Angela Anh. Doan et al.

Patent Trials and Appeals Board

Apr 30, 2020

15000892 - (D) (P.T.A.B. Apr. 30, 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.
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

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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

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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

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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

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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