Ex parte Stahl et al.

Board of Patent Appeals and Interferences

Jul 28, 1998

07958526 (B.P.A.I. Jul. 28, 1998)

Application for patent filed October 28, 1992. According to appellants, the1
application is a continuation of Application 07/788,051, filed November 5, 1991, which
is a division of Application 06/756,851, filed July 18, 1985, now Patent No. 5,080,809,
granted January 14, 1992, which is a continuation-in-part of Application 06/568,363,
filed January 9, 1984, now Patent No. 4,951,921, granted August 28, 1990, which is a
continuation-in-part of Application 06/461,707, filed January 28, 1983, now Patent No.
4,644,020, granted February 17, 1987.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte G. ALLAN STAHL, AHMAD MORADI-
ARAGHI, I. JOHN WESTERMAN
and HENRY L. HSIEH
_____________
Appeal No. 94-4409
Application 07/958,5261
______________
ON BRIEF
_______________
Before JOHN D. SMITH, GARRIS and OWENS, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 USC § 134 from the final
Appeal No. 94-4409
Application 07/958,526
2
rejection of claims 40 through 43, 45, 47, 48, 57 through 62,
64, 66 through 75, and 87. Claims 49 through 56, 76 through
80, 84, 85 and 88 through 92 are allowed. Claims 81 through
83 and 86 are objected to but are also considered allowable.
The subject matter on appeal is directed to certain
drilling fluid compositions and processes for forming and
using the drilling fluids in a bore hole wherein ?hostile
conditions? are encountered. To illustrate the invention and
to show further details thereof, representative claims 40, 45,
and 66 are reproduced below:
40. A process comprising forming a drilling fluid
comprising clay and a polymer produced from a monomer
composition consisting essentially of at least one hydrophilic
N-vinyl lactam and at least one hydrophilic unsaturated amide
selected from the group consisting of monomers represented by
the formulas,
O
R? - C - NH2
where R? is an unsaturated radical and
H R’ O

HC = C - C - NR’2
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Application 07/958,526
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where each R’ is individually selected from H or methyl, and
circulating said drilling fluid in a bore hole during the
drilling of a well wherein said fluid encounters hostile
conditions as defined by a temperature and divalent ion
concentration above the infinite days line of FIGURE 14.
45. A process comprising forming a drilling fluid
comprising water, clay and polymer produced from a monomer
composition consisting essentially of at least one hydrophilic
N-vinyl lactam and at least one 2-acrylamido-2-methylpropane
sulfonic acid or the sulfonate salts thereof, and circulating
said drilling fluid in a bore hole during the drilling of a
well wherein said fluid encounters hostile conditions as
defined by a temperature and divalent ion concentration above
the infinite days line of FIGURE 14.
66. A drilling fluid comprising
(a) a base fluid comprising water and an
insoluble weighting material and
(b) water-soluble polymer present in the range
of about 0.5 to about 5 lb/bbl produced from a monomer
composition consisting essentially of at least one hydrophilic
N-vinyl lactam, at least one hydrophilic unsaturated amide
selected from the group consisting of monomers represented by
the formulas,
O
R? - C - NH2
where R? is an unsaturated radical and
Appeal No. 94-4409
Application 07/958,526
4
H R’ O

