Leiming Li et al.

Patent Trials and Appeals Board

Dec 12, 2019

14243668 - (D) (P.T.A.B. Dec. 12, 2019)

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.
14/243,668 04/02/2014 Leiming Li 020569-33800
PS4-56183-US
2887
71762 7590 12/12/2019
JONES DELFLACHE LLP
1333 HEIGHTS BOULEVARD
SUITE 300
HOUSTON, TX 77008
EXAMINER
LEFF, ANGELA MARIE DITRAN
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
12/12/2019 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 LEIMING LI, QI QU, HONG SUN, JIA ZHOU,
PAUL S. CARMAN, AHMED M. GOMAA, and
MICHAEL P. MEHLE
____________________

Appeal 2019-000785
Application 14/243,6681
Technology Center 3600
____________________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined
in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Baker
Hughes, a GE company, LLC.” Appeal Br. 1.
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1, 2, 9–11, 13–15, 17, 18, 22, 27–32,
and 34–37.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, “[t]he disclosure relates to a method of
stabilizing viscosifying polymers in well treatment fluids prepared with hard
water.” Spec. ¶ 1. Below, we reproduce independent claim 1 (with
formatting added) as representative of the appealed claims.
1. A method of enhancing productivity from a
subterranean formation penetrated by a well comprising:
(A) pumping into the well after completion of a drilling
operation a fluid comprising:
(i) water comprising divalent cations in excess
of 100 ppm;
(ii) carboxymethyl guar;
(iii) a crosslinking agent containing metal ions of
aluminum or a transition metal; and
(iv) a polymeric stabilizer having greater bonding
affinity for the divalent cations than carboxymethyl guar
wherein the polymeric stabilizer is selected from the group
consisting of alginate, pectin, carboxymethyl cellulose,
xanthan and salts and/or esters thereof, polyacrylamides,
derivatized polyacrylamides, partially hydrolyzed
polyacrylamides, acrylamidomethylpropane sulfonic acid
polymer or copolymer or a salt or ester thereof and
mixtures thereof, scleroglucan and konjac; and

2 Although claims 1, 2, 9–15, 17, 18, 22–24, 27–32, and 34–38 are pending
(see, e.g., Appeal Br., Claims App.), the Examiner does not reject claims 12,
23, 24, and 28. Instead, the Examiner indicates that claims 12, 23, 24,
and 28 recite allowable subject matter (see Final Action 17).
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(B) binding the divalent cations to the polymeric
stabilizer[,]
wherein the divalent cations are prevented from binding to
the carboxymethyl guar by binding to the polymeric stabilizer at
a temperature in excess of 200°F.

REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows3:
I. Claims 1, 2, 9, 10, 13–15, 17, 18, 22, 27–32, and 35–374
under 35 U.S.C. § 103 as unpatentable over Le et al.
(US 5,226,481, iss. July 13, 1993) (“Le”), Kelly et al.
(US 2006/0027364 A1, pub. Feb. 9, 2006) (“Kelly”), and
Cornelius et al. (US 2003/0062315 A1, pub. Apr. 3,
2003) (“Cornelius”); and
II. Claims 11 and 34 under 35 U.S.C. § 103 as unpatentable
over Le, Kelly, Cornelius, and Juppe et al. (US 6,620,769
B1, iss. Sept. 16, 2003) (“Juppe”).
Answer 3.

ANALYSIS
Rejection I—Obviousness rejection of claims 1, 2, 9, 10, 13–15, 17,
18, 22, 27–32, and 35–37
As set forth above, independent claim 1 recites (with formatting
added),

