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Patent Trials and Appeals Board

Oct 11, 2019

14857097 - (D) (P.T.A.B. Oct. 11, 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.
14/857,097 09/17/2015 John T. Pursley C1408.70038US00 9075
23628 7590 10/11/2019
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
SUE-AKO, ANDREW B.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
10/11/2019 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 JOHN T. PURSLEY, GLENN S. PENNY,
CHARLES EARL HAMMOND, DAVID GERMACK,
NICOLE MAST, DEEPANKAR BISWAS, and
ARUN KHARGHORIA
____________________

Appeal 2019-002968
Application 14/857,0971
Technology Center 3600
____________________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1, 3–8, 10–12, and 19–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 Flotek
Chemistry, LLC. Br. 3.
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According to Appellant, the invention is directed to “[m]ethods and
compositions comprising an emulsion or a microemulsion[,] and a polymer
for use in an oil and/or gas well.” Spec. 1, ll. 24–25. Below, we reproduce
independent claim 1, which is the sole independent claim under appeal, as
representative of the appealed claims.
1. A method of treating an oil and/or gas well having
a wellbore, comprising:
injecting a water flooding fluid comprising a polymer and
an emulsion or a microemulsion into the wellbore, wherein the
emulsion or the microemulsion comprises:
water selected from the group consisting of fresh
water, deionized water, and reverse osmosis water;
a surfactant; and
a solvent.

REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows2:
I. Claims 1, 3–8, 10–12, and 19–21 under 35 U.S.C. § 102(a)(1)
as anticipated by Gale (US 4,471,907, iss. June 9, 1981);
II. Claims 1, 5–8, 20, and 21 under 35 U.S.C. § 103 as obvious
over Gale and Froning et al. (US 3,719,606, iss. Mar. 6, 1973)
(hereinafter “Froning”);
III. Claims 3, 11, and 12 under 35 U.S.C. § 103 as obvious over,
Gale, Froning, and Sarem et al. (US 3,704,990, iss. Dec. 5,
1972) (hereinafter “Sarem”);

2 In the Answer (Answer 3), the Examiner withdraws an indefiniteness
rejection from the Final Office Action (Final Action 2–3). Accordingly,
only anticipation and obviousness rejections remain. See, e.g., Answer 3.
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IV. Claims 4 and 10 under 35 U.S.C. § 103 as obvious over Gale,
Froning, and Lipowski et al. (US 4,505,828, iss. Mar. 19, 1985)
(hereinafter “Lipowski”); and
V. Claim 19 under 35 U.S.C. § 103 as obvious over Gale, Froning,
and Asghari et al. (US 2006/0027367 A1, pub. Feb. 9, 2006)
(hereinafter “Asghari”).

ANALYSIS
Rejection I—Anticipation rejection of claims 1, 3–8, 10–12, and 19–
21 based on Gale
As set forth above, independent claim 1 recites,
1. A method of treating an oil and/or gas well having
a wellbore, comprising:
injecting a water flooding fluid comprising a polymer and
an emulsion or a microemulsion into the wellbore, wherein the
emulsion or the microemulsion comprises:
water selected from the group consisting of fresh water,
deionized water, and reverse osmosis water;
a surfactant; and
a solvent.
Br., Claims App. (emphasis added). Appellant argues that the Examiner errs
by relying on Gale to disclose the claimed water, because “[t]he
microemulsion in Gale includes an aqueous component having a salinity
[that] is ‘substantially the same as the salinity of the formation [reservoir]
brine [(i.e., salt water)].’” Br. 4 (citations to Gale omitted).
The Examiner does not admit error because, according to the
Examiner, “[a] positive inclusion of a claim element does not properly or
necessarily exclude other elements, especially in the case of ‘comprises’
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language.” Answer 4. Thus, although the Examiner agrees with Appellant
that “it is correct that Gale’s brine includes some amount of added salts, and
in contrast, ‘fresh water[,]’ . . . ‘deionized water[,]’ . . . [and] ‘reverse
osmosis’ water [are] understood as just H2O with only very minor amounts
of contaminants such as salts” (id.), the claim’s recitation of “including
‘water selected from the group consisting of fresh water, deionized water,
and reverse osmosis water’ does not necessarily exclude ‘additional
electrolytes’ (salts) added by the operator to fresh water as in Gale” (id. at 4–
5). Restated in our words, Gale’s brine is salt in fresh water, and
Appellant’s claim 1 does not preclude salt in addition to the claimed fresh,
deionized, or reverse-osmosis water.
Based on our review of the record, we do not sustain the rejection.
This is because one of ordinary skill in the art would not reasonably
understand that the claim encompasses fresh, deionized, or reverse-osmosis
water with added salt (i.e., salt water). We note that the relevant definition
of fresh water is “water that is not salty.” From https://www.merriam-
webster.com/dictionary/freshwater (last accessed Oct. 8, 2019). Further,
Appellant’s Specification separately describes salt water, fresh water,
deionized water, and reverse-osmosis water. See Spec. 28, ll. 16–18 (“The
water may be provided from any suitable source (e.g., sea water, fresh water,
deionized water, reverse osmosis water, water from field production).”).
Still further, claim 1 recites that with respect to the water in the emulsion or
microemulsion, the “water [is] selected from the group consisting of fresh
water, deionized water, and reverse osmosis water.” Br., Claims App.
(emphasis added). When the phrase “consists of” appears in a clause in the
claim body, rather than immediately following the preamble, there is an
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“exceptionally strong presumption that a claim term set off with ‘consisting
of’ is closed to unrecited elements.” Multilayer Stretch Cling Film
Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1359 (Fed. Cir.
2016). In this case, we determine that the claimed water is limited to the
types specified, and excludes salt water—e.g., fresh water with dissolved
salt.
Thus, based on the foregoing, we do not sustain the Examiner’s
anticipation rejection of claim 13. We also do not sustain the Examiner’s
anticipation rejection of claims 3–8, 10–12, and 19–21 that depend from,
and which the Examiner rejects with, independent claim 1.

Rejections II–V—Obviousness rejections of claims 1, 3–8, 10–12,
and 19–21
Each of the Examiner’s obviousness rejections rely on Gale to
disclose the claimed water. See Final Action 3–11. Thus, we do not sustain
any of the obviousness rejections for substantially the same reasons that we
do not sustain the anticipation rejection.

CONCLUSION
We REVERSE the Examiner’s anticipation and obviousness
rejections of claims 1, 3–8, 10–12, and 19–21.

3 Although the Examiner’s § 102 rejection may be interpreted as stating that
claim 1 is anticipated by Gale “as evidenced by Froning” (see Final
Action 3), the Examiner does not rely on Froning to evidence or otherwise
disclose anything relevant to the above discussion.
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In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–8, 10–12,
19–21
102(a)(1) Gale 1, 3–8, 10–12,
19–21
1, 5–8, 20, 21 103 Gale,
Froning
1, 5–8, 20, 21
3, 11, 12 103 Gale,
Froning,
Sarem
3, 11, 12
4, 10 103 Gale,
Froning,
Lipowski
4, 10
19 103 Gale,
Froning,
Asghari
19
Overall Outcome 1, 3–8, 10–12,
19–21

REVERSED