Ex Parte Vinegar et al

Board of Patent Appeals and Interferences

Jan 6, 2012

11112881 (B.P.A.I. Jan. 6, 2012)

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.
11/112,881 04/22/2005 Harold J. Vinegar 5659-29200 TH2887 5336
23632 7590 01/06/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
01/06/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte HAROLD J. VINEGAR,
CHRISTOPHER KELVIN HARRIS and
CHESTER LEDLIE SANDBERG,
________________

Appeal 2010-001021
Application 11/112,881
Technology Center 3700
________________

Before LINDA E. HORNER, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 2010-001021
Application No. 11/112,881

2
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 1
rejection of claims 543, 545-62, 564-89 and 591. Claims 1-542, 544, 563 2
and 590 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 3
The Examiner finally rejects claims 543, 545-62, 564-89 and 591 4
under 35 U.S.C. § 103(a) as unpatentable over Eastlund (US 4,716,960, 5
issued Jan. 5, 1988); either Van Egmond (US 5,065,818, issued Nov. 19, 6
1991) or Bell (US 4,382,469, iss. May 10, 1983); and either Carter (US 7
4,814,587, issued Mar. 21, 1989) or Rose (EP 0 130 671 A2, pub. Jan. 9, 8
1985). 9
The Examiner provisionally rejects claims 543, 545-62, 564-89 and 10
591 for non-statutory obviousness-type double patenting as unpatentable 11
over all claims of Sandberg '700 (US Appl’n 10/693,700, filed Oct. 24, 12
2003, pub. Jan. 13, 2005 as US 2005/0006097 A1), Sandberg ‘816 13
(US Appl’n 10/693,816, filed Oct. 24, 2003, pub. Jul. 29, 2004 as US 2004-14
0146288 A1), Sandberg '820 (US Appl’n 10/693,820, filed Oct. 24, 2003, 15
pub. Jul. 29, 2004 as US 2004/0144540 A1) and Sandberg '840 (US Appl’n 16
10/693,840, filed Oct. 24, 2003, pub. Jul. 22, 2004 as US 2004/0140096 17
A1),1 in view of Eastlund and Carter. 18
We REVERSE the final rejections of claims 543, 545- 62, 564-89 and 19
591. We do not reach the provisional rejection of these claims. 20

1 The Examiner’s statement of the rejection on page 6 of the Answer
provisionally rejects claims 543, 545-62, 564-89 and 591 as unpatentable
only over the claims of Sandberg '700, Sandberg ‘816 and Sandberg '820, in
view of Eastlund and Carter. Nevertheless, since the Examiner mentions
Sandberg '840 in the explanation of the grounds of rejection, we include the
claims of Sandberg '840 in the grounds of rejection.
Appeal No. 2010-001021
Application No. 11/112,881

3
Claims 543, 562 and 582 are independent. Claim 543 recites: 1
543. A heater configured to heat a hydrocarbon containing 2
formation, comprising: 3
a ferromagnetic member; 4
an electrical conductor electrically coupled to the 5
ferromagnetic member, the electrical conductor configured to 6
conduct a majority of time-varying electrical current passing 7
through the heater at about 25°C; 8
wherein the heater is configured to provide a first heat 9
output below the Curie temperature of the ferromagnetic 10
member, and the heater is configured to automatically provide a 11
second heat output approximately at and above the Curie 12
temperature of the ferromagnetic member, the second heat 13
output being reduced compared to the first heat output; 14
wherein the electrical conductor provides a majority of 15
the mechanical strength to support the heater at or near the 16
Curie temperature of the ferromagnetic member; 17
wherein the heater is configured to allow heat to transfer 18
from the heater to a hydrocarbon containing layer in the 19
formation such that heat transfers from the heater to 20
hydrocarbons in the hydrocarbon containing layer to at least 21
mobilize some hydrocarbons in the layer; and 22
wherein the heater is located in a heater well extending 23
from a surface of the earth through an overburden of the 24
formation and into the hydrocarbon containing layer in the 25
formation. 26
Claim 543 and 562 each recite a heater located in a heater well 27
extending from a surface of the earth through an overburden of a formation 28
and into a hydrocarbon containing layer in the formation. The heater is 29
“configured to allow heat to transfer from the heater to a hydrocarbon 30
containing layer in the formation such that heat transfers from the heater to 31
hydrocarbons in the hydrocarbon containing layer to at least mobilize some 32
Appeal No. 2010-001021
Application No. 11/112,881

4
hydrocarbons in the layer.” The latter recitation limits the system to one 1
including an electrical conductor which not only heats hydrocarbons which 2
originated in the hydrocarbon containing formation, but also heats the 3
hydrocarbons while the hydrocarbons are in the formation. This 4
interpretation is consistent with the disclosure of the Specification. 5
An interpretation of the recitation broad enough to encompass heating 6
hydrocarbons which originated in the hydrocarbon containing formation 7
only while the hydrocarbons are outside the formation would be inconsistent 8
with the preamble of each of claims 543 and 562, that is, with a heater 9
“configured to heat a hydrocarbon containing formation.” Such an 10
interpretation also would be inconsistent with the recitation that the heating 11
is “to at least mobilize some hydrocarbons in the layer.” (Cf. App. Br. 9 12
(arguing that “Eastlund only teaches the heating of fluids that have already 13
been mobilized and have moved into the well tubing through perforations 12 14
(Figure 1) or perforations 113 (Figure 7A).”).) 15
Claim 582 recites a method of heating a hydrocarbon containing 16
formation. The method includes “allowing heat to transfer from the heater 17
section to hydrocarbons in a hydrocarbon containing layer in the formation 18
to at least mobilize some hydrocarbons in the layer.” For reasons similar to 19
those discussed in the last paragraph of this opinion infra, this step is limited 20
to allowing heat to transfer from the electrical conductors to hydrocarbons 21
while the hydrocarbons are in the hydrocarbon containing layer. 22
Eastlund describes a well having an upper tubing section 13a and a 23
lower tubing section 13b suspended in a casing 10. (Eastlund, col. 3, ll. 20-24
24.) A lead 19 electrically connects a power source with the lower tubing 25
section 13b. (Eastlund, col. 3, ll. 64-68.) Another lead 21 electrically 26
Appeal No. 2010-001021
Application No. 11/112,881

5
connects the power source with a wellhead. (Eastlund, col. 4, ll. 6-7.) The 1
casing 10 is secured to the wellhead. (Eastlund, col. 3, ll. 13-15.) A 2
“scratcher” 17 electrically connects the lower tubing section 13b and the 3
casing 10 to complete an electrical circuit at and above the scratcher 17. 4
(Eastlund, col. 3, ll. 55-63.) 5
Eastlund teaches using an electrical circuit to heat the tubing to 6
prevent solids such as paraffin from depositing within the tubing. (Eastlund, 7
col. 4, ll. 22-25). Eastlund teaches connecting the casing 10 and the lower 8
tubular section 13b below the normal level of solids formation in the tubing. 9
(Eastlund, col. 3, ll. 40-54.) Nevertheless, Figure 1 of Eastlund implies that 10
the scratcher 17 defines the lowest extent of the electrical circuit 11
significantly above the hydrocarbon containing formation as indicated by the 12
casing perforations 12. (See Eastlund, col. 3, ll. 17-19.) The Examiner does 13
not provide a sound, non-conclusory basis for finding that the electrical 14
circuit is capable of heating hydrocarbons while in the hydrocarbon 15
containing formation. (See generally Ans. 3 and 6-9; see also App. Br. 8-16
10.) 17
Van Egmond describes a heater “particularly useful in enhanced 18
recovery of heavy oils from oil bearing strata, and in recovery of 19
hydrocarbons from oil shales.” (Van Egmond, col. 2, ll. 6-8.) The heater 20
includes heating cables 1, 2. (See Van Egmond, col. 3, ll. 35-37.) Figure 1 21
of Van Egmond depicts the cables 1, 2 as extending from the surface to heat 22
a subterranean zone 2 located below the overburden. (See Van Egmond, col. 23
3, ll. 32-34.) 24
Bell teaches a method for producing fuel gas from an underground 25
formation of carbonaceous material. The method includes contacting the 26
Appeal No. 2010-001021
Application No. 11/112,881

6
carbonaceous material with an aqueous electrolyte and passing a controlled 1
amount of direct current through the formation to produce the gas by electro-2
chemical action. (Bell, col. 2, l. 54 – col. 3, l. 2.) 3
The Examiner concludes that: 4
it would have been obvious . . . to adapt Eastlund with the 5
heater well that extends through an overburden formation and 6
into the hydrocarbon containing zones at least about 10 m or 7
more to effectively heat such hydrocarbon containing layer. 8
(Ans. 4.) Eastlund’s electrical circuit is designed to heat and mobilize 9
hydrocarbons within the tubing, however. Eastlund’s circuit is not designed 10
to heat and mobilize hydrocarbons in a hydrocarbon containing formation as 11
claimed. The adaptation that the Examiner proposes would require adapting 12
Eastlund’s circuit to address a problem for which the circuit was not 13
designed. Van Egmond and Bell describe different systems for addressing 14
different problems. The Examiner’s reasoning does not persuade us that the 15
teachings of either Van Egmond or Bell would have provided one of 16
ordinary skill in the art reason to try to adapt an electrical circuit such as that 17
described by Eastlund to heat hydrocarbons in a hydrocarbon containing 18
formation. (See App. Br. 11-12.) 19
The Examiner cites Carter for the teaching “to provide a heater 20
comprising a ferromagnetic member 2 surrounded by a high-resistance 21
electrical conductor 1 wherein due to the skin effect, high-resistance 22
conductor 1 generates a majority of the heat below the Curie temperature of 23
ferromagnetic member 2 (i.e., the ‘first’ heat output).” (Ans. 4; see Carter, 24
col. 4, ll. 41-47 and col. 5, ll. 31-55.) The Examiner cites Rose for the 25
teaching “to provide a heating element with an inner core made of copper 26
with an outer conductor made of a resistive ferromagnetic carbon steel 27
Appeal No. 2010-001021
Application No. 11/112,881

7
which allows the heating element to be self-regulating.” (Ans. 4; see Rose 1
9, ll. 1-18.) Neither Carter nor Rose appears to suggest use of the heating 2
element for heating hydrocarbons in a hydrocarbon containing formation. 3
Therefore, neither Carter nor Rose remedies the deficiencies in the combined 4
teachings of Eastlund with Van Egmond or Bell. We thus do not sustain the 5
rejection of claims 543, 545-62, 564-89 and 591 under § 103(a) as 6
unpatentable over Eastlund; either Van Egmond or Bell; and either Carter or 7
Rose. 8
The Examiner also provisionally rejects appealed claims 543, 545-62, 9
564-89 and 591 for non-statutory obviousness-type double patenting as 10
unpatentable over all claims of Sandberg '700, Sandberg '816, Sandberg '820 11
and Sandberg '840 in view of Eastlund and Carter. The Appellants do not 12
contest this rejection. Instead, the Appellants represent that they will 13
provide a terminal disclaimer once the application underlying this appeal is 14
in condition for allowance. (See App. Br. 22.) Based on this representation, 15
we do not reach the provisional rejection. 16
17
DECISION 18
We REVERSE the Examiner’s decision finally rejecting claims 543, 19
545-62, 564-89 and 591. 20
We do not reach the Examiner’s decision provisionally rejecting 21
claims 543, 545-62, 564-89 and 591. 22
23
REVERSED 24
25
Klh 26