Ex Parte Bigeonneau et al

Patent Trial and Appeal Board

Feb 28, 2014

12305305 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/305,305 06/12/2009 Didier Bigeonneau 4195-071 3137
24112 7590 02/28/2014
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
GIONTA FITZSIMMO, ALLISON
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
02/28/2014 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 DIDIER BIGEONNEAU, RENAUD SUBLET,
HERVE SUTY and WAYNE EWANS
____________

Appeal 2012-010291
Application 12/305,305
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH,
and DONNA M. PRAISS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 20 through 35 and 37. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to a method of producing injection
water for oil extraction from sea water. App. Br. 2. Claim 20 illustrates the
subject matter on appeal and is reproduced below:
20. A method of producing oil extraction injection
water from sea water by treating the sea water and injecting
treated sea water into an oil bearing formation, the method
comprising:
directing the seawater having a relatively high oxygen
concentration into a membrane module separated into first and
second sections by a hydrophobic membrane, such that the
seawater flows through the first section of the membrane
module;
directing a scavenging gas having a relatively low
oxygen concentration into the second section of the membrane
module;
decreasing the pressure in the second section of the
membrane module relative to the pressure in the first section of
the membrane module;
reducing the oxygen concentration of the seawater by
inducing the oxygen to flow from the seawater through the
hydrophobic membrane and into the second section of the
membrane module to mix with the scavenging gas; and
injecting the seawater having the reduced concentration
of oxygen into the oil bearing formation, wherein the injected
seawater is used to extract oil from the oil bearing formation.

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The Examiner relied on the following references in rejecting the
appealed subject matter:
Mandrin US 5,006,133 Apr. 9, 1991
Prasad et al. (Prasad) US 5,352,361 Oct. 4, 1994
Peterson et al. (Peterson) US 6,149,817 Nov. 21, 2000
Baillie US 2005/0023222 A1 Feb. 3, 2005

Bujedo et al., Semiconductor International, Product Application
Report. Removing Dissolved Oxygen From Ultrapure Water,
Reed Business Information. Reed Elsevier. October 1997.1
Weisler, Fred, Membrane Contactors reduce chemical use and
blowdowns, TechBrief, Vol. 19, October 2000.
Accepta Newsletter #9: Membrane Technology, 2003.

Water Injection (oil production), Wikipedia article, 29 August 2007.

Appellants, App. Br. 2-3, request review of the following rejections
from the Examiner’s Final Office Action:
I. Claims 20-23, 25, and 28-35 rejected under 35 U.S.C. §103(a) as
unpatentable over Mandrin, Water Wikipedia article, and Peterson.
II. Claim 24 rejected under 35 U.S.C. §103(a) as unpatentable over
Mandrin, Water Wikipedia article, Peterson, and Wiesler.
III. Claims 26 and 27 rejected under 35 U.S.C. §103(a) as unpatentable
over Mandrin, Water Wikipedia article, Peterson, and Accepta.
IV. Claim 33 rejected under 35 U.S.C. §103(a) as unpatentable over
Mandrin, Water Wikipedia article, Peterson, and Prasad.
V. Claim 37 rejected under 35 U.S.C. §103(a) as unpatentable over
Mandrin, Water Wikipedia article, Peterson, and Bujedo.
VI. Claim 33 rejected under 35 U.S.C. §103(a) as unpatentable over
Mandrin, Water Wikipedia article, Peterson, and Prasad.

1 The Examiner relied on this reference in the rejections of claim 37 under
35 U.S.C. §103 (a). Ans. 11, 22.
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VII. Claim 20 rejected under 35 U.S.C. §103(a) as unpatentable over
Mandrin, Water Wikipedia article, and Baillie.
VIII. Claims 20-23, 25, and 28-35 rejected under 35 U.S.C. §103(a) as
unpatentable over Mandrin, Water Wikipedia article, and Baillie.
IX. Claims 21-23, 25, and 28-35 rejected under 35 U.S.C. §103(a) as
unpatentable over Mandrin, Water Wikipedia article, Baillie, and Peterson.
X. Claim 24 rejected under 35 U.S.C. §103(a) as unpatentable over
Mandrin, Water Wikipedia article, Baillie, and Wiesler.
XI. Claims 26 and 27 rejected under 35 U.S.C. §103(a) as unpatentable
over Mandrin, Water Wikipedia article, Baillie and Accepta.
XII. Claim 33 rejected under 35 U.S.C. §103(a) as unpatentable over
Mandrin, Water Wikipedia article, Baillie, and Prasad.
XIII. Claim 37 rejected under 35 U.S.C. §103(a) as unpatentable over
Mandrin, Water Wikipedia article, Baillie, and Bujedo.
XIV. Claim 33 rejected under 35 U.S.C. §103(a) as unpatentable over
Mandrin, Water Wikipedia article, Baillie, and Prasad.

