, 2018

14913761 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/913,761 02/23/2016
112903 7590 12/31/2018
McAfee & Taft
Tenth Floor, Two Leadership Square
211 North Robinson
Oklahoma City, OK 73102
FIRST NAMED INVENTOR
Sharath Savari
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2013-IP-073331Ul US 8804
EXAMINER
AHUJA, ANURADHA
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
ipdocket@mcafeetaft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHARA TH SA VARI and
B. RAGHA VA REDDY
Appeal2018-002284
Application 14/913, 7 61
Technology Center 3600
Before, ANNETTE R. REIMERS, RICHARD H. MARSCHALL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-22. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, Halliburton Energy Services, Inc., which the
Appeal Brief identifies as the real party in interest. Appeal Br. 1.
Appeal2018-002284
Application 14/913, 7 61
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "drilling wells for producing
fluids such as oil and gas and, particularly, to drilling wells where lost
circulation is a concern." Spec. ,r 1. Claims 1 and 12 are independent.
Claim 1 is reproduced below.
1. A process for drilling a wellbore with a drill bit on a drill
string with minimal loss of drilling fluid, the wellbore having a
periphery, wherein the process comprises:
(a) providing an aqueous-based drilling fluid with a granular
lost circulation material comprising a granular material,
wherein said granular material has been coated with a
non-hardening tackifying agent;
(b) introducing said aqueous-based drilling fluid with said
granular lost circulation material through said drill string
during drilling such that said granular lost circulation
material forms a plurality of agglomerated particles at
lost circulation areas at the periphery of said wellbore so
as to form a filter cake at said lost circulation areas and
block or reduce fluid flow from said wellbore into said
lost circulation areas.
Appeal Br. 31 (Claims App.).
THE REJECTIONS
Appellant seeks review of the following rejections on appeal:
1. Claims 1-7, 9, 11-18, 20, and 22 under 35 U.S.C. § 103 as
unpatentable over Ghassemzadeh2 and Ingraham. 3
2 U.S. Patent Pub. No. 2010/0298175 Al, published November 25, 2010
("Ghassemzadeh").
3 U.S. Patent No. 3,336,979, issued August 22, 1967 ("Ingraham").
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Application 14/913, 7 61
2. Claims 8 and 19 under 35 U.S.C. § 103 as unpatentable over
Ghassemzadeh, Ingraham, and Welton. 4
3. Claims 10 and 21 under 35 U.S.C. § 103 as unpatentable over
Ghassemzadeh, Ingraham, and Reddy. 5
ANALYSIS
Claim 1 requires a "granular material ... coated with a non-hardening
tackifying agent." Appeal Br. 31 (Claims App.). The Examiner found that
Ghassemzadeh fails to disclose this limitation, but that Ingraham does
disclose the limitation because it discloses the same agents disclosed in the
specification. Final Act. 3. More specifically, the Examiner found that
paragraphs 20-24 of the specification "present broad categories/families of
polymers" that encompass the cross-linked polymers of Ingraham. Ans. 9
( citing Ingraham, 1:58-72, 2: 12-35). The Examiner determined that it
would have been obvious to modify Ghassemzadeh with Ingraham' s
teachings "in order to yield predictable results in inhibiting lost circulation in
drilling operations." Final Act. 3 ( citing Ingraham, 1: 15-27).
Appellant argues that the Examiner must establish that Ingraham
inherently discloses the claimed non-hardening tackifying agent, and has
failed to do so. Appellant notes that Ingraham discloses the use of an
adhesive interlayer between the granular particle and the polymer outer
coating, and argues that such an adhesive would be unnecessary if the
polymer coating was a tackifying agent. Appeal Br. 23. Appellant also
4 U.S. Patent Pub. No. 2007/0042912 Al, published February 22, 2007
("Welton").
5 U.S. Patent Pub. No. 2007/0277978 Al, published December 6, 2007
("Reddy").
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Appeal2018-002284
Application 14/913, 7 61
argues that one of ordinary skill in the art would not expect Ingrham's
"water-swellable cross-linked" polymer coating to be non-hardening and
tacky because of the expected properties of cross-linked polymers, which
have increased hardness. Id. Appellant also contends that the Examiner
incorrectly assumes that the polymers disclosed in the specification are
identical to the water-swellable cross-linked polymers of Ingraham. Id. at
24. According to Appellant, water-swellable, cross-linked polymers would
not necessarily be tackifying, and the Examiner has not properly linked the
claimed and disclosed tackifying polymers with those of Ingraham. Id.; see
also Reply Br. 10.
We agree with Appellant that the Examiner has not adequately
supported the finding that Ingraham inherently discloses the claimed "non-
hardening tackifying agent." As an initial matter, the Examiner does not
respond to Appellant's argument that Ingraham's outer layer is not
inherently tackifying because there would be no need for an adhesive
interlayer in Ingraham if the outer layer remained non-hardened and tacky,
as the claim requires. See Appeal Br. 23. The disclosure of a necessary
adhesive in Ingraham undermines the Examiner's inherency findings. See
Ingraham, 1:58---62, 2:3-11.
The Examiner cites to a number of lines of Ingraham disclosing,
among other options, cross-linked polymers. See Final Act. 3; Ans. 9 (citing
Ingraham, 1 :58-72, 2: 12-35). The Examiner also broadly refers to the
description at paragraphs 20-24 of the specification and asserts that the
specification and Ingraham disclose the same chemical composition and
therefore have the same properties. Id. Those findings, however, never
point to a specific composition Ingraham discloses and tie it to a specific
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Appeal2018-002284
Application 14/913, 7 61
composition the specification discloses. See id.; Spec. ,r,r 20-24. The broad
reference to several paragraphs in the specification and the finding that the
specification encompasses a broad class of compositions does not establish
that Ingraham' s compositions are the same as those in the specification. It
appears, as Appellant argues, that the findings are premised upon a finding
that all polymers are non-hardening and tackifying, and therefore
Ingraham's cross-linked polymers must also be non-hardening and
tackifying. The findings do not contain any evidence to support that
proposition. Instead, the only evidence of record, supplied by Appellant, is
that cross-linked polymers such as those disclosed by Ingraham have
increased hardness, and Examiner has not responded to that assertion or
Appellant's evidence, or established that any of Ingraham's compositions
would not harden and would remain tacky. See Appeal Br. 23; Ans. 9.
Based on the record before us, we find insufficient support for such an
assertion. Accordingly, Appellant provides sufficient argument and
evidence suggesting that Ingraham's water-swellable cross-linked polymers
may not be considered tackifying agents, and therefore do not inherently
disclose the "non-hardening tackifying agent" limitation. See Appeal Br.
23-24; Reply Br. 10.
Based on the foregoing, we do not sustain the rejection of claim 1.
Independent claim 12 includes the same limitation, and we therefore do not
sustain the rejection of that claim, or any of the dependent claims, for the
same reason.
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Appeal2018-002284
Application 14/913, 7 61
DECISION
We reverse the decision of the Examiner to reject claims 1-22.
REVERSED
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