Ex Parte Dusterhoft et al

Board of Patent Appeals and Interferences

Oct 6, 2009

10961508 (B.P.A.I. Oct. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD G. DUSTERHOFT and PHILIP D. NGUYEN
____________

Appeal 2009-004536
Application 10/961,508
Technology Center 3600
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Decided: October 6, 2009
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Ronald G. Dusterhoft et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-27. Claims 28-54 have
been allowed by the Examiner. We have jurisdiction over this appeal under
35 U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention relates to a process for injecting a treatment
fluid in a subterranean formation, such as a gas or oil well. The process
includes providing a treatment fluid, determining the breakdown pressure of
the subterranean formation, calculating the maximum sustainable flow rate
for the treatment fluid, and injecting the treatment fluid into the subterranean
formation at a flow rate less than or equal to the maximum sustainable flow
rate of the treatment fluid. Spec. 2, ¶¶ [0004, [0005].
Claim 1 is representative of the claimed invention and reads as
follows:
1. A method of injecting a treatment fluid into a portion of a
subterranean formation, comprising:

providing a treatment fluid having a viscosity;

determining the breakdown pressure of the portion of the
subterranean formation;

calculating the maximum sustainable flow rate for the treatment
fluid; and,

injecting the treatment fluid into the portion of the subterranean
formation at a flow rate less than or equal to the maximum
sustainable flow rate for the treatment fluid.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
James US 6,450,260 B1 Sep. 17, 2002
Nguyen US 2004/0194961 A1 Oct. 7, 2004

The following rejections are before us for review:
The Examiner rejected claims 1-4 and 13 under 35 U.S.C. § 102(b) as
being anticipated by James.
The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over James.
The Examiner rejected claims 5-10 and 14-27 under 35 U.S.C. §
103(a) as unpatentable over James and Nguyen.

THE ISSUE
Appellants argue that James does not teach the limitation “calculating
the maximum sustainable flow rate” of the treatment fluid, as required by
claim 1. According to Appellants,
James does not teach or suggest calculating, e.g.,
through a formula or a modeling exercise, the
maximum sustainable injection rate. Instead, a
person of ordinary skill in the art at the time of
Applicant's invention would understand James's
disclosure of a maximum injection rate to suggest
the use of trial and error and/or estimations based
on prior experience to arrive at an injection rate
that would not exceed the breakdown pressure of
the subterranean formation and would be within
the limitations of the available equipment.

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App. Br. 5.
Appellants further argue that the broadest reasonable interpretation of
the term “calculating” is “to determine or ascertain by mathematical
methods; compute.” Reply Br. 3. In other words, Appellants would like for
us to construe the term “calculating” to entail an equation, i.e. a formula, or
other mathematical manipulation of various variables, i.e. modeling.
The Examiner responds that the term “calculating” is not as limiting
as Appellants suggest. According to the Examiner:
[T]he definition of calculating is not limited to
being through a formula or a modeling exercise.
To calculate means to determine or ascertain by
mathematical methods or to determine by
reasoning, common sense, or practical experience;
estimate; evaluate; gauge.
Ans. 9. Accordingly, the Examiner takes the position that even if James
teaches that the maximum injection rate is based on trial and error and/or
estimations, as Appellants suggest, “this reads on the definition of
calculating, e.g. determining by practical experience, estimate, evaluate.”
Ans. 10.
The issue before us in the instant appeal is whether Appellants have
demonstrated that the Examiner erred in finding that James teaches the
limitation “calculating the maximum sustainable flow rate” of the treatment
fluid, as required by claim 1. The issue turns on whether the Examiner’s
construction of the term “calculating” to mean, “determining by practical
experience, estimate, evaluate” is a reasonable interpretation consistent with
the Specification.
SUMMARY OF DECISION
We AFFIRM.
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OPINION
Appellants argue the rejection of claims 1-4 and 13 under 35 U.S.C. §
102(b) together as a group. App. Br. 5. Therefore, in accordance with 37
C.F.R. § 41.37(c)(1)(vii)(2009), we have selected claim 1 as the
representative claim to decide the appeal, with claims 2-4 and 13 standing or
falling with claim 1.
At the outset, we note that claims are to be given their broadest
reasonable interpretation consistent with the specification, reading claim
language in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The Appellants’ Specification does not expressly
define the term “calculating” or otherwise indicate that this term is used in a
manner other than its ordinary and customary meaning. Accordingly, we
construe this term in accordance with its ordinary and customary meaning.
Similar to the Examiner’s finding, we find that an ordinary and customary
meaning of the term “calculate” is “a. to determine by mathematical
processes b. to reckon by exercise of practical judgment: ESTIMATE.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). Hence, we
agree with the Examiner that an ordinary and customary meaning of the term
“calculate” is not restricted to an equation (i.e. a formula) or a mathematical
manipulation process, as Appellants suggest. If Appellants had wanted to
limit the claim to a mathematical calculation, Appellants could have done so
by inserting the term “mathematically” in front of the term “calculating” in
the claim language of claim 1. Appellants always have the opportunity to
amend the claims during prosecution, and broad interpretation by the
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examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969).
We did not find any portion, and Appellants have not pointed to any
portion, in the Specification that would dictate such a narrow construction of
the term “calculating.” Appellants’ Specification describes “calculating” the
flow rate of the treatment fluid “by determining the maximum sustainable
flow rate that will not result in the fracturing of the formation” (emphasis
added). Spec. 6, ¶ [0016]. Although we agree with Appellants that the
Specification describes a mathematical relationship between the non-
fracturing injection flow rate (maximum sustainable flow rate) and various
parameters1, we do not find that the Specification mandates using the
described mathematical relationship to “calculate” the non-fracturing
injection flow rate. By using the term “determining” in the phrase
“calculating by determining the maximum sustainable flow rate” (emphasis
added), Appellants’ Specification does not exclude “calculating” by other
means than mathematical processes, such as the exercise of practical
judgment, by estimating, or by evaluating. Accordingly, we find the
Examiner’s construction of the term “calculating,” namely, “determining by
practical experience, estimate, evaluate” to be a reasonable interpretation
consistent with the Specification.
It is our finding that James teaches injecting a treatment fluid in a
subterranean formation through a wellbore at a pressure less than the

