CONOCOPHILLIPS COMPANY

Patent Trials and Appeals Board

Dec 31, 2020

2020003690 (P.T.A.B. Dec. 31, 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.
15/140,136 04/27/2016 Qing CHEN 42319US02 3564
85937 7590 12/31/2020
Boulware & Valoir
Tamsen Valoir
2603 Augusta Drive
Suite 1350
Houston, TX 77057
EXAMINER
LOIKITH, CATHERINE A
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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):
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 QING CHEN and WENDELL P. MENARD
Appeal 2020-003690
Application 15/140,136
Technology Center 3600
Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and
WILLIAM A. CAPP, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s July 2, 2019 Non-Final Action rejecting claims 22–40. See
Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the ConocoPhillips
Company. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for single-well –
steam-and-gravity drainage (SW-SAGD) oil production, which is a means of
producing heavy oil from oil sands. Spec. ¶¶ 5–6, 12. Claim 22, reproduced
below, is illustrative of the claimed subject matter:
22. A method of producing heavy oil from a reservoir by single
well steam and gravity drainage (SW-SAGD), comprising:
a) providing a horizontal[2] well below a surface of a
reservoir;
b) said horizontal well having a toe end[3] and a heel end[4]
and a middle therebetween at 25–75% of well length;
c) injecting steam into one or more injection segments
between said toe end and said heel end, wherein each injection
segment is separated from an adjacent production segment by a
packer and a blank joint lacking any holes;[5] and
d) simultaneously producing mobilized heavy oil from at
least two production segments;
e) wherein said method produces more oil at a time point
than a similar SW-SAGD well with steam injection only at a toe
end of said similar SW-SAGD well.

2 According to the Specification, “‘[h]orizontal’ drilling is the same as
vertical drilling until the ‘kickoff point’ which is located just above the
target oil or gas reservoir (pay-zone), from that point deviating the drilling
direction from the vertical to horizontal.” Spec. ¶ 63. “Horizontal” includes
“an angle within 45° (≤45°) of horizontal.” Id.
3 “Toe end” includes “the last joint in the horizontal section of the well, or
the last two joints.” Spec. ¶ 56. The Specification defines “joint” as “a
single section of pipe.” Id. ¶ 67
4 “Heel end” includes “the first joint in the horizontal section of the well, or
the first two joints.” Spec. ¶ 55.
5 The Specification defines “blank pipe” as “a joint that lacks any holes.”
Spec. ¶ 65. “Joint” is defined as “a single section of pipe.” Id. ¶ 67.
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Application 15/140,136

