Ex Parte Trautman et al

Patent Trial and Appeal Board

Apr 17, 2017

13176778 (P.T.A.B. Apr. 17, 2017)

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.
13/176,778 07/06/2011 Mark Alan Trautman GCSD-2376 (61763) 5178
74701 7590 04/19/2017
Ann^fi - Harris
EXAMINER
255 S ORANGE AVENUE SKAIST, AVI T.
SUITE 1401
ORLANDO, EL 32801 ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
04/19/2017 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):
creganoa @ allendyer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ALAN TRAUTMAN and
DANIEL SULTENFUSS
Appeal 2015-0052291
Application 13/176,7782
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1,3, 6—10, 12, 13, 15—18, 20, and 21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Specification (“Spec.,” filed July 6,
2011), Appeal Brief (“Appeal Br.,” filed Jan. 14, 2015), and Reply Brief
(“Reply Br.,” filed Apr. 14, 2015), as well as the Final Office Action (“Final
Action,” mailed Oct. 28, 2014) and the Examiner’s Answer (“Answer,”
mailed Mar. 26, 2015).
2 According to Appellants, “[t]he real parties in interest are Harris
Corporation and ConocoPhillips Company.” Appeal Br. 1.
Appeal 2015-005229
Application 13/176,778
According to Appellants, the invention relates “to hydrocarbon
resource recovery using RF heating.” Spec. 11. Claims 1, 10, and 17 are
the only independent claims. Appeal Br., Claims App. We reproduce
claim 1, below, as illustrative of the claims.
1. A method for hydrocarbon resource recovery in a
subterranean formation comprising:
forming a plurality of spaced apart injector/producer well
pairs in the subterranean formation, each injector/producer well
pair comprising a laterally extending producer well and a
laterally extending injector well spaced thereabove;
forming a plurality of laterally extending infill wells in the
subterranean formation, each infill well being located between
respective adjacent injector/producer well pairs;
positioning at least one respective RF antenna within each
of the infill wells;
recovering hydrocarbon resources from the producer wells
based upon Steam Assisted Gravity Drainage (SAGD) via the
injector/producer well pairs to create a respective steam chamber
associated with each injector/producer well pair; and
recovering hydrocarbon resources from the infill wells
based upon supplying radio frequency (RF) energy to the RF
antennas to heat regions of the subterranean formation
surrounding the respective infill wells to create hydraulic
communication between each pair of adjacent steam chambers
and an associated infill well therebetween.
Id.
REJECTION AND PRIOR ART
The Examiner rejects claims 1, 3, 6—10, 12, 13, 15—18, 20, and 21
under 35 U.S.C. § 103(a) as unpatentable over Arthur (US 7,556,099 B2, iss.
July 7, 2009) and Supemaw (US 5,109,927, iss. May 5, 1992).
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ANALYSIS
We have fully considered Appellants’ arguments. Appeal Br. 6—14;
see also Reply Br. 2—3. Based on our review of the record, we do not find
error in the Examiner’s obviousness rejection. Thus, we sustain the rejection
of all of the claims.
Appellants argue the rejected claims—claims 1,3, 6—10, 12, 13, 15—
18, 20, and 21—as a group. Appeal Br. 6—14. We choose independent claim
1 as representative, and the remaining claims stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv). With respect to the rejection of independent
claim 1, the Examiner finds that Arthur discloses virtually all of the
limitations of the claim, except for the use of an RF antenna, which, the
Examiner finds, is taught by Supemaw. Final Action 4—6. As discussed in
further detail below, we agree with the Examiner that “replacing the
mobilizing fluid disclosed by Arthur with the RF heating [by an RF antenna]
as taught by Supemaw is but a simple substitution of one known equivalent
source for establishing fluid communication between wells for another.” Id.
at 5.
MPEP § 2143 provides guidance regarding the findings that an
Examiner must make to support an obviousness rejection in which an
element from one prior art reference is characterized as a simple substitution
for an element in another prior art reference. In particular, this section of the
MPEP provides, in relevant part, as follows:
To reject a claim based on this rationale, Office personnel
must resolve the Graham factual inquiries. Then, Office
personnel must articulate the following:
(1) a finding that the prior art contained a device
(method, product, etc.) which differed from the claimed
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device by the substitution of some components (step,
element, etc.) with other components;
(2) a finding that the substituted components and
their functions were known in the art;
(3) a finding that one of ordinary skill in the art
could have substituted one known element for another, and
the results of the substitution would have been predictable;
and
(4) whatever additional findings based on the
Graham factual inquiries may be necessary, in view of the
facts of the case under consideration, to explain a
conclusion of obviousness.
The rationale to support a conclusion that the claim would
have been obvious is that the substitution of one known element
for another yields predictable results to one of ordinary skill in
the art. If any of these findings cannot be made, then this
rationale cannot be used to support a conclusion that the claim
would have been obvious to one of ordinary skill in the art.
MPEP § 2143(I)(B). In this case, the Examiner’s findings are in accordance
with the above points (1)—(4). Conversely, we are not persuaded of error by
any of Appellants’ arguments in the Appeal Brief or the Reply Brief.
More specifically, we agree that the proposed modification is an
obvious substitution because “Arthur discloses . . . creating] a respective
steam chamber associated with each injector/producer well pair” (Final
Action 4), as well as “recovering hydrocarbon resources from the infill
wells” that are between the injector/producer well pairs {id. at 5), although
such recovery occurs after injecting a “mobilizing fluid” through the infill
wells {id.). We also agree that while “Supemaw teaches using RF heating
[with an RF antenna] in combination with steam flooding (col. 1 [,]
lines 33 [—]42)” to recover hydrocarbon resources {id.), and the cited portion
of Supemaw teaches that “[t]he RF energy can be radiated with the
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Application 13/176,778
formation from ... a production well” (Supemaw col. 1,11. 37-40).
Restated, the proposed modification simply amounts to the substitution of
Supemaw’s RF antenna, which Supemaw teaches is used in a well that
recovers hydrocarbon resources (i.e., a production well), for Arthur’s
mobilizing fluid that is used in a well that recovers hydrocarbon resources
(i.e., an infill well), each of the RF antenna and the mobilizing fluid being
used for the same purpose of facilitating recovery of hydrocarbon resources
through the wells in which the RF antennas are installed or through which
the mobilizing fluid is injected.
Further, we agree with the Examiner that using Supemaw’s RF
antenna in place of Arthur’s mobilizing fluid would have provided a
predictable result, because both Supemaw’s RF antenna and Arthur’s
mobilizing fluid are used to recover hydrocarbon resources from between
other hydrocarbon recovery wells. Final Action 5—6, 12; see also Answer 3.
This rationale is adequate to support the Examiner’s conclusion of
obviousness, and we note that the Examiner is not required, for example, to
show that any reference provides an express teaching, suggestion, or
motivation for the substitution. See KSR Int 7 Co. v. Teleflex Inc. ,550
U.S. 398, 416 (2007) (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”); see also MPEP § 2143(I)(B) (“The rationale to support
a conclusion that the claim would have been obvious is that the substitution
of one known element for another yields predictable results to one of
ordinary skill in the art.”).
Thus, for the reasons detailed above, we conclude that the Examiner
establishes that it would have been obvious to combine Arthur and
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Application 13/176,778
Supemaw to provide the claimed invention. As we state above, we are not
persuaded of error by any of Appellants’ arguments in the Appeal Brief or
the Reply Brief. We highlight and discuss certain of Appellants’ arguments
below for emphasis only.
Appellants argue
that the Examiner mischaracterized Supemaw ... as it fails to
disclose positioning at least one respective RF antenna within
each of the infill wells and recovering hydrocarbon resources
from the infill wells based upon supplying RF energy to the RF
antenna, which is positioned in the infill well. Instead,
Supemaw . . . merely discloses positioning an antenna is a
selected producer or injector well in a SAGD configuration.
Appeal Br. 7. Appellants do not provide a citation as to where the argued
mischaracterization by the Examiner occurs. However, we note that the
Examiner states that “Supemaw, as applied to Arthur, teaches positioning at
least one respective RF antenna within each of the infill wells,” which we
understand to mean that the Examiner’s proposed combination of references
(rather than the disclosure of Supemaw itself) results in an RF antenna
within each infill well. Final Action 6 (emphasis added). Regardless, we do
agree with Appellants that Supemaw describes the use of an RF antenna in a
production (or injection) well and not in an infill well as claimed. Appeal
Br. 7—8, (citing Supemaw col. 1,11. 64—67). However, because the
Examiner’s rejection relies on a substitution of Supemaw’s RF antenna from
one type of well that recovers hydrocarbon resources (i.e., a production
well), into another type of well in Arthur which also recovers hydrocarbon
resources (i.e., an infill well), we also agree with the Examiner’s conclusion
that it would have been obvious to substitute Supemaw’s RF antenna for
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Arthur’s mobilizing fluid in each of Arthur’s infill wells, for the reasons set
forth above. Final Action 4—6.