OPINION2
Rejections under 35 U.S.C. §103(a) based on Mandrin and Peterson
(Rejections I-VI)
The dispositive issue on appeal for these rejections is: Did the
Examiner err in determining that the combined teachings of Mandrin and
Peterson would have led one skilled in the art to a method of producing oil
extraction injection water comprising the step of directing the seawater
having a relatively high oxygen concentration into a membrane module

2 Appellants only present arguments with respect to independent claim 20.
See Appeal Brief, generally. Thus, we limit our discussion to independent
claim 20. Dependent claims 21-35 and 37 stand or fall together with
independent claim 20.
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separated into first and second sections by a hydrophobic membrane as
required by the subject matter of independent claim 20? 3
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM for the reasons presented by the Examiner and
add the following.
The Examiner found that Mandrin discloses a method of producing oil
extraction injection water including using a scavenger (stripping) gas that is
substantially oxygen free to extract the oxygen from the sea water. Ans. 5-6;
Mandrin col. 3, ll. 39-45. The Examiner also found that Mandrin does not
disclose the technique of degassing the sea water using a hydrophobic
membrane in addition to the scavenger gas. Id. at 6. The Examiner found
that Peterson describes a technique for removing gas from a fluid using
membrane contactors comprising hydrophobic hollow fiber microporous
membranes that bring liquid and scavenger gas into direct contact without
dispersion to strip dissolved gas from the liquid. Ans. 7-8; Peterson col. 1,
ll. 57-63; col. 10, ll. 25-35. The Examiner found that it would have been
obvious to one skilled in the art to substitute Peterson’s technique for
Mandrin’s technique to degas the sea water. Ans. 8.
Appellants argue that one skilled in the art would not combine
Mandrin and Peterson as suggested by the Examiner because Mandrin and
Peterson remove oxygen in a different manner using different technologies.
App. Br. 3-5. We are unpersuaded by Appellants’ argument and agree with
the Examiner’s determination of obviousness.

3 A discussion of the Wikipedia article entitled Water Injection (oil
production), the Accepta Newsletter, Liqui-Cel TechBrief, and Prasad is
unnecessary for disposition of the present appeal. The Examiner relied upon
these references for features not related to the dispositive issue.
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It is well settled that the substitution of an equivalent process for
another process may be obvious even if the prior art does not expressly
suggest the substitution. In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967),
compare Ex parte Novak, 16 USPQ 2d 2041 (BPAI 1989). As noted by the
Examiner, one of ordinary skill in the art would have recognized that
Peterson’s technique for removing gas from a liquid could be used to
remove oxygen from sea water. Ans. 8-9, 24-25. Moreover, Peterson
discloses removal of dissolved oxygen from water using the disclosed
techniques. Peterson col. 10, line 60 to col. 11, line 18. Consequently, one
of ordinary skill in the art would have reasonably expected that the
technique of degassing liquid through the use of hydrophobic membranes
that facilitate the transfer of dissolved oxygen from water to the scavenging
gas as described by Peterson would have been suitable for producing oil
extraction injection water from sea water as required by the subject matter of
independent claim 20. Knowledge generally available to one skilled in the
art can provide the motivation to combine the relevant teachings. Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297 n.24 (Fed.
Cir. 1985). The motivation to combine the relevant teachings of references
may come from knowledge of those skilled in the art that certain references,
or disclosures in the references, are known to be of special interest or
importance in the particular field. Pro Mold and Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996).
For the reasons stated above and those presented by the Examiner,
we affirm the Examiner’s prior art rejections of claims 20-35 and 37 under
35 U.S.C. §103(a) based on Mandrin and Peterson.

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Rejections under 35 U.S.C. §103(a) based on Mandrin and Baillie
(Rejections VII-XIV)
The Examiner presented an alternative rejection of claim 20 under
35 U.S.C. §103(a) based on the combined teachings of Mandrin and Baillie.
Ans. 13. In these rejections, Baillie is relied on by the Examiner to teach the
use of a hydrophobic membrane to treat water used as injection water. Ans.
14-15. We refer to the Examiner’s Answer for a complete statement of the
prior art rejections.4 Ans. 13-24.
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM for the reasons presented by the Examiner and
add the following.
Appellants argue that the Examiner concludes that Baillie’s membrane
may be a hydrophobic membrane without pointing out where this is
disclosed by Baillie. App. Br. 6. According to Appellants, Paragraph 15 in
Baillie discusses certain types of membrane material such as ceramic
material and polymeric material but does not discuss or suggest the use of a
hydrophobic membrane. Id.
The Examiner found that Baillie teaches a method of treating a fluid
to be injected into a subterranean formation using ultra-filtration and micro-
filtration membranes. The Examiner found that Baillie discloses the
membrane can be formed from polymeric materials including PVDF and
polypropylene which may be hydrophobic. Ans. 15, 26; Baillie ¶ [0015].
From this disclosure, and a person of ordinary skill in the art in would have

4 As with the prior rejection, a discussion of the Wikipedia article entitled
Water Injection (oil production), the Accepta Newsletter, Liqui-Cel
TechBrief, Peterson, and Prasad is unnecessary for disposition of the present
appeal.
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recognized that membranes could have been formed from PVDF and
polypropylene. A person of ordinary skill in the art would have sufficient
skill to form the membrane from known types of PVDF and polypropylene
that would be most effective for filtration. That is, a skilled artisan would
have had sufficient skill to determine the most effective type of membrane
whether hydrophilic or hydrophobic. It is noted that the specification
discloses suitable membranes can be formed from PVDF and polypropylene.
Spec. 15.
Accordingly, we affirm the Examiner’s prior art rejections of claims
20-35 and 37 under 35 U.S.C. §103(a) based on Mandrin and Baillie for the
reasons stated above and those presented by the Examiner.

ORDER
The decision of the Examiner rejecting claims 20 through 35 and 37 is
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)(1).

AFFIRMED

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