Ex Parte LI et al

Patent Trial and Appeal Board

Dec 6, 2013

11769640 (P.T.A.B. Dec. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LIPING LI, SYED HAMID, HARRY D. SMITH, JR.,
JIM B. SURJAATMADJA, and ROBERT K. MICHAEL
____________

Appeal 2011-013343
Application 11/769,640
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013343
Application 11/769,640

2
STATEMENT OF THE CASE
Liping Li et al. (“Appellants”) appeal under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 6, 7, 21, 22, 25, 26, 40-42, 46-51,
and 531 under 35 U.S.C. § 103(a) as being unpatentable over Brown (US
2002/0178924 A1, pub. Dec. 5, 2002) in view of Bangash (US 6,547,003
B1, iss. Apr. 15, 2003). See App. Br. 3 and 6. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1 and 40 are illustrative of the subject matter on appeal:
1. A downhole fluid separator comprising:
a housing adapted to connect to a tool string;
a cylinder rotatably disposed in the housing and defining
a flow passage therein;
a flow conditioner comprising a longitudinal baffle
disposed in the flow passage extending along substantially an
entire length of the cylinder, wherein fluid flowing through the
housing enters the flow passage and is subjected to centrifugal
force such that the fluid is separated into different components
having different specific gravities;
a first passage to direct a first component of the fluid
toward a first direction; and
a second passage to direct a second component of the
fluid toward a second, opposite direction.

1 The Examiner has indicated claims 43-45, 54, and 55 are allowed, and
claims 2 and 52 are objected to as being dependent upon a rejected base
claim but deemed allowable if rewritten in independent form. See App. Br.
6; Ans. 2.
Appeal 2011-013343
Application 11/769,640

3
40. A method for downhole fluid separation, comprising:
flowing fluid through a housing and into a flow passage
defined by a cylinder and including a baffle disposed
substantially through an entire length of the cylinder;
rotating the cylinder to subject the fluid to centrifugal
force; and
separating the fluid into at least a first liquid and a second
liquid having different specific gravities.
See App. Br. Clms. Appx.
ANALYSIS
Appellants present four arguments for the patentability of all claims
together as one group, without separately discussing any of the claims. See
App. Br. 11-16; Reply Br. 4-7. We select claim 1 to decide this appeal as to
the first, third, and fourth arguments. See 37 C.F.R. § 41.37(c). We select
claim 40 to decide this appeal as to the second argument. See id.
A. Intended Purpose of Brown
Appellants argue the rejection of claim 1 is improper because
modifying the Brown separator in light of Bangash would render Brown
unsuitable for its intended purpose. See App. Br. 12-14. In particular,
Appellants assert the intended purpose of Brown is to separate oil from gas
in the well bore, and to transport both of the separated materials upwardly to
the surface. See id. at 13; Reply Br. 4-5. The Examiner’s combination, by
contrast, would modify Brown to separate oil from water in the well bore,
and to transport the oil upwardly to the surface and direct the water
downwardly deeper into the well bore.
Appellants’ argument confuses Brown’s objective with Brown’s
principle of operation. Brown’s objective is to separate oil from gas in the
well bore, and to transport both of the separated materials upwardly to the
Appeal 2011-013343
Application 11/769,640

4
surface. It is true that the modification proposed by the Examiner would
result in a device no longer capable of performing that objective. However,
the modified Brown – Bangash device still operates according to the same
principles as the unmodified Brown device. Specifically, whether modified
or unmodified, the device operates such that a rotating centrifuge separator
separates oil from other components within a well bore before the oil is
extracted to the surface. That principle of operation is not changed in any
way by using the Brown separator to separate water instead of gas from the
oil, and leaving the water in the well.
Appellants further suggest modifying Brown in view of Bangash is
against the intended purpose of Brown because it makes no sense to direct
either the oil or the gas of Brown downwardly within the well bore. See
App. Br. 12-14; Reply Br. 4-5. This argument, however, misconstrues the
Examiner’s rejection. The rejection is based on modifying Brown to
separate oil and water instead of oil and gas. See Ans. 4. What might or
might not happen to the gas of Brown if directed downwardly in the well
bore is irrelevant to the oil and water separator of the Examiner’s
combination.
For the foregoing reasons, we are not persuaded by Appellants’
argument that the Brown – Bangash combination proposed by the Examiner
would render the Brown separator unsuitable for its intended purpose.
B. Liquid-Gas Separators Versus Liquid-Liquid Separators
Appellants argue the rejection of claim 40 is improper because one of
ordinary skill in the art would read Brown’s disclosure as pertaining solely
to liquid-gas separators, and not applying to liquid-liquid separators. See
App. Br. 14-15. The Examiner found Brown expressly discloses “that the
Appeal 2011-013343
Application 11/769,640

