Ex Parte Young et al

Patent Trial and Appeal Board

Sep 28, 2017

13877852 (P.T.A.B. Sep. 28, 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.
13/877,852 06/13/2013 Steve Young 18338/002002 9849
26722 7590 10/02/2017
OSH A T TANG/MT
EXAMINER
TWO HOUSTON CENTER SKAIST, AVI T.
909 FANNIN STREET, SUITE 3500
HOUSTON, TX 77010 ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
DOCKETING@OSHALIANG.COM
bergman @ oshaliang. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE YOUNG, JAMES FRIEDHEIM, ARVIND D. PATEL,
JAMES TOUR, and DMITRY KOSYNKIN1
Appeal 2016-003039
Application 13/877,852
Technology Center 3600
Before KEN B. BARRETT, JAMES P. CALVE, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Steve Young et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 1—13, 15, and 16.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellants, the real parties in interest in this appeal are
William Marsh Rice University and M-I LLC. Appeal Br. 4.
2 Claim 14 is withdrawn. Final Act. 2; Appeal Br. 5.
Appeal 2016-003039
Application 13/877,852
THE CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “methods for stabilizing
shales during drilling,” and more specifically, “methods of using wellbore
fluids that contain graphene-based materials.” Spec. 11. Claims 1,15, and
16 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. A method for stabilizing shales while drilling a wellbore into
an earthen formation, comprising:
circulating a wellbore fluid into the wellbore while drilling
through shales, wherein the wellbore fluid comprises:
a viscosifier; and
a graphene-based material selected from graphene,
graphene oxide, chemically converted graphene, and
derivatized graphite oxide, wherein the graphene-based material
is present in a sufficient weight percent to stabilize the shales.
Appeal Br. 23 (Claims App.).
THE EVIDENCE
The Examiner relied upon the following prior art references in
rejecting the claims on appeal:
Tour WO 2009/089391 A2 July 16,2009
Mi Swaco, Xanthum Gum product description (“Mi Swaco”)
THE REJECTION
Appellants seek review of the Examiner’s rejection of claims 1—13,
15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Tour and Mi
Swaco.
2
Appeal 2016-003039
Application 13/877,852
ANALYSIS
Appellants state that “[f]or purposes of this Appeal, claims 1—13 stand
or fall together and claims 15 and 16 stand or fall together.” Appeal Br. 7.
Appellants also state that “claim 1 is representative of the group including
claims 1—13, and 15 is representative of claims 15 and 16.” Id. Appellants’
arguments with respect to claim 15 rely upon the arguments made with
respect to claim 1. Id. at 20. Accordingly, our analysis of claim 1 will
dispose of all issues on appeal.
Claim 1 requires a wellbore fluid including “a viscosifier” and “a
graphene-based material.” Appeal Br. 13 (Claims App.); see also id. at 24
(claim 15 containing same limitations). The Examiner found that Tour
discloses a method of stabilizing shales using a wellbore fluid that contains a
graphene-based material, but does not expressly disclose including a
viscosifier in the wellbore fluid. Final Act. 2—3. The Examiner found that
Mi Swaco discloses use of a viscosifier in wellbore fluids and that it would
have been obvious “to consider employing a viscosifier in the drilling fluid
composition disclosed by Tour because the viscosifier acts to increase the
viscosity of the fluid.” Id. at 3. The Examiner also found that Tour
discloses the use of drilling fluid to prevent or reduce fluid loss, and adding
a viscosifier to the fluid “would certainly aid in preventing or reducing fluid
loss.” Advisory Action, 2 (mailed Mar. 20, 2015). The Examiner also relied
on a portion of the specification where Appellants “admit[] that ‘one skilled
in the art would recognize that in addition to graphene-based materials’—
which Tour discloses—‘other additives may be included . . . [such as]
viscosifiers.” Final Act. 3. The Examiner further found that “there appears
to be a lack of criticality for the limitation of including a viscosifier.” Id.
3
Appeal 2016-003039
Application 13/877,852
Finally, the Examiner found that Tour discloses stabilizing shales because it
reduces penetration of drilling fluids into rock formations and the
specification notes that the claimed combination—similar to the Tour/Mi
Swaco combination—stabilizes shales. Id. at 3^4; Ans. 4.
Appellants argue that Tour discloses “the use of graphene and similar
nanoplatelet additives” but “is silent with respect to the combination of a
graphene-based material and a viscosifier, or the ability of such a
combination to stabilize shales or reduce shale permeability.” Appeal Br.
8—9. Appellants also argue that while Mi Swaco may disclose Xanthan gum,
it “is silent with respect to the compatibility of Xanthan gum with graphene-
based materials or its ability to stabilize shales or reduce shale
permeability.” Id. at 9. Appellants contend that “Tour teaches away from
[a] combination of graphene with drilling additives such as viscosifiers that
would increase the size of a deposited filter cake, increasing drilling
equipment wear, and possibly increase formation damage.” Id. at 10—11.
According to Appellants, adding a viscosifier and increasing the thickness of
filter cakes “would be contrary to Tour’s stated ‘principle of operation’ to
produce ‘very thin filter cakes.’” Id. at 12. Appellants also argue that the
Examiner (1) inappropriately relied on Tour’s disclosure that its wellbore
fluid could be customized, id. at 12—13; (2) improperly found that the
proposed combination would stabilize the shales, id. at 13—14; and (3)
incorrectly implied that Appellants had a duty to show the criticality of the
viscosifier limitation, id. at 15—17. Finally, Appellants argue that
unexpected results achieved when combining a graphene-based material
with a viscosifier are “sufficient as secondary consideration to overcome a
prima facie case” of obviousness based on Tour and Mi Swaco. Id. at 17;
4
Appeal 2016-003039
Application 13/877,852
see also id. at 18—19 (relying on test results from examples in the
specification).
We are not persuaded that the Examiner erred in the rejection of claim
1. As an initial matter, we are not persuaded that the Examiner erred in
