Ex Parte LI et alDownload PDFPatent Trial and Appeal BoardDec 5, 201613047064 (P.T.A.B. Dec. 5, 2016) Copy Citation 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. 13/047,064 03/14/2011 Leiming Li 56.1070CNT 6144 27452 7590 12/07/2016 SCHLUMBERGER TECHNOLOGY CORPORATION 10001 Richmond Avenue IP Administration Center of Excellence Houston, TX 77042 EXAMINER LI, AIQUN ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 12/07/2016 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 LEIMING LI, PAUL R. HOWARD, MICHAEL D. PARRIS, BERNHARD LUNGWITZ, CURTIS L. BONEY, KEVIN W. ENGLAND, RICHARD D. HUTCHINS, and JACK LI Appeal 2015-004798 Application 13/047,064 Technology Center 1700 Before JEFFREY T. SMITH, GEORGE C. BEST, and MICHAEL G. McMANUS, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1, 11, 13, 19, 21—24, 26, 27, 60, 62—64, and 66—68 of Application 13/047,064 under 35 U.S.C. § 103(a) as obvious. Final Act. (March 10, 2014). Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. §6. For the reasons set forth below, we AFFIRM. 1 Schlumberger Technology Corporation is identified as the real party in interest. Appeal Br. 2. Appeal 2015-004798 Application 13/047,064 BACKGROUND The ’064 Application describes methods for the treatment and reuse of water produced from a subterranean petroleum reservoir. Spec. 11. Oilfield-produced water, i.e., water produced from a well bore along with oil and/or gas, can be recycled and used to prepare fracturing fluid for reinjection into a well bore. Id. 12. One commonly used type of fracturing fluid is comprised of a cross- linked soluble polysaccharide. Id. 13. The cross linking increases the viscosity of the fracturing fluid. Id. After the fracturing fluid has been used, the cross-linked polysaccharide degrades and the viscosity of the fracturing fluid decreases. Id. 14. A viscosity breaker is typically used to initiate and/or accelerate this process. Id. When the oilfield-produced water is used without pretreatment to produce a polysaccharide-based fracturing fluid, the viscosity of the fracturing fluid deteriorates as if a viscosity breaker had been prematurely activated in the fluid. Id. 1 5. According to the ’064 Application’s Specification, the likely cause of the fluid failure is “the degradation of polysaccharide or polysaccharide derivatives by bacteria and/or related enzymes present in the [oilfield-jproduced water.” Id. The Specification describes methods for deactivating the enzymes that cause this degradation. Claim 1 is representative of the ’064 Application’s claims and is reproduced below from the Claims Appendix of the Appeal Brief: 1. A method, comprising: providing oilfield produced water wherein the oilfield produced water comprises one or more enzymes; deactivating the enzymes in the oilfield produced water by contacting the oilfield produced water with a denaturant for at least 0.5 hours, wherein the denaturant comprises an organo- 2 Appeal 2015-004798 Application 13/047,064 zirconium compound selected from the group consisting of zirconium acetate, zirconyl acetate, zirconium glycolate, zirconium lactate, zirconium naphthenate, sodium zirconium lactate, triethanolamine zirconium, zirconium propionate, hydrates thereof and combinations thereof to produce a denatured produced water, wherein the contacting comprises admixing the organo-zirconium compound in the oilfield produced water at a concentration from 1 to 200 ppm by weight of the oilfield produced water; thereafter mixing a gelling agent in the denatured produced water to form a viscosified fluid; and thereafter injecting the viscosified fluid into a subterranean formation adjacent a well bore; wherein the one or more enzymes, prior to deactivation, are capable of reducing the viscosity of crosslinked gels or VES fracturing fluids. Appeal Br. 19. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 11, 13, 19, 21-23, 26, 27, 60, 62-64, and 66-68 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Almond2 and Moradi-Araghi3 as evidenced by Torrington4 and Barber.5 Final Act. 5. 2 US 4,477,360, issued October 16, 1984. 3 US 5,642,783, issued July 1, 1997. 4 US 2,190,689, issued February 20, 1940. 5 US 3,913,673, issued October 21, 1975. 3 Appeal 2015-004798 Application 13/047,064 2. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Almond, Moradi-Araghi, and Jones6 as evidenced by Torrington and Barber. Final Act. 7. DISCUSSION Rejection 1. Appellants only present specific arguments for reversal of this rejection with respect to independent claims 1 and 60. See Appeal Br. 8—16. Accordingly, each dependent claim will stand or fall with its parent independent claim, and we will limit our discussion to the independent claims. 