Ex Parte Gronsveld et alDownload PDFBoard of Patent Appeals and InterferencesJun 27, 201111041554 (B.P.A.I. Jun. 27, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte JAN GRONSVELD, FRED ARKESTEIJN, DIEDERIK W. VAN BATENBURG, and JIP VAN EIJDEN __________ Appeal 2010-008305 Application 11/041,554 Technology Center 1700 __________ Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a sealant composition. The Patent Examiner rejected the claims on the ground of obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-008305 Application 11/041,554 2 STATEMENT OF THE CASE “The present invention generally relates to subterranean zonal isolation, and more particularly to methods of plugging a permeable zone in a wellbore using a sealant composition comprising a crosslinkable material and a reduced amount of cement.” (Spec. 1, [0002].) Claims 1, 2, 4, 5, 7-9, 11, 12, 14-19, and 21-23 are on appeal. Claim 1 is representative and reads as follows: 1. A sealant composition for servicing a wellbore, comprising: a crosslinkable material, a crosslinking agent, a fluid loss control additive, water, wherein the fluid loss control additive consists of a polymer fluid loss control additive in a range from about 0.1 % to about 3 % by weight of the sealant composition and a particulate fluid loss control additive in a range of from greater than 55% to about 70% by weight of the sealant composition and wherein the sealant composition comprises 0% cement. The Examiner rejected the claims as follows: • claims 1, 2, 4, 5, 7-9, 11, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Rodrigues, 1 Patel, 2 Gasper, 3 and Verlaan; 4 • claims 17 and 18 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, and Koskan; 5 • claims 15 and 16 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, and Rietjens; 6 1 Klein A. Rodrigues, US 5,358,051, issued Oct. 25, 1994. 2 Arvind D. Patel et al., US 5,134,118, issued Jul. 28, 1992. 3 Alton J. Gasper et al., US 4,749,592, issued Jun. 7, 1988. 4 Marco L. Verlaan et al., EP 1 369 401 A2, published Dec. 10, 2003. 5 Larry P. Koskan et al., US 5,284,512, issued Feb. 8, 1994. 6 Marcel Rietjens, US 6,310,008 B1, issued Oct. 30, 2001. Appeal 2010-008305 Application 11/041,554 3 • claim 19 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, and Verlaan; • claim 21 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, Rietjens, and Verlaan; • claims 22 and 23 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, Koskan, and Verlaan; • claims 1, 2, 4, 5, 9, 11, 12, and 19 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and Rodrigues; • claims 7 and 8 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and Eoff; 7 • claim 14 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and Smith; 8 • claims 15 and 16 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and Von Bonin; 9 • claims 17 and 18 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and Reddy; 10 • claims 21 and 23 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, Eoff, Smith, and Von Bonin; and • claim 22 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, Eoff, Smith, and Reddy. 7 Larry Eoff et al., US 6,187,839 B1, issued Feb. 13, 2001. 8 Charles W. Smith et al., US 4,393,939, issued Jul. 19, 1983. 9 Wulf von Bonin et al., US 5,709,821, issued Jan. 20, 1998. 10 B. Raghava Reddy, US 6,419,016 B1, issued Jul. 16, 2002. Appeal 2010-008305 Application 11/041,554 4 OBVIOUSNESS The Issues Appellants contend that the combination of the Rodrigues, Gasper, and Patel references is improper. (App. Br. 9.) “Specifically . . . the combination of Rodrigues with Gasper would render Rodrigues unsuitable for its intended purpose,” and “the Examiner’s purported rationale for the combination of Rodrigues, Gaspar, and Patel fails.” (Id.) Appellants maintain that (1) “this combination would be inoperable,” (2) “the Examiner’s assertion that Verlaan provides evidence of the operability of this combination is incorrect,” and (3) “inclusion of Patel’s polymers in Rodrigues’ solution would not improve Rodrigues’ solution.” (Reply Br. 8.) Appellants contend that the combination of the Verlaan and Gasper references is improper. (App. Br. 9.) “Specifically, the Examiner’s proposed modifications would render Verlann unsuitable for its intended purpose,” and “the Examiner’s purported rationales for the proposed modifications to Verlaan fail.” (Id.) Appellants maintain that “removing the cement from Verlaan’s cementitious composition would render Verlaan inoperable.” (Reply Br. 8.) Findings of Fact 1. We adopt the findings the Examiner set out in the “Grounds of Rejection” and “Response to Argument.” (See Ans. 5-28.) 2. Rodrigues indicated that the intended purpose of its invention is “to substantially terminate or at least decrease the flow of water from a subterranean formation into a wellbore penetrating the formation.” (Rodrigues, Abstract.) Appeal 2010-008305 Application 11/041,554 5 3. Rodrigues indicated that its invention more specifically pertains to the introduction of a self crosslinking, polymerizable monomer into a water-containing subterranean formation penetrated by a wellbore and causing the monomer to form a gel in the formation. (Id. at col. 1, ll. 12-16.) 