Ex Parte Kaminsky

Patent Trial and Appeal Board

Jan 19, 2018

14078316 (P.T.A.B. Jan. 19, 2018)

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.
14/078,316 11/12/2013 Robert D. Kaminsky 2007EM027-4 3941
34477 7590 01/23/2018
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-E2-4A-296)
Spring, TX 77389
EXAMINER
DITRANI, ANGELA M
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
urc-mail-formalities @ exxonmobil. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT D. KAMINSKY
Appeal 2017-001774
Application 14/078,3161
Technology Center 3600
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1-9, 11, and 12. Final Office Action
(March 7, 2016) (hereinafter “Final Act.”). We have jurisdiction under
35 U.S.C. § 6(b). Appellant contests the Examiner’s determination of
obviousness of the claimed subject matter in view of the combined teachings
1 Appellant identifies ExxonMobil Upstream Research Company, which is a
subsidiary of Exxon Mobil Corporation, as the real party in interest. Appeal
Brief 3 (August 1, 2016) (hereinafter “Appeal Br.”).
Appeal 2017-001774
Application 14/078,316
of the prior art. We agree with Appellant that the Examiner erred in the
determination of obviousness. Accordingly, we REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “in situ recovery of
hydrocarbon fluids from organic-rich rock formations including, for
example, oil shale formations, coal formations and tar sands.” Specification
12 (filed November 12, 2013) (hereinafter “Spec.”). Claim 1 is the sole
independent claim and is reproduced below, with the pertinent claim
language shown in italics.
1. A method for heating an organic-rich rock
formation, comprising:
providing a plurality of heater wells, each of the plurality
of heater wells comprising:
a) a first wellbore at least partially within the
organic-rich rock formation;
b) an electrically conductive first member in the
first wellbore;
c) a second wellbore that intersects the first
wellbore;
d) an electrically conductive second member in the
second wellbore; and
e) an electrically conductive granular material
filling at least a part of each of the first and second
wellbores so as to provide an electrical connection
between the electrically conductive first member in the
first wellbore and the electrically conductive second
member in the second wellbore, the electrically
conductive granular material thereby forming a granular
mass and acting as a resistive heating element, the
electrically conductive first member, the electrically
conductive granular material and the electrically
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Application 14/078,316
conductive second member thereby forming an electrical
flow path, wherein the electrically conductive first
member terminates proximate an upper portion of the
electrically conductive granular material in the first well
bore and the electrically conductive second member
terminates proximate an upper portion of the electrically
conductive granular material in the second wellbore;
passing electrical current through each electrical flow path
in order to generate heat primarily via electrical resistive heating
within the electrically conductive granular material;
transferring, by thermal conduction, at least a portion of
the generated heat into the organic-rich rock formation, thereby
forming a heated volume of the organic-rich rock formation, the
heated volume being defined at extremities of the heated volume
by a plurality of the granular masses; and
heating a majority of formation hydrocarbons located in
the heated volume of the organic-rich rock formation primarily
with the generated heat, thereby causing the formation
hydrocarbons to be substantially pyrolyzed to form hydrocarbon
fluids.
Appeal Br. 17 (Claims Appendix).
EVIDENCE
The Examiner’s decision relies upon the following evidence:
VanMeurs US 4,886,118 Dec. 12, 1989
Vinegar US 2007/0045267 A1 Mar. 1,2007
Symington WO 2005/010320 A1 Feb. 3,2005
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-7, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Symington and Vinegar.
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Application 14/078,316
2. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Symington, Vinegar, and Van Meurs.
ISSUE
Claim 1 requires that in each heater well, the second wellbore
intersects the first wellbore. The issue presented by this appeal is whether
the Examiner erred in finding that Symington discloses intersecting
wellbores.
ANALYSIS
First Ground of Rejection: Obviousness over Symington and Vinegar
The Examiner found that Symington discloses the method of claim 1
including providing a plurality of heater wells, each of the heater wells
comprising a first wellbore 28 and a second wellbore 26 that intersects the
first wellbore. Final Act. 3 (citing Symington 10,11. 19-21, Fig. 2). The
Examiner explained that Figure 2 shows wellbore 26 is a horizontal well that
extends across formation 25 and intersects the lowest-most portion of
wellbore 28. Id. at 13.
The evidence fails to adequately support the Examiner’s finding that
Symington’s wellbores intersect. Symington describes that in the
embodiment of Figure 2, wells 26 are substantially horizontal and wells 28
are substantially vertical. Symington 10,11. 19-21. Symington does not
describe that in the Figure 2 embodiment wells 26 and 28 intersect. See
Appeal Br. 14 (Appellant arguing that “Figure 2 clearly shows that the
wellbores do not intersect, but are connected only by induced fractures.”).
Symington discloses that wells 26 and 28 are propped with electrically
conductive particles and electrically connected via these electrically
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Appeal 2017-001774
Application 14/078,316
conductive particles that extend into the fractures 22. Symington 10,11. 18-
19 (“A voltage 24 is applied across two or more wells 26, 28 that penetrate
the fractures 22”) (emphasis omitted). Figure 2 depicts substantially vertical
wellbore 28 extending downwardly to the right of, and below, the horizontal
end of wellbore 26. Symington does not depict in Figure 2 that the wells
themselves intersect.
This understanding comports with the general summary of the
invention in Symington, which describes that “said fracture intersects at least
one of said wells,” and in one embodiment, “one or more of said fractures
intersects at least two of said wells.” Id. at 6,11. 9, 16-17. As such, our
understanding of Symington corresponds to the interpretation proffered by
Appellant. See Appeal Br. 13-15.
The Examiner explains that Symington’s fractures 22 “are shown to
fully encompass the horizontal portion of wellbore 26, as is known in the art
for longitudinal fractures, thereby lengthening the horizontal wellbore leg’s
vertical extension within the reservoir.” Examiner’s Answer 3 (October 14,
2016) (hereinafter “Ans.”). We find insufficient evidentiary support for the
Examiner’s position that fractures surrounding a wellbore expand the
wellbore itself. Appellant’s Specification defines “wellbore” as “a hole in
the subsurface made by drilling or insertion of a conduit into the
subsurface.” Spec. 194. Vinegar contains the same definition. Vinegar
1269. The Specification separately defines fractures as being created in a
formation “by expansion or contraction of a portion of the formation and/or
fluids within the formation” or by “injection of pressurized fluids into the
formation.” Spec. Tflf 92, 93. Again, Vinegar contains a similar definition.
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Appeal 2017-001774
Application 14/078,316
Vinegar 1301. Thus, one having ordinary skill in the art, based on the
definitions provided in Appellant’s Specification and used consistently in
Vinegar, would understand the structure of the “wellbore” differs from the
structure of the fractures based on the different methods used to form them.
These separate definitions of “wellbore” and “fracture” in the art do not
support the Examiner’s position that Symington’s fractures 22 expand
wellbore 26.
The Examiner also explains:
Fractures establish a flow path into and from a wellbore, and as
such, the direct intersection of fracture 22 with wellbore 28
provides further evidence of Symington’s disclosure of a
second wellbore that intersects a first wellbore since at least the
flow paths of the second wellbore and first wellbore can be seen
to intersect and be in direct fluid communication.
Ans. 3—4 (emphasis omitted). While we agree that the wellbores appear to
each intersect fracture 22, the claim requires that the wellbores intersect, not
that the flow between wellbores is fluidly connected or that fractures connect
the wellbores.
The Examiner makes much of the fact that Appellant’s Specification
purportedly describes that electrical communication between the first and
second wellbores is provided for by an electrically conductive granular
material. Ans. 2—4. The Examiner, by these comments, misconstrues the
Specification. In Appellant’s embodiment shown in Figure 34B, the
electrically conductive first and second members do not extend throughout
the entire length of the first and second wellbores. See Spec., Fig. 34B
(depicting conductive members 3410 extending only partially into wellbores
3405’ and 3405”). As such, the electrically conductive first and second
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Application 14/078,316
members are not physically connected to one another, but are electrically
connected via electrically conductive granular material disposed in the
wellbores. Thus, contrary to the Examiner’s understanding, the
Specification describes that the electrically conductive granular material
provides for electrical communication between the electrically conductive
first and second members, not between the wellbores themselves. Rather,
the Specification describes, and Figure 34B shows, that the first and second
wellbores themselves are physically connected via their intersection.
The Examiner further explains that “the claims themselves do not
require either that the wellbores ‘directly’ intersect or that the wellbores
themselves intersect.” Ans. 4. This reading of the claim language is
incorrect. First, the claim explicitly recites “a second wellbore that
intersects the first wellbore.” Appeal Br. 17 (Claims Appendix). This
language unequivocally requires that the wellbores themselves intersect.
Second, the Examiner implies by these comments that two wellbores that do
not physically cross paths somehow can indirectly intersect one another.
This position is contrary to the ordinary meaning of “intersect.”2 * * * * 7
Symington’s wells 26 and 28 do not pass through or across one
another, meet and cross at a point, or overlap or share a common area. By
contrast, Appellant’s Figure 34B shows first wellbore 3405’ meeting up with
second wellbore 3405” such that the two wellbores meet at a common point.
2 Ordinary meanings of “intersect” include “to pierce or divide by passing
through or across: cross,” “to meet and cross at a point,” and “to share a
common area: overlap.” Merriam-Webster On-Line Dictionary,
www.M-W.com/dictionary/intersect (accessed January 11, 2018), copy of
definition attached as Appendix A to this Decision.
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Application 14/078,316
Spec., Fig. 34B; 1302 (“The toe 3429 [of lower end 3424 of second
wellbore 3405”] forms a point of convergence below the first wellbore
3405’”) (emphasis omitted).
The Examiner relied on Vinegar for the disclosure of placing a
heating element within each wellbore along with a contacting material.
Final Act. 4. The Examiner proposed to modify Symington “to include an
electrically conductive member within each of the first and second
wellbores.” Id. at 5. The Examiner does not appear to rely on any other
teachings in Vinegar in the rejection of claim 1 to cure the above-noted
deficiency in Symington.
For these reasons, we do not sustain the rejection of claim 1 and its
dependent claims 2-7, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Symington and Vinegar.
Second Ground of Rejection: Obviousness over Symington, Vinegar, and
Van Meurs
The Examiner relied on Van Meurs for the disclosure of: (1) spacing
the wells “at least about 20 feet apart, with borehole separation of about 30
to 100 feet” (claim 8); and (2) testing the thermal conductivity of the
formation prior to and after field tests (claim 9). Final Act. 10-11. The
Examiner does not appear to rely on any other teachings in Van Meurs in the
rejection of either claim 8 or claim 9 that would cure the above-noted
deficiency in Symington, as it pertains to the rejection of claim 1. For these
reasons, we do not sustain the rejection of claims 8 and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Symington, Vinegar, and Van Meurs.
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Appeal 2017-001774
Application 14/078,316
DECISION
The decision of the Examiner rejecting claims 1-9, 11, and 12 is
reversed.
REVERSED
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Appeal 2017-001774
Application 14/078,316
APPENDIX A
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Merriam-Webster On-Line Dictionary, www.m-w.com/dictionary/intersect
(accessed January 11, 2018).
10