37 C.F.R. § 41.37(c)(l)(iv) (2013). Claim 1. Appellants argue that the rejection of claim 1 should be reversed because (1) the Examiner has not provided adequate reasoning to support the finding that a person of ordinary skill in the art at the time of the invention would have omitted the polyhydroxyl-containing compound from Almond’s method in the treatment of the produced brine as suggested by Moradi-Araghi, id. at 11— 12; (2) Almond teaches away from the proposed combination with Moradi-Araghi, id. at 12; (3) a person of ordinary skill in the art would not have been led to modify Almond and to combine Almond with Moradi-Araghi to achieve the claimed subject matter, id. at 13; and (4) the Examiner improperly relied upon hindsight in formulating the rejection of claim 1, id. at 14— 15. For the reasons set forth below, we are not persuaded by any of Appellants’ arguments. We, therefore, affirm the rejection of claim 1. First, Appellants’ argument regarding the rejection’s omission of Almond’s polyhydroxyl-containing compound from the Examiner’s 6 US 6,194,356 Bl, issued February 27, 2001. 4 Appeal 2015-004798 Application 13/047,064 proposed combination of Almond and Moradi-Araghi is not persuasive. As the Examiner points out, see Answer 5, the rejection does not require omission of the polyhydroxyl-containing compound. Nor does Appellants’ claim preclude the presence of the polyhydroxyl-containing compound described in Almond. Second, Appellants’ arguments regarding Almond’s alleged teaching away from the combination with Moradi-Araghi also are based upon the rejection’s alleged omission of the polyhydroxyl-containing compound. See Appeal Br. 12. Because the rejection does not require omission of Almond’s polyhydroxyl-containing compound, this argument is not persuasive. Third, Appellants argue that the Examiner erred by finding that a person of ordinary skill in the art would have had reason to modify Almond and combine it with Moradi-Araghi. Id. at 13. We are not persuaded by this argument because (1) as discussed above, the rejection does not require modification of Almond to omit the polyhydroxyl-containing compound, and (2) as the Examiner found, Moradi-Araghi teaches the use of brine produced from the oilfield to achieve environmental benefits and cost savings. Final Act. 6 (citing Moradi-Araghi col. 1,11. 28—32). Appellants have not shown reversible error in the Examiner’s reasoning regarding a person of ordinary skill in the art’s motivation to combine Almond and Moradi-Araghi. Fourth, Appellants argue that “the rejection is an exercise of impermissible hindsight.” Appeal Br. 14. In particular, Appellants argue that the Examiner improperly relied upon the ’064 Application’s Specification for its disclosure that produced water may contain enzymes and/or bacteria that degrade polysaccharide or polysaccharide derivatives used as gelling agents. Id. 5 Appeal 2015-004798 Application 13/047,064 This argument is not persuasive. As the Examiner found, the combination of Almond and Moradi-Araghi suggest a process in which produced water is contacted with an organo-zirconium compound and then used to prepare fracturing fluid. The deactivation of oligosaccharide degrading enzymes present in the produced water is the result of this contact. As the Examiner found, the combination of Almond and Moradi-Araghi describes a process of mixing a claimed organo-zirconium compound with produced water for the claimed period of time. Final Act. 6. In view of these findings, the Examiner is entitled to assume that the process suggested by the prior art possesses the claimed functionality of the activating any enzymes present in the produced water. Cf. In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Best, 562 F.2d 1252, 1256 (CCPA 1977). Appellants speculate that “the polyhydroxyl-containing compound would compete with the availability of the organo-zirconium compound to deactivate the enzymes present in the produced water.” Appeal Br. 13. Appellants, however, present no data showing that the polyhydroxyl- containing compounds described in Almond adversely affect the ability of the organo-zirconium compound to inactivate oligosaccharide-degrading enzymes. In sum, we are not persuaded that the Examiner improperly relied upon hindsight in rejecting claim 1. Claim 60. Appellants’ arguments for reversal of the rejection of claim 60 are substantively identical to those presented with respect to the rejection of claim 1. See Appeal Br. 15—16. Accordingly, we affirm the rejection of claim 60 for the reasons expressed above. Rejection 2. Appellants argue that “[dependent claim 24 is allowable over Almond in view of Moradi-Araghi, and in view of Jones, for 6 Appeal 2015-004798 Application 13/047,064 similar reason[s] as claim 1.” Id. at 17. We, therefore, affirm the rejection of claim 24 for the same reasons that we affirmed the rejection of claim 1. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1, 11, 13, 19, 21—23, 26, 27, 60, 62—64, and 66—68 of the ’064 Application. 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 7 Copy with citationCopy as parenthetical citation