4. Verlaan taught: A subterranean zone penetrated by a well bore is sealed using a sealing composition comprising a cementitious material, cross-linkable material, and sufficient water to form a slurry, the cross-linkable material preferably being a 2- hydroxyethyl acrylate or a copolymer of acrylamide and t-butyl acrylate. (Verlaan, Abstract.) 5. Verlaan taught: A variety of additives may be added to the sealing composition to alter its physical properties. Such additives may include slurry density modifying materials (e.g., silica flour, silica fume, sodium silicate, microfine sand, iron oxides and manganese oxides), dispersing agents, set retarding agents, set accelerating agents, fluid loss control agents, strength retrogression control agents, and viscosifying agents well known to those skilled in the art. (Id. at 6, [0027].) 6. Patel taught: This invention relates to an improved aqueous based drilling fluid and specifically to a water soluble polymer that imparts desirable performance characteristics to the final drilling fluid. . . . The water soluble polymer is especially useful in that it exhibits superior tolerance to divalent cations, salts, solids and elevated temperatures when added to aqueous drilling fluids. The polymer additive is characterized by increased viscosity at Appeal 2010-008305 Application 11/041,554 6 low shear rates and improved fluid loss control thereby exhibiting superior rheological and thixotropic properties. (Patel, Abstract.) 7. Verlaan taught: One such remedial operation is known as a squeeze, where pressure is used to force a sealing composition into cracks or other leak paths and restore zonal isolation. Accordingly, a sealing composition comprising cement can be used in a squeeze operation to plug a perforated interval of casing and sheath, and is particularly useful because cement allows subsequent re-perforation if desired. Therefore, a sealing composition incorporating cement, but having superior sealing properties, is desirable for squeeze operations. (Verlaan at 2, [0004].) Principles of Law A rejection for obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d at 988, cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 417-18. The proper question to ask is whether a person of ordinary skill in the art, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to combining the prior art teachings. KSR, 550 U.S. at 424; see also In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. Appeal 2010-008305 Application 11/041,554 7 2004) (the desirability of the combination may arise from nature of the problem, teachings of references, or the ordinary knowledge of those skilled in the art). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. “One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” Id. at 419-420. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. Analysis Examination of the claims in this application produced two separate sets of rejections: the first set relied on the teachings in Rodrigues, Patel, Gasper, and Verlaan, and the second set independently relied on the teachings in Verlaan, Gasper, and Rodrigues. Each set contains a rejection grouping independent claim 1 with some dependent claims, and includes additional rejections addressing further limitations in dependent claims. For the additional rejections addressing further limitations of dependent claims, Appellants tell us that the dependent claims “stand or fall on the application of the combination of Rodrigues, Patel and Gasper to independent claim 1” (App. Br. 16-17), or “stand or fall on the application of . . . the combination Appeal 2010-008305 Application 11/041,554 8 of Verlaan and Gasper to independent claim 1” (id. at 26-27). As the dependent claims have not been argued separately, they all stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). After reviewing all the evidence and all arguments presented, we conclude that the weight of the evidence supports the Examiner’s conclusion of obviousness. The Examiner’s reasoning explaining the rejections and responding to Appellants’ arguments is consistent with precedent, and we agree with it. The Examiner’s positions on the issues presented are more persuasive because they have objective evidentiary support, in contrast to Appellants’ contentions. We adopt the Examiner’s reasoning on all points, and briefly discuss Appellants’ main contentions and the Examiner’s responsive arguments. A. The rejections over Rodrigues, Patel, Gasper, and Verlaan. The Examiner found, and we agree, that both Rodrigues and Verlaan concerned sealing subterranean formations. (Ans. 21.) The Examiner directed attention to Rodrigues’ Abstract (Ans. 5), which indicates an intended purpose of the Rodrigues invention is “to substantially terminate or at least decrease the flow of water from a subterranean formation into a well bore penetrating the formation” (FF2). It is undisputed that Gasper is pertinent prior art. The Examiner found that Verlaan evidenced that combining Gasper’s particulates with Rodrigues’ composition would have been expected to produce an operable sealant composition. (Ans. 6, citing Verlaan at paragraph [0027].) It is undisputed that Verlaan concerns sealant compositions subterranean applications. (See e.g., Verlaan’s Abstract, FF4.) We agree with the Examiner that Verlaan’s