Ex Parte Gronsveld et al

Board of Patent Appeals and Interferences

Jun 27, 2011

11041554 (B.P.A.I. Jun. 27, 2011)

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.
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Application 11/041,554

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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.
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• 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

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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.)
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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
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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.
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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
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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
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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
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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.
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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