Ex Parte Durham et al

Patent Trial and Appeal Board

May 16, 2017

13238757 (P.T.A.B. May. 16, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/238,757 09/21/2011 Danny Durham 2012-IP-055697U1 1091
15604 7590 05/18/2017
Baker Botts L.L.P.
910 Louisiana Street, One Shell Plaza
Houston, TX 77002
EXAMINER
BHUSHAN, KUMAR R
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
05/18/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
susan.stewart@bakerbotts.com
debie.hernandez @ bakerbotts. com
sydney.long@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANNY DURHAM, JAMES RUSSUM, NATHAN DAVIS,
and CURTIS CONKLE
Appeal 2016-000269
Application 13/238,757
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 8-17 of Application 13/238,757
(“the ’757 Application”) under 35 U.S.C. § 112, ^ 1 as failing to comply
with the written description requirement. Final Act. 9-10 (July 7, 2017).
The Examiner also rejected claims 6 and 8-17 under 35 U.S.C. § 112, ^ 2
for failure to particularly point out and distinctly claim the subject matter of
the invention. Id. at 10-11. The Examiner additionally rejected claims 1
and 7 under 35 U.S.C. § 102(b) as anticipated and claims 2-6 and 8-17
Appeal 2016-000269
Application 13/238,757
under 35 U.S.C. § 103(a) as obvious. Id. at 13-19. Appellants1 seek
reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm-in-part.
BACKGROUND
The ’757 Application relates to gas and oil production, in particular to
a method of controlling corrosion in a subsea pipeline. Spec. ^ 7, Abst.
Low dose hydrate inhibitors (LDHIs) are used in subsea pipelines to prevent
blockage arising from an accumulation of gas hydrates. Id. ^ 2. LDHIs,
however, contribute to general corrosion and, in particular, pitting corrosion.
This corrosion appears particularly acute in deep sea applications. Id. ^ 5.
The Specification sets forth a belief that, over time, quaternary amines used
as LDHIs become contaminated with water making them more corrosive.
Id. ^ 15. Accordingly, the present Specification relates to a method of
monitoring and removing water from LDHI’s and thereby limiting
corrosion. Id. ^ 26.
Claims 1, 8, and 11 are representative of the ’757 Application’s
claims and are reproduced below from the Claims Appendix to the Appeal
Brief:
1. A method of controlling corrosion in a subsea pipeline
comprising:
supplying a low dose hydrate inhibitor ("LDHI") comprising a
quaternary amine;
1 Multi-Chem Group, LLC is identified as the real party in interest, which is
further identified as a subsidiary of Halliburton Energy Services, Inc.
Appeal Br. 4.
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combining an internal desiccant with the LDHI to form a dried
LDHI comprising the quaternary amine; and
injecting the dried LDHI comprising the quaternary amine into
the subsea pipeline.
8. A method of controlling corrosion in an umbilical
comprising:
providing an LDHI stream, the LDHI stream containing water;
determining a first maximum allowable water content of the
LDHI stream;
determining that water content in the LDHI stream exceeds the
first maximum allowable water content;
drying the LDHI stream based upon the water content in the
LDHI stream exceeding the first maximum allowable water
content, so as to form a dried LDHI stream; and
injecting the dried LDHI stream into the umbilical.
11. The method of claim 8, further comprising:
determining a second maximum allowable water content of the
LDHI stream; and
after drying the LDHI stream but before injecting the dried
LDHI stream, determining that the water content in the dried
LDHI stream exceeds the second maximum allowable water
content.
Appeal Br. (Claims App.).
REFERENCES AND REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 8-17 are rejected under 35 U.S.C. § 112, 1, for failure
to comply with the written description requirement. Final Act. 9-10.
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Application 13/238,757
2. Claims 6 and 8-17 are rejected under 35 U.S.C. § 112, 2 as
unpatentable for failure to particularly point out and distinctly claim the
subject matter of the invention. Id. at 10-11.
3. Claims 1 and 7 are rejected under 35 U.S.C. § 102(b) as
anticipated by Stoisits et al. (WO 2009/042319 Al, pub. April 2, 2009)
(hereinafter “Stoisits”). Id. at 11-12.