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REFERENCES
Name Reference Date
Sanchez US 5,167,280 Dec. 1, 1992
Luft US 6,015,015 Jan. 18, 2000
Sood US 2015/0107842 A1 Apr. 23, 2015
Dykstra US 2015/0252657 A1 Sept. 10, 2015
REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
22–24, 35–37, 39, 40 103 Dykstra
25 103 Dykstra, Sood
26–34 103 Dykstra, Sanchez
38 103 Dykstra, Luft
OPINION
Claims 22–24, 35–37, 39, and 40: Rejected as Unpatentable over Dykstra
Appellant argues the claims subject to this appeal as a group. Appeal
Br. 8–11. We select claim 22 as representative of the group, and decide the
appeal of this rejection on the basis of claim 22 alone. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Dykstra teaches all of the limitations of
claim 22, except that “Dykstra does not specifically teach each injection
segment is separated from an adjacent production segment by a packer and a
blank joint lacking any holes.” Non-Final Act. 2–3 (citing Dykstra ¶ 7,
Figs.1, 2). The Examiner further finds, however, that “Dykstra does teach
‘those skilled in the art would recognize[] that tubing string 22 may include
a number of other tools and systems such as fluid flow control devices,
communication systems, safety systems and the like.’” Id. at 3 (quoting
Dykstra ¶ 24). The Examiner determines that it would have been obvious to
one of ordinary skill in the art “to have modified the joint taught by Dykstra
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to be a blank joint lacking any holes since the system is capable of
considerable modification, alteration, and equivalents in form and function,
as will occur to those ordinarily skilled in the pertinent arts and having the
benefit of [Dykstra’s] disclosure.” Id. (citing Dykstra ¶ 33).
We have considered Appellant’s arguments in support of the
patentability of claim 22, but find them unpersuasive of Examiner error.
Appellant first argues that the Examiner admits that Dykstra fails to
teach the use of blank tubing between the sections. Appeal Br. 9 (citing
Non-Final Act. 3). Appellant asserts that “[t]he claims cannot be obvious
with a missing element, and to hold so is an error of law.” Id. (citing MPEP
2143.02). This is incorrect. Prior art references applied in an obviousness
rejection “need not teach or suggest all the claim limitations,” as long as the
Examiner “explain[s] why the difference(s) between the prior art and the
claimed invention would have been obvious to one of ordinary skill in the
art.” MPEP § 2141 III (rev. 10.2019, June 2020). The Examiner provided
such an explanation, as discussed below. Non-Final Act. 3; Ans. 5–7.
Appellant next argues that the Examiner “fails to explain how ‘fluid
control devices, communications systems or safety systems’ leads her to
blank tubing, and also fails to articulate any reason for modifying the wells
of Dykstra to include blank tubing.” Appeal Br. 10. The Examiner responds
with further explanation as to why one of ordinary skill in the art would have
included blank tubing in Dykstra’s well. Ans. 5–7. The Examiner asserts
that Dykstra teaches an embodiment of a horizontal well where steam
injection and oil production occur simultaneously, in which case the oil
entering production segments, which are separated from steam injection
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segments by packers 30, must have an independent flow path to the surface.
Id. at 5 (citing Dykstra ¶¶ 22, 25, Figs. 1, 2). According to the Examiner:
There is no way for fluid from a production segment near the
toe end of the well to be produced up to the surface without
crossing through some intervening injection segments along the
middle of the well. In order for the production fluid from the
toe end, which is traveling uphole via tubing string 22, to not
immediately be sent back out into the formation in an adjacent
injection segment, the production fluid requires its own
isolated, independent flow path separate from the injection flow
path (again see ¶ [0025]) that transverses the intermediate
injection segment. . . . One of ordinary skill in the art would
recognize that the lowest cost solution to connect sequential
production segments would simply require a blank joint lacking
any holes. That way the production segments would allow for a
produced fluid inlet at the opening of the blank joint as well as
a connection to the next production segment, while separating
the produced fluid from the injection fluid at that location.
Id. at 6. The Examiner thus determines that it would have been obvious to
one of ordinary skill in the art “to modify the tubing string configuration
taught in Dykstra to include injection segments that are ‘separated from an
adjacent production segment by a packer and a blank joint lacking any
holes’ for the purpose of getting the produced oil from one production
segment to the next [uphole production segment], while isolating the oil
from the injection segment there between, and ultimately to the surface.” Id.
at 7.
Appellant responds that the “Examiner’s argument is not based in
fact, as both steam and oil use the same inner tubing in [Dykstra],” because
“injection and production are not even simultaneous (as required by the
claims), but sequential.” Reply Br. 1. Appellant relies on claim 1 of U.S.
