Ex Parte 7,213,651 B2 et al

Patent Trial and Appeal Board

May 31, 2016

96000010 (P.T.A.B. May. 31, 2016)

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.
96/000,010 03/27/2013 7,213,651 B2 9624
35979 7590 05/31/2016
Bracewell & Giuliani LLP
P.O. Box 61389
Houston, TX 77208-1389
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/31/2016 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
____________

BAKER HUGHES INCORPORATED
Patent Owner and Appellant
____________

Appeal 2016-000001
Reexamination Control 96/000,010
U.S. Patent 7,213,651 B2
Technology Center 3900
____________

Before CHUNG K. PAK, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner appeals from the Patent Examiner’s final rejection of
claims 1, 2, and 5–27 in the above-identified supplemental examination and
ex parte reexamination of U.S. Pat. No. 7,213,651 B2. The Board’s
jurisdiction for this appeal is under 35 U.S.C. §§ 6(b) and 134(b). We
affirm.
I. STATEMENT OF CASE
A corrected request for supplemental examination of U.S. Pat. No.
7,213,651 was filed under 35 U.S.C. § 257 and 37 C.F.R. §§ 1.601, 1.605,
1.610, 1.615, 1.620, and 1.625 on March 27, 2013 (“Request”). The
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Requester is the Patent Owner. Request i. The supplemental reexamination
proceeding concluded with the issuance of the supplemental examination
certificate on June 11, 2013 stating that a substantial new question of
patentability was raised by one or more items submitted as part of the
Request. Accordingly ex parte reexamination was ordered under 35 U.S.C.
§ 257(b) and 37 C.F.R. § 1.625(b).
Claims 1, 2, and 5–27 are pending and stand finally rejected by the
Examiner as follows:
1. Claims 1, 2, 5, 6, 8, 10, and 15–19 under 35 U.S.C. § 102(b) (pre-
AIA) as anticipated by U.S. Patent No. 4,442,897 to Crowell, issued Apr.
17, 1984 (“Crowell”).
2. Claim 7, 9, 11–14, and 20–27 under 35 U.S.C. § 103(a) (pre-AIA)
as obvious in view of Crowell.
3. Claims 1, 2, 5–11, 13, 14, 17–22, and 24–26 under 35 U.S.C.
§102(b) (pre-AIA) as anticipated by U.S. Patent No. 5,036,919 of Thomas et
al., issued Aug. 6, 1991 (“Thomas”).

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter and reads as
follows (underlining and brackets indicate amendments relative to the
original claim):
1. A method for fracturing a subterranean formation, the
method comprising:
introducing a first treatment fluid having a first viscosity
and a first density into the subterranean formation; and
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introducing a second treatment fluid having a second
viscosity and a second density into the subterranean formation,
wherein
[at least one of the first treatment fluid and] the second
treatment fluid comprises a proppant[;],
the first treatment fluid creates a fluid segment extending
through the subterranean formation[;], and
the second treatment fluid creates a finger or channel
extending through [within] the fluid segment.

