Ex Parte Shen et al

Patent Trials and Appeals Board

Apr 12, 2019

14015660 - (D) (P.T.A.B. Apr. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/015,660 08/30/2013
71762 7590 04/12/2019
JONES DELFLACHE LLP
1333 HEIGHTS BOULEVARD
SUITE 300
HOUSTON, TX 77008
FIRST NAMED INVENTOR
Dong Shen
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.
30700 (FRC4-54790-US) 7112
EXAMINER
SUE-AKO, ANDREW B.
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
04/12/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DONG SHEN, DORA V. GALVAN, HOANG V. LE, and QI QU 1
Appeal 2018-006846
Application 14/015,660
Technology Center 3600
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 7, 8, 10, 14--19, 21, 25, and 26. 2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Baker Hughes Incorporated ("Appellant") is the Applicant as provided in
37 C.F.R. § 1.46. According to Appellant, the real party in interest is "Baker
Hughes, a GE company, LLC." Appeal Br. 1.
2 Claims 4--6, 9, 12, and 13 are withdrawn. Appeal Br. (Claims App. 2-3).
Claims 11, 20, and 22-24 are canceled. See Amendment (dated Mar. 29,
2018); Ans. 3 (indicating that the Mar. 29, 2018 Amendment was entered).
Appeal2018-006846
Application 14/015,660
THE CLAIMED SUBJECT MATTER
Claims 1 and 19 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method of subjecting a hydrocarbon-bearing
calcareous or siliceous formation penetrated by a well to a
hydraulic fracturing operation which comprises:
(a) pumping into the well at a pressure sufficient to create
or enlarge fractures in the hydrocarbon-bearing calcareous or
siliceous formation an aqueous fracturing fluid comprising:
(i) a crosslinkable viscosifying polymer;
(ii) an organometallic crosslinking agent containing
a polyvalent metal ion;
(iii) a scale inhibitor selected from the group
consIStmg of polyvinyl sulfonates, a
polyacrylamidomethylpropane sulfonic acid,
carboxymethyl inulin and sulfonated polyacrylates and
mixtures thereof; and
(iv) a proppant
and creating or enlarging fractures within the hydrocarbon-
bearing calcareous or siliceous formation;
(b) forming a viscous gel containing the scale inhibitor
after step (a) by forming crosslinks between the crosslinkable
viscosifying polymer and organometallic crosslinking agent
wherein the crosslinkable viscosifying polymer forming the
crosslinks with the organometallic crosslinking agent consists
essentially of a cellulosic derivative, galactomannan gum,
carrageenan, polyacrylamide, alkylpolyacrylamide, partially
hydrolyzed polyacrylamide or a copolymer of acrylamide and
either an acrylate or acrylamidomethylpropane sulfonic acid or a
mixture thereof and further wherein the viscous gel is stable at a
temperature in excess of 150°F and exhibits a viscosity in excess
of 500 cP at 100 sec-1 at 150°F;
( c) transporting the scale inhibitor in the viscous gel into
the formation;
( d) preventing and/or inhibiting the formation of scales in the
well and/or formation with the transported scale inhibitor; and
( e) exposing the proppant to formation closure stresses.
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Appeal2018-006846
Application 14/015,660
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Falk us 5,092,404 Mar. 3, 1992
Collins US 7,306,035 B2 Dec. 11, 2007
Welton US 2008/0039347 Al Feb. 14,2008
Nguyen US 2008/0128131 Al June 5, 2008
REJECTIONS
I. Claims 1, 2, 7, 8, 14--16, 25, and 26 stand rejected under 35 U.S.C.
§ I02(a)(l) as anticipated by, or alternatively, under 35 U.S.C. § 103
as unpatentable over, Welton. Final Act. 3-10.
II. Claims 3, 19, and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Welton, as evidenced by Falk. Id. at 10-14.
III. Claims 10 stands rejected under 35 U.S.C. § 103 as unpatentable over
Welton, as evidenced by Collins. Id. at 14--15.
OPINION
Rejection I
Independent claim 1 recites, inter alia, "forming a viscous gel ...