HC = C - C - NR’2
where each R’ is individually selected from H or methyl, and
at least one hydrophilic vinyl-containing sulfonic acid or a
sulfonate salt thereof.
The references of record relied upon by the examiner are:
Uhl et al. (Uhl) 4,471,097 Sep. 11, 1984
Patel et al. (Patel) 5,204,320 Apr. 20, 1993
All appealed claims stand rejected under 35 USC § 103
over Uhl. Additionally, claims 45, 59 and 62 stand rejected
based on the judicially-created doctrine of obviousness-type
double patenting over claims 1 and 9 of U.S. Patent No.
5,204,320 issued to Patel.
THE REJECTION UNDER 35 USC § 103
The appealed claims stand rejected under 35 USC § 103 for
obviousness over Uhl. We affirm this rejection essentially
for the reasons set forth by the examiner in his Answer.
Appellants submit that the current appealed claims are
Appeal No. 94-4409
Application 07/958,526
5
readily distinguishable over Uhl for three principal reasons.
First, appellants contend that Uhl fails to teach or make
obvious the use of a polymer prepared from a monomeric mixture
free of appreciable vinyl imidazole monomer. Appellants’
argument is predicated on the presumption that the claimed
language ?a polymer produced from a monomer composition
consisting essentially of? acts to exclude the vinyl imidazole
monomer component of Uhl’s polymer.
It is well settled that the claim language ?consisting
essentially of? limits the scope of a claimed element, e.g., a
composition, to the specified ingredients and those that do
not materially affect the basic and novel characteristics of
the composition. In re Herz, 537 F.2d 549, 551-52, 190 USPQ
461, 463 (CCPA 1976); Ex parte Davis, 80 USPQ 448, 450 (Bd.
App. 1948). When such language is used, e.g., as here,
defining a polymer produced from a monomer composition
?consisting essentially of?, the dispositive issue is whether
the introduction of a disclosed component, e.g., a monomer of
a prior art polymer, unrecited in the claimed polymer, would
materially change the characteristics of the claimed polymer
Appeal No. 94-4409
Application 07/958,526
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when added thereto.
In Ex parte Davis, 80 USPQ at 450, where the appealed
claims recited an adhesive composition ?consisting essentially
of? three ingredients and the prior art reference disclosed a
composition having the same three ingredients plus a fourth
ingredient (referred to as a modifier), the question raised
was whether the claim language ?consisting essentially of?
excluded the fourth ingredient. The Davis board held, based
on the facts before it, that the fourth ingredient was
excluded because when added to the three ingredient
composition of the appealed claims, it materially changed the
fundamental character of the claimed composition. Id.
However, in Herz, 190 USPQ at 463, in reviewing the
evidence before it, the court found nothing that would
indicate that a dispersant, which was an additional ingredient
of a prior art composition, would materially affect the basic
and novel characteristics of the claimed composition therein;
the court noting that the prior art composition possessed
additional enhanced detergent-dispersant qualities because of
this component.
As noted by the examiner, the Uhl patent discloses a
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drilling fluid composition containing, as a drilling fluid
additive, a water soluble copolymer containing, inter alia,
vinyl imidazole, as a required monomeric constituent.
According to Uhl, the polymers of his invention have excellent
calcium tolerance and excellent thermal stability compared
with commercial fluid additives. However, even if objective
evidence were of record demonstrating that the vinyl imidazole
component of the prior art polymer were the sole causative
agent for the enhanced properties reported by the Uhl patent,
this fact alone would not lead one to the conclusion that the
presence of a vinyl imidazole monomer in the claimed polymer
would materially affect the basic and novel characteristics of
the claimed composition. Accordingly, given the above claim
construction, that Uhl arguably fails to teach or make obvious
the use of a polymer
prepared from a monomeric mixture ?free of appreciable vinyl
imidazole monomer? is not basis for distinguishing the claimed
subject matter from the prior art.
Appellants’ second major argument on appeal concerns the
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claimed limitation involving the bore hole hostile conditions
which is defined by temperature and divalent ion concentration
?above the infinite days line of Figure 14.? As appellants
note in their Brief at page 12, with the exception of claim 87
which recites hostile conditions to be at temperature of at
least 100EF and a salinity of at least 10g/kg solution, all
appealed claims recite hostile conditions as defined by
temperature and multivalent ion concentration above the
infinite days line of Figure 14. Appellants further point out
and note that this nominally requires a temperature in excess
of 160EF. Appellants argue that Uhl fails to make obvious the
process of forming a drilling fluid containing the defined