Claims 1 is directed to a method for fracturing a subterranean
formation. The method comprises introducing first and second treatment
fluids into the formation, where the fluids have “a first viscosity and a first
density” and “a second viscosity and a second density,” respectively. The
second treatment fluid also comprises a “proppant.” The densities and
viscosities can be “substantially equal” (claim 12) or different (claim 11).
The claim has a functional limitation of where “the second treatment
fluid creates a finger or channel extending through the fluid segment” of the
first treatment fluid. Independent claims 17, 23, and 24 differ in scope from
claim 1, but also require a second fluid creating a “conductive channel
through the first fluid” (claim 17), “a finger or channel extending through
the fluid segment” (claim 23), and “a finger or channel extending through
one side of the first fracturing fluid and out an opposite side of the first
fracturing fluid” (claim 24). For the purpose of deciding the rejection, we
treat all the claims as a group.
Claim 5 depends from claim 1, and recites a list of compositions from
which “the first treatment fluid and the second treatment fluid are
independently selected from.”
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The ’651 patent explains that the process through which “conductive
channels” or “fingers” are formed in the first treatment fluid:
As used herein, the terms “viscous fingering” or “conductive
channel” are meant to be synonymous, and refer generally to
the effect resulting from injecting a low-viscosity, density, or
similar material or fluid into a medium or fluid having a
different viscosity, density, or similar characteristic, such that
the result is the penetration of the fluid injected through the first
fluid, allowing for flow-through to occur. This concept is
represented schematically in an idealized situation in FIG. 2,
wherein a less viscous fluid (the shaded area) is shown to be
displacing a more viscous fluid (the clear area). As time
progresses from an initial starting time (t=0 in the figure), the
less viscous fluid forms “fingers” into the flow channel, hence
the term “viscous fingering”.
’651 patent, col. 6, ll. 41–53.

REJECTIONS BASED ON CROWELL
Crowell describes a method for fracturing a subterranean formation
created by a wellbore, where the fracturing is accomplished by first injecting
a low leakoff high efficiency fluid into the formation followed by a
controlled viscosity fluid comprising propping agents. Crowell, Abstract;
Final Rej. 6. The Examiner found that the low leakoff high efficiency fluid
corresponds to the “first treatment fluid” and the controlled viscosity fluid
corresponds to the “second treatment fluid.” Final Rej. 6. The fluids
utilized by Crowell (id.; Crowell, col. 6, ll. 52–59) appear to overlap with
those recited in claim 5 of the ’651 patent.
The Examiner acknowledged that Crowell does not expressly describe
a conductive channel formed in the first treatment fluid by the second
treatment fluid, but found that one of ordinary skill in the art “would readily
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recognize that the first pumped fluid is being displaced by the second
pumped fluid and the ‘viscous fingering’ which inherently occurs.” Id. at
11. The Examiner found that “when a second quantity of controlled
viscosity fluid is pumped into the fracture behind (i.e., after) the first
treatment fluid as taught by Crowell, ‘viscous fingering’ occurs.” Id.
The Examiner found that the additional limitations in claims 7, 9, 11–
14, and 20–27 would have been obvious to one of ordinary skill in the art to
achieve the desired fracture of the subterranean formation and obtain low
fluid loss. Id. at 8.
Patent Owner contends that the Examiner has misconstrued “viscous
fingering” as defined in the ’651 patent. Patent Owner contends that
“viscous fingering” requires a conductive channel within and through the
first treatment fluid. Appeal Br. 20–23. Patent Owner argues that Crowell,
in contrast, describes “[e]ach successive quantity of controlled viscosity
fluid further pushes the preceding quantity of controlled viscosity fluid and
the low leakoff fluid 24 through the fracture 22.” Id. at 22.