[that] is stable at a temperature in excess of 150°F and exhibits a viscosity in
excess of 500 cP at 100 sec-1 at I50°F." Appeal Br. (Claims App. 1). The
Examiner finds that Welton discloses forming a "viscous gel [that] is stable
at a temperature in excess of 150°F ( e.g., [0032] 'stabilize the fluid
particularly at temperatures above I80°F') and exhibits a viscosity '(e.g.,
sufficient viscosity to divert flow, suspend particulates, provide friction
reduction, etc.)' ([0024])." Final Act. 4 ( emphasis omitted); see also id. at 5
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Appeal2018-006846
Application 14/015,660
( finding that Welton' s fluid "must have a very high viscosity in order to
divert flow, suspend particulates, etc."). The Examiner explains that
"Welton discloses the same composition as claimed, [ and] the fluid, if
subjected to a viscosity test, would act in the same manner as claimed." Id.
at 5; see also id. (explaining that, "if the prior art teaches the identical
chemical structure, the properties [Appellant] discloses and/or claims are
necessarily present."). According to the Examiner, "Welton provides the
same (broad) gelling composition as claimed for the same purpose of
viscosified fracturing, which requires the same high viscosity." Ans. 6.
Appellant argues that "Welton provides no statement, nor could any
conclusion be drawn, that the viscous gel of Welton 'exhibits a viscosity in
excess of 500 cP at 100 sec-1 at 150°F."' Appeal Br. 10. Appellant argues
that "the claims of Appellant are drawn to different fluids than those
disclose[d] in Welton." Id. Appellant asserts that "[n]o rational basis is
provided by the Examiner as to why the fluid of Welton is the 'same (broad)
gelling composition' of Appellant. The Examiner merely concludes that the
xanthan based fluid of Welton is broadly the same composition of
Appellant." Reply Br. 3 ( quoting Ans. 6).
We agree with Appellant that the Examiner has not adequately
supported a finding that Welton necessarily discloses a gel having a
viscosity exceeding 500 cP at 100 sec-1 at 150°F, as called for in claim 1.
The Examiner's position appears to be that Welton discloses a gel having an
identical composition to that of claim 1, and, thus, necessarily has the same
viscosity recited in claim 1. Final Act 5; Ans. 6. We note that, "when the
PTO shows sound basis for believing that the products of the applicant and
the prior art are the same, the applicant has the burden of showing that they
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Appeal2018-006846
Application 14/015,660
are not." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (emphasis added)
(citing In re King, 801 F.2d 1324, 1327 (Fed.Cir.1986); In re Ludtke, 441
F.2d 660, 664 (CCPA 1971)). Here, however, the Examiner has not shown a
sound basis for believing that Welton' s gel is the same as the viscous gel
recited in claim 1. As noted by Appellant, Welton's gel is formed by
crosslinking clarified xanthan with a viscosifying polymer. Appeal Br. 8-9
(citing Welton ,r 25). The Examiner has not adequately addressed what
effect the presence of xanthan in Welton's gel would have on the viscosity
of the gel, or on the percentages of the constituent parts of the gel, so as to
set forth a sound basis for believing the claimed gel and Welton's gel to be
the same. In other words, at least some portion of Welton's gel is xanthan
(Welton ,r 24 ), whereas the gel recited in claim 1 does not require xanthan.
Given that the viscosity of the gel presumably would be a function of the
constituent parts and the particular proportions of the constituent parts of the
gel composition, the Examiner has not established a reasonable basis to
conclude that Welton discloses a chemical composition that is identical to
that recited as being formed in claim 1.
The Examiner cites to Nguyen as "evidence that fracturing fluids
typically/ ordinarily have viscosities on the order of -1000 cP, ... [ and
explains that] it appears Welton must provide a similarly high viscosity, in
order to successfully fracture the formation." Ans. 7 ( emphasis added)
( citing Nguyen ,r 61 ). However, as Appellant notes, the cited portion of
Nguyen does not teach afracturingfluidhaving such a viscosity, but rather,
a displacement fluid pumped into an already-created fracture. Reply Br. 4--5
(citing Nguyen ,r 61). Even assuming arguendo that Nguyen taught a
fracturing fluid having a viscosity on the order of 1000 cP, we fail to see
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Appeal2018-006846
Application 14/015,660
how such a teaching would establish by a preponderance of the evidence that
Welton's viscous gel necessarily "exhibits a viscosity in excess of 500 cP at
100 sec-1 at 150°F ," as recited in claim 1. \Vithout further evidence or
explanation, one of ordinary skill in the art can only speculate as to the
viscosity of\Velton's gel. In other words, the Examiner's finding that
Welton anticipates the subject matter of claim 1 lacks adequate evidentiary
support.
