Hill, Randal M. et al.

Patent Trials and Appeals Board

Jan 29, 2020

14801805 - (D) (P.T.A.B. Jan. 29, 2020)

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.
14/801,805 07/16/2015 Randal M. Hill C1408.70024US02 8755
23628 7590 01/29/2020
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
RUNYAN, SILVANA C
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDAL M. HILL, DAVID GERMACK,
MELINDA SOEUNG, and DAVID L. HOLCOMB

Appeal 2019-003287
Application 14/801,805
Technology Center 3600
____________

Before LINDA E. HORNER, BENJAMIN D. M. WOOD, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant, Flotek Chemistry, LLC,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1–25. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant is the “applicant” under 37 C.F.R. § 1.42(b) and identifies itself
as the sole real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure relates to “[m]ethods and compositions
comprising particles for the treatment of an oil and/or gas well.” Spec.
1:10–11.
The Claims
Claims 1–25 are rejected. Final Act. 1. Claim 1, the sole independent
claim, is illustrative and reproduced below.
1. A method for treating an oil and/or gas well
comprising,
combining a first fluid and a second fluid to form an
emulsion or a microemulsion, the emulsion or the
microemulsion including an aqueous continuous phase,
wherein the first fluid comprises a plurality of
hydrophobic nanoparticles and a non-aqueous phase;
wherein the second fluid comprises a surfactant and an
aqueous phase; and
wherein, in the emulsion or the microemulsion, a portion
of the hydrophobic nanoparticles are each at least partially
surrounded by the surfactant and in contact with at least a
portion of the non-aqueous phase; and
injecting the emulsion or the microemulsion including
the aqueous continuous phase into an oil and/or gas well
comprising a wellbore.
Claims App. (filed Nov. 19, 2018) 2.
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The Examiner’s Rejections
The rejections before us are as follows:
1. claims 1–3, 5, 11–17, and 19–25 under 35 U.S.C. § 102(a)(2) as
anticipated by Maghrabi2 (Final Act. 2); and
2. claims 4, 6–10, and 18 under 35 U.S.C. § 103 as unpatentable
over Maghrabi and Kakadjian3 (id. at 12).
DISCUSSION
Rejection 1 – Anticipation by Maghrabi
Maghrabi is titled “Emulsified Acid with Hydrophobic Nanoparticles
for Well Stimulation.” Maghrabi, [54]. The Examiner found that Maghrabi
teaches all of the limitations of claim 1. Final Act. 2–4 (citing Maghrabi
¶¶27–28, 113–114, 124).
Appellant argues that the Maghrabi teachings cited by Examiner as
anticipatory of claim 1 are unrelated to one another. Thus, according to
Appellant, “[a]ny attempt to reach a method that includes each limitation of
claim 1 would need to combine unrelated descriptions in a way that is not
taught by, and is even discouraged by, Maghrabi.” Appeal Br. 6 (citing In re
Arkley, 455 F.2d 586, 587 (CCPA 1972)).
“In particular, [according to Appellant,] there is no description
whatsoever in Maghrabi of using an oil-in-water emulsion including
hydrophobic nanoparticles and an aqueous continuous phase as recited in
claim 1.” Id. at 7. Rather, according to Appellant, “the only description in
Maghrabi relating to such hydrophobic particles is [in] the context of the
emulsified acid method which uses the water-in-oil emulsion composition”

2 US 2014/0116695 A1, published May 1, 2014 (“Maghrabi”).
3 US 2009/0200033 A1, published Aug. 13, 2009 (“Kakadjian”).
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Application 14/801,805