Pat. No. 9,279,315 B2 to Dykstra—which issued from the Dykstra patent
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application of record—as well as the prosecution history of the Dykstra
patent, in support of its position that Dykstra’s system operates sequentially
rather than simultaneously. Id. at 1–2.
This is not persuasive of Examiner error. Although the Dykstra patent
ultimately may have claimed a system with sequential injection and
production, the Dykstra application of record nonetheless also discloses a
system in which steam injection and oil production occurs simultaneously.
Dykstra ¶ 25. The fact that Dykstra may have claimed a sequentially
operating system does not obviate its teaching of a simultaneously operating
system. Thus, the premise on which Appellant’s argument appears to be
based, that Dykstra does not disclose simultaneous steam injection and oil
production, is incorrect. Appellant does not address, much less show error
in, the Examiner’s explanation that, when Dykstra’s system is operating in a
mode in which steam injection and oil production occur simultaneously, one
of ordinary skill in the art would have found it obvious to use a blank joint to
allow oil to flow between oil production segments that are separated by
steam injection sections.
Appellant next argues that Dykstra does not need to use blank tubing
to mitigate steam breakthrough problems, because Dykstra uses vertical
separation between the steam injection sections and oil production segments
to do so. Appeal Br. 10. The Examiner responds that Dykstra’s use of
vertical separation to mitigate steam breakthrough problems “does not
negate the fact that Dykstra does in fact require each injection segment to be
separated from an adjacent production segment by a packer and a blank joint
lacking any holes.” Ans. 8.
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We agree with the Examiner. This argument appears to be based on
Appellant’s contention that simultaneous steam injection and oil production
is not disclosed by Dykstra. See Reply Br. 1–2. As discussed above, this
contention is incorrect.
Finally, Appellant argues that “[m]odifying Dykstra to use blank
tubing between the sections instead of just packers creates a ‘blind interval’
between each section, behind which oil can be trapped,” so the “Examiner’s
proposed modification actually makes Dykstra less effective in producing
oil.” Appeal Br. 10. According to Appellant, “[b]ecause the entire well is
slotted in Dykstra, more oil is recovered, and there is no possibility of oil
behind the blank joints.” Id. at 10–11 (citing Spec. ¶ 19; Dykstra ¶¶ 19, 21).
The Examiner responds that “[t]he examiner is not suggesting
replacing the slotted tubing of Dykstra with blank joints,” but, instead,
“[t]hose openings will provide entry of produced fluid into the tubing
string 22 [shown in Dykstra, Fig. 2], which will include the blank joint
routing that produced fluid to the next uphole production segment” past the
intervening steam-injection segment. Ans. 8–9; see also id. at 9 (“[s]tated
another way, there are openings at each end of the connecting blank joint in
each production segment,” the “blank joint traverses the injection segment
that is in between the production segments,” and the “blank joint has no
holes in the injection segment, yet it has an open end in each surrounding
production segment.”).
We are not persuaded of Examiner error. Again, Appellant’s
argument appears to be based on Dykstra’s system operating with sequential
steam injection and oil production, whereas the Examiner’s rejection is
based on Dykstra’s system operating with simultaneous steam injection and
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oil production. Thus, this argument is not responsive to the rejection as
articulated by the Examiner.6
In sum, as we are not persuaded that the Examiner erred in rejecting
claim 22 as unpatentable over Dykstra, we sustain the Examiner’s rejection
of claims 22–24, 35–37, 39, and 40.
Remaining Rejections
Appellant does not separately argue the rejections of claims 25–34
and 38. Thus, for the reasons discussed above, we affirm these rejections.
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,

6 In the Reply Brief, Appellant argues for the first time that “since the well
in [Dykstra] is wavy, all inner tubing is likely to be coiled tubing and not
made of joints.” Reply Br. 2. Appellant acknowledges that “Dykstra does
not discuss this level of detail, but it is known to use coil tubing in single
well SAGD completions.” Id. We decline to consider this argument, as it
was raised for the first time in the Reply Brief and Appellant has not shown
good cause why it was not first raised in the Appeal Brief. 37 C.F.R.
§ 41.41(b)(2). Even were we to consider it, however, we would not find it
persuasive, since it is based on speculation, rather than record evidence, as to
Dykstra’s use of coiled tubing instead of pipe joints.
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Application 15/140,136

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22–24, 35–
37, 39, 40
103 Dykstra 22–24, 35–
37, 39, 40

25 103 Dykstra, Sood 25
26–34 103 Dykstra, Sanchez 26–34
38 103 Dykstra, Luft 38
Overall
Outcome
22–40
TIME PERIOD FOR RESPONSE
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