Ahmad Moradi-Araghi et al.

Patent Trials and Appeals Board

Oct 1, 2019

15145842 - (D) (P.T.A.B. Oct. 1, 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.
15/145,842 05/04/2016 Ahmad MORADI-ARAGHI COP:41998DIVUS 7769
85937 7590 10/01/2019
Boulware & Valoir
Tamsen Valoir
2603 Augusta Drive
Suite 1350
Houston, TX 77057
EXAMINER
BLAND, ALICIA
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
nseigel@boulwarevaloir.com
patent@boulwarevaloir.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte AHMAD MORADI-ARAGHI,
MIN CHENG, RILEY B. NEEDHAM, JAMES H. HEDGES,
RAMESH S. SARATHI, FAYE L. SCULLY, TERRY M. CHRISTIAN,
HUILI GUAN, CORY BERKLAND, and JENN-TAI LIANG
_______________
Appeal 2019-002396
Application 15/145,842
Technology Center 1700
_______________
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 of Application 15/145,842. Final
Act. (May 31, 2018). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies ConocoPhillips Co. and the University of
Kansas as the real parties in interest. Appeal Br. 1.
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BACKGROUND
The ’842 Application describes methods for stable cross-linking of
swellable polymers. Spec. ¶ 4. These cross-linked swellable polymers are
said to be particularly useful in enhanced oil recovery applications. Id.
During the primary stage of production from an oil well,
hydrocarbons are driven from the well by a number of natural mechanisms,
including natural water pushing into the well, expansion of natural gas of the
top of the reservoir, expansion of gas initially dissolved in the hydrocarbon,
and gravity drainage. Id. ¶ 5. After the natural reservoir drive diminishes,
secondary and tertiary recovery methods are applied to further increase
recovery of hydrocarbon from the well. Id. ¶ 6. One method that may be
used to enhance recovery is injection of water into the reservoir. Id. ¶¶ 7–8.
Water injection enhances recovery in two ways: (1) the water provides
pressure support of the reservoir and (2) the water sweeps or displaces oil
from the reservoir and pushes it toward oil production wells. Id. ¶ 8.
Oil recovery using water injection is limited by so-called “thief
zones,” which cause the water to preferentially travel through more porous
regions of the reservoir, bypassing less porous zones and leaving oil behind.
Id. ¶ 9. Oil recovery may be improved by using a swellable polymer to block
the thief zones, causing a more effective sweep of the reservoir. Id.
Claim 1 is representative of the ’842 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A method of increasing the recovery of hydrocarbon
fluids in the subterranean formation, comprising:
a) injecting into the subterranean formation of a mixture
comprising water and a composition comprising:
i) expandable microparticles comprising
acrylamide-based polymers crosslinked with labile
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crosslinkers and stable crosslinkers, wherein said
acrylamide-based polymers are capable of undergoing
transamidation reactions;
ii) an unreacted tertiary crosslinker comprising
polyethyeleneimine (“PEI”), wherein said tertiary
crosslinker is capable of further covalently crosslinking
said microparticles by transamidation after degradation
of said labile crosslinkers to form a stable gel;
b) aging said mixture at 190° F until it gels, and;
c) producing hydrocarbon from said subterranean
formation.
Appeal Br. 16 (indentation supplied).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–3 are rejected under 35 U.S.C. § 103 as unpatentable
over Moradi-Araghi ’1142 as evidenced by Review.3 Final Act.
5–6; Answer 3–4.
2. Claims 1–3 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Moradi-Araghi ’114 and Review. Final
Act. 7–8; Answer 4–5.
3. Claims 1–3 are rejected under 35 U.S.C. § 103 as unpatentable
over Moradi-Araghi ’2144 as evidenced by and Review. Final
Act. 8; Answer 5.

2 US 2010/0314114 A1, published December 16, 2010.
3 A. Moradi-Araghi et al., A review of thermally stable gels for fluid
diversion in petroleum production, 26 J. Pet. Sci. & Eng’g 1–10 (2000)
(hereinafter “Review”).
4 US 8,669,214 B2, issued March 11, 2014.
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4. Claims 1–3 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Moradi-Araghi ’214 and Review. Final
Act. 8–9; Answer 5–6.
DISCUSSION
Rejection 1. Appellant argues for reversal of this rejection with
respect to the claims as a group. See Appeal Br. 8–15. We, therefore, select
claim 1 is representative of the group of rejected claims. 37 C.F.R.
