Ex Parte Belakshe et al

Patent Trial and Appeal Board

Jan 24, 2018

13662878 (P.T.A.B. Jan. 24, 2018)

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.
13/662,878 10/29/2012 Ravikant S. Belakshe 2012-IP-058331U1 1814
15604 7590 01/26/2018
Baker Botts L.L.P.
910 Louisiana Street, One Shell Plaza
Houston, TX 77002
EXAMINER
SPAMER, DONALD R
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
susan.stewart@bakerbotts.com
debie.hernandez @ bakerbotts. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAVIKANT S. BELAKSHE,
LALIT PANDURANG SALGAONKAR, and ACHALA V. DAN AIT
Appeal 2017-003359
Application 13/662,878
Technology Center 1700
Before GEORGE C. BEST, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11 and 13-22. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Independent claims 1-3 all require using a fluid comprising a material
selected from the group consisting of a withanolide, a source of a
withanolide, a withanolide derivative, a source of a withanolide derivative,
Appeal 2017-003359
Application 13/662,878
and any combination thereof. Claim 2 is illustrative of the subject matter on
appeal and is reproduced below:
2. A method of inhibiting corrosion of carbon steel to
be contacted with a fluid comprising an aqueous acidic phase,
the method comprising the steps of:
(A) forming the fluid comprising an aqueous acidic
phase, the fluid additionally comprising a material selected
from the group consisting of: a withanolide, a source of a
withanolide, a withanolide derivative, a source of a withanolide
derivative, and any combination thereof; and
(B) contacting the carbon steel with the fluid.
Appellant1 (App. Br. 9) requests review of the following rejections
from the Examiner’s Final Action:
I. Claims 2—4, 7, 8-10, 13-18, 21, and 22 rejected under 35
U.S.C. § 103(a) as unpatentable over Pandian (B.R. Pandian & M.G.
Sethuraman, Solanum Tuberosum as an Inhibitor of Mild Steel Corrosion in
Acid Media, 28 Iran J. Chem. Chem. Eng. 77-84 (2009)) and Dubey (J.
Dubey et al., Effect of Temperature on Corrosion Inhibition Efficiency of
Withania somnifera (Ashwagandha) on Aluminum in HCl Solution, 13 J. of
Corrosion Sci. and Engr. (Preprint 1) (submitted January 7, 2010)).
II. Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pandian, Brezinski (M.M. Brezinski, New Environmental Options for
Corrosion Inhibitor Intensifies, SPE 52707 299-305 (1999)), and Dubey.2
III. Claims 5, 6, 19, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Pandian, Dubey, and Brezinski.
IV. Claim 11 rejected under 35 U.S.C. § 103(a) as unpatentable
over Pandian, Dubey, and Kulkami (S.K. Kulkami & Ashish Dhir, Withania
1 Halliburton Energy Services, Inc. is the Applicant and is also identified as
the real party in interest. App. Br. 2.
2 The Examiner also relied on Sangwan (US 2005/0266100 Al, published
December 1, 2005) as an evidentiary reference in the discussion of the
rejection. Final Act. 3. Appellant does not object to the Examiner’s reliance
on this evidentiary reference. See generally App. Br.
2
Appeal 2017-003359
Application 13/662,878
somnifera: An Indian ginseng, 32 Prog. Neuro-Psychopharm. & Bio. Psych.
1093-1105 (2008)).
Appellant argues independent claims 2 and 3 together (Rejection I)
and rely on these arguments to address the rejection of claims 4, 7, 8-10,
13-18, and 22 as well as the separate rejections of claims 5, 6, 11, 19 and 20
(Rejections III and IV). App. Br. 7, 9. Appellant presents additional
arguments addressing the rejections of claim 1 (Rejection II) and dependent
claim 21 (Rejection I). Id. at 8-10. Accordingly, we select independent
claim 2 as representative of the subject matter before us for review on
appeal. Claims 3-11, 13-20, and 22 stand or fall with claim 2. See 37
C.F.R. § 41.37(c)(l)(iv). The arguments for claims 1 and 21 will be
addressed separately.
OPINION
Prior Art Rejections
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejections of claims 1-11
and 13-22 for the reasons presented by the Examiner. We add the following
for emphasis.
Claim 2
Claim 2 is directed to a method of inhibiting corrosion of carbon steel
by using a fluid comprising an aqueous acidic phase and a material selected
from the group consisting of a withanolide, a source of a withanolide, a
withanolide derivative, a source of a withanolide derivative, and any
combination thereof.
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Application 13/662,878
The Examiner finds Pandian teaches a method of inhibiting corrosion
of carbon steel with an aqueous acidic phase comprising an extract from
Solanum tuberosum that differs from the claimed invention in that Pandian
does not disclose that the extract of S. tuberosum contains a withanolide, a
withanolide derivative, a source of withanolide, and/or a source of a
withanolide derivative as claimed. Final Act 2-3; Pandian Abstract, 78, 82.
The Examiner also finds Pandian teaches that organic compounds with N, S,
and/or O atoms are particularly effective at preventing acid corrosion of
metals and are found in the extract of S. tuberosum. Final Act. 3; Pandian
78, 84. The Examiner finds Dubey, like Pandian, teaches making a
corrosion inhibitor from plant extract where the inhibitor has compounds
with atoms of N, O, and S that are effective for inhibition acid corrosion of
metals. Final Act. 3; Dubey 2.3 The Examiner further finds Dubey teaches
making the extract from leaves of Withania somnifera containing
withanolides such as withaferin A and withanolides to form the corrosion
inhibitor. Final Act. 3; Dubey 2-3 The Examiner determines that it would
have been obvious to a person having ordinary skill in the art to substitute
one known acid corrosion inhibiting extract with compounds containing N,
S, and/or O atoms for another motivated by an expectation of successfully
inhibiting corrosion. Final Act. 3.
Appellant does not dispute the Examiner’s finding that Dubey teaches
the claimed corrosion inhibitor. App. Br. 5-6. Instead, Appellant asserts