finding that the combination of Tour and Mi Swaco discloses all of the
limitations of claim 1. See Final Act. 2-4; Ans. 2-4; Tour 131 (disclosing
“drilling fluids including a graphene”); Mi Swaco, 1 (disclosing viscosifier
Xanthan gum). Appellants argue that the combination does not disclose
stabilizing shales, but claim 1 merely requires a “graphene-based material is
present in a sufficient weight percent to stabilize the shales.” Appeal Br. 23
(Claims App.); Appeal Br. 13—14. The Examiner found that Tour discloses
this limitation, and Appellants do not directly contest that finding. See Final
Act. 3; Ans. 4; Appeal Br. 14. Appellants speculate that the addition of a
viscosifier to Tour “could” create “an interaction . . . that impedes the ability
of the graphene-based material to reduce the stability or permeability of the
formation,” but Appellants fail to direct our attention to any persuasive
evidence in the record to support this argument. See Appeal Br. 14.
Appellants’ arguments fail to persuade us that the Examiner erred in finding
that Tour, whether alone or when combined with Mi Swaco, discloses
stabilizing shales. See Final Act. 3; Ans. 4.
Regarding the proposed combination, Appellants’ focus on what each
of Tour and Mi Swaco do not disclose, in isolation, fails to address the
Examiner’s proposed combination. See Appeal Br. 8—9; In re Keller, 642
F.2d 413, 426 (CCPA 1981) (“[0]ne cannot show non-obviousness by
attacking references individually where ... the rejections are based on
combinations of references.”). Importantly, Appellants do not convincingly
5
Appeal 2016-003039
Application 13/877,852
undermine the Examiner’s stated rationale for combining Tour’s graphene-
based material with Mi Swaco’s viscosifier—to aid in preventing or
reducing fluid loss. Adv. Act. 2. Instead, Appellants argue that Tour
teaches away from the use of viscosifiers. Appeal Br. 10-12. “[A]
reference will teach away if it suggests that the line of development flowing
from the reference’s disclosure is unlikely to be productive of the result
sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994).
Tour never mentions viscosifiers, and therefore does not expressly teach
away from their inclusion in drilling fluids. Appellants allege that Tour
mentions additives that will cause problems such as increasing the size of
filter cakes, but Appellants do not point to any evidence linking those
additives to viscosifiers, or establishing that viscosifiers would create
unreasonably thick filter cakes. See Appeal Br. 11—12. This attorney
argument does not establish teaching away.
Further, even if adding a viscosifier included a disadvantage such as
increasing the thickness of filter cakes as Appellants allege, one or ordinary
skill in the art may weigh that disadvantage with the advantages of the
combination, such as the advantage cited by the Examiner, and make the
proposed combination. Winner Int 7 Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
expense of another benefit... should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
Appellants have not persuaded us that whatever disadvantages viscosifiers
may introduce outweigh their potential benefits.
6
Appeal 2016-003039
Application 13/877,852
Finally, Appellants’ unexpected results argument does not persuade us
that secondary considerations support a finding of nonobviousness here. A
showing of “unexpected results” is a showing that “the claimed invention
exhibits some superior property or advantage that a person of ordinary skill
in the relevant art would have found surprising or unexpected. In re Soni, 54
F.3d 746, 750 (Fed. Cir. 1995). “[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). Appellants’ argument merely cites to successful
results based on testing disclosed in the specification. See Appeal Br.
18—19; Spec. H 66—68. While those results may have been successful,
nothing in Appellants’ argument or the cited portions of the specification
establish that the success was unexpected when compared to the closest prior
art. See id. Instead, the specification suggests that results achieved by
adding the graphene-based material alone, not the combination of graphene-
based material with a viscosifier, were unexpected.3 Tour already discloses
the use of a graphene-based material, undermining any unexpected results
that stem from its use. Based on the foregoing, we are not persuaded that
Appellants have established unexpected results. In the alternative, even if
Appellants’ test results established some unexpected results, that evidence,
3 See Spec. 173 (after summarizing test examples, stating that “[u]se of
wellbore fluids containing graphene-based materials may be effective in
preventing dispersion of shale cuttings into the wellbore fluid.”); see also
119 (“The inventors of the present application have surprisingly discovered
that, when added to wellbore fluids, graphene-based materials may reduce or
prevent dispersion of drilled shale or clay cuttings into the wellbore fluid.”);
118 (describing additives such as “viscosity agents” as optional).
7
Appeal 2016-003039
Application 13/877,852
taken together with the Examiner’s findings regarding Tour and Mi Swaco,
would not persuade us that the Examiner erred in rejecting claim 1.
In summary, Appellants have not shown that the Examiner erred in
finding that (1) the combination of True and Mi Swaco discloses all of the
limitations of claim 1, (2) the combination would have been motivated by
certain advantages, (3) Tour does not teach away from the proposed
combination; and (4) Appellants failed to establish unexpected results.
Accordingly, we sustain the rejection of claim 1.
As stated above, our analysis of claim 1 disposes of all issues on
appeal because Appellants selected claims 1 and 15 as representative of all
claims on appeal, and the arguments for claim 15 rely on the arguments
made with respect to claim 1. See Appeal Br. 7, 20. Accordingly, we
sustain the rejections of claims 2—13, 15, and 16 for the same reasons we
sustain the rejection of claim 1.
DECISION
We affirm the decision of the Examiner to reject claims 1—13, 15, and
16 under 35 U.S.C. § 103(a).
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
8