Ex Parte Burts

Board of Patent Appeals and Interferences

May 17, 2010

09296217 (B.P.A.I. May. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BOYCE D. BURTS
____________

Appeal 2009-013724
Application 09/296,217
Technology Center 1700
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Decided: May 17, 2010
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).

1 On page 2 of the Brief, Appellant listed two related applications in
which Notices of Appeal have been filed. Decisions have been rendered for
each of them. Appeal No. 2003-0515 corresponds with S.N. 09/296,216.
Appeal No. 2003-0604 corresponds with S.N. 09/307,544. Our decision in
this case reflects the same outcome rendered in these related applications.
Appeal 2009-013724
Application 09/296,217

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STATEMENT OF THE CASE
Claims 1 and 11 are representative of the subject matter on appeal and
are set forth below:
1. A lost circulation additive comprising a dry mixture
of a water soluble crosslinkable polymer, a crosslinking agent,
and a reinforcing material selected from among fibers and
comminuted plant materials.
11. A method of forming a lost circulation fluid
comprising:
(a) providing a lost circulation additive comprising a dry
mixture of water soluble crosslinkable polymer, a crosslinking
agent, and a reinforcing material selected from among fibers
and comminuted plant materials; and
(b) contacting the lost circulation additive with water or
an aqueous solution to form the lost circulation fluid.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Horner 3,208,524 Sep. 28, 1965
Githens 4,566,979 Jan. 28, 1986
Sydansk 4,989,673 Feb. 5, 1991
House 5,004,553 Apr. 2, 1991
Merrill 5,377,760 Jan. 3, 1995

Claims 1-10 of Application No. 09/296,216, filed April 22, 1999
Claims 1-10 of Application No. 09/307,544, filed April 22, 1999

Appeal 2009-013724
Application 09/296,217

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THE REJECTION(S)
Claims 1, 2, and 7 stand rejected under 35 U.S.C. § 103 as being
obvious over Sydansk in view of Githens.
Claims 1-4, and 7 stand rejected under 35 U.S.C. § 103 as being
obvious over Merrill and Githens.
Claims 1, 2, and 5-13 stand rejected 35 U.S.C. § 103 as being
unpatentable of House in view of Horner and Githens.
Claims 1-13 stand provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1-10 of co-pending Application No. 09/296,216 2, in view of
Sydansk, or over claims 1-10 of copending Application No. 09/307,544 3 in
view of Sydansk.4
ISSUE AND ANALYSIS
The common issue among all of the 35 U.S.C. § 103 rejections is
whether the Examiner has provided a proper factual foundation supporting
her conclusion that one of ordinary skill in the art would have expected that
the addition of inert solids (for example, sand), before activation with water,
rather than after activation with water, would provide no substantial
difference in results. (Answer, page 14.)
We note that the prior art can be modified or combined to reject
claims as prima facie obvious as long as one of ordinary skill in the art

2 This application issued on April 6, 2004 and is now U.S. Patent No
6,716,798.
3 This application issued on June 15, 2004 and is now U.S. Patent No.
6,750,179.
4 Because these applications relied upon in these rejections are now
U.S. patents, these rejections are no longer provisional.
Appeal 2009-013724
Application 09/296,217

4
would have had a reasonable expectation of success. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner’s rejection
lacks an explanation of how one of ordinary skill in the art would have had a
reasonable expectation of success that no substantial difference in effect
would occur if one of ordinary skill in the art would have added the sand in
Sydansk prior to formation of the gel (i.e., prior to activation with an
aqueous solvent) versus after formation of the gel. On page 12 of the
Answer, the Examiner states “[t]he addition of inert solids, i.e. sand, would
have no effect on the cross linking composition and gelling agent.” Yet, the
Examiner does not provide facts on the record to support this as knowledge
possessed at the time of invention by one of ordinary skill in the art. Due to
this lack of factual foundation, we reverse each of the 35 U.S.C. § 103
rejections.
With regard to the obviousness-type double patenting rejections of
claims 1-13 (which is no longer provisional; see footnote 4, supra), over
claims 1-10 of 09/296,216 and over claims 1-10 of co-pending application
09/307,544, in view of Sydansk, the Examiner correctly indicates on page 15
of the Answer that Appellant’s Brief does not contain an argument which
specifies errors regarding these rejections. Appellant’s Reply Brief also
does not address these rejections. Hence, we affirm each of these rejections.
DECISION
Each of the 35 U.S.C. § 103 rejections is reversed.
Each of the rejections under the judicially created doctrine of
obviousness-type double patenting is affirmed.
Appeal 2009-013724
Application 09/296,217

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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)(v).

AFFIRMED

kmm

J.M. (MARK) GILBRETH
GILBRETH & ASSOCIATES, P.C.
P.O. BOX 2428
BELLAIRE, TX 77402-2428