that Pandian and Dubey treat different metals (steel v. aluminum) that have
different susceptibility to corrosion in acidic solutions. Id. According to
3 Dubey is not paginated. For the purposes of this opinion, we number the
pages in this reference beginning with the page containing the title as page 1.
4
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Application 13/662,878
Appellant, there is no reasonable expectation that Dubey’s inhibitor would
function as a corrosion inhibitor for Pandian’s steel surface only because
both references recognize that corrosion inhibitors having N, S, and O are
known. Id. at 5. Thus, Appellant argues the skilled artisan would not have
expected Dubey’s corrosion inhibitor for aluminum to successfully inhibit
corrosion of Pandian’s carbon steel. Id. at 6.
We are unpersuaded by these arguments. While Appellant argues that
aluminum and steel have different corrosion mechanisms {id.), we agree
with the Examiner that Appellant has not adequately explained why one
skilled in the art, guided by the references’ recognition that corrosion
inhibitors of organic compounds having N, S, and/or O atoms are known as
corrosion inhibitors (Pandian 78; Dubey 2), would not have found the
withanolide containing Dubey’s corrosion inhibitor suitable for Pandian’s
corrosion inhibiting process. Ans. 3—4. Appellant has not adequately
explained how the corrosion mechanism of carbon steel would have made
Dubey’s corrosion inhibitors unsuitable for Pandian’s process.
We have also considered Appellant’s evidence that it was surprising
that Withania somnifera extract of Dubey would work as a corrosion
inhibitor for carbon steel. App. Br. 6. Appellant’s reliance on the articles by
Davis4 (aluminum) and Samtani5 (steel) is insufficient to support a showing
of surprising (unexpected) results because, as noted by the Examiner (Ans.
4-5), each reference only discusses the corrosion mechanisms for one of the
4 Corrosion of Aluminum and Aluminum Alloys, Pub. No. FHWA-CFL/TD-
10-002 (Joseph R. Davis, Ed.) (1999), pp. 25^13.
5 Naresh C. Samtani & Edward A. Nowatzki, Hollow Bar Soil Nails Review
of Corrosion Factors and Mitigation Practice (2010).
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Application 13/662,878
respective metals and do not address Dubey’s corrosion inhibitor. Further,
Appellant does not direct us to other objective evidence in support of the
assertion of surprising results. Thus, Appellant, at most, has provided mere
attorney arguments; such arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979).
Claim 21
Dependent claim 21 requires that the method of treating the carbon
steel with the claimed corrosion inhibitor be at a design temperature of
greater than 200°F.
Appellant argues there is no indication that the corrosion inhibitors of
Pandian or Dubey would even be effective or stable under high temperature
conditions, much less more efficient. App. Br. 9.
We find this argument unavailing for the reasons provided by the
Examiner. Ans. 5-6. Moreover, the Specification defines design
temperature as “an estimate or measurement of the actual temperature at the
downhole environment at the time of a treatment.” Spec. ^ 50. The
Specification also defines design as an “estimate or measure of one or more
parameters planned or expected for a particular fluid or stage of a treatment
or well service.” Id. ^ 49. Therefore, a design temperature is a temperature
(parameter) used to design a fluid (corrosion inhibitor) for effective use in
well environments. Once the design temperature is estimated, Appellant has
not adequately explained why one skilled in the art, using no more than
ordinary creativity, would not have been capable of determining the
appropriate properties of the fluid (corrosion inhibitor) that would be
suitable for use at an estimated design temperature. KSR Int’l Co. v. Teleflex
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Application 13/662,878
Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”); see In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in
the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Claim 1
The method of independent claim 1 requires treating a portion of a
well or pipeline with the claimed corrosion inhibitor.
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 6-7. The Examiner relies on the additional reference to
Brezinski to teach that petroleum wells and pipelines made from carbon steel
are often exposed to acidic solutions and that it is desirable to add inhibitors
to prevent acid corrosion (introduction). Final Act. 7; Brezinski 299-300.
In addition to the arguments presented for claim 2, which we
addressed above, Appellant additionally argues the Examiner has not shown
that the corrosion inhibitors of Dubey would work in the environment of
Brezinski. App. Br. 10.
We are unpersuaded by this argument for the reasons given by the
Examiner. Ans. 6-7. Moreover, like Appellant, Brezinski suggests the use
of intensifiers in corrosion inhibitors to ensure the adequate corrosion
control at high temperatures. Spec. ^ 224; Brezinski 299. One skilled in the
art, in reading Brezinski, would understand that corrosion inhibitors used in
wells would likely require the use of intensifiers to ensure their
effectiveness. Given Brezinski’s disclosure, Appellant has not adequately
explained why one skilled in the art would not have been capable of
determining the appropriate properties of the fluid (corrosion inhibitor) that
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Application 13/662,878
would be suitable for use in a well or pipeline. See KSR, 550 U.S. at 421;
Sovish, 769 F.2d at 743; Bozek, 416 F.2d at 1390.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1-11 and 13-22 under 35 U.S.C. § 103 (a) (Rejections I-IV) for the reasons
presented by the Examiner and given above.
DECISION
The Examiner’s prior art rejections of claims 1-11 and 13-22 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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