1 Such parameters include the average reservoir pressure, the
permeability of the formation, the net pay, the viscosity of the fluid, the
radius of the formation cylinder in which the majority of the pressure drop
takes place, the well bore radius, and the skin factor for the well bore.
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fracturing pressure of the formation (breakdown pressure). James, col. 6, ll.
25-27. We further find that James teaches that the maximum injection rate
(maximum sustainable flow rate) is a function of the maximum pressure that
will not lead to fracturing of the formation (breakdown pressure). James,
col. 6, ll. 57-60. Since James teaches that the maximum injection rate
(maximum sustainable flow rate2) is a function of the “maximum pressure
that will not lead to fracturing of the formation” (i.e., breakdown pressure),
James teaches a relationship between the maximum sustainable flow rate
and the breakdown pressure. Furthermore, because James teaches injecting
the treatment fluid at a pressure below the fracturing pressure of the
formation, James teaches injecting at a flow rate below that which generates
fracturing of the formation, that is, injecting at a flow rate that will generate
a pressure lower than the fracturing pressure of the formation. Hence, James
teaches “determining” the maximum injection rate, i.e., maximum
sustainable flow rate. In conclusion, in view of our construction of the term
“calculating” and because James teaches, “determining” the maximum
injection rate (maximum sustainable flow rate), we find that James teaches,
“calculating” the maximum sustainable flow rate, as required by claim 1.
For the foregoing reasons, Appellants’ arguments do not persuade us
that the Examiner erred in rejecting claim 1 as anticipated by James.
Accordingly, the rejection of claim 1, and claims 2-4 and 13, standing or
falling with claim 1, is sustained.

2 The maximum sustaineable flow rate is described in Appellants’
Specification as the flow rate that will not result in the fracture of the
formation. Spec. 6, ¶ [0009].
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With respect to claims 5-12 and 14-27, Appellants do not make any
arguments separate from the argument presented with respect to the rejection
of claim 1 as anticipated by James. App. Br. 6, 7. Accordingly, for the
reasons discussed above these arguments are not persuasive. Hence, the
rejection of claims 11 and 12 as unpatentable over James and claims 5-10
and 14-27 as unpatentable over James and Nguyen are likewise sustained.

CONCLUSION
Appellants have failed to demonstrate that the Examiner erred in
finding that James teaches the limitation “calculating the maximum
sustainable flow rate” of the treatment fluid, as required by claim 1. The
Examiner’s construction of the term “calculating” to mean, “determining by
practical experience, estimate, evaluate” is a reasonable interpretation
consistent with the Specification.

DECISION
The Examiner’s decision to reject claims 1-27 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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LV

ROBERT A. KENT
P.O. BOX 1431
DUNCAN, OK 73536