paragraph [0027] objectively confirms that sealing compositions containing the listed additives would Appeal 2010-008305 Application 11/041,554 9 have been operable. (FF5.) We are therefore unpersuaded by Appellants’ arguments to the contrary, which lack an evidentiary foundation. Attorney argument cannot take the place of evidence. The Examiner found that an artisan would have included Patel’s co- AMPS in Rodrigues’ sealant “to improve the viscosity and fluid loss properties of the fluid.” (Ans. 6, citing Patel’s Abstract.) We agree with the Examiner that Patel taught that its additive, by improving viscosity and fluid loss properties, would confer “superior rheological and thixotropic properties.” (FF6.) Against that objective evidence, Appellants contend that increasing the viscosity of Rodrigues’ sealant would render it inoperable. (App. Br. 14, Reply Br. at 8.) First, we cannot adopt Appellants’ position because there is no evidence to support it. Second, the statute directs that the facts be assessed with regard to ordinary skill in the art at the time of the invention. Against the prior art teachings the Examiner relied on in this record, Appellants have provided no evidence that adjusting viscosity for operability was not within the level of ordinary skill. B. The rejections over Verlaan, Gasper, and Rodrigues. The Examiner found that Verlaan disclosed that sealant’s comprising cement would be useful because cement allows re-perforation. (Ans. 12, citing Verlaan at [0004].) In particular, the Examiner found Verlaan taught cement was “useful because cement allows subsequent re-perforation if desired.” (Id.; see FF7, emphasis added.) Reasoning that re-perforation may not always be desired, the Examiner concluded that it would have been obvious to make a sealant without cement. (Id.) The Examiner found that Verlaan’s composition would still function as a sealant for two reasons: (1) Verlaan used so little cement, 1.7 wt%, that the remaining composition Appeal 2010-008305 Application 11/041,554 10 would still work as a sealant without the cement, and (2) Rodrigues evidenced that a similar composition without cement was a sealant. We agree that the Examiner reasonably interpreted the evidence. Appellants contend that removing cement from Verlaan’s sealant would produce a sealant inoperable for its intended purpose. (App. Br. 19.) According to Appellants, Verlaan’s composition was intended to be used in a squeeze operation, and squeeze operations “are commonly referred to by those of skill in the art as squeeze cementing operations,” and “Verlaan explicitly states and one of skill in the art would understand, that the squeeze operations in which Verlaan’s sealant compositions are intended to be employed entail placement of a composition comprising cement.” (Id. at 20.) We find this argument unpersuasive because the claims define a composition, not a squeeze operation done with cement. Verlaan explicitly taught that cement may be used in squeeze operations “if desired.” (FF7.) Thus, we cannot agree that the rejection is merely “conclusory.” (See App. Br. at 21.) Equally significantly, the ordinary artisan is informed by both Verlaan and Rodrigues, not Verlaan alone, and since Rodrigues teaches a cement free composition functions in reducing flow from a wellbore, the ordinary artisan would apply this teaching in sealant design. We find Appellants’ remaining allegations of “multiple legal, logical, technical fallacies” (App. Br. 22-25) unpersuasive for the reasons the Examiner gave (Ans. 25-26). Appeal 2010-008305 Application 11/041,554 11 SUMMARY We affirm the rejection of claims 1, 2, 4, 5, 7-9, 11, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Rodrigues, Patel, Gasper, and Verlaan. We affirm the rejection of claims 17 and 18 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, and Koskan. We affirm the rejection of claims 15 and 16 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, and Rietjens. We affirm the rejection of claim 19 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, and Verlaan. We affirm the rejection of claim 21 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, Rietjens, and Verlaan. We affirm the rejection of claims 22 and 23 under 35 U.S.C. § 103 as unpatentable over Rodrigues, Gasper, Patel, Koskan, and Verlaan. We affirm the rejection of claims 1, 2, 4, 5, 9, 11, 12, and 19 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and Rodrigues. We affirm the rejection of claims 7 and 8 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and Eoff. We affirm the rejection of claim 14 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and Smith. We affirm the rejection of claims 15 and 16 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and VonBonin. We affirm the rejection of claims 17 and 18 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, and Reddy. We affirm the rejection of claims 21 and 23 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, Eoff, Smith, and Von Bonin. Appeal 2010-008305 Application 11/041,554 12 We affirm the rejection of claim 22 under 35 U.S.C. § 103 as unpatentable over Verlaan, Gasper, Eoff, Smith, and Reddy. 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 cdc Copy with citationCopy as parenthetical citation