Ex Parte Willberg et al

Patent Trial and Appeal Board

Mar 27, 2017

12808128 (P.T.A.B. Mar. 27, 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.
500.63019010 1905
EXAMINER
DITRANI, ANGELA M
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
12/808,128 06/14/2010
26813 7590 03/27/2017
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
Dean Michael Willberg
03/27/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN MICHAEL WILLBERG,
JAMES G. CARLSON, IGNATIUS A. KADOMA,
YONG K. WU, and MICHAEL D. CRANDALL
Appeal 2015-005997
Application 12/808,128
Technology Center 3600
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 5, 7, 9, 11, 13, 15—19, 24, 33, 38, 51, 57, 59, 62, 64,
69, 71, 73, and 75. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-005997
Application 12/808,128
CLAIMED SUBJECT MATTER
The claims are directed to methods of contacting and/or treating a
subterranean formation. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of contacting a subterranean formation
comprising:
injecting into a well-bore intersecting the subterranean
formation a fluid composition comprising a first component and
a second component dispersed in a carrier fluid, wherein at least
a portion of the first component and at least a portion of the
second component are provided in multi-component core sheath
fibers;
after injecting, forming a network comprising the first
component; and
binding the network with the second component;
wherein the network is in the form of netting that allows
oil, gas, or other fluids to pass through relative to particulate
matter.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Nguyen
Bustos
US 5,501,274 Mar. 26, 1996
US 2008/0196896 A1 Aug. 21,2008
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Application 12/808,128
REJECTION1
Claims 1,5,2 7, 9, 11, 13, 15-19, 24, 33,38,51,57, 59, 62, 64, 69,71,
73, and 75 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Nguyen and Bustos.
OPINION
Appellants argue the claims under appeal as a group. Br. 7—14. We
take claim 1 as representative, and the remaining claims under appeal stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Nguyen discloses most of the limitations of
claim 1, including a multicomponent article, but that Nguyen does not
disclose that the multicomponent article is a “multicomponent core sheath
fiber as claimed.” Final. Act. 3^4. Nonetheless, the Examiner finds that
Bustos teaches multicomponent core sheath fibers in a downhole
environment. Id. at 4. The Examiner concludes that it would have been
obvious to try “a multicomponent core sheath fiber comprising thermoplastic
polyolefin as taught by Bustos [] in order to yield the predictable result of
providing for a multicomponent fiber capable of imparting varying
properties of adhesiveness and agglomeration therewith downhole.” Id. at
A-5.
Appellants argue that the Examiner improperly applied the “obvious
to try” analysis, because “the Examiner failed to demonstrate that ‘the
1 Rejections of claims 7, 9, and 11 under 35 U.S.C. § 112, second
paragraph, (see Final Act. 2—3) are withdrawn in the Answer. Ans. 2.
2 Although the Examiner includes claim 6 in the listing of claims, we
understand this to be an inadvertent typographical error in that claim 6 is
canceled. See Br. (Claims App.).
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Application 12/808,128
possible approaches and selection to solve the problem’ were ‘known and
finite,’ or that the outcome of the combination of Nguyen et al. and Bustos et
al. was predictable.” Br. 10 (citing, Rolls-Royce, PLC v. United Techs.
Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010). Appellants assert that because
Bustos forms a plug that prevents the flow of fluids, and Nguyen forms a
network that prevents the flowback of particulates (but permits the flow of
fluids) a skilled artisan would likely be discouraged from using fibers that
form a plug and prevent fluid production. See Br. 11. Appellants argue that,
moreover, because the art discloses a broad selection of thermoplastic
materials and a broad selection of multicomponent articles, “[t]he
Examiner’s focus on polyolefins and fibers is, therefore, reflective of
hindsight bias rather than any reason that would have guided the skilled
artisan to the Examiner’s proposed combination of Nguyen et al. and Bustos
et al.” Br. 13.
The Examiner responds that fibers, flakes, or ribbons are used “as
alternative materials capable of achieving the same purpose, controlling
particulate flowback within the formation upon flow of fluids, thus acting as
a netting.” Ans. 3 (citing Weaver (US 6,047,772, iss. Apr. 11, 2000)); see
also Final Act. 15—16. The Examiner takes the position that “given the
disclosure of Nguyen et al., wherein it is disclosed to use multicomponent
ribbons, flakes, or the like, it would have been obvious to one having
ordinary skill in the art to look to a known alternative to ribbons and flakes
in the art, i.e., fibers.” Ans. 4. The Examiner finds:
the replacement of the multicomponent ribbons and/or flakes of
Nguyen et al. with the multicomponent polyolefin containing
fiber of Bustos et al., would provide for a network as claimed
insofar as because both the multicomponent articles of Nguyen