§ 41.37(c)(1)(iv).
In rejecting claims 1–3, the Examiner found, in relevant part, that
Moradi-Araghi ’114 describes shutting in the PEI/acrylate particle
composition at a temperature of 150°F. Final Act. 6 (citing Moradi-Araghi
’114 ¶ 47). The Examiner also found that Moradi-Araghi ’114 discusses
comparative examples that are shut in at temperatures of up to 190°F. Id.
(citing Moradi-Araghi ’114 ¶ 45). The Examiner further found that a person
of ordinary skill in the art would have had a reasonable expectation of
success in using the composition exemplified in ’114 at 190°F because “if
the temperature was not useful in the instant invention of Moradi[-Araghi
’114] it would not make sense to test comparative compositions at said
temperature.” Id. (emphasis omitted). The Examiner further cites Review as
evidence that a transamidation reaction can occur between acrylic acid
residues and polyethyeleneimine at temperatures of up to 156°C (312.8°F).
Id.
Appellant argues that the rejection of claims 1–3 should be reversed
for any of five reasons: (1) no reasonable expectation of success, (2) a lack
of motivation to combine the prior art relied upon in the rejections,
(3) Review teaches away from using the claimed invention, (4) the
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prohibitive cost supposedly associated with the combination of prior art, and
(5) the totality of the prior art should support a finding of nonobviousness.
Appeal Br. 8–15. We address these arguments in turn.
First, Appellant argues that for an obviousness rejection to be proper,
the Examiner must establish that a person having ordinary skill in the art
would have had a reasonable expectation of success that the proposed
combination of references could be successfully created. Appeal Br. 8–9
(citing In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991)).
Appellant’s argument is correct as an expression of law. Appellant,
however, does not attempt to identify any error in the Examiner’s finding,
Final Act. 6, that a person having ordinary skill in the art would have had
such a reasonable expectation.
We, therefore, cannot reverse the rejection of claim 1 on this basis.
Second, Appellant argues that “[t]here is no motivation to combine
Moradi[-Araghi ’114] and [Review].” Appeal Br. 9–10.
This argument is not persuasive of reversible error in the rejection of
claim 1. In particular, the argument is not relevant to this rejection. As
explained in the Final Action, this rejection is based upon Moradi-Araghi
’114 alone. Final Act. 6. Review is cited as evidence that the transamidation
reaction between PEI and the acrylamide polymer will occur at temperatures
up to 156°C (312.8°F). Id. Because Rejection 1 is not based on a
combination of references, the Examiner need not establish a reason to
combine Moradi-Araghi ’114 and Review.
We, therefore, cannot reverse this rejection on this basis.
Third, Appellant argues that Review teaches away from using poly-
acrylamide and polyethyeleneimine in high-temperature reservoirs. Appeal
Br. 10–12. In particular, Appellant points to the following passages teaching
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away from the Examiner’s proposed modification of Moradi-Araghi ’114:
(1) “Other recent studies describe the use of a modified polyacrylamide with
polyethyeleneimine. While the resulting gels are stable, their use is
prohibitive due to a requirement of a large polymer content (3- to 7 -fold),
as well as the high price of chemicals needed,” id. at 11 (quoting Review
Abstract), and (2) “However, the rate of gelation for this process becomes
too fast to be suitable for temperatures above 93°C,” id. (quoting Review
6).
We have reviewed and considered the entirety of Review. Considered
in context, the passages cited by Appellant would not have discouraged a
person of ordinary skill in the art from believing that there was a reasonable
expectation of success in getting the Examiner’s proposed modified version
of Moradi-Araghi ’114 to succeed. In the body of the article, the Abstract’s
statement that the use of the polyethyeleneimine-modified polyacrylamide
gels is cost prohibitive is explained in greater detail: “The gels produced by
the system require a large polymer concentration (5–10%). This
requirement, coupled with the high price of the polymer prohibits the use of
this gelling system in most treatments.” Review Abstract 6 (emphasis
added). Thus, Review’s full teaching regarding the economic viability of the
Examiner’s proposed modification of Moradi-Araghi ’114 is that it is only
economically viable in a limited number of situations. While this is less
desirable than a system that would be broadly applicable, it is not a teaching
that the systems described and suggested in Moradi-Araghi ’114 have no
economic utility. Similarly, the passage quoted by Appellant regarding the
rate of gelation becoming too fast to be suitable at temperatures above 93°C
is not a persuasive teaching away, 93°C is 199.4°F. Thus, Review states that
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the rate of gelation for the polyethyeleneimine-in modified polyacrylamide
gel system is suitable at the claimed temperature of 190°F.
