Ex Parte Deville

Board of Patent Appeals and Interferences

Sep 6, 2011

11037402 (B.P.A.I. Sep. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAY P. DEVILLE
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Appeal 2010-005087
Application 11/037,402
Technology Center 1700
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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

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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

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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

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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
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Application 11/037,402

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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
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Application 11/037,402

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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

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