Michael James. Fuller et al.

Patent Trials and Appeals Board

Jan 9, 2020

14589498 - (D) (P.T.A.B. Jan. 9, 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.
14/589,498 01/05/2015 Michael James Fuller 51502.105085; T-10014 US 1051
113610 7590 01/09/2020
King & Spalding LLP (Chevron)
IP Docketing Department
1180 Peachtree St.
Atlanta, GA 30309
EXAMINER
NOLD, CHARLES R
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
01/09/2020 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):
ATLIPDOCKETING@KSLAW.com
mgibson@kslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL JAMES FULLER, COLIN JONES, and
JONATHAN GETLIFF
____________________

Appeal 2018-007562
Application 14/589,498
Technology Center 3600
____________________

Before: ANNETTE R. REIMERS, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.

DOUGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a final rejection of
claims 1–6, 8, 9, 13, 14, 17, 18, 20–22, and 24–27. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Chevron U.S.A.
Inc. Appeal Br. 3.
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Application 14/589,498

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CLAIMED SUBJECT MATTER
The claims are directed to methods of fluid loss control in a wellbore.
Claims 1, 14, and 27 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for reducing fluid loss in a localized loss zone in a
wellbore in a subterranean formation having a fracture, the
method comprising the steps of:
A) injecting a carrier phase into the wellbore, the carrier
phase comprising one or more fluid loss capsules, the one or
more fluid loss capsules comprising an active fluid loss control
material and an encapsulant,
B) releasing the active fluid loss control material from the
fluid loss capsule within the fracture by crushing the encapsulant
by a fracture closure stress thereby forming, with the active fluid
loss control material, a rigid low-permeability plug in the fracture
that reduces fluid communication between the localized loss
zone and the wellbore relative to the fluid communication prior
to injecting the carrier phase.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chatterji US 5,873,413 Feb. 23, 1999
Eick US 2012/0037368 A1 Feb. 16, 2012

REJECTION
Claims 1–6, 8, 9, 13, 14, 17, 18, 20–22, and 24–27 are rejected under
35 U.S.C. § 103 as being unpatentable over Eick alone or with Chatterji.

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OPINION
The Examiner’s rejection of the independent claims relies on a finding
that Eick “teaches that this is technology known in the art for plugging.”
Final Act. 4; see also id. at 5 (relying on a similar finding in combining Eick
and Chatterji). We understand the “technology” to refer to forming a rigid,
low permeability plug in the fracture.
The Examiner finds that Eick teaches a method of sealing a fracture
similar to that taught by the claims. Final Act. 3–4. The Examiner relies
primarily on Eick paragraph 41, stating twice that this paragraph teaches that
the “fracture is sealed.” Id. at 3. Further, the Examiner finds that Eick’s
paragraph 41 teaches “thereby forming, with the active fluid loss control
material, a rigid low-permeability plug (¶ [0041] hardened urethane; see also
Abstract) in the fracture that reduces communication between the localized
loss zone and the well bore (¶ [0041]; fracture is sealed).” Id.
However, paragraph 41 does not teach sealing a fracture, rather it
teaches temporarily sealing a “formation” under fracture pressure so that
“the temperature of the thermoplastic pellets increases until the urethane and
TETA are released.” Eick ¶ 41; see also Declaration Under 37 C.F.R.
§ 1.132 of Michael James Fuller, Ph.D ¶ 5. “[O]nce the urethane is set, the
pressure may be released and the fractures are maintained by the foamed
adhesive and incorporated thermoplastic materials.” Eick ¶ 41. In this way,
the fracture is propped open. See also, Appeal Br. 10–13.
In the Answer, the Examiner supplements the reasoning and support
for the rejection to include other parts of Eick other than, or in addition to,
paragraph 41. See e.g., Ans 4–6 (new claim chart citing additional portions
of Eick). For example, the Examiner points to paragraphs 13, 22, 29, and 32
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Eick, in addition to paragraph 41, for teaching forming a rigid, low
permeability plug in the fracture.2 Id. at 5.
Paragraphs 13, 22, and 29 of Eick include lists of potential
encapsulated materials or devices that can be encapsulated. The Examiner
finds that these materials are rigid and have “low porosity.” Id. at 5. The
Examiner also finds that “all of the materials cited in ¶13, ¶29, ¶22 would
constitute a plug when placed in the fracture.” Id. The Examiner relies on
paragraph 32 for “forming” based on the general teaching that “the
protective capsule is ruptured by formation closure,” which the Examiner
finds that this “means the capsule is in the fracture.” Id.
Concerning paragraphs 13, 22, and 29, Appellant argues that “Eick
does not teach [the use of encapsulating materials] . . . for the purposes of
creating an impermeable plug in order to reduce fluid flow into incidentally-
created fractures.” Reply Br. 2. Appellant argues “that different
compositions of the same materials can have different uses” and in Eick they
are only taught for use as proppants. Id.
Though we agree with Appellant that Eick is primarily directed to
proppants, it is not limited thereto. Eick ¶ 3 (“The present disclosure
generally relates to the delivery of materials into oil well reservoirs.”); see
also Final Act. 14–15 (citing e.g., Eick ¶¶ 7, 20); see, e.g., Eick ¶ 7 (“[t]he
invention more particularly provides a method of delivering highly sensitive,
mechanical, biological and chemical agents to subterranean formations,”
wherein “[i]n one embodiment a rigid, impermeable capsule is used to

