Ex Parte Young et al

Patent Trial and Appeal Board

Sep 19, 2017

12991015 (P.T.A.B. Sep. 19, 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.
12/991,015 11/04/2010 Steven Young 05542/239003 5660
26722 7590 09/21/2017
OSHA LIANG/MI
TWO HOUSTON CENTER
909 FANNIN STREET, SUITE 3500
HOUSTON, TX 77010
EXAMINER
AHUJA, ANURADHA
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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 STEVEN YOUNG and EMANUEL STAMATAKIS
Appeal 2015-007244
Application 12/991,015
Technology Center 3600
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven Young and Emanuel Stamatakis (Appellants)1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision, set forth in the Final
Action (dated Sept. 9, 2014, hereinafter “Final Act.”) rejecting claims 11,
13—15, and 18—24. We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing in accordance with 37 C.F.R. § 41.47 was held on September 6,
2017.
We REVERSE.
1 The Appeal Brief (dated Mar. 9, 2015, hereinafter “Appeal Br.”) identifies
M-I LLC, a wholly owned subsidiary of Schlumberger, as the real party in
interest. Appeal Br. 4.
Appeal 2015-007244
Application 12/991,015
THE CLAIMED SUBJECT MATTER
Claim 11, reproduced below, is the only independent claim and is
illustrative of the claimed subject matter.
11. A method for drilling a wellbore comprising:
introducing an aqueous based wellbore fluid into the
wellbore;
circulating the aqueous based wellbore fluid while
drilling,
wherein the aqueous based wellbore fluid comprises
a copolymer of a natural polymer and a latex monomer;
wherein the natural polymer is at least one of
polysaccharides or tannins and mixtures and derivatives
thereof; and
wherein the latex monomer comprises at least one
selected from the group consisting of styrene, butadiene,
isoprene, vinyl acetate, vinyl esters of fatty acids, vinyl
chloride, vinylidene chloride, tetrafluoroethylene, and
polymers or copolymers thereof; and
allowing the copolymer to form at least part of a filtercake
on the wellbore walls.
REJECTIONS2
I. Claims 11, 13—15, and 18—22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bair (US 6,465,587 Bl, issued Oct.
15, 2002) and Huddleston (US 4,938,803, issued July 3, 1990).
II. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bair, Huddleston, and Todd
(US 2004/0173353 Al, published Sept. 9, 2004).
2 The Examiner withdrew rejections of claim 24 under 35 U.S.C. §§ 112 and
101. Ans. 2; Advisory Action (dated Nov. 18, 2014) 2.
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Application 12/991,015
DISCUSSION
Rejection I—Claims 11, 13—15, and 18—22
Independent claim 11 requires introducing and circulating an aqueous
based wellbore fluid in a wellbore while drilling, the fluid comprising a
natural polymer, which “is at least one of polysaccharides or tannins, and
mixtures and derivatives thereof,” and a latex monomer, which is “at least
one selected from the group consisting of styrene, butadiene, isoprene, vinyl
acetate, vinyl esters of fatty acids, vinyl chloride, vinylidene chloride,
tetrafluoroethylene, and polymers or copolymers thereof.” Appeal Br. 21—
22 (Claims App.).
The Examiner finds that Bair discloses employing a drilling fluid as
recited in claim 11, “wherein the natural polymer comprises polysaccharides
and wherein the latex monomer comprises at least one selected from the
group consisting of styrene, butadiene and polymers or copolymers thereof,”
but that Bair fails to explicitly disclose introducing the drilling fluid into the
wellbore and circulating the fluid while drilling. Final Act. 3—A. The
Examiner finds that Huddleston teaches introducing and circulating in a
wellbore a drilling fluid for fluid loss control in drilling applications,
wherein the fluid comprises a copolymer of a natural polymer and a latex
monomer. Id. at 4; see Huddleston 2:53—56 (disclosing “[a] vinyl grafted
lignite fluid loss additive comprising a lignite grafted with at least one vinyl
monomer”), 3:36—38 (disclosing preparing a drilling fluid “by adding the
fluid loss additives to circulating drilling mud to control fluid loss”). The
Examiner does not direct our attention to, nor do we discern on our own, any
teaching by Huddleston of a fluid loss additive comprising a polysaccharide
as called for in claim 11. The Examiner determines that it would have been
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Application 12/991,015
obvious to modify Bair in view of Huddleston “to introduce and circulate an
aqueous based wellbore fluid in drilling applications as instantly claimed in
order to provide filtration control.” Final Act. 4.
Appellants take issue with the Examiner’s finding that Bair teaches
using a drilling fluid during drilling comprising a starch styrene butadiene
copolymer and, further, contend that a person having ordinary skill in the art
would not have been prompted by the teachings of Bair and Huddleston to
do so. Appeal Br. 8—18; Reply Brief (dated July 28, 2015, hereinafter
“Reply Br.”) 5—6; see Final Act. 3. Appellants contend that Bair teaches
using a copolymer comprising starch styrene butadiene only in the context of
cementing, and that, in view of Bair’s test results showing the addition of
starch styrene butadiene to “acrylamide/AMPS/AHPS/acrylic acid
copolymer” having either no effect or a negative effect on fluid loss,
compared to “acrylamide/AMPS/AHPS/acrylic acid copolymer” having no
starch styrene butadiene, “the starch styrene butadiene copolymer would not
be a natural selection for a person skilled in the art who wants to formulate a
drilling fluid.” Appeal Br. 9-14. Appellants submit a Declaration by Yiyan
Chen, dated June 13, 2014 (hereinafter “Chen Declaration” or “Chen Deck”)
to support these contentions.3 Id. at 9—10, 13—15, 17—18; see Chen Deck
11 5—6.
We agree with Appellants that Bair does not support by a
preponderance of evidence the Examiner’s finding (Ans. 3) that Bair teaches
employing a drilling fluid during drilling for controlling fluid loss, the
3 According to the Chen Declaration, Chen holds “a PhD degree in