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(i.e., continuous oil phase). Id. (citing Maghrabi ¶¶27–28). Appellant
argues that Maghrabi’s paragraphs 113 and 114 regarding continuous
aqueous phases are not related to Maghrabi’s emulsified acid method taught
at paragraphs 27 and 28. Id. at 8 (The “statement in Maghrabi in [0013]-
[0114] regarding the fact that an emulsion can be an oil-in-water type or
water-in-oil type . . . merely provides background information about
emulsions, in general, and does not pertain to Maghrabi’s emulsified acid
process.”) (citing Aug. 7, 2017, Declaration of first named inventor Randal
M. Hill ¶7).
The Examiner responds, in part, as follows:
In Paragraph 0168, Maghrabi expressly discloses: “The
emulsion can also include other additives. For example, the
emulsion can contain a freezing-point depressant. Preferably, the
freezing point depressant is for the water of the continuous
phase.” (emphasis added). Thus, Maghrabi expressly discloses
that the emulsion has an aqueous (i.e., water) continuous phase.
This portion of the disclosure corresponds with the
disclosure of Maghrabi at Paragraphs 0112-0115. These
paragraphs in Maghrabi expressly state that an emulsion can be
an oil-in-water type, which would have an aqueous continuous
phase. Additionally, these paragraphs in Maghrabi expressly
state that multiple emulsions are possible and include a water-in-
oil-in-water type, which would have an aqueous continuous
phase.
Ans. 4 (all emphasis by Examiner).
The Examiner has the better position. Maghrabi discloses a “method
[that] includes the steps of: (A) forming a treatment fluid comprising a
composition according to the invention; and (B) introducing the treatment
fluid into a well.” Maghrabi ¶28 (emphasis added). Paragraph 27 provides
one embodiment of that composition. However, the “Detailed Description”
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provides many additional variations of the composition. Id. ¶29.
Under a section titled “Emulsion,” Maghrabi teaches that “[a]n
emulsion can be an oil-in-water (o/w) type or water-in-oil (w/o) type,” the
former being an aqueous continuous phase. Id. ¶114. Maghrabi further
states:
It should be understood that multiple emulsions are possible.
These are sometimes referred to as nested emulsions. Multiple
emulsions are complex polydispersed systems where both oil-in-
water and water-in-oil emulsions exist simultaneously in the
fluid, wherein the oil-in-water emulsion is stabilized by a
lipophilic surfactant and the water-in-oil emulsion is stabilized
by a hydrophilic surfactant. These include water-in-oil-in-water
(w/o/w) and oil-in-water-in-oil (o/w/o) type multiple emulsions.
Id. ¶115. Finally, in paragraph 168 (cited in the Answer), Maghrabi refers to
an emulsion that explicitly has a continuous aqueous phase. Id. ¶168 (“For
example, the emulsion can contain a freezing-point depressant . . . for the
water of the continuous phase.” (emphasis added)).
The teachings cited by the Examiner regarding an aqueous continuous
phase (i.e., paragraphs 113, 114, and 168) are related to the exemplary
composition of paragraphs 27 and 28, in that they are variations of that
composition. Appellant’s argument to the contrary is not persuasive, and
Appellant does not apprise us of error in the anticipation rejection of claim
1.4 Accordingly, we affirm the rejection of claim 1, as well as that of claims
2–3, 5, 11–17, and 19–25, which claims Appellant argued solely based on
their ultimate dependence from claim 1. See Appeal Br. 9.
Rejection 2 – Obviousness in View of Maghrabi and Kakadjian
Appellant argues the obviousness rejection solely on the basis that the

4 Appellant did not file a reply brief.
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additional reference, Kakadjian, does not cure the alleged deficiency in the
anticipation rejection of claim 1. Appeal Br. 9. Because there is no such
deficiency, Appellant has not apprised us of error. Accordingly, we affirm
the rejection of claims 4, 6–10, and 18 under 35 U.S.C. § 103 as
unpatentable over Maghrabi and Kakadjian.
SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 11–
17, and 19–
25
102(a)(2) Maghrabi 1–3, 5, 11–
17, and 19–
25

4, 6–10, and
18
103 Maghrabi,
Kakadjian
4, 6–10, and
18

Overall
Outcome
1–25

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED