Ex Parte Abass et al

Patent Trial and Appeal Board

Sep 23, 2016

12558747 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/558,747 09/14/2009
26232 7590 09/27/2016
FISH & RICHARDSON P.C. (HALLIBURTON)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
Hazim H. Abass
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
17908-0007001 7101
EXAMINER
ANDREWS, DAVID L
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAZIM H. ABASS, ASHRAF M. TAHINI,
MOHAMED Y. SOLIMAN, and DAVID MEADOWS
Appeal2014-007421
Application 12/558,747
Technology Center 3600
Before LINDA E. HORNER, MARK A. GEIER, and PAUL J.
KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants, Hazim H. Abass et al., 1 appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-10, 13-16, 19, 20, 23-26,
and 28-32.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants identify the real parties in interest as Halliburton Energy
Services, Incorporated and Saudi Arabian Oil Company. Appeal Br. 4.
2 Claims 11, 12, 17, 18, 21, 22, and 27 are cancelled. Appeal Br. 6.
Appeal2014-007421
Application 12/558,747
THE CLAIMED SUBJECT MATTER
The claims are directed to a method for "forming transverse fractures
into a subterranean zone from a horizontal well .... " Spec. ,-r 1. Claims 1,
13, 19, and 32 are independent. Appeal Br. 22-29 (Claims App.). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of forming transverse fractures extending from
a horizontal wellbore comprising:
forming a wellbore within a subterranean zone, the
wellbore having a horizontal wellbore portion;
forming a tunnel extending from the horizontal wellbore
portion into the subterranean zone towards an overburden, the
tunnel extending a predetermined distance into the subterranean
zone, the predetermined distance comprising a range between
one and a half (1.5) times a radius of the horizontal wellbore
portion and six ( 6) times the radius of the horizontal well bore
portion;
applying fluid pressure to an interior of the horizontal
wellbore portion at a location proximate the tunnel to initiate a
fracture from a location of the tunnel at or near the predetermined
distance of the tunnel towards the horizontal wellbore portion;
and
propagating the initiated fracture substantially transverse
to the horizontal wellbore portion.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Skinner
Willett
US 2006/0102343 Al
US 2008/0110622 Al
May 18, 2006
May 15, 2008
Charlie Cosad, Choosing a Perforation Strategy, Oilfield Review, 54---69
(Oct. 1992)
(http://www. slb .com/~ /media/Files/resources/ oilfield_review I ors92/ 1092/p5
4_69 .pdf) (last visited Sept. 7, 2016) (hereinafter called "Cosad").
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Application 12/558,747
REJECTIONS
The Examiner made the following rejections:
1. Claims 1-5, 7-10, 13-16, 19, 20, 23-26, and 28-32 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as being unpatentable over Willett.
2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Willett and Skinner.
Appellants seek our review of these rejections.
ANALYSIS
The Rejection of Claims 1-5, 7-10, 13-16, 19, 20, 23-26, and 28-32
As Anticipated By, Or Unpatentable Over, Willett
Claims 1-5, 7-10, 13-16, 19, 20, 23-26, and 28-31
Appellants argue claims 1-5, 7-10, 13-16, 19, 20, 23-26, and 28-31
as a group. Appeal Br. 13-19. We select claim 1 as the representative claim,
and claims 2-5, 7-10, 13-16, 19, 20, 23-26, and 28-31 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Willett discloses all of the limitations of
claim 1 including the limitation requiring a "tunnel extending a
predetermined distance into the subterranean zone, the predetermined
distance comprising a range between one and a half ( 1. 5) times a radius of
the horizontal well bore portion and six ( 6) times the radius of the horizontal
well bore portion" (called "tunnel length" for brevity and to be consistent
with the language used by the Examiner and Appellants). Final Act. 4. The
Examiner specifically finds that Willett discloses that the tunnel length is
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Application 12/558,747
"shown 2 times at least" the wellbore radius. Id. The Examiner further
states:
Although the tunnels of Willett et al. are considered to be
at least two times the radius of the wellbore, as shown, even if
Willett et al. is not considered to disclose a length of the tunnels
as between 1.5 and 6 times the radius of the wellbore, it would
have been obvious to one of ordinary skill in the art at the time
of invention to create the tunnels of Willett et al. in this range
since a tunnel length must be chosen, and deeper perforations
would provide for better fracturing and drainage of the
formation.
Id. at 6.
In response to the Examiner's rejection, Appellants present four
arguments why the Examiner erred in finding that Willett discloses the
tunnel distance limitation. First, Appellants argue that Willett does not
inherently disclose the tunnel length limitation of claim 1. Appeal Br. 16-
17. The Examiner agrees that the rejection does not rely upon inherent
anticipation for the tunnel length limitation. Ans. 2.
Second, Appellants argue that, because the Willett drawings are not to
scale, it is legal error for the Examiner to rely on the drawings for disclosure
of the dimensions of the length and radius of the tunnel and wellbore.
Appeal Br. 17, 14. The Examiner responds that the rejection
has not relied on the strict dimensions or scale of the drawings
but rather simply the relative size of the components as shown,
which as shown, is as claimed. One of ordinary skill in the art in
exercising the disclosure of Willett et al. would have no reason
to change any aspect of the disclosure (as shown in the figures)
and would therefore practice the methods (and system) of Willett
et al. by reproducing the relative dimensions shown, which
would result in the claimed invention. Further, as the instant
claims provide a range of sizes (tunnel length as 1.5 to 6 times
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Application 12/558,747
the radius of the horizontal wellbore portion) the methods of
Willett could be recreated with significant deviation to that which
is shown and still fall within the range as claimed. Therefore, this
rejection as anticipating the claimed range, based on the figures
of Willett et al. is not improper, since as would be viewed by one
of ordinary skill, Willett et al. discloses the creation of tunnels
which are at least [within a] range of 1. 5 to 6 times the radius of
the horizontal wellbore portion and therefore should be upheld.
Ans. 3. The Examiner does not cite to any portion of Willett or other
evidence to support these conclusions. Willett makes no mention of tunnel
length, wellbore radius, or any purported relationship between tunnel length
and wellbore radius. The Examiner's reliance on the "relative size" between
tunnel length and wellbore radius in the unscaled Willett figures is improper.
Hockerson-Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d 951, 956 (Fed.
Cir. 2000) (When the reference does not disclose that the drawings are to
scale and is silent as to dimensions, arguments based on measurement of the
drawing features are of little value).
Third, in the Appeal Brief~ Appellants argue that the "Office Action
appears to assume - without support or explanation - that the claimed
range of the predetermined distance of the tunnel length is simply a
parameter capable of determination by routine experimentation by one of
ordinary skill in the art" and "the Office Action fails to show any reference
beyond Willett that recognizes a range of predetermined distance of tunnel
length relative to wellbore radius as a result effective variable." Appeal Br.
17-18.
In response, the Examiner states that:
one of ordinary skill would view the length of such a perforation
tunnel as a result effective variable to achieve better fluid
drainage and/or fluid communication between the wellbore and
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Application 12/558,747
the formation. It is a well-known physical relationship that one
of ordinary skill would appreciate that along a permeable
boundary, a potential fluid volume crossing the boundary will
increase with an increase in exposed area of that permeable
boundary. For example, on page 59 of [Cosad], it is shown that
productivity of a formation increases with an increase in
perforation (tunnel) length (page 59, top left figure). This is a
relationship one of ordinary skill would readily appreciate, even
without this example teaching from Cosad. Therefore, not only
is the rejection, as presented, a proper and obvious modification
to the disclosure of Willett et al., it would also be routine
experimentation to simply modify the length of the tunnel to
result in the claimed range of lengths ...
Ans. 3--4.
Appellants respond to the Examiner, arguing that Cosad does not
disclose that tunnel length is a result effective variable for three reasons.
First, Appellants argue that Cosad's "perforation" is different from the
"tunnel" recited in claim 1 :
One of ordinary skill in the art would not interpret a "perforation"
(e.g., typically, a hole made in a formation through explosive
charges) to be the same as or analogous to the claimed "tunnel,"
and indeed, the present disclosure specifically differentiates
these terms of art in stating that, "[ u ]nlike perforations formed in
a wellbore, the tunnel 80 has a better defined elongated shape
with less damage to the surrounding subterranean zone 40."
Application at [0032].
Reply Br. 3. Contrary to Appellants' argument that one skilled in the art
would interpret perforations and tunnels differently, Cosad uses the terms
perforation and tunnel interchangeably. See, e.g., Cosad 58 (e.g., referring
to "penetration tunnel length" in second bullet and "[p ]erforation length" in
the tables), 59 (referring to "effective tunnel length" in left column and
''perforation tunnef' in two bottom pictures), and 60 (referring to
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"perforation tunnef' in three right pictures). Appellants attempt to
distinguish between perforations, which they argue are holes "typically"
made by explosive charges, and tunnels, which the Specification states are
holes which may be formed using a hydrajet, laser, or drilling tool (e.g.,
Spec. i-f 6), but claim 1 is not limited to the specific embodiments described
in the Specification. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(stating limitations not appearing in the claims cannot be relied upon for
patentability). Appellants' relatively narrow usage of the term "tunnel" is
inconsistent with the broader usage in the claims- e.g., usage of the term
"tunnel" in claim 1, for example, is broader than claim 4 which recites that
the tunnel is formed by "a hydrajet, a laser, or a drilling tool." Appeal Br.
22-23 (Claims App.). Thus, Appellants do not show error by the Examiner
in finding that Co sad' s perforation is encompassed by the claimed "tunnel."
Appellants next argue that Cosad "refutes the Answer's suggestion
that perforation depth is a result effective variable, based on the idea that the
deeper the perforations (e.g., larger the surface area of the formed
perforations), the better the formation productivity." Reply Br. 3.