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Application 12/808,128
et al. and Bustos et al. can be used to adhere to migrating
formation particulates, and it is well established in the art that
fibers are known alternatives to ribbons and flakes in methods of
particulate flowback control.
Ans. 7.
We have considered all of Appellants’ arguments against the rejection
of claim 1 as unpatentable over Nguyen and Bustos, but we find the
Examiner to have the better position. Nguyen and the claimed invention are
both directed to control of particulate flowback in subterranean wells. See
Spec, paras. 8 and 10; Nguyen, col. 2,11. 46—50. Nguyen provides a
“thermoplastic material [that] may be utilized in substantially any physical
form, such as for example, ground material, ribbons, flakes and the like”
(Nguyen, col. 3,11. 49—53), whereas the components required by the method
recited in claim 1 are provided in multi-component core sheath fibers.
Although we appreciate that Weaver also lists beads, shavings, and platelets,
the number of items in the list provided by Weaver and teaching that fibers,
flakes, and ribbons are alternatives is small (Weaver, col. 4,11. 9-13), and
each of these materials predictably is used to control particulate flow back.
Thus, there is a reasonable expectation that each of these materials would
perform in a similar manner, and, therefore, it would have been obvious to
try any of these materials.
The Examiner relies on Bustos as teaching that specific fibers, i.e.,
“multicomponent” fibers, may be engineered to have multiple beneficial
properties, including adhesive qualities, and are used in wellbores. Bustos,
para. 69 and 70; Final Act. 4. Thus, Bustos gives a person of ordinary skill
in the art a clear indication that a component of a multicomponent fiber can
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Application 12/808,128
be selected for its adhesive qualities, as the Examiner found, and as desired
by Nguyen. See Nguyen, col. 4,11. 41—65; see also Ans. 4.
Moreover, we agree with the Examiner that Nguyen specifically
teaches polyolefins as thermoplastic materials with adhesive/agglomerating
properties and that Bustos lists polyolefins with polyester and polyamide as
thermoplastics that are chosen for their adhesive qualities. See Ans. 3; see
also Nguyen, col. 3,11. 40-49; col. 4,11. 45—65 and Bustos, para. 69. As
such, since both references teach polyolefins as improving adhesive
qualities, we agree with the Examiner that one having ordinary skill in the
art would employ a polyolefin multicomponent article comprising a
multicomponent fiber, as taught by Bustos, in the method of Nguyen, “in
order to provide a multicomponent article having desired adhesive qualities,
thereby imparting varying and/or desired properties of adhesiveness and
agglomeration within the particulate pack of Nguyen et al.” Ans. 4.
Although, as noted by Appellants, Bustos uses multicomponent
polyolefin fibers to form fiber-based plugs (see Bustos, para. 69; see also Br.
11), a “fiber-based plug” has bridging characteristics (see Bustos, para. 33),
and, Bustos discloses that bridge plugs include the bridge plug of “the ‘flow-
thru’ type that acts like a check valve providing positive hydraulic isolation
when fluids are injected in a downward direction, but allows fluid passage
therethrough in an upwards direction when fluids are produced from the
formation.” Bustos, para. 6. As such, the fiber-based plug of Bustos can be
a flow-thru plug that allows flow of fluids. Thus, Appellants’ assertion that
“a skilled artisan reading [Bustos] would likely be discouraged from using
fibers that form a plug and prevent fluid production” (Br. 11) is unavailing.
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Therefore, we agree with the Examiner that multicomponent fibers
would have been obvious to try because “one having ordinary skill in the art
[would] look to a known alternative to ribbons and flakes in the art, i.e.,
fibers” to achieve the same purpose. Ans. 5. “When there is a design need
or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.” KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Since ribbons, flakes, and
fibers are usable in downhole wellbores, a preponderance of the evidence
supports a position that multicomponent core sheath fibers would function in
a similar manner as the multicomponent ribbons and flakes of Nguyen. “If
[pursuing known options] leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense.” See id.
at 421. As such, selection of fibers as a known option, even polyolefin
fibers, is not “reflective of hindsight bias” as Appellants assert. Br. 13.
For these reasons, we affirm the rejection under 35 U.S.C. § 103(a) of
claims 1,5,7, 9, 11, 13, 15-19, 24, 33,38,51,57, 59, 62, 64, 69, 71, 73, and
75 as unpatentable over Nguyen and Bustos.
DECISION
The Examiner’s rejection of claims 1, 5, 7, 9, 11, 13, 15—19, 24, 33,
38, 51, 57, 59, 62, 64, 69, 71, 73, and 75 is 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).
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Appeal 2015-005997
Application 12/808,128
AFFIRMED
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