13567799 (P.T.A.B. Nov. 7, 2017)

Ex Parte Vinegar et al

Patent Trial and Appeal BoardNov 7, 2017

13567799 (P.T.A.B. Nov. 7, 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. 13/567,799 08/06/2012 Harold J. Vinegar TH2558-US-CNT 1023 23632 7590 11/09/2017 SHF! T OH miUPANY EXAMINER P 0 BOX 576 PAIK, SANG YEOP HOUSTON, TX 77001-0576 ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 11/09/2017 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): USPatents@Shell.com Shelldocketing@cpaglobal.com shellusdocketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAROLD J. VINEGAR, CHESTER LEDLIE SANDBERG, CHRISTOPHER KELVIN HARRIS, JAIME SANTOS SON, JAMES LOUIS MENOTTI, and FREDRICK GORDON CARL JR. Appeal 2016-003916 Application 13/567,799 Technology Center 3700 Before: MICHAEL L. HOELTER, GORDON D. KINDER, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 155, 156, 158—163, 165—167, and 169—187. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-003916 Application 13/567,799 CLAIMED SUBJECT MATTER The claims are directed to a method of heating a hydrocarbon containing formation. Sole independent claim 155 is reproduced below: 155. A method for treating a hydrocarbon containing formation, comprising: providing heat from one or more heaters to at least a portion of the formation, wherein at least one of the heaters is in at least one of one or more well bores in the formation; allowing thermal expansion of a portion of the formation into the well bore towards the heater; controlling the heat provided from one or more of the heaters to maintain a minimum space between at least one of the heaters and the thermal expansion portion of the formation in the wellbore after thermal expansion of the thermal expansion portion into the wellbore towards the heater, wherein maintaining the minimum space inhibits substantial deformation of one or more of the heaters caused by thermal expansion of the thermal expansion portion against such one or more heaters; allowing the heat to transfer from the one or more heaters to a part of the formation; and producing a mixture from the formation. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Somers US 2,208,087 July 16, 1940 Gemer US 3,010,513 Nov. 28, 1961 Ortloff US 3,220,479 Nov. 30, 1965 Hollingsworth US 4,274,487 June 23, 1981 Bouck US 4,415,034 Nov. 15, 1983 Bai US 7,219,734 B2 May 22, 2007 Wellington US 2002/0027001 A1 Mar. 7, 2002 2 Appeal 2016-003916 Application 13/567,799 REJECTIONS Claims 155, 156, 160, 161, 179, 180, 182, and 186 are rejected under 35 U.S.C. § 102(b) as being anticipated by, or alternatively under 35 U.S.C. § 103(a) as being obvious over Bouck. Claims 155, 156, 158—160, and 179—187 are rejected under 35 U.S.C. § 102(a) as being anticipated by Wellington. Claims 162, 163, and 165—167 are rejected under 35 U.S.C. § 103(a) as being obvious over Bouck and Wellington. Claims 169—172 are rejected under 35 U.S.C. § 103(a) as being obvious over Bouck or Wellington and Gemer or Hollingsworth. Claims 173—178 are rejected under 35 U.S.C. § 103(a) as being obvious over Bouck or Wellington and Ortloff or Somers. Claims 155, 156, 158-163, 165-167, 169-172, and 179-187 are rejected under nonstatutory obviousness-type double patenting over claims 1-71 of Bai. Claims 173—178 are rejected under nonstatutory obviousness-type double patenting over claims 1—71 of Bai and Ortloff or Somers. OPINION Bouck The Examiner finds that independent claim 155 is anticipated by or obvious in view of Bouck. Final Act. 2—3. This includes the finding that “thermal expansion occurs [in Bouck] and such expansion inherently expands into the wellbore toward the heat[er] or would predictably expand into the wellbore toward the heater.” Id. at 3. 3 Appeal 2016-003916 Application 13/567,799 Appellants contest the finding of inherency, arguing that “Bouck only describes ‘thermal cracking’ in the formation” and that the figures “do not depict any thermal expansion of any portion of the formation into the wellbore towards the heater.” Br. 8—9; see also id. at 10-11. However, Appellants’ argument does not identify error in the Examiner’s finding of inherency as it focuses on what is expressly taught by Bouck, and not on what is inherent in Bouck. Presumably, the Examiner agrees with Appellants that Bouck does not expressly describe thermal expansion into the wellbore which is why the Examiner relies on inherency. Further, Appellants’ reliance on Bouck’s figures does not support Appellants’ position. It