4. Claims 2-5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stoisits in view of Hossaini et al. (US 2006/0135372 Al,
pub. June 22, 2006) (hereinafter “Hossaini”). Id. at 13-14.
5. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Stoisits in view of Hossaini and further in view of Perrin et al. (Perrin
et al., “Drying of Solvents and Laboratory Chemicals,” Purification of
Laboratory Chemicals, Pergamon Press 1980 (2nd Ed.) 20-25) (hereinafter
“Perrin”). Id. at 14-15.
6. Claims 8, 10-12, and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Stoisits. Id. at 15-17.
7. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Stoisits and Perrin. Id. at 17-18.
8. Claims 13-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stoisits in view of Maoris et al. (US 2006/0120051 Al,
pub. June 8, 2006) (hereinafter “Maoris”). Id. at 18-19.
DISCUSSION
Rejection 1
The Examiner rejected claims 8-17 for failure to comply with the
written description requirement. Id. at 9-10. The Examiner determined that
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Application 13/238,757
the following limitations were not adequately supported in the original
Specification:
Claim Limitation
Claim 8 “determining a first maximum allowable water
content of the LDHI stream”
Claims 8 and 17 “the first maximum allowable water content”
Claim 11 “determining a second maximum allowable
water content of the LDHI stream”
Claim 11 “after drying the LDHI stream but before
injecting the dried LDHI stream”
Claims 11 and 12 “the second maximum allowable water
content”
Id. at 9-10.
Appellants argue that these first two phrases, “determining a first
maximum allowable water content of the LDHI stream” and “the first
maximum allowable water content” find support in Paragraphs 26 and 27 of
the original Specification. Appeal Br. 5. That portion of the Specification
provides as follows:
The water content of the LDHI in LDHI storage tank discharge
line 120 is monitored by inlet water monitor 200. If the water
content measured by inlet water monitor 200 is below a first
predetermined threshold .... If the water content measured by
inlet water monitor 200 is above a first predetermined
threshold, the LDHI is passed through dryer system 10.
Spec. 6 (underscoring added). In this context, “predetermined threshold” is
equivalent to “maximum allowable.” Accordingly, the cited text would
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Application 13/238,757
convey the substance of the claim limitations at issue to a person of ordinary
skill in the art and, thus, provides adequate support for the claims at issue.
Appellants assert that the last three terms, “after drying but before
injecting the LDHI stream,” “determining a second maximum allowable
water content of the LDHI stream,” and “the second maximum allowable
water content,” find support in Paragraphs 27-28 of the original
Specification. Appeal Br. 6. Paragraph 27 provides, in part, as follows:
After drying in dryer system 10, the LDHI is discharged through
dryer discharge line 150. The water content of the LDHI in dryer
discharge line 150 is monitored by outlet water monitor 200. If
the water content of dryer discharge line 150 is above a second
predetermined threshold, an operator may be notified that dryer
system 10 may not be functioning properly. The operator may
then take action to change a filter or otherwise investigate the
problem.
Spec. 6. This portion of the Specification teaches that the water content of
the dryed LDHI is measured while in “dryer discharge line 150.” This
occurs prior to being pumped (injected) into umbilical 190. Spec., Fig. 2.
Accordingly, the Specification describes determining a maximum water
content value "after drying but before injecting the LDHI stream."
The Specification’s teaching that “[t]he water content of the LDHI in
dryer discharge line 150 is monitored by outlet water monitor 200. If the
water content of dryer discharge line 150 is above a second predetermined
threshold” provides support for the terms relating to “the second maximum
allowable water content.”
Accordingly, we determine that the Specification provides adequate
written description of the subject matter of the limitations at issue and we are
constrained to reverse the rejection.
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Rejection 2
The Examiner rejected claims 6 and 8-17 as indefinite. Final Act. 10-
11. Claim 6 is rejected because it includes the term “sodium pentoxide”
which the Examiner describes as as “unknown compound.” Id. at 10.
Appellants submit an exhibit describing “sodium tert-pentoxide” as an
organic compound with the linear formula NaOC(CH s^CEECEE and
molecular structure with a central carbon bonded to three methyl groups as
well as ONa. Appeal Br., App. B. They argue that the term “tert” merely
indicates the tertiary form of a molecule having the known sodium pentoxide
formula. Id. at 7.
During prosecution, a claim is examined for compliance with 35
U.S.C. § 112, 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting MPEP § 2173.02). A claim should be rejected as
indefinite when it is amenable to two or more plausible claim constructions.
Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 (B.P.A.I.2008); In re
Packard, 751 F.3d 1307, 1324 (Fed. Cir. 2014) (“There are good reasons
why unnecessary incoherence and ambiguity in claim constructions should
be disapproved”).
Here, Appellants have adduced evidence that sodium tert-pentoxide is
a known chemical compound. Appeal Br., App. B. As argued by
Appellants, “tert” is chemical nomenclature that indicates a certain
arrangement of methyl groups in an organic compound. Id. at 7.
Accordingly, one may infer that sodium pentoxide comprises a pentyl
substituent (in any of several possible arrangements) bound to oxygen and
sodium.
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In view of the evidence of record, we conclude that the term “sodium
pentoxide” is amenable of only one construction and is sufficiently clear and
precise.
The Examiner additionally rejected claims 8-17 as indefinite in view
of their inclusion of limitations relating to a “maximum allowable water
content.” Final Act. 10-11. The Examiner determines such limitations to be
indefinite as the threshold for measuring the maximum water content is not
specified. Id. In regard to the effect of water concentration on downhole
pitting, the Specification teaches as follows:
In certain embodiments, it has been found that as little as 0.9
volume % of water can resulting in a pitting attack downhole. In
other embodiments, it has been found that at 0.6 volume% water,
if a pitting attack begins, it may not subside once initiated. In still
other embodiments, it has been found that at 0.5 volume % water,
little or no evidence exists for pitting initiation.
Spec. ^ 26; see also 37-41. Thus, the “maximum allowable water
content” may reasonably be construed to mean a value set by reference to
the water content expected to result in downhole pitting in a given
circumstance.
Accordingly, we reverse the rejection of claims 6 and 8-17 for
indefmiteness.
Rejection 3
The Examiner rejected claims 1 and 7 as anticipated by Stoisits. Final
Act. 11-12. Appellants allege error on several bases. Appeal Br. 8-10.
First, Appellants argue that Stoisits does not teach “combining an internal
desiccant with the LDHI to form a dried LDHI comprising the quaternary
amine” as required by claim 1. Id. at 8. Specifically, they assert that Stoisits
teaches two types of LDHI’s, kinetic hydrate inhibitors (“KHI’s”) and anti-
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agglomerants. Id. Further, Appellants argue that Stoisits teaches that
quaternary amines fall within the anti-agglomerant type of LDHI while only
the KHI type was taught to be mixed with glycol (which the Examiner finds
to be a desiccant). Id. Accordingly, Appellants reason, Stoisits does not
teach to combine an internal dessicant (glycol) with a quaternary amine-
containing anti-agglomerant type LDHI. Id.
This reasoning is flawed because Stoisits teaches that the two types of
LDHI’s may be combined. Stoisits ^ 63 (“one may chose [sic, choose] to
use a combination of KHI and AA type of LDHI.”). Stoisits further teaches
to use a thermodynamic hydrate inhibitor (such as glycol) with HKI type
LDHI. Id. 68. Thus, Stoisits would teach a person of ordinary skill in the
art that hydrates may be inhibited by a mixture that comprises an anti-
agglomerant (such as a quaternary amine), a KHI, and a thermodynamic
hydrate inhibitor (such as glycol).
Appellants further argue that Stoisits does not teach “a dried LDHI,”
Appeal Br. 9, or “forming a dried LDHI.” Id. at 9-10. They assert that the
portion of Stoisits cited by the Examiner states that "displacing fluids may
be dehydrated or degassed crude oil," rather than dehydrated LDHI. Id. at 9
(citing Stoisits ^ 68). They further cite to an embodiment of Stoisits that
provides that an LDHI may be mixed with water to form an aqueous solution
prior to mixture with dead crude. Appeal Br. 9 (citing Stoisits ^ 67).
In the Final Rejection, the Examiner cites to Paragraph 53 of Stoisits
which provides that “displacing fluids may be dehydrated or degassed crude
oil.” Stoisits teaches that this dehydrated crude is combined with LDHI.