In the alternative ground of rejection under 35 U.S.C. § 103, the
Examiner determines that, "if there is any difference between the
composition and that of the instant claims, the difference would have been
minor and obvious insofar as because it has been held 'Products of identical
chemical composition cannot have mutually exclusive properties."' Final
Act. 5 (citing MPEP 2112.0l(I)). The Examiner explains that "there is no
disclosed design criticality to this viscosity range over Prior Art viscosities."
Ans. 7 ( citing Spec. ,r 31 ).
Appellant argues, and we agree, that "the Examiner's conclusion that
any difference between the composition of Welton and that claimed by
Appellant would be 'minor,' is merely unsupported conjecture." Appeal
Br. 10. The Examiner has not sufficiently articulated a reason with a
rational evidentiary underpinning to explain why, given the teachings of
Welton, an ordinary artisan would have been prompted to modify Welton so
that the viscous gel has a viscosity in excess of 500 cP at 100 sec-1 at 150°F,
as claimed. Although we appreciate the Examiner's observation that
Appellant's Specification does not describe that there is any criticality to the
particular viscosity recited in claim 1 (Ans. 7), the Examiner does not set
forth a reason why such a viscosity would have been obvious to one of
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Application 14/015,660
ordinary skill in the art. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness") ( cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007)). Moreover, the
Examiner does not explain how or why Nguyen's teaching of a displacement
fluid having a viscosity of 1000 cP (Nguyen ,r 61) would have led one of
ordinary skill in the art to use such a viscosity for Welton'sfracturingfluid.
See Ans. 7.
Rejections based on obviousness must rest on a factual basis. In
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). In this case, absent improper hindsight
reconstruction, we do not see a sufficient reasoned explanation based on
some rational underpinning as to why one of ordinary skill in the art would
have been led to modify Welton's viscous gel to eliminate "any difference
between the composition [ of Welton] and that of the instant claims" (Final
Act. 5) or to have a viscosity in excess of 500 cP at 100 sec-1 at 150°F, as
called for in claim 1.
For the foregoing reasons, we are persuaded that the Examiner erred
in concluding that Welton anticipates or renders obvious the subject matter
of independent claim 1. Accordingly, we do not sustain the rejection of
independent claim 1 and its dependent claims 2, 7, 8, 14--16, 25, and 26
under 35 U.S.C. § 102(a)(l) as anticipated by, or alternatively, under
35 U.S.C. § 103 as unpatentable over, Welton.
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Application 14/015,660
Rejections II and III
The Examiner's rejections of independent claim 19 and claims 3, 10,
and 21, which depend from claim 1, rely on the same findings and reasoning
that we find deficient for the reasons discussed above in connection with the
rejection of independent claim 1. Final Act. 10-15. The Examiner relies on
Falk and Collins for evidencing additional features, but does not articulate
any findings or reasoning that would cure the aforementioned deficiency in
the rejection based on Welton alone. See id. Accordingly, for the same
reasons discussed above, we do not sustain the Examiner's rejections, under
35 U.S.C. § 103, of: claims 3, 19, and 21 as unpatentable over Welton, as
evidenced by Falk; and claim 10 as unpatentable over Welton, as evidenced
by Collins.
DECISION
The Examiner's decision to reject claims 1, 2, 7, 8, 14--16, 25, and 26
under 35 U.S.C. § 102(a)(l) as anticipated by, or, in the alternative, under
35 U.S.C. § 103 as unpatentable over, Welton is REVERSED.
The Examiner's decision to reject claims 3, 19, and 21 under
35 U.S.C. § 103 as unpatentable over Welton, as evidenced by Falk is
REVERSED.
The Examiner's decision to reject claim 10 under 35 U.S.C. § 103 as
unpatentable over Welton, as evidenced by Collins is REVERSED.
REVERSED
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