Ex Parte DevilleDownload PDFBoard of Patent Appeals and InterferencesSep 6, 201111037402 (B.P.A.I. Sep. 6, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JAY P. DEVILLE ________________ Appeal 2010-005087 Application 11/037,402 Technology Center 1700 ________________ Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and LINDA M. GAUDETTE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 1-20 under 35 U.S.C. §103(a) as unpatentable over Kercheville (US 6,662,871 B2, issued Dec. 16, 2003), as evidenced by Baroid I (Baroid GEL TONE II Viscosifier Product Data Sheet, Baroid Product Service Line, Halliburton, Houston, TX, 2002) and Baroid II (Baroid DRIL TREAT Oil Wetting Agent Product Data Sheet, Baroid Product Service Line, Halliburton, Houston, TX, 2002), in view of 1 Final Office Action mailed Mar. 18, 2009 (“Final”). Appeal 2010-005087 Application 11/037,402 2 Burke (US 3,547,852, issued Dec. 15, 1970).2 We have jurisdiction under 35 U.S.C. § 6(b).3 We REVERSE. Rotary drilling methods employing a drill bit and drill stems have long been used to drill wellbores in subterranean formation. Drilling fluids or muds are commonly circulated in the well during such drilling to cool and lubricate the drilling apparatus, lift cuttings out of the wellbore, and counterbalance the subterranean formation pressure encountered. The specific gravity of a well fluid is normally adjusted in such a way that the pressure of the fluid on the rock formations exceeds the formation pressure on the well. As a result, liquid components of the well fluid are forced into the formation surrounding the well while insoluble components settle on the walls of the well in the form of a stabilizing “filter cake.” (Kercheville, col. 1, ll. 17-29.) “Drill string sticking is a phenomenon in which a drill string or a portion of a drill string cannot be moved within a well bore. That is, a drill string or a portion of a drill string may experience sticking such that it cannot be rotated, reciprocated, or both.” (Spec. 4 [0002].) “Differential sticking usually occurs when a drill string becomes embedded in, among other things, the filter cake.” (Spec. [0003].) “[T]he term drill string 2 Appeal Brief filed Nov. 18, 2009 (“App. Br.”), 8. 3 As noted by the Examiner, “Appellants [] filed a Notice of Appeal and an Appeal Brief in Application 11/037690, which was filed on the same day as the instant application and concerns similar subject matter and issues. 11/037690 has the same inventor as the instant application, but there is no relation by priority claim. A Terminal Disclaimer citing the instant application has been filed in 11/037690.” (Examiner’s Answer mailed Dec. 4, 2009 (“Ans.”), 2.) We have decided the appeal in 11/037690 (Appeal No. 2010-005089) concurrently with the present appeal. 4 Specification filed Jan. 18, 2005. Appeal 2010-005087 Application 11/037,402 3 includes . . . drill pipes, drill collars, drill bits, stabilizers, reamers, casing, tubing, and other tools which may experience sticking problems down hole.” (Spec. [0011].) The invention relates to a method for reducing drill string sticking using a spotting fluid composition which assists in reducing the differential sticking problem encountered by drill strings by acting as a lubricant and/or by dehydrating the filter cake formed around the stuck device. (Spec. [0011].) The spotting fluid composition is said to have “desirable rheological and environmental properties” (Spec. [0011]), thereby addressing the need for a spotting fluid which is compatible with the higher environmental standards of some regions (see Spec. [0005]). Appealed claim 1 is representative of the invention and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A method of reducing drill string sticking comprising: providing a spotting fluid composition comprising a water insoluble external phase fluid, a water soluble internal phase fluid, and an ether carboxylic acid emulsifying agent; introducing the spotting fluid to the vicinity of a desired portion of a drill string, such that the spotting fluid comes into contact with a portion of material surrounding the desired portion of the drill string; and allowing the spotting fluid to interact with the portion of material surrounding the desired portion of the drill string. “Components that may optionally be added to the spotting fluid composition include . . . wetting agents” (Spec. [0012]), which “adjust the degree of wetting, otherwise known as ‘wettability,’ of the fluid. Wettability refers to the adhesive tension between a liquid and a surface.” (Spec. [0019].) Appeal 2010-005087 Application 11/037,402 4 Kercheville discloses a spotting fluid for differential sticking (Title) which “comprises