Chemistry” and has “worked in the field of Oilfield fluid related product
development for 13 years.” Chen Deck H 2, 3. Chen is “currently
employed by Ml LLC,” Assignee of the present application. Id. 13.
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Appeal 2015-007244
Application 12/991,015
drilling fluid comprising starch styrene butadiene. Bair discloses
copolymers containing allyloxy linkage as fluid loss additives in drilling
applications and as cement slurry additives useful in cementing processes.
Bair 1:8—11, 3:29—62. The copolymers include a first component
comprising a repeat unit of alpha, beta ethylenically compound derived from
any one of a number of enumerated substances, one of which may include
styrene; a second component formed by polymerizing a monomer containing
sulfonate, which could be, for example, “2-Acrylamido-2-
methylpropanesulfonic acid (AMPS7'’),” styrene sulfonate, vinyl sulfonate, or
allyl sulfonate; and a third component comprising a repeat unit formed by
polymerizing a substituted allyl alkylene ether compound. Id. 3:63—5:9.
Bair also teaches that the copolymer composition “may also be used in
combination with polysaccharides, including,” inter alia, starch and starch
derivatives, such as styrene butadiene starch. Id. 6:48—61. Bair explains
that “[t]he polymers should be added to the system, in an amount effective
for the specific application” and that “[t]his amount will vary depending
upon the particular system for which treatment is desired.” Id. 6:62—65
(emphasis added).
Bair does not explicitly teach that all possible combinations of the
components of the allyloxy copolymer are suitable for both drilling fluid
applications and cementing applications, nor does Bair indicate that each of
the enumerated polysaccharides is suitable for combination with the
disclosed allyloxy copolymer for all applications. Bair devotes the
disclosure from column 9, line 6 to column 19, line 53 to “Performance
Testing of Oil Well Cement Slurries” and the disclosure from column 22,
line 45 to column 23, line 47 to “Performance Testing of Polymer Blends
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Appeal 2015-007244
Application 12/991,015
Concept in Cementing Applications.” Bair discloses “Performance Testing
in Drilling Fluids” from column 19, line 54 to column 21, line 32. This
organization of the disclosure suggests that the design and performance
considerations for cementing applications may differ from those for drilling
applications.
As noted by the Examiner (Ans. 6), Bair discloses adding starch to an
AMPS based copolymer for performance testing in drilling fluids, resulting
in the formation of filter cakes. Bair 20:27—21:32 (Tables 15, 16).
However, Bair does not specifically teach adding styrene butadiene starch to
the allyloxy copolymer in any of the drilling fluid performance tests.
The only test disclosed by Bair in which styrene butadiene starch is
added is Test N° 35, which is conducted for performance testing of polymer
blends in cementing applications. Bair 22:45—23:4. In Test N° 35, “a
sample of Starch styrene Butadiene co-polymer” is added to the copolymer
of Example 4. Id. 22:50—55.
Comparing the API fluid loss results for Test N° 35 (Table 20), which
includes the copolymer of Example 4 with Starch styrene Butadiene
copolymer added, to those from Test N° 17 (Table 9), which were performed
with the copolymer of Example 4 without Starch styrene Butadiene
copolymer added, Appellants argue that Bair’s testing indicates “a
potentially negative impact on fluid loss (filtration control) when starch
styrene butadiene copolymer is used in the cement slurry.” Appeal Br. 13—
14; see id. at 13 (Table 3, consolidating the API fluid loss results for Test
N° 17 (Example 4 copolymer) and Test N° 35 (Example 4 copolymer with
Starch styrene Butadiene copolymer added)). The results for Test N° 17 and
Test N° 35 do show a slightly increased fluid loss at the higher temperatures
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Application 12/991,015
when Starch styrene Butadiene copolymer is added. Bair, Tables 9 and 20;
Appeal Br. 13 (Table 3).
Bair states that “[t]he data in the Table 20 indicate clearly that
Examples of this invention may be blended with other standard fluid loss
additives to provide improved fluid loss control properties.” Bair 23:44-46.
The Chen Declaration does not interpret this statement “as suggesting that
the starch styrene-butadiene co-polymer would provide fluid loss control,
particularly because it showed a slightly negative impact on fluid loss
compared to its comparative examples.” Chen Decl. 1 6. Rather, Chen
“would think that it may be added for bond strength modification, which is
applicable to cements but not drilling fluids.” Id.
When considered as a whole, Bair gives no clear indication that
inclusion of styrene butadiene starch copolymer to drilling fluids employed
during drilling to provide fluid loss (filtration) control would be desirable.
Weighing all of the evidence before us, including Bair, Huddleston, and the
Chen Declaration, we do not conclude, as the Examiner did, that it would
have been obvious to a person having ordinary skill in the art to add styrene
butadiene starch copolymer to the drilling fluid circulated during drilling as
a fluid loss additive. Accordingly, we do not sustain the rejection of
independent claim 11, or claims 13—15, and 18—22, which depend from
claim 11, as unpatentable over Bair and Huddleston.
Rejection II—Claims 23 and 24
In rejecting claims 23 and 24, the Examiner does not rely on Todd for
any teaching, or articulate any additional reasoning, that would overcome
the aforementioned deficiency in the rejection of claim 11. See Final Act. 6—
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Application 12/991,015
7. Accordingly, we do not sustain the rejection of claims 23 and 24 as
unpatentable over Bair, Huddleston, and Todd.
DECISION
The Examiner’s decision rejecting claims 11, 13—15, and 18—24 is
reversed.
REVERSED
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