3 In the Answer (Answer 3), the Examiner withdraws an obviousness
rejection made in the Final Office Action (Final Action 2) which is based, in
part, on Juprasert et al. (US 5,547,022, iss. Aug. 20, 1996).
4 Inasmuch as claim 7 is canceled (see Appeal Br., Claims App.), the
Examiner’s indication that claim 7 is rejected is in error (see Answer 3).
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1. A method of enhancing productivity from a
subterranean formation penetrated by a well comprising:
(A) pumping into the well after completion of a drilling
operation a fluid comprising:
(i) water comprising divalent cations in excess
of 100 ppm;
(ii) carboxymethyl guar;
(iii) a crosslinking agent containing metal ions of
aluminum or a transition metal; and
(iv) a polymeric stabilizer having greater bonding
affinity for the divalent cations than carboxymethyl guar
wherein the polymeric stabilizer is selected from the group
consisting of alginate, pectin, carboxymethyl cellulose,
xanthan and salts and/or esters thereof, polyacrylamides,
derivatized polyacrylamides, partially hydrolyzed
polyacrylamides, acrylamidomethylpropane sulfonic acid
polymer or copolymer or a salt or ester thereof and
mixtures thereof, scleroglucan and konjac; and
(B) binding the divalent cations to the polymeric
stabilizer[,]
wherein the divalent cations are prevented from binding to
the carboxymethyl guar by binding to the polymeric stabilizer at
a temperature in excess of 200°F.
Appeal Br., Claims App.
In support of claim 1’s rejection, the Examiner finds that Le discloses
“guar,” and “at least polyacrylates” as polymeric stabilizers, and although
Le’s listed polymeric stabilizers do not include any of those recited in
claim 1, according to the Examiner, Le’s “polymeric stabilizer[s] hav[e] a
greater bonding affinity for the divalent cations than the carboxylated guar.”
See, e.g., Final Action 3 (citations to Le omitted). Then, according to the
Examiner, it would have been obvious to use Kelly’s carboxymethyl guar in
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place of Le’s guar, and “to try [Cornelius’s] alginate as the polymeric
stabilizer” in place of Le’s polyacrylates (polymeric stabilizers). Id. at 4–5.
Consistent with Appellant’s argument (see Reply Br. 3–4), we do not
sustain the rejection because the Examiner’s articulated reason for using
Cornelius’s alginate in place of Le’s polymeric stabilizer is not supported by
the record, or, in other words, lacks a rational underpinning. Appellant’s
claim 1 recites “[a] method of enhancing productivity from a subterranean
formation penetrated by a well.” Appeal Br., Claims App. Le is directed to
“[a] method for increasing the stability of water-based fracturing fluids” that
are “use[d] in hydraulically fracturing” “subterranean formations
surrounding oil wells, gas wells[,] and similar bore holes.” Le, Abstract;
col. 1, ll. 8–9. Similarly, Kelly discloses “stabilized, enhanced, aqueous,
viscoelastic fluids [that] may be used as treatment fluids for subterranean
hydrocarbon formations, such as in hydraulic fracturing.” Kelly, Abstract.
In contrast, Cornelius is directed to “combat[ing]” “[t]he deleterious effects
of metal ions in water, for example water hardness and the formation of
deposits,” which include “difficult[y] . . . [in] form[ing] a lather with soap or
detergent, and . . . then form[ation] [of] an unpleasant scum.” Cornelius,
Abstract; ¶ 2.
In claim 1’s rejection, the Examiner relies on Le’s column 2,
lines 17–23, which states that
[a] gel stabilizing amount of a water softener is added to the base
fracturing fluid, or to the mix water, the water softener being
effective to hinder the ability of the divalent cations present in
the hard mix water to compete with the water soluble polymer
for the cross-linking agent.
Le, col. 2, ll. 17–23. Restated, this portion of Le discloses adding “water
softener” (polymeric stabilizers that include polyacrylates), so that the water
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softener and the divalent cations bind, thereby allowing the guar (polymer)
to react with the cross-linking agent. However, the Examiner does not
support adequately that any of Cornelius, Le, or Kelly discloses that
Cornelius’s lather-enhancing and scum-eliminating alginate would be
suitable for replacing Le’s polymeric stabilizer in a fracturing fluid used in
hydraulic fracturing of subterranean formations. Because Cornelius is
unconcerned with subterranean formations, hydraulic fracturing, and
fracturing fluids, there is no indication in the record that Cornelius’s alginate
would be able to hinder the ability of the divalent cations present in the hard
mix water to compete with the water soluble polymer for the cross-linking
agent, by reacting with the divalent cations, under the temperature and
pressure conditions experienced in subterranean formations. See Reply
Br. 2. Also, there is no indication that Cornelius’s alginate would not
interact undesirably with any of the other components of the fracturing fluid
(for example, the guar, or the cross-linking agent), such that it would be
usable in the fracturing fluid.
Based on the foregoing, the Examiner does not provide an articulated
reasoning with a rational underpinning to support the rejection. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006))). The Examiner also does not establish that there are a finite number
of identified, predictable solutions, such that it would have been obvious to
try Cornelius’s alginate in place of Le’s polyacrylates. KSR at 421.
Therefore, we do not sustain the Examiner’s rejection of independent
claim 1. We also do not sustain the obviousness rejection of claims 2, 9, 10,
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13–15, 17, 18, 22, 27–32, and 35–37, which are either independent claims
that include recitations substantially similar to those discussed above with
respect to claim 1, or claims that depend from the independent claims.

Rejection II—Obviousness rejection of claims 11 and 34
Claims 11 and 34 depend from independent claims whose rejection
we do not sustain. The Examiner does not rely on Juppe to disclose
anything that would remedy the above-discussed deficiency in the
independent claims’ rejection. Thus, we also do not sustain the rejection of
claims 11 and 34.

CONCLUSION
We REVERSE the Examiner’s obviousness rejections of claims 1, 2,
9–11, 13–15, 17, 18, 22, 27–32, and 34–37.

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In summary:

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 2, 9, 10,
13–15, 17,
18, 22, 27–
32, 35–37
103 Le, Kelly, Cornelius 1, 2, 9, 10, 13–
15, 17, 18, 22,
27–32, 35–37
11, 34 103 Le, Kelly,
Cornelius, Juppe
11, 34
Overall Outcome 1, 2, 9–11, 13–
15, 17, 18, 22,
27–32, 34–37

REVERSED