Ex Parte Ubbels et al

Board of Patent Appeals and Interferences

Jun 15, 2009

10944288 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SEN J. UBBELS, PETRUS JOHANNES VENTER, and
VAUGHN M. NACE
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Appeal 2009-000183
Application 10/944,288
Technology Center 1700
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Decided:1 June 15, 2009
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Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000183
Application 10/944,288

Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-35, 38-67, 69-75, 77-84, and 86-88. We have jurisdiction under
35 U.S.C. § 6.2
Appellants’ invention relates to a method for inhibiting interaction
between cations in water and organic acids in a mixture of water and oil.
The Specification discloses the method is suitable for inhibiting the
formation of naphthenate precipitates or naphthenate-stabilized emulsions
during contact between crude oil containing naphthenic acid and water
containing cations. (Spec. 1). Claim 1 is illustrative:
1. A method comprising:
supplying at least one surface active compound into a mixture of
divalent cation containing water and organic acid-containing oil
at a dosage rate that is effective to self-associate at interfaces
between the water and oil and inhibit formation of divalent cation
salts of the organic acid.

The Examiner rejected the claims on appeal as follows: 3

2 In rendering this decision we have considered the Appellants’ arguments
presented in the Appeal Brief dated January 7, 2008.
3 Appellants dispute the Examiner’s objection identifying claims 3, 14, 16,
and 58 as being in improper dependent form under 37 CFR §1.75(c). The
Examiner maintains that the issue is be handled by way of petition under
37 CFR §1.181 rather than by appeal. Appellants have not filed a reply
brief responding to the Examiner’s position. Therefore, Appellants have
not convinced us that the Examiner’s determination that the issue is not
appealable is in error.
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Appeal 2009-000183
Application 10/944,288

Claims 1-35, 38-67, 69-75, 77-84, and 86-88 stand rejected under 35
U.S.C. § 112, second paragraph, as indefinite.
Claims 1-9, 15-22, 24-35, 38-48, 54-59, 71-75, 77-84, 86 and 87
stand rejected under 35 U.S.C. § 102(b) as anticipated by Gardner (US.
5,008,026, issued April 16, 1991).
Claims 10-14, 23, 49-53, 60-67, 69, 70, and 88 stand rejected under
35 U.S.C. §103(a) as unpatentable over Gardner combined with Askestad
(U.S. 5,482,484, issued January 9, 1996).
The §112, second paragraph rejection
The issue presented is: Has the Examiner established that the
subject matter of claims 1-35, 38-67, 69-75, 77-84, and 86-88 does not
meet the requirements of 35 U.S.C. § 112, second paragraph? We answer
this question in the negative.
The Examiner contends that the claimed subject matter is indefinite
in scope because “[t]he metes and bounds of claims are indefinite since the
compounds and the organic acid are both generically defined.” (Ans.
4). The Examiner also asserts that the subject matter of claim 58 is unclear
and claim 56 lacks proper antecedent basis
“The legal standard for definiteness [under the second paragraph of
35 U.S.C. § 112] is whether a claim reasonably apprises those of skill in
the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir.
1994). The inquiry is to determine whether the claim sets out and
circumscribes a particular area with a reasonable degree of precision and
particularity. The definiteness of the language employed in a claim must
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Application 10/944,288

be analyzed not in a vacuum, but in light of the teachings of the particular
application. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
After consideration of the present record, we determine that a person
of ordinary skill in the art would have realized that the claim affirmatively
requires a step of supplying at least one surface active compound into a
mixture of the divalent cation containing water and organic acid containing
oil. The Examiner has not adequately explained why a person of ordinary
skill in the art, after considering the present record, would not have
understood what compounds are encompassed by “surface active
compound” and “organic acid containing oil.”
The Examiner considers the subject matter of claim 56 indefinite
because there is no antecedent basis for “naphthenate salts.” We do not
agree. It is the object of the claimed invention to add an effective amount
of surface active compound to react with any formation of naphthenate
salts. (See claim 3).
The Examiner's rejection of claim 58 appears to be based upon the
breath of the term “compound” utilized in claim 1 and how this compound
forms a mixed interface. (Ans. 12). We cannot affirm the Examiner's
rejection because the Examiner's objection to the claim has not been
adequately explained.
For the reasons set forth above the Examiner's rejection of the
claimed subject matter under § 112, second paragraph is reversed.
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Appeal 2009-000183
Application 10/944,288

The Prior Art Rejections.
We now turn to the prior art rejections. Claims 1-35, 38-67, 69-75,
77-84, and 86-88 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Gardner; and claims 14, 23, 49-53, 60-67, 69, 70, and 88 further stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Gardner combined
with Askestad
The issue before us is whether Appellants has shown that the
Examiner reversibly erred in rejecting the claims under 35 U.S.C. §§
102(b) and 103(a). We answer this question in the affirmative. Therefore,
WE REVERSE.4 The issue turns on whether Gardner describes or
suggests adding an inhibitor composition to a mixture of water and oil.
The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that “each and every element
as set forth in the claim is found, either expressly or inherently described,
in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999).
We initially begin by discussing the field of the invention. The
Specification states “[t]he present invention relates to methods and
compositions for inhibiting the formation of naphthenate precipitates or
naphthenate-stabilized emulsions during contact between crude oil
containing naphthenic acid and water containing cations.” (Spec. [0001]).

4 We select independent claim 1 as representative of the rejected subject
matter.
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Application 10/944,288

Thus, the claimed invention is directed towards methods of treating oil and
water mixtures.
The Examiner contends that “Gardner et al. (abstract and claims)
discloses concentrates in microemulsion form that include acid and an
emulsifying agent.” (Ans. 5).
We agree with Appellants that it is unclear how the Examiner is
applying the teachings of Gardner to the subject matter of appealed
claim 1. (App. Br. 14-15). Gardner discloses the objective of the
invention is to provide improved well treatment compositions and methods
of treating subterranean formations with the same. Gardner discloses
“[t]he inventive compositions and method are particularly effective for use
in naturally tight or damaged formations and in applications where the
amount of pressure normally required to force the treatment fluid deep into
the formation or to initiate a fracture cannot be employed.” (Gardner, col.
1, l. 67 - col. 2, l. 4).
The Examiner's discussion, Answer 5-6, appears to suggest that the
combination of the concentrate employed with the treatment fluid is the
same as the claimed addition of a surface active compound into a mixture
of divalent cation containing water and organic acid-containing oil as
required by the claimed invention. However, as pointed out by Appellants
(App. Br. 15) the well treatment fluid is not a mixture of water and oil.
(Also see Gardner, col., 2, ll. 25-34).
The Examiner has not pointed to evidence that the treated formation
of Gardner necessarily includes a mixture of water and oil. Inherency
cannot be established by probabilities or possibilities. See In re Oelrich,
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666 F.2d 578, 581 (CCPA 1981). As stated in In re Rijckaert, 9 F.3d 1531,
1534 (Fed. Cir. 1993) (quoting from In re Oelrich, 666 F.2d at 581), “[t]he
mere fact that a certain thing may result from a given set of circumstances
is not sufficient [to establish inherency]” (emphasis in original). Under
these circumstance, we cannot conclude that the Examiner has met the
minimum threshold of establishing inherency under 35 U.S.C. § 102 or
obviousness under 35 U.S.C. § 103. Therefore, the rejections of claims 1-
35, 38-67, 69-75, 77-84, and 86-88 under § 102 and § 103 are reversed.5
ORDER
The decision of the Examiner rejecting claims 1-35, 38-67, 69-75,
77-84, and 86-88 under 35 U.S.C. § 112, second paragraph, is reversed
The decision of the Examiner rejecting claims 1-35, 38-67, 69-75,
77-84, and 86-88 under 35 U.S.C. § 102(b), is reversed.
The decision of the Examiner rejecting claims 14, 23, 49-53, 60-67,
69, 70, and 88 U.S.C. § 103(a) is reversed.

REVERSED

tc

STREETS & STEELE
13831 NORTHWEST FREEWAY

5 The Examiner relied on Askestad to address the specific limitations
of these dependent claims rejected under § 103(a). The Examiner did not
rely on this reference for describing a formation comprising a mixture of
water and oil. Thus, a combination of Gardner with Askestad does not
address the distinction between the claimed invention and the invention of
Gardner discussed above. Therefore, we reverse this rejection.

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SUITE 355
HOUSTON, TX 77040

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