5
separator can be used to separate streams where both streams contain
liquid.” Ans. 4 (citing Brown, para. [0005]). Even assuming arguendo that
Brown does not expressly disclose that subject matter, the Examiner also
asserts the fluid separation principles are the same “whether dealing with a
fluid system with high contrast in densities (gas-liquid) or a fluid system
with more less disparity between densities (oil-water).” Ans. 6. Appellants
assert “the skilled artisan would know of the large density differences
between, for example, natural gas and liquid hydrocarbons” as separated in
Brown, so the Examiner’s suggestion “that gas-liquid separators and liquid-
liquid separators are interchangeable merely because they both separate fluid
of differing densities is just not accurate.” App. Br. 14-15.
The evidence of record convinces us that the Examiner has the better
argument. In particular, Bangash discloses a liquid-liquid separator. See
Bangash, col. 1, ll. 10-15 and col. 2, l. 65 to col. 3, l. 3 (separation system 10
used to separate oil and water in a well bore). The Brown and Bangash
separators have many things in common, despite the fact that Brown
separates oil and gas while Bangash separates oil and water. Both separators
operate in the same environment — a well bore. See Brown, para. [0003];
Bangash, col. 1, ll. 11-18. Both separators perform the same basic function
— separation of oil found within the ground from one or more other
substances which may be mixed in with the oil. See Brown, para. [0005];
Bangash, col. 3, ll. 5-23. Both separators are rotary separators which
separate substances based on differences in density. See Brown,
para. [0028]; Bangash, col. 2, ll. 13-18 and col. 3, ll. 11-26.
Based on those substantial similarities between the liquid-gas
separator of Brown and the liquid-liquid separator of Bangash, we are not
Appeal 2011-013343
Application 11/769,640

6
persuaded by Appellants’ argument that one of ordinary skill in the art
would read Brown’s disclosure as pertaining solely to liquid-gas separators.
C. Reasonable Expectation of Success
Appellants argue the rejection of claim 1 is improper because, “given
the differences in the separators and purposes of fluid separation in Brown
and Bangash as described above,” one of ordinary skill in the art would not
have had a reasonable expectation of success in combining Brown and
Bangash to reach the claimed invention. See App. Br. 15-16. For the
reasons already provided above, we are not persuaded that Brown and
Bangash are so disparate in structure or purpose that one of ordinary skill
would lack a reasonable expectation of success in combining them.
D. Reasons for Combination
Appellants argue the rejection of claim 1 fails to provide a rational
underpinning to support the legal conclusion of obviousness. See Reply Br.
5-7. The pertinent portion of the Examiner’s analysis appears in the Answer
at page 4, line 17 to page 5, line 3. Appellants challenge the Examiner’s
reasoning on two grounds.
First, Appellants assert the Examiner’s reasoning “does not address
the problems associated with forcing a low-density gas separated by
Brown’s separator in a downhole direction rather than an uphole direction.”
Reply Br. 6. As already discussed above, this argument misconstrues the
Examiner’s rejection which was based on modifying Brown to separate oil
and water instead of oil and gas.
Second, Appellants assert “cylinder length is also largely irrelevant.”
Id. Even assuming arguendo that we agree, the Examiner’s analysis in the
Appeal 2011-013343
Application 11/769,640

7
Answer at page 4, line 17 to page 5, line 3 provides a sufficient, rational
underpinning to support the legal conclusion of obviousness, even
disregarding the discussion of cylinder length.
For the foregoing reasons, we are not persuaded by Appellants’
argument that the Examiner failed to provide a rational underpinning to
support the legal conclusion of obviousness.
DECISION
We AFFIRM the rejection of claims 1, 6, 7, 21, 22, 25, 26, 40-42, 46-
51, and 53 as unpatentable over Brown in view of Bangash.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

mls