Appellants further argue “that the Examiner’s combination of
references is improper. More particularly, as supported by the Rule 132
Declaration, a person having ordinary skill in the art would not turn to
Supemaw ... to combine with Arthur ... in an attempt to arrive at the
claimed invention.” Appeal Br. 8; see also id. at 8—13. We disagree with
Appellants. As stated above, the Examiner finds that Arthur discloses
substantially all of the features recited in claim 1. Final Action 4—5. The
Examiner also determines that it would have been obvious to substitute
Supemaw’s RF antenna for Arthur’s mobilizing fluid in each of Arthur’s
infill wells. Final Action 5, 6. As discussed above, we agree with the
Examiner, and neither Appellants’ arguments nor the Declaration (addressed
in further detail below) persuades us otherwise.
For example, although it is tme that “Supemaw . . . discloses applying
RF to injector or producer wells to selectively heat the formation to more
effectively sweep the reservoir. . . . Arthur . . . fails to disclose any type of
RF heating, and expressly discloses injecting a mobilization fluid in an infill
well” (Appeal Br. 8), this fails to persuade us that it would not have been
obvious to use Supemaw’s RF antenna in each of Arthur’s infill wells. As
discussed above, we agree with the Examiner that Supemaw’s RF antenna
may be substituted for Arthur’s mobilizing fluid, and that the use of
Supemaw’s RF antenna in place of Arthur’s mobilization fluid would yield
predictable results. Also, we are unpersuaded by Appellants’ argument that
Arthur’s silence regarding RF heating indicates that Arthur considered and
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rejected the use of RF heating, such that Arthur teaches away from using RF
heating. Appeal Br. 8—9.
Further, the Declaration by Mark Alan Trautman fails to persuade us
that the Examiner errs in determining that claim 1 is obvious. Appeal Br. 8—
13; see also DECLARATION OF MARK ALAN TRAUTMAN, dated
Oct. 9, 2014. In the Declaration, Appellants compare the claimed method to
a “conventional” method of recovering hydrocarbon resources with steam
assisted gravity drain (“SAGD”), for example, in an attempt to establish that
the results provided by the claimed method are “unpredictable” (i.e.,
unexpected). See Decl. H 16—22. However, a persuasive showing of
unexpected results would require a comparison of Appellants’ method to the
closest prior art, whether that is Arthur’s method or some other known
method. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991) (“The burden of showing unexpected results rests on the person
who asserts them by establishing that the difference between the claimed
invention and the closest prior art was an unexpected difference.”).
Notably, Arthur discloses “ [mathematical model results”
demonstrating that its method has “significant advantage over the
comparable process involving no infill wells.” Arthur, col. 7,11. 32—34.
Specifically, for example, Arthur discloses that when its method is utilized,
“recovery efficiency increases to 58% at a comparable or slightly reduced
cumulative steam oil ratio of 1.5.” Arthur, col. 7,11. 41—43. Thus, Arthur
itself appears to describe its method as an improvement to and more
effective than conventional methods that omit infill wells. Conversely,
Appellants’ Specification (see, e.g., Spec. 14—16) and Declaration (see, e.g.,
Decl. H16—22), as well as Appellants’ arguments in the Appeal Brief (see
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Appeal Br. 12—14) and Reply Brief (Reply Br. 2—3), refer generally to
“conventional SAGD” and “prior art recovery techniques,” and there is no
indication that such conventional and prior art techniques used for
comparison include infill wells. Thus, Appellants do not establish that any
results in the Declaration are unexpected vis-a-vis the closest prior art.
Finally, we do not agree with Appellants that “a person skilled in the
art would be [led] to recognize that RF as in Supemaw . . . was considered
and dismissed by Arthur .... Such evidence is supported by the Rule 132
Declaration.” Appeal Br. 9. Rather, we determine that the Declaration does
not discuss anything related to Arthur’s dismissal of the use of an RF
antenna.
Thus, based on the foregoing, we are not persuaded by Appellants’
arguments of any error in the Examiner’s rejection of the claims. Inasmuch
as Appellants argue all of the claims together, we sustain the obviousness
rejection of claims 1,3, 6—10, 12, 13, 15—18, 20, and 21.
DECISION
We AFFIRM the Examiner’s obviousness rejection of claims 1,3,6—
10, 12, 13, 15-18, 20, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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