2 Appellant objects to the Examiner’s breaking the claim down into small
divisions stating that the claim is not being considered as a whole. Reply Br.
5. However, we do not understand the Examiner to be considering each
aspect of the claim in isolation.
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deliver a variety of treatements to a subterranean formation”); id at ¶ 20
(“[c]apsule materials will vary greatly and are dependent upon the use and
unique requirements for the encapsulating material encountered during
delivery and in situ”). Further, we agree with the Examiner that Eick
teaches placing these materials in fractures. Ans. 5. The real disagreement
between Appellant and the Examiner appears to be over the claim
construction of the term “plug.”
The Examiner defines plug as “any material which impedes fluid flow
through a fracture or crack in a rock. There are no size or shape or other
restriction on the term plug.” Ans. 5. Appellant defines “plug” as
“something that fits entirely within a hole to stop or close it.” Reply Br. 5.
Appellant’s Specification does not define the term “plug,” though it does
describe the result as “reducing localized fluid loss.” Spec. ¶ 38. This is
similar to claim 1, which requires that formation of the plug “reduces fluid
communication.” To the extent Appellant is arguing that the plug must seal
or entirely stop—as compared to reduce—localized fluid loss, we determine
that Appellant’s arguments concerning whether Eick teaches forming a plug
in the fracture are based on too narrow of a construction of the term “plug,”
as described in the Specification and recited in claim 1. In other words,
Appellant’s argument does not apprise us of error in the Examiner’s finding
that Eick discloses that encapsulated material is placed within a fracture,
which one skilled in the art would appreciate may, if desired, result in a
reduction of fluid flow, such that the encapsulated material functions as a
plug.
Appellant also argues that “[e]ven if Eick could be interpreted as
using these materials for other methods, Eick does not teach their use for
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reducing fluid loss specifically.” Appeal Br. 2. This is not contrary to the
Examiner’s holdings. Rather, the Examiner found that reducing fluid loss
would be the obvious result of placing a plug in a crack. Ans. 7; see also id.
at 10 (“proppants, when placed in a fracture will reduce fluid loss.”).
Appellant also argues that “[t]he Examiner’s Answer . . . states that
‘The claims do not require blocking or stopping or any amount of reduction
in fluid flow.’” Reply Br. 6 (quoting Ans. 10). As correctly noted by
Appellant, the claims do require reducing fluid flow. Id. We understand the
Examiner’s inclusion of “any amount of reduction in fluid flow” to be a
typographical error. As noted in the previous paragraph, the Examiner
recognizes the requirement of the claims to reduce fluid loss and interprets
the claim term “plug,” and makes findings and determinations related,
thereto. Thus, this inaccurate or loosely worded sentence does not raise a
reversible error.
For all of these reasons, we are not informed of error in the
Examiner’s rejection.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed
1–6, 8, 9, 13,
14, 17, 18, 20–
22,
24–27
103 Eick,
Chatterji
1–6, 8, 9, 13,
14, 17, 18, 20–
22,
24–27

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Application 14/589,498

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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