Angela Anh. Doan et al.Download PDFPatent Trials and Appeals BoardApr 30, 202015000892 - (D) (P.T.A.B. Apr. 30, 2020) Copy Citation 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. 15/000,892 01/19/2016 Angela Anh Doan 37800(CM4-60220- US-CIP) 3500 71762 7590 04/30/2020 JONES DELFLACHE LLP 1333 HEIGHTS BOULEVARD SUITE 300 HOUSTON, TX 77008 EXAMINER SUE-AKO, ANDREW B. ART UNIT PAPER NUMBER 3674 MAIL DATE DELIVERY MODE 04/30/2020 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 ANGELA ANH DOAN, MATTHEW GRADY KELLUM, LI LI, and SHAILESH S. DIGHE Appeal 2019-000256 Application 15/000,892 Technology Center 3600 BEFORE BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and JULIA HEANEY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 2–21. 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(a). Appellant identifies the real party in interest as Baker Hughes, a GE company, LLC. Appeal Br. 1. Appeal 2019-000256 Application 15/000,892 2 CLAIMED SUBJECT MATTER Claim 18 is illustrative of Appellant’s subject matter on appeal and is set forth below: 18. A method of displacing at least a portion of a first fluid from a wellbore annulus wherein the annulus is between an external surface of a tubing within the wellbore and a face of a subterranean formation penetrated by the wellbore, the method comprising: (a) pumping into the wellbore a second fluid, prior to pumping a cementitious slurry into the slurry, the second fluid comprising particulates of a hydratable polymeric viscosifying agent having a particle size distribution such that a minimum of 90% of the particulates are retained on a 20 mesh screen, wherein the second fluid is pumped down the wellbore and up through the annulus and further wherein viscosification is delayed in the annulus by inclusion of the hydratable polymeric viscosifying agent in the second fluid; (b) inducing laminar fluid circulation of the first fluid; (c) pumping, after step (b), the cementitious slurry into the wellbore and up through the annulus wherein the second fluid isolates the first fluid and the cementitious slurry; (d) displacing at least a portion of the first fluid from the annulus with the cementitious slurry; and (e) curing the cementitious slurry emplaced in the annulus by the removal of the first fluid. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Reddy et al. US 2012/0090841 Al Apr. 19, 2012 Burts Jr. et al. US 2012/0305250 Al Dec. 6, 2012 Appeal 2019-000256 Application 15/000,892 3 REJECTIONS Claims 2–21 are rejected under 35 U.S.C. § 103 as obvious over Burts in view of Reddy. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal (including the Examiner’s Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellant identifies reversible error. Thus, we reverse the examiner’s rejection for the reasons provided by Appellant, and add the following for emphasis only. We refer to the Examiner’s stated position as presented on pages 2–10 of the Final Office Action. An aspect of the Examiner’s position is that one skilled in the art would have been motivated to modify the spacer fluid disclosed in Burts with the modified biopolymer additive (MBA) of Reddy. Final Act. 3–4. In response thereto, Appellant presents arguments on pages 5–14 of the Appeal Brief. Therein, Appellant argues, inter alia, that Reddy is drawn to a cementing fluid and not a spacer fluid. Appeal Br. 6. In response, the Examiner presents a depiction of the teachings of the combination of Burts in view of Reddy, on page 4 of the Answer, as understood by the Examiner. In reply, Appellant presents a corrected version on page 2 of the Reply Brief (and we agree with this version). As Appellant explains on page Appeal 2019-000256 Application 15/000,892 4 2 of the Reply Brief, contrary to the Examiner’s understanding of Reddy, Reddy does not disclose the presence of the MBA in a spacer fluid. Rather, Reddy clearly states the MBA is a component of a fluid containing a cement. Reddy ¶¶ 30, 34, and 36. As such, Appellant persuasively argues that such a proposed modification of Burts with the MBA of Reddy lacks sufficient motivation because Reddy only discloses a cement fluid containing the modified polysaccharide. As such, Appellant persuasively argues, why would one have been motivated to include, in a spacer fluid, the principal component of a cementing fluid, when the function of the spacer fluid is to separate the cementing fluid from the drilling mud? Appellant argues why would one conclude that a cementing fluid could be successfully separated from a drilling mud using the modified polysaccharide of a cementing fluid? Reply Br. 4–5. Under the circumstances recounted above, it is apparent that the only teaching or suggestion for modifying Burts as proposed in the rejection is derived from Appellant’s own Specification rather than the applied prior art. Therefore, we conclude that the Examiner’s rejection is improperly based upon improper hindsight reasoning. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). See also, W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1551, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). In view of the above, we reverse the rejection. Appeal 2019-000256 Application 15/000,892 5 CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–21 103 Burts, Reddy 2–21 REVERSED Copy with citationCopy as parenthetical citation