Ex Parte Hartshorne et al

Patent Trial and Appeal Board

Nov 16, 2017

14303196 (P.T.A.B. Nov. 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.
14/303,196 06/12/2014 Robert Seth Hartshorne 57.0394-US-CNT 5853
27452 7590 11/20/2017
SCHLUMBERGER TECHNOLOGY CORPORATION
10001 Richmond Avenue
IP Administration Center of Excellence
Houston, TX 77042
EXAMINER
PENG, KUO LIANG
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
11/20/2017 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):
U S Docketing @ sib. com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SETH HARTSHORNE, TREVOR LLOYD HUGHES,
TIMOTHY GARETH JOHN JONES, GARY JOHN TUSTIN, and
JIAN ZHOU
Appeal 2017-001462
Application 14/3 03,19b1
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejection adverse to the patentability of claims 1—9 under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellants identify the real party in interest as Schlumberger Technology
Corporation. App. Br. 2.
Appeal 2017-001462
Application 14/303,196
SUBJECT MATTER
Sole independent claim 1 is illustrative of the subject matter on
appeal, with the key limitation appearing in italics:
1. A wellbore service fluid, comprising:
an aqueous viscoelastic composition that comprises a
cleavable surfactant, the cleavable surfactant comprising an
amide surfactant or an ester surfactant having the structure of
formula 1, formula 2 or formula 3:
Ri-X-(CR5R6)m-Y©Ze
Formula 1
or
Ri-X-(CR5R6)m-A0 B©
Formula 2
or
Ri-X-(CR5R6)m-Y©Ae
Formula 3
where:
(i) Rj is a saturated or unsaturated, linear or branched
aliphatic chain of at least 18 carbon atoms',
(ii) X is an O(CO), (CO)O, or (CO)NRy group;
(iii) m is at least one;
(iv) Y© is -NR2R3R4;
(v) R2, R3, R4, R5, R6 and R7 are each independently
hydrogen; a linear or branched, saturated aliphatic chain of at
least 1 carbon atom; or a linear or branched, saturated aliphatic
chain of at least 1 carbon atom with one or more of the
hydrogen atoms replaced by a hydroxyl group, wherein for
cleavable surfactants of formula 3, the R4 group is adjacent to
Ae and is not hydrogen;
(vi) Ae is a sulfonate anionic group; and
(vii) Ze and B© are ionic counterions associated with a
cleavable surfactant of formula 1 or formula 2, where Ze is a
monovalent anion or divalent anion and B© is hydrogen or a
monovalent cation,
excluding surfactants of formula 1 in which X is O(CO), R5 and
R6 are each independently hydrogen, m is greater than or equal
to 1 but less than 5 and Y© is -NR2R3R4.
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Appeal 2017-001462
Application 14/303,196
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Dilgren US 3,302,711 Feb. 7, 1967
Bonekamp et al. US 5,258,137 Nov. 2, 1993
(hereinafter “Bonekamp”)
The following claims are rejected under 35 U.S.C. § 103(a):
I. Claims 1—8 as unpatentable over Bonekamp; and
II. Claim 9 as unpatentable over Bonekamp and Dilgren.
STATEMENT OF THE CASE
The Examiner finds that Bonekamp discloses a wellbore service fluid
comprising a viscoelastic gel composition containing a surfactant that is an
alkyl homolog to those compounds recited in claim 1. Final Act. 3^4.
Based on this finding, the Examiner concludes that it would have been
obvious for the skilled artisan to make structurally similar compounds, such
as those claimed, based on the expectation that such structurally similar
compounds would have similar properties. Id.
OPINION
Appellants present arguments against the rejection of independent
claim 1. No other claim is argued separately with any specificity. Thus, we
need only consider claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 14/303,196
We have considered Appellants’ arguments (App. Br. 6—9; Reply Br.
2—3) and are unpersuaded that Appellants have identified any reversible
error in the Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365—66
(Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring an
Appellant to identify the alleged error in the Examiner’s rejection).
Therefore, we sustain the obviousness rejections advanced in this appeal
based on the findings of fact, conclusions of law, and rebuttals to arguments
well-expressed by the Examiner in the Final Action and in the Answer. We
add the following comments for emphasis.
In certain fact patterns such as the one here, structural similarity
between prior art compounds and those claimed weighs heavily in favor of
the obviousness conclusion. “[Structural similarity between claimed and