Discussion
Crowell teaches “the first quantity 26 of controlled viscosity fluid
carrying an amount of propping agent is pumped into the fracture 22 behind
low leakoff, wall building fluid 24 causing the low leakoff fluid 24 to widen
and lengthen the fracture 22.” Crowell, col. 3, ll. 41–45. Fig. 3 of Crowell
illustrates these steps:
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Fig. 3, reproduced above, shows a view of the subterranean formation after a
low leakoff fluid 24 has been pumped into the fracture followed by the
controlled viscosity fluid 26 containing the propping agent. Id.
Crowell does not expressly describe channels being formed in the low
leakoff fluid 24 by the controlled viscosity fluid 26. However, Crowell
describes the same two steps of introducing first and second treatment fluids
which are claimed. The fluids utilized in Crowell also appear to be the same
as, or overlap with, those which are claimed. See Final Rej. 6; claim 5;
Crowell, col. 6, ll. 52–59. The issue is whether there is sufficient evidence
that the controlled viscosity fluid 26 (“second treatment fluid”) creates a
finger or channel extending through the fluid segment of the low leakoff
fluid 24 (“the first treatment fluid”).
It is well-established when the PTO “has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the
claimed subject matter [may] be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on.” In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971).
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Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
See In re Ludtke, supra. Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced by
the PTO’s inability to manufacture products or to obtain and
compare prior art products. See In re Brown, 459 F.2d 531, 59
CCPA 1036 (1972).
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
The applicant has the burden of coming forward with evidence
in rebuttal, when the prior art includes a method that appears,
on its face, to be capable of producing the claimed composition.
This burden may be met by presenting sufficient reason or
authority or evidence, on the facts of the case, to show that the
prior art method would not produce or would not be expected to
produce the claimed subject matter.
In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005).
As indicated above, the steps and fluids described by Crowell are the
same as those which are claimed. The Examiner thus reasonably placed the
burden on Patent Owner to establish that Crowell’s method does not result in
“a finger or channel extending through the fluid segment” of the first
treatment fluid. Patent Owner has not adequately explained why a different
outcome would have been expected from Crowell’s process when the steps
and materials are the same.
Patent Owner argues that displacement of the first treatment fluid by
the second treatment fluid is described by Crowell, not viscous fingering as
defined in the ’651 patent. Appeal Br. 19. However, the claims do not
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exclude displacement from occurring. The Examiner’s position is that
conductive channels would inherently form during the displacement process
described in Crowell. The Examiner’s position is reasonable. The ’651
patent describes “a less viscous fluid . . . displacing a more viscous fluid”
and then “[a]s time progresses from an initial starting time . . ., the less
viscous fluid forms ‘fingers’ into the flow channel.” ’651 patent, col. 6, ll.
51–53. Thus, displacement is described in the ’651 patent at the beginning
of viscous fingering. Because the steps and materials appear to be the same,
the Examiner correctly put the burden on Patent Owner to show that the
claimed process was different from the one described in Crowell. As the
burden was not met, we affirm the rejection of claims 1, 17, 23, and 24.
Patent Owner did not provide separate reasons as to why dependent claims
2, 5–16, 18–22, and 25–27 not anticipated or obvious in Crowell.
Consequently, we affirm the rejection of these claims, as well. 37 C.F.R.
§ 41.37(c)(iv).

REJECTIONS BASED ON THOMAS
Thomas describes pumping a first fracturing fluid into a subterranean
formation. Thomas, col. 2, ll. 51–56. Next, “a second, less damaging, lower
temperature stable fracturing fluid which is different from the first fluid is
then pumped behind the first fracturing fluid.” Id. at col. 2, ll. 62–65. See
also id. at claim 1.
The Examiner found that the first and second fluids correspond to the
first and second treatment fluids recited in the claims. Final Rej. 9. The
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fluids utilized in Thomas (id.) appear to overlap with those recited in claim 5
of the ’651 patent. See Thomas, col. 3, ll. 12–18, 35–37; claim 2.
The steps in Thomas are also the same as those claimed. Thomas, as
with Crowell, does not expressly describe a conductive channel formed in
the first treatment fluid by the second treatment fluid. The Examiner found
that the claims are not patentable over Thomas for the same reasons as for
Crowell. Id. at 11. Patent Owner’s arguments are the same as they are for
Crowell. Appeal Br. 29–31.
Because the steps and materials appear to be the same, the Examiner
correctly put the burden on Patent Owner to show that the claimed process
was different from the one described in Thomas. As the burden was not
met, we affirm the rejection of claims 1, 17, and 24. Patent Owner did not
provide separate reasons as to why dependent claims 2, 5–11, 13, 14, 18–22,
25, and 26 are not anticipated by Thomas. Consequently, we affirm the
rejection of these claim, as well. 37 C.F.R. § 41.37(c)(iv).

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

PATENT OWNER:
BRACEWELL & GIULIANI LLP
P.O. Box 61389
Houston, TX 77208-1389