In view of the foregoing, we cannot reverse the rejection of claims 1–
3 on this basis.
Fourth, Appellant argues that “[w]hile cost by itself is not reason
enough to show teaching away or lack of motivation, it should be considered
as another factor showing that [Review] teaches away from the use of its
polyacrylamide/PEI system, and that there is no motivation to combine
[Review] and Moradi[-Araghi ’114].” Appeal Br. 12 (citing Anderson Corp.
v. Pella Corp., 300 F. App’x 893, 898–99 (Fed. Cir. 2008)).
Appellant’s argument, however, focuses on the cost incurred due to
the formation of new cracks during the injection process. Review, however,
teaches that these new cracks are the result of the injection of cold water
needed to bring the reservoir temperature below 90°C. Review 6. The
claimed invention, however, is limited to temperatures of 190°F, which is
87.8°C. Thus, the added expense of cold water injection with concomitant
crack formation is not necessary.
In view of the foregoing, Appellant’s argument regarding prohibitive
cost is not persuasive of reversible error.
Fifth, Appellant argues that the totality of the prior art must be
considered in reaching a conclusion regarding obviousness. Appeal Br. 13–
15. In particular, Appellant argues that the “use of the microparticle system
as a gel to block thief zones at higher temperatures was contrary to [the]
accepted wisdom” in the field. Id. at 13.
As a matter of law, Appellant correctly notes that skepticism in the
field is objective evidence of nonobviousness. Appeal Br. 13–14. If
established, objective evidence of nonobviousness must be considered as
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part of the totality of the evidence in reaching a conclusion regarding
obviousness vel non. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“[P]atentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of
argument.”).
In this case, however, we agree with the Examiner that Appellant has
not demonstrated the existence of skepticism in the art. As the Examiner
explains:
[Review] does not teach gelling too quickly at the claimed
temperatures (190[°]F). [Review] teaches gelling too quickly at
temperatures above 93[°]C (199.4[°]F). Arguments therein (and
further regarding the detrimental changes) are thusly not
persuasive. Arguments drawn to Moradi[-Araghi ’114] and its
teaching of using much lower temperatures are not found
persuasive because Moradi[-Araghi ’114] does not limit the
temperatures of his reference. . . . The only disclosure of
temperature is found in the examples, wherein 150[°]F is used
in an inventive example and 190[°]F is used in a comparative
example. Moradi[-Araghi ’114] offers no guidance as to what
temperatures would/would not work.
Answer 15.
Because Appellant has not established the existence of skepticism in
the art, we cannot reverse the rejection of claims 1–3 on this basis.
In view of the foregoing, we are not persuaded that Appellant has
established the existence of reversible error in the Examiner’s rejection of
claims 1–3 as obvious over Moradi-Araghi ’114 as evidenced by Review.
Rejection 2. The Examiner also rejected claims 1–3 as unpatentable
over the combination of Moradi-Araghi ’114 and Review. Final Act. 7–8;
Answer 4–5.
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In rejecting claims 1–3, the Examiner found that Moradi-Araghi ’114
discloses every element of the subject matter of the claims except that
Moradi-Araghi ’114 ages the PEI/polyacrylamide gel at 150°F but does not
disclose aging at 190°F. Final Act. 7. The Examiner also found that Review
discloses that PEI cross-links covalent bonds with copolymers of acrylamide
via covalent bonds and that the resultant gel is stable at temperatures up
156° C (312.8°F). Id. The Examiner further found that Review describes
temperatures of 194°F as suitable for cross-linking acrylamide polymers
with PEI for use in oil recovery applications. Id. The Examiner found:
It would have been obvious to one of ordinary skill in the
[art] before the effective filing date of the invention to include
in Moradi[-Araghi ’114] the use of shut-in temperatures of up
to 194F, as taught by [Review], since such is recognized to be a
suitable reaction temperature for the reaction taught therein.
Such amounts to the simple substitution of a known element
(temperature) for another to obtain predictable (gelling) results
and/or combining prior art elements (known temperatures for a
reaction) according to known methods (the reaction between the
components of Moradi[-Araghi ’114] is known in the prior art)
to yield predictable (gelling) results. See MPEP 2143A,B.