prior art subject matter . . . where the prior art gives reason or motivation to
make the claimed compositions, creates a prima facie case of obviousness,
and that the burden (and opportunity) then falls on an applicant to rebut that
prima facie case.” In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990).
Our reviewing court and its predecessor have recognized that
[structural relationships may provide the requisite motivation or
suggestion to modify known compounds to obtain new
compounds. For example, a prior art compound may suggest its
homologs because homologs often have similar properties and
therefore chemists of ordinary skill would ordinarily contemplate
making them to try to obtain compounds with improved
properties.
In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995); see also In re Wilder, 563
F.2d 457,460 (CCPA 1977) (“one who claims a compound, per se, which is
structurally similar to a prior art compound must rebut the presumed
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Application 14/303,196
expectation that the structurally similar compounds have similar
properties,”)
Here, Appellants would have us read Bonekamp’s recitation of “r is
about 2 to about 15” as limited to precise endpoints of “2 to 15” carbon
atoms. App. Br. 7. We decline, however, to read Bonekamp’s disclosure as
narrowly as Appellants urge. Rather, we agree with the Examiner (Final
Act. 4; Ans. 6—7) that, because Bonekamp uses the term “about” when
describing the “r” substituent, there was no intention to limit this substituent
to a precise endpoint of 15 carbon atoms. Compare Bonekamp 5:41—42,
with id. at 8:66, (discussing precise numbers of carbon atoms and not using
the term “about,” i.e., “the alkyl group advantageously contains 4 to 22
carbons”). Thus, the Examiner correctly observed that the skilled artisan
“would [have] appreciate[d] that ‘about 15’ would refer to whole numbers”
that are somewhat larger than 15, e.g. 16. Ans. 6. Because Bonekamp’s “r”
substituent can reasonably be read as including at least 16 carbon atoms, and
because the trifluoromethyl substituent adds one additional carbon atom,
Bonekamp’s compound reasonably includes at least 17 carbons at the
location corresponding to the recited Ri substituent which requires “at least
18 carbon atoms.” Accordingly, the claimed compounds are alkyl homologs
of those disclosed in Bonekamp and a prima facie case of obviousness
exists, thereby shifting the burden to Appellants to demonstrate that the
properties of the claimed compound are unexpectedly different. In re Deuel,
51 F.3d at 1558. In re Wilder, 563 F.2d at 460.
Appellants’ argument (Reply Br. 2—3) that the Examiner has failed to
provide evidence that Bonekamp’s compounds would be expected to have
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Application 14/303,196
similar properties as those claimed is likewise unconvincing. Rather, we
observe that
it is not necessary in order to establish a prima facie case of
obviousness that both a structural similarity between a claimed
and prior art compound ... be shown and that there be a
suggestion in or expectation from the prior art that the claimed
compound... will have the same or a similar utility as one newly
discovered by applicant. To the extent that [In re Wright, 848
F.2d 1216 (Fed. Cir. 1988)] suggests or holds to the contrary, it
is hereby overruled. In particular, the statement that a prima
facie case of obviousness rejection is not supported if no
reference shows or suggests the newly-discovered properties and
results of a claimed structure is not the law.
In re Dillon, 919 F.2d at 693.
We furthermore agree with the Examiner (Final Act. 4—5; Ans. 7—8)
that the claims, as written, do not exclude substituted variations of the
aliphatic chain. Appellants have provided nothing more than attorney
argument to support their position that the skilled artisan would understand
that an aliphatic chain is not substituted, e.g., with fluorine atoms. Reply Br.
3; see also App. Br. 8. In contrast, the Examiner provides evidence that the
opposite is true. Ans. 7—8. “Attorney’s argument in a brief cannot take the
place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
SUMMARY
The Examiner’s final decision to reject claims 1—9 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)(1).
AFFIRMED
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