Appellants' argument, however, does not address: (1) the accuracy of the
productivity data in the table referenced by the Examiner (Ans. 4) and other
portions of Cosad, which shows that productivity and fracture network in the
formation is affected by tunnel length (see, e.g., Cosad 58-59), or (2) the
Examiner's determination that "one of ordinary skill would view the length
of such a perforation tunnel as a result effective variable to achieve better
fluid drainage and/or fluid communication between the wellbore and the
formation" (Ans. 3--4). Cosad also discloses that perforation length-
perforation penetration into the formation -is one of "four key factors" or
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"/mjajor geometrical parameters" which determines flow efficiency in a
perforation completion. Cosad 56; see also Cosad 58 (stating that
perforation length has the "greatest" relative importance in certain types of
completion types). The top figure on page 56 of Cosad, for example, also
discloses that productivity is affected by the relationship between the tunnel
length (e.g., perforation penetration) and size of the damage zone and
wellbore. Cosad 56 (stating "[p]roductivity of a well also depends on ...
whether the perforation extends beyond the damaged zone .... "). Thus,
Appellants do not show error by the Examiner in the finding that it was well-
known in the art that perforation depth is a result effective variable.
Third, Appellants argue that the "results" of Co sad and the claimed
invention are different. Appellants argue that Cosad's "'result' of the result-
effective variable of perforation length is 'formation productivity."' Reply
Br. 4. According to Appellants, the "example inventive embodiments" of
the Specification discuss "that the 'result' of the claimed tunnel length range
is 'a greater likelihood that a transverse fracture with respect to the
horizontal wellbore 20 will result[,]' Application at [0036]; not 'formation
productivity"' as disclosed in Cosad. Reply Br. 4. Contrary to Appellants'
argument, however, the Specification states "[r]eservoir stimulation [such as
the claimed invention] may be used to enhance recovery of reservoir fluids
from a subterranean reservoir or zone." Spec. ,-r 2. In addition, limitations
such as a "greater likelihood" of transverse fractures not appearing in the
claims cannot be relied upon for patentability. Self, 671 F.2d at 1348.
Finally, in their fourth argument that the Examiner erred, Appellants
argue that the Specification "recognizes [the relationship between tunnel
length-to-wellbore radius and effect on fracture orientation] provided 'new
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Application 12/558,747
and unexpected results relative to the prior art."' Appeal Br. 18-19.
Appellants assert that the Specification discusses new and unexpected results
relative to Willet, but Appellants do not identify any new and unexpected
results relative to Cosad. Cosad, for example, recognizes the importance of
tunnel length penetration into the formation, the relative size between the
tunnel length penetration and the damaged zone, and "good hydraulic
communication between the perforations and fracture network," and further
identifies tunnel length penetration as a factor and parameter which
determines flow efficiency and the proper fracture network. See, e.g., Cosad
56, 58.
For these reasons, Appellants have not shown error in the Examiner's
determination that tunnel length is a result effective variable, and that "it
would also be routine experimentation to simply modify the length of the
tunnel to result in the claimed range of lengths." Ans. 3--4.
We sustain the Examiner's rejection of claim 1, and claims 2-5, 7-10,
13-16, 19, 20, 23-26, and28-31 fall with claim I.
Claim 32
Claim 32 recites, in part, "the tunnel extending a predetermined
distance into the subterranean zone, the predetermined distance being based
on a radius of the horizontal well bore portion .... " The Examiner finds
that Willet discloses:
the tunnel extending a predetermined distance into the
subterranean zone (predetermined at least by tool used, pressures
used, formation type etc., all of which are inherently considered
when performing such an operation), ... wherein the radius [sic,
predetermined distance] is based on a radius of the horizontal
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wellbore portion (based on in at least limiting the size of tool
which may create perforation or create pressure conditions).
Final Act. 4--5. The Examiner further explains that:
The length of the tunnels are also considered "based" on the
radius in that the radius of the wellbore would strictly limit the
type of tool and delivery system which can be inserted within and
then used to create that tunnel (tools inserted into wellbore as
disclosed by Willett et al., i-f's 28, 29, figs 1-6 at least). Any
tunnel created must fall into the category of those which can be
created using tools which can be inserted into such a radius and
therefore the tunnel as created is also "based" on the radius of the
horizontal portion in this manner.
Ans. 5.
Appellants assert that " [a] s noted above [with respect to claim 1], the
Office Action fails to show that Willett discloses specific lengths of its
perforation tunnels 20, as recited in amended claim 32, or even a
relationship between a predetermined tunnel length and a radius of the
horizontal wellbore portion." Appeal Br. 20 (emphasis added). Contrary to
Appellants' argument, however, claim 32 does not recite any specific
"tunnel length[ s ]" (like claim 1 ). Appellants' argument also does not
address the rejection as articulated by the Examiner and, thus, does not show
Examiner error. We sustain the rejection of claim 32.
The Rejection of Claim 6 As Unpatentable Over Willett and Skinner
Appellants do not address the rejection of claim 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Willett and Skinner. Therefore, we
summarily sustain the rejection.
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DECISION
For the above reasons, the Examiner's rejections of claims 1-10, 13-
16, 19, 20, 23-26, and 28-32 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015).
AFFIRMED
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