See Stoisits, Fig. 2 (Step 250 of the Stoisits process, “Circulate
Displacement Fluid having LDHI from a Service Line Through the
Production Line”). Accordingly, Stoisits’ teaching regarding an aqueous
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mixture is only one embodiment and Stoisits also teaches an embodiment
that employs dehydrated crude oil having LDHI as a displacement fluid.
Appellants also contest the Examiner’s finding that glycol would
function as a desiccant when combined with an LDHI to form dried LDHI.
Appeal Br. 9. The Examiner relies upon Seibert’s teaching that glycol acts
as a desiccant in gas pipelines, final Act 11. Additionally, Stoisits provides
that thermodynamic hydrate inhibitors, such as glycol, “cause[ ] the
formation of stronger bonds between the thermodynamic hydrate inhibitor
and water versus gas and water.” Stoisits ^ 68.
“In relying upon the theory of inherency, the examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). Here, the
Examiner’s citation to Seibert reasonably supports the determination that
glycol would function as a desiccant in the proposed composition.
Accordingly, Appellants have failed to show reversible error in the
rejection of claims 1 and 7.
Rejections 4 and 5
The Examiner rejected claims 2-5 as obvious over Stoisits in view of
Hossaini and claim 6 as obvious over Stoisits in view of Hossaini and further
in view of Perrin. Final Act. 13-15. Appellants argue that these rejections
are in error due to Stoisits’ failure to teach “combining an internal desiccant
with the LDHI to form a dried LDHI comprising the quaternary amine,” as
argued in regard to claim 1. We find such argument unpersuasive for the
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reasons set forth above. Accordingly, Appellants have not shown reversible
error with regard to the rejection of claims 2-5 and 6.
Rejections 6—8
The Examiner rejected claims 8, 10-12, and 17 as obvious over
Stoisits. In addition to the “dried LDHI” argument discussed above,
Appellants argue that these claims are not obvious because Stoisits does not
teach “determining a first maximum allowable water content of the LDHI
stream,” “determining that water content in the LDHI stream exceeds the
first maximum allowable water content,” or “drying the LDHI stream based
upon the water content in the LDHI stream,” as required by claim 8.
In the final Rejection, the Examiner cites to Paragraph 67 of Stoisits
which provides as follows:
In one aspect, the low dosage hydrate inhibitor ("LDHI") is
mixed with water to form an aqueous solution (before mixture
with dead crude). In one instance, the aqueous solution is
between from about 0.01 to about 5% by weight of water. More
preferably, the LDHI composition is from about 0.1 to about
2.0 percent by weight of water.
Stoisits ^ 67. Thus, the Examiner finds, Stoisits teaches an overlapping
range of water content and, therefore, a prima facie case of obviousness.
The Examiner further argues that, under the broadest reasonable
interpretation, the “maximum allowable water content” should be construed
to mean “the water content of the LDHI stream.” Answer 21. The
Examiner additionally maintains, without citation to any support within
Stoisits, that it would have been obvious to monitor and remove the water
content in the displacement fluid “since the removal of water is the most
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straightforward option for corrosion reduction if said corrosion is caused by
water.” Id.
Stoisits does not teach to monitor and remove water content. Further,
the portion of Stoisits that the Examiner relies upon teaches to add water,
not remove it. See Stoisits ^ 67 (“the low dosage hydrate inhibitor ("LDHI")
is mixed with water to form an aqueous solution”). Accordingly, the
Examiner has not shown that Stoisits teaches “drying the LDHI stream based
upon the water content in the LDHI stream.”
As a consequence, we are constrained to reverse the rejections of
claim 8 and claims depending therefrom (claims 9-17). In view of such
determination, we need not reach Appellants’ remaining arguments.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 8-
17 for failure to comply with the written description requirement (Rejection
1) , reverse the rejection of claims 6 and 8-17 for indefiniteness (Rejection
2) , affirm the rejection of claims 1 and 7 as anticipated (Rejection 3), affirm
the rejection of claims 2-6 as obvious (Rejections 4 and 5), and reverse the
rejection of claims 8-17 (Rejections 6-8) as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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