Ex Parte Crews et al

Board of Patent Appeals and Interferences

Jun 15, 2011

12039205 (B.P.A.I. Jun. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES B. CREWS and JOHN R. WILLINGHAM
__________

Appeal 2010-008445
Application 12/039,205
Technology Center 1700
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).
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Application 12/039,205

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STATEMENT OF CASE
The following claim is representative.
1. An aqueous fluid comprising:
water;
at least one viscoelastic surfactant (VES) in an amount effective to
increase the viscosity of the aqueous fluid; and
at least one internal breaker present in an oil-soluble internal phase of
the aqueous fluid in an amount ranging from about 0.1 to about
15 gptg based on the total fluid to reduce the viscosity of the
gelled aqueous fluid at a time other than less than one-half hour
when the fluid is heated to an effective temperature, where the
breaker is added to the fluid after the fluid is substantially
gelled, and where the internal breaker is selected from the
group consisting of mineral oils, hydrogenated polyalphaolefin
oils, saturated fatty acids and combinations thereof.

Cited References

Rose et al. US 4,735,731 Apr. 5, 1988

Product specifications dated 8/2000 for ESCAID
TM
110 Fluid from Exxon
Mobil
TM
Corp.

Grounds of Rejection
1. Claims 1, 4 and 6 are rejected under 35 U.S.C. § 102(b) for anticipation
over Rose.
2. Claims 2, 3 and 7-9 are rejected under 35 U.S.C. § 103(a) for
obviousness over Rose in view of Exxon Mobil.

FINDINGS OF FACT
The Examiner‟s fact finding is set forth in the Answer at pages 3-13.

Discussion
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Application 12/039,205

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ISSUE
The Examiner concludes that Rose teaches each element claimed.
Appellants argue that Rose only discloses that when a mineral oil
contacts or is added to a VES-gelled fluid that breaking occurs in less than
one-half hour or essentially instantaneously or at least to such an extent that
the claimed composition would not and could not exist. (App. Br. 13.)
Appellants argue that Rose only discloses breakers that are external, that is
introduced separately and externally to contact the viscoelastic surfactant
gelled compositions at the time when it is desired to break them, i.e., reduce
their viscosity. Thus, Appellants argue there is no disclosure in Rose that
VES gelled compositions may have these breakers as an internal component
therein and not have their viscosity reduced in less than one-half hour. (Id.
at 14.)
The issue is: Does the cited prior art teach an internal breaker as
claimed?

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
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Application 12/039,205

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Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
We agree with the Examiner‟s fact finding, statement of the rejection
and responses to Appellants‟ arguments as set forth in the Answer. We
provide the following additional comment.
Appellants argue there is no disclosure in Rose that viscoelastic
surfactant (VES) gelled compositions may have breakers as an internal
component therein and not have their viscosity reduced in less than one-half
hour. (App. Br. 14, 17.)
We are not persuaded by Appellants‟ argument. The claims require
three components: water, a viscoelastic surfactant (VES) that has been
gelled and an internal breaker in a specified amount, which may be mineral
oil.
Rose teaches an aqueous fluid comprising VES and mineral oil. See
(Rose abstract and col. 9, l. 31.) The breaker, mineral oil, is present in an
amount from 0.1 to about 50 weight percent based on the weight of the
liquid. (Col. 9, ll. 48-50.) Rose defines “breaking” as “a measurable
reduction in the viscosity of the liquid containing the viscoelastic surfactant
composition.” (Col. 9, ll. 20-23.) Thus, when Rose adds mineral oil to the
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VES composition, i.e., inside the VES composition or internally, its
viscosity is reduced. Appellants’ claims define the breaker amount in terms
of volume (“gptg,” i.e., gallons breaker per thousand gallons fluid) rather
than weight percent as Rose does, but Appellants do not dispute that Rose
disclosed the claimed amount. Because Rose’s fluid comprises all the
ingredients Appellants’ fluid comprises, we agree that the Examiner has
presented a prima facie case of anticipation in view of the disclosure of
Rose.
“When the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
“When the claimed compositions are not novel they are not rendered
patentable by recitation of properties, whether or not these properties are
shown or suggested in the prior art.” Id. at 709.
“[W]hen a prima facie case is made, the burden shifts to the applicant
to come forward with evidence and/or argument supporting patentability.”
In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). Rebuttal evidence is
“merely „a showing of facts supporting the opposite conclusion.‟” In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
Appellants have not presented sufficient argument or evidence to
show that the compositions of Rose and those claimed would not possess the
same properties of reducing the viscosity of the aqueous fluid at a time other
than less than one-half hour when the fluid is heated, as they have the same
or similar ingredients. Arguments of counsel cannot take the place of
evidence in the record. See In re Scarbrough, 500 F.2d 560, 566 (CCPA
1974). Thus we affirm the anticipation rejection over Rose.
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2. Claims 2, 3 and 7-9 are rejected under 35 U.S.C. § 103(a) for
obviousness over Rose in view of Exxon Mobil.
Appellants argue that Exxon Mobil does not supply the deficiencies of
Rose. (App. Br. 19.) As discussed herein, we find no deficiency in Rose,
and the obviousness rejection is affirmed.

CONCLUSION OF LAW
The cited references support the Examiner‟s anticipation and
obviousness rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

DJM
SW
JNF

cdc