Ex Parte Boney

Patent Trial and Appeal Board

Sep 13, 2013

12035099 (P.T.A.B. Sep. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CURTIS BONEY
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Appeal 2011-008992
Application 12/035,099
Technology Center 3600
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Before EDWARD A. BROWN, LYNNE H. BROWNE and
CARL M. DEFRANCO, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008992
Application 12/035,099

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STATEMENT OF THE CASE
Curtis Boney (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-22. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1, 10 and 16 are independent. Claim 1 is reproduced below:
1. A method of well treatment comprising:
a) deploying a tubular string to a position at
or below a target interval;
b) treating the target interval; and,
c) circulating a diverting slurry comprising a
solids volume fraction of from about 0.05 to about
0.56 past the target interval to form a temporary
plug containing an insoluble degradable material at
the target interval.

PRIOR ART
Dill US 4,444,264 Apr. 24, 1984
Purvis US 6,367,548 B1 Apr. 9, 2002
Mang US 7,267,170 B2 Sep. 11, 2007

GROUNDS OF REJECTION
1. Claims 10 and 11 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Purvis.
2. Claims 1-9, 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Purvis.
3. Claims 14-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Purvis and Mang.

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OPINION
Rejections based on Purvis
Anticipation – Claims 10 and 11
Obviousness - Claims 1-9, 12 and 13
The Examiner finds that Purvis discloses each and every limitation of
independent claim 10. Ans. 3-4. In particular, the Examiner finds that
Purvis discloses that “a solids phase of the slurry comprises an insoluble
degradable material.” Id. at 3 (citing Purvis, col. 8, l. 57 – col. 9, l. 4; col.
10, ll. 54-57). Appellant argues that “the rejection does not adequately show
where in Purvis it is specifically and affirmatively taught or disclosed to use
an insoluble degradable material as a diverting agent.” App. Br. 17
(emphasis added); see also Reply Br. 5.
In response to this argument the Examiner finds that
Purvis incorporates by reference US Patent
Number 4,444,264 to Dill wherein support for an
insoluble degradable material is found. Within
column 4, lines 27-37 of Dill, it is disclosed that
the solid phthalimide particles sublime beginning
at temperatures above 250 degrees Fahrenheit, a
temperature that is known to exist within a
formation. In such an application, the particles are
not dissolved, and, therefore, are considered
insoluble, but, rather, are removed, i.e., degraded,
by sublimation. Therefore, such particles
anticipate an insoluble degradable material as
claimed.
Ans. 13-14. In response to this finding, Appellant argues that “[t]he
Examiner has erroneously equated the soluble material of Dill which may
further undergo sublimation in application without compositionally
degrading into another entirely different matter, with material that is
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insoluble and degradable, as claimed by Applicants.” App Br. 16; see also
Reply Br. 6.
Claim 10 requires “a solids phase of the slurry comprises an insoluble
degradable material.” App. Br. 28 (emphasis added). We understand this
limitation to mean that the material is insoluble in the slurry. See
Specification, para. [0014]. We note that the Specification describes “an
aqueous or oil based slurry.” Id. Dill explicitly states that “[t]he
phthalimide particles comprising the diverting material or fluid-loss additive
may be removed from the subterranean formation by dissolution in the
produced formation fluids or by flushing the formation with a fluid to
dissolve the phthalimide.” Dill, col. 4, ll. 20-24. Thus, we understand
phthalimide to dissolve, that is, be soluble, in the flushing fluid. As
discussed supra, Dill further describes that phthalidmide can be removed by
sublimation of the flushing liquid. Dill does not describe how this removal
is accomplished. Although Dill states that the phthalimide “will not melt in
the formation” (Dill, col. 4, l. 32), Dill is silent with respect to whether or
not the phthalimide is insoluble in the slurry. Accordingly, there is
insufficient evidence to determine if the phthalimide is insoluble as required
by independent claim 10. “We may not resolve doubts in favor of the Patent
Office determination when there are deficiencies in the record as to the
necessary factual bases supporting its legal conclusion of obviousness.” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Thus, the Examiner errs in
relying upon the cited portion of Dill to meet the claim limitation at issue.
The Examiner further finds that “gilsonate is provided as an
exemplary diverting agent in the portion of the [Purvis] reference following
cited column 10, lines 54-57. Further examples of diverting agents,
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including those incorporated by reference to Dill, were provided by Purvis at
column 8, line 57- column 9, line 4, as noted above.” Ans. 14-15.
In response to this finding, Appellants argue that “Purvis discloses
soluble diverting agents and fails to disclose or even suggest insoluble
degradable material as a diverting agent.” Reply Br. 5. We agree. Purvis
describes “[d]iverting agents which may be employed include any diverting
agent (e.g., oil soluble, acid soluble, etc.) suitable for diverting subsequent
treatment fluids into intervals having lower injectivity.” Purvis, col. 8, ll.
57-60 (emphasis added). The Examiner does not identify any disclosure in
Purvis that “a solids phase of the slurry comprises an insoluble degradable
material” as recited in claim 10.
For these reasons, we do not sustain the Examiner’s rejection of claim
10 and claims 11-13 which depend therefrom. The Examiner’s rejection of
claim 1 is similarly deficient. Accordingly, we do not sustain the rejection
of claim 1 and claims 2-9 which depend therefrom.
Rejections based on Purvis and Mang
Claims 14-22
Claims 14 and 15 depend from independent claim 10. The
Examiner’s application of Mang does not cure the deficiencies in the
Examiner’s rejection of claim 10 as discussed supra. Accordingly, we do
not sustain the Examiner’s rejection of claims 14 and 15. The Examiner’s
rejection of independent claim 16 is deficient for the same reasons as the
Examiner’s rejection of independent claim 10. Accordingly, we do not
sustain the rejection of claim 16 and claims 17-22 which depend therefrom.

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Application 12/035,099

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DECISION
The Examiner’s rejections of claims 1-22 are REVERSED.

REVERSED

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