polymers and circulating the drilling fluid and the bore hole
during the drilling of a well wherein the fluid is exposed to
the ?hostile conditions? as defined in the claims. We disagree
with appellants’ assessment of the teachings in Uhl.
Initially, we point out that Uhl describes the polymers
of his invention as having excellent calcium tolerance
(multivalent ion concentration) and excellent thermal
stability compared with commercial fluid additives. See the
reference at column 1, lines 16 through 18. Uhl further
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Application 07/958,526
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points out that copolymers according to his invention are
excellent when used as a drilling fluid additive during
drilling operations, and that the products covered by the Uhl
invention have a favorable impact especially ?in applications
for critical drilling operations under difficult conditions at
great depths and in the presence of formation water with a
very high content of electrolytes? (column 7, lines 16 through
20). Thus Uhl, in our view, fairly suggests the use of his
materials in drilling operations encountering ?hostile
conditions? as defined by certain of the appealed claims.
Appellants’ third major argument on appeal is that Uhl
fails to teach or make obvious what is alleged to be
unexpected stabilizing properties imparted to a polymer
prepared from an unsaturated amide monomer of designated
formula (e.g., an acrylamide) by the addition of an N-vinyl
lactam to the monomeric mixture when the polymer is
subsequently exposed to conditions conducive to hydrolysis.
As evidence of this unexpected result, appellants refer to the
specification at page 31, lines 5 through 14 and three papers
attached to their Brief as Exhibit B which indicate, inter
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Application 07/958,526
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alia, that the presence of vinylpyrrolidone (an N-vinyl
lactam) in a copolymer of vinylpyrrolidone-acrylamide
apparently restricts the level of hydrolysis of the copolymer
in hard brines at high temperatures. However, in our view,
whether or not Uhl expressly reported this observed advantage
is not persuasive of patentability, inasmuch as Uhl discloses
copolymers including N-vinylpyrrolidone combined with
acrylamide. Compare the working Examples 9 and 13 in Table I
and Example 29 in Table II of Uhl which Tables appear in the
reference at columns 9 and 10. Appellants have made no
showing that the vinyl imidazole component of such polymers
interferes negatively with any of the properties inherently
possessed by these prior art polymers.
Based on the foregoing, we agree with the examiner’s
conclusion that the claimed subject matter on appeal would
have been obvious within the meaning of 35 USC § 103.
Therefore, we affirm the examiner’s rejection of the appealed
claims under this section of the statute.
THE OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION
Process claim 45 and composition of matter claims 59 and
Appeal No. 94-4409
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62 were finally rejected under the judicially-created doctrine
of obviousness-type double patenting in view of claims 1 and 9
of U.S. Patent No. 5,204,320.
It is apparently agreed that U.S. Patent No. 5,204,320 to
Patel is a commonly owned, later filed ?improvement patent? and
thus a ?two-way? test is required to determine obviousness-type
double patenting. In re Berg, 140 F.3d 1428, 1432, 46 USPQ2d
1226, 1229 (Fed. Cir. 1998). However, the examiner argues
that a ?two-way? test is not required herein because appellants
have not diligently prosecuted the present application which
includes claims to the basic invention. As evidence thereof,
the examiner contends, inter alia, that appealed claims 66 and
76 herein were originally filed so broadly as to read on
?admitted prior art?. However, the examiner never identifies
what ?admitted prior art? is relied on by him. Moreover, as
best as we can determine from the multi-year prosecution of
the present application and its parents, the Uhl patent was
first applied in an office action mailed July 9, 1992. Thus
it is our view that the examiner has failed to meet his burden
of showing that it has been appellants’ lack of diligence
Appeal No. 94-4409
Application 07/958,526
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which held up the rate of prosecution of the present
application. We therefore ?procedurally? reverse the stated
rejection under the judicially-created doctrine of
obviousness-type double patenting.
In summary, the examiner’s rejection of the appealed
claims for obviousness (35 USC § 103) is affirmed. The
examiner’s rejection of certain of the appealed claims based
on the judicially-created doctrine of obviousness-type double
patenting is reversed. The decision of the examiner is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 94-4409
Application 07/958,526
13
)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
RICHMOND, PHILLIPS, HITCHCOCK & FISH
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