is clear that the figures are merely schematic, as comparing Figure I with Figure II it can be seen that there is no change in the shape of the wellbore even though Figure II represents an uncased wellbore of tar sand after 1 to 12 months of heating of the wellbore of Figure I during which time, water in the tar sand is vaporized and coke is produced as a result of thermal cracking. Bouck col. 3:11—14, 4:22—62, Figs. I—II. Appellants also argue: One of ordinary skill in the art would recognize that thermal cracking does not inherently predict thermal expansion of a formation into a wellbore as it is possible for hydrocarbons to thermally crack without causing expansion of the formation into the wellbore (e.g., if there is sufficient void space in the formation to accommodate the products of thermal cracking). Br. 8-9. In this argument there appears to be an implicit acknowledgement that if there is insufficient void space in the formation, there will be thermal expansion of the formation into the wellbore. Further, though Appellants argue over “thermal expansion of a formation into a wellbore,” claim 155 4 Appeal 2016-003916 Application 13/567,799 merely requires “thermal expansion of a portion of the formation into the well bore towards the heater.” Thus, Appellants’ argument is not commensurate with the scope of the claims. For all of these reasons we are not informed of error in the Examiner’s rejection of the claims over Bouck. Wellington Similar to Bouck, the Examiner finds that Wellington also anticipates claim 155 relying again on inherency for the “thermal expansion of a portion of the formation into the well bore towards the heater” required by the claim. Final Act. 3—5. Appellants repeat the same arguments discussed above, though modified to address Wellington. Compare Br. 14—18, with id. at 8—12. Appellants discuss the teachings of Wellington and the schematic figures arguing that Wellington does not expressly teach thermal expansion into the wellbore. Id. at 14—16. These arguments do not identify error in the Examiner’s finding of inherency for similar reasons as discussed above. In particular, what is expressly taught by Wellington does not address what is inherent in Wellington. Further, Appellants’ reliance on Wellington’s figures does not support their position that any inherent thermal expansion would necessarily be shown in the figures as the figures are merely schematic or simplified representations of a wellbore. Id. at 16. Appellants also argue: one of ordinary skill in the art would recognize that pyrolysis of hydrocarbons does not inherently predict thermal expansion of a formation into a wellbore as it is possible for hydrocarbons to 5 Appeal 2016-003916 Application 13/567,799 pyrolyze without causing expansion of the formation into the wellbore (e.g., if there is sufficient void space in the formation to accommodate the products of pyrolysis). Br. 15. In this argument there appears to be an implicit acknowledgement that if there is insufficient void space in the formation, there will be thermal expansion of the formation into the wellbore. Further, though Appellants argue over “thermal expansion of a formation into a wellbore,” claim 155 merely requires “thermal expansion of a portion of the formation into the well bore towards the heater.” Thus, Appellants’ argument is not commensurate with the scope of the claims. For all of these reasons we are not informed of error in the Examiner’s rejection of the claims over Wellington. Dependent Claims Appellants also argue that the dependent claims are allowable over the cited references based on the features of these claims. Br. 12—13, 18—26. Merely reciting the language of a claim and asserting that the cited prior art references do not disclose that limitation is insufficient. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). For all of these reasons we are not informed of error in the Examiner’s rejections of the dependent claims over different combinations of Bouck, Wellington, Hollingsworth, Gemer, Ortloff, and/or Somers. 6 Appeal 2016-003916 Application 13/567,799 Double Patenting Appellants do not contest the rejections of the claims on the grounds of double patenting. Br. 26. For this reason, the rejections of the claims under nonstatutory obviousness-type double patenting are summarily affirmed. DECISION The Examiner’s rejections of claims 155, 156, 158—163, 165—167, and 169—187 are affirmed. 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 7