an invert water-in-oil emulsion comprising iso-butyl oleate as its external phase and glycerin as the internal phase” (Abstract). According to Kercheville, “[t]he iso-butyl oleate oil phase is effective at lubricating the surfaces and penetrating the filter cake. Glycerin is effective at dehydrating the filter cake.” (Kercheville, col. 3, ll. 32-34.) Kercheville discloses that additional additives or materials may be added to the emulsion, “for example, . . . EZ-MULNTE™ (an emulsifier/oil wetting agent) [and] . . . DRILTREAT™ (a supplemental oil wetting agent).” (Col. 3, ll. 8-13.) The Examiner found that Kercheville discloses the method recited in appealed claim 1 with the exception that Kercheville does not expressly teach that the spotting fluid composition comprises an ether carboxylic acid. (Ans. 4.) Appellant does not dispute this finding. (See generally, App. Br. 9-11.) Rather, Appellant argues the Examiner improperly relied on Burke for a “teaching that an ether carboxylic acid emulsifying agent is a ‘superior wetting agent’” (App. Br. 9) and concluding that “it would have been obvious to a person of ordinary skill in the art to include the polyether acetic acid emulsion stabilizer of Burke in the composition and method of Kercheville” (Ans. 5). More specifically, the dispositive issue in this appeal is: did the Examiner incorrectly find that Burke is analogous art and, therefore, reversibly err in relying on Burke as a basis for rejecting the appealed claims under 35 U.S.C. §103(a)? Burke relates to a pressure sensitive aqueous emulsion adhesive for use on a polyvinylchloride-organic plasticizer substrate (col. 1, ll. 12-15), e.g., a vinyl film of the type used as a furniture overlay, substitute for wall Appeal 2010-005087 Application 11/037,402 5 paper and the like (see col. 1, ll. 22-27). The emulsion is a colloidal copolymer, which includes an acrylic ester (col. 2, ll. 36-37) and may also include vinyl compounds (col. 2, l. 49), suspended in a continuous phase, which is deionized water (col. 3, ll. 21-22). According to Burke, vinyl film is most difficult to wet with most fluids including the aqueous emulsion of th[e] invention; therefore, once the aqueous emulsion has been prepared, it is combined with an emulsion post stabilizer which is water soluble and which overcomes the resistance of the vinyl film to wetting thus allowing a thin layer of the emulsion to be coated thereon. Any one of several wetting agents may be employed; however, it has been found that selected polyether acetic acids or salts thereof are far superior to the other more common wetting agents. (Col. 6, ll. 63-72.) The Examiner concedes Burke is not in the same field of art as the invention, but maintains that Burke is analogous art because “Burke is reasonably pertinent to the particular problem with which the appellant was concerned, that is, the wetting of surfaces and stabilization of emulsions.” (Ans. 6.) See In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992) (explaining that a reference which is not within the field of the inventor’s endeavor may still be considered analogous art if it is reasonably pertinent to the particular problem with which the inventor was involved). Appellants argue (see App. Br. 9-10), and we agree, that the Examiner defined the problem with which the present inventor was involved too broadly. Cf. In re Klein, 2011 WL 2178134 at *4 n.1(Fed. Cir. 2011) (noting that the government cannot redefine the problem addressed by the inventor). The problem with which the present inventor was concerned is “more environmentally friendly oil or oil-based spotting fluids,” i.e., a water-in-oil emulsion (App. Br. 10) “for use on equipment stuck in Appeal 2010-005087 Application 11/037,402 6 subterranean formations” (App. Br. 9 (citing Spec. [0001])). (See also, Spec. [0005], [0011], supra p. 3.) Burke is directed to using a different type of emulsion (the aqueous outer phase of an oil-in-water emulsion, i.e., a pressure sensitive adhesive) to wet an entirely different type of surface (a vinyl substrate, e.g., vinyl wallpaper). (App. Br. 9.) See In re Clay, 966 F.2d at 659 (“If [a reference] is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it.”). Because Burke is not in the same field of endeavor as the invention and does not deal with a matter which logically would have commended itself to the inventor’s attention in considering his problem, the Examiner erred in finding that Burke is analogous art, and reversibly erred in relying on Burke as a basis for rejecting the appealed claims under 35 U.S.C. §103(a). Accordingly, we reverse the Examiner’s decision to reject claims 1-20. REVERSED ssl Copy with citationCopy as parenthetical citation