Id. at 7–8 (italics omitted).
Appellant argues for reversal of this rejection with respect to the
claims as a group. See Appeal Br. 8–15. We, therefore, select claim 1 is
representative of the group of rejected claims. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s arguments for reversal of this rejection are combined with
its arguments for reversal of Rejection 1. Because, however, the substance of
Rejection 2 differs from that of Rejection 1, our analysis differs in some
respects. We present our analysis of Appellant’s five arguments for reversal
of rejection 2 below.
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First, Appellant argues that the Examiner has not established that a
person of ordinary skill in the art at the time of the invention would have had
a reasonable expectation of success in creating the asserted combination of
Moradi-Araghi ’114 and Review. Appeal Br. 8–9.
As discussed above, Appellant correctly expresses the law requiring
that an obviousness rejection is only proper if a person of ordinary skill in
the art would have had a reasonable expectation of success in making the
combination relied upon in the rejection. Appellant, however, does not
identify any error in the Examiner’s findings that Review teaches that the
desired transamidation reaction proceeds satisfactorily at temperatures of up
to 194°F.
Appellant, therefore, has not demonstrated reversible error on this
basis.
Second, Appellant argues that the Examiner erred in finding a
motivation to combine Moradi-Araghi ’114 with Review. Appeal Br. 9–10.
In particular, Appellant argues that Moradi-Araghi ’114 teaches forming
ionic bonds between the polyacrylamide microparticle and an external
cationic crosslinker like PEI. Id. at 9 (citing Moradi-Araghi ’114 ¶ 12).
Appellant further argues that Review teaches a different system in which the
polyacrylamide forms covalent bonds when it is crosslinked with PEI. Id.
According to Appellant, “[i]f combined with the temperatures recited in
[Review], the particle system in Moradi[-Araghi ’114] would not be
expected to form a suitable gel for diverting water. Instead, the ionic bonds
would be expected to weaken and allow water to pass through the thief
zones.” Id. at 10.
This argument is not persuasive. As the Examiner explains, a person
of ordinary skill in the art would have been motivated to form the covalently
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cross-linked polyacrylamide/PEI gel based upon Review’s description of the
gel as being stable at temperatures up to 156°C. Moreover, Review teaches
that the gelation rate of a mixture of PEI and polyacrylamide is acceptable at
temperatures below 199.4°F.
In view of the foregoing, we cannot reverse the rejection of claims 1–
3 as unpatentable over the combination of Moradi-Araghi ’114 and Review
on this basis.
Third, Appellant argues that Review teaches away from the
Examiner’s proposed combination of art. Appeal Br. 10–12.
For the reasons discussed in our discussion of Rejection 1, we do not
find this argument to be persuasive of the existence of reversible error in this
rejection.
Fourth, Appellant argues that Review’s discussion of the allegedly
prohibitive costs associated with the formation of a covalently bonded
PEI/polyacrylamide gel would have discouraged a person of ordinary skill in
the art from making the combination proposed in the Rejection. Appeal Br.
12–13.
For the reasons set forth in our discussion of Rejection 1, we do not
find this argument to be persuasive of the existence of reversible error in this
rejection.
Fifth, Appellant argues that the totality of the prior art supports a
finding of nonobviousness. Appeal Br. 13–15.
For the reasons set forth in our discussion of Rejection 1, we do not
find this argument to be persuasive of the existence of reversible error in this
rejection.
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In view of the foregoing, we affirm the rejection of claims 1–3 as
unpatentable over the combination of Moradi-Araghi ’114 and Review.
Rejections 3 and 4. In the Final Action, the Examiner states that
Rejection 3 is cumulative of rejection 1 and that rejection 4 is cumulative of
rejection 2. Final Act. 8–9.
For the reasons set forth above, we have affirmed the Rejections 1 and
2. We, therefore, also affirm the cumulative Rejections 3 and 4.
CONCLUSION
In summary:
Claims
Rejected Basis Affirmed Reversed
1–3
§ 103
Moradi-Araghi ’114
as evidenced by
Review
1–3
1–3
§ 103
Moradi-Araghi ’114
and Review
1–3
1–3
§ 103
Moradi-Araghi ’214
as evidenced by
Review
1–3
1–3
§ 103
Moradi-Araghi ’214
and Review
1–3
Overall Outcome 1–3
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED