Ex Parte McDaniel

Patent Trial and Appeal Board

Apr 17, 2018

13927714 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/927,714
15604 7590
Baker Botts L.L.P.
FILING DATE
06/26/2013
04/19/2018
910 Louisiana Street, One Shell Plaza
Houston, TX 77002
FIRST NAMED INVENTOR
Cato Russell McDaniel
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2012-IP-067017Ul US 1018
EXAMINER
NOLD, CHARLES R
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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):
susan.stewart@bakerbotts.com
debie.hernandez@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CATO RUSSELL McDANIEL
Appeal2018-003302
Application 13/927,714
Technology Center 3600
Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejection2 of claims 1-10, 17, and 19-27, which are all of the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Halliburton Energy Services, Inc. ("Appellant") is the Applicant as
provided in 37 C.F.R. § 1.46 and is identified by Appellant as the real party
in interest. Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated April 14, 2017.
Appeal2018-003302
Application 13/927,714
STATEMENT OF THE CASE
Claims 1 and 23 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal, with
disputed claim limitations italicized for emphasis.
1. A method comprising:
providing a treatment fluid comprising a base liquid and a
sulfide scavenging additive comprising one or more reducing
sugars, wherein the treatment fluid is free of amines;
introducing the treatment fluid into at least a portion of a
subterranean formation; and
allowing at least a portion of the sulfide scavengmg
additive to interact with hydrogen sulfide or sulfide ions present
in the treatment fluid to produce a precipitate comprising one or
more sulfur species.
REJECTIONS 3
I. Claims 1-10, 17, and 19-22 stand rejected under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement.
II. Claims 23-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Davidson (US 2004/0167037; published Aug. 26, 2004) and
Thompson (US 4,218,342; issued Aug. 19, 1980). 4
3 The Examiner's rejection of claims 1-10, 17, and 19-22 under 35 U.S.C.
§ 103(a) as unpatentable over Davidson and Thompson, including reliance
on Official Notice, is withdrawn. Ans. 3.
4 The Examiner's reliance on Official Notice in the rejection of claims 23-
27 as under 35 U.S.C. § 103(a) as unpatentable over Davidson and
Thompson is withdrawn as unnecessary. Ans. 3.
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Rejection I
ANALYSIS
The Examiner determines that the negative claim limitation "wherein
the treatment fluid is free of amines," which was added by amendment5 to
independent claims 1 and 17, is new matter that fails to comply with the
written description requirement. See Final Act. 2--4; Ans. 3-7. The
Examiner determines that because the Specification includes glucosamine
and acetyl glucosamine (which are amines) as examples of the claimed
reducing sugars, "to exclude the entire class of amine-based scavengers
constitutes new matter." Final Act. 4 (citing Spec. i-f 16). The Examiner
further determines that the Specification only provides support for excluding
certain amines, but not all amines. Ans. 5 (citing Spec. i-f 4).
Appellant argues that the Specification "teaches a person of ordinary
skill in the art several reasons that such amines should be excluded" and
"thus supports the negative limitations in independent claims 1 and 17 ."
Appeal Br. 4 (citing Spec. i-f 4). Appellant relies on Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012) for the proposition that a
specification disclosing that some of a group of elements has disadvantages
provides written description support for a claim limitation excluding all of
that group of elements. See id. at 5 (citing Santarus, 694 F.3d at 1350-51).
Appellant submits that, similar to Santarus, "a person of skill in the art
would understand from [Appellant's Specification] that many amines
('certain' of which may be used as conventional H2S scavengers ... ) may
exhibit poor solubility, environmental properties, or toxicity, and thus a
5 See Amendment dated June 10, 2016.
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Application 13/927,714
person of skill in the art would have reason to exclude amines." Id. at 5---6
( citing Spec. i-f 4 ). Appellant also argues that "alternative embodiments of
the invention where the sulfide scavenging additive may include an amine-
based derivative of a reducing sugar ... , does not negate that
[S]pecification's earlier description of a basis for excluding amines, nor does
it otherwise confuse the meaning of a fluid that is 'free of amines."' Reply
Br. 3.
To satisfy the written description requirement, the Specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562---63 (Fed. Cir. 1991). The issue of whether the written
description requirement has been satisfied is a question of fact. Wang Labs,
Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993).
Paragraph 4 of the Background section of the Specification discloses,
with reference to the prior art, that
[ s ]ulfide scavengers are often used to react with H2S and convert
it to amore inert form. Conventional H2S scavengers include
certain aldehydes, certain amine-based chemicals, triazines,
copper compounds, hydrogen peroxide, zinc compounds, and
iron compounds. However, the reaction products of many of
these compounds with H2S are poorly soluble in treatment fluids
and/or fluids in the well bore, or may decompose, thereby
releasing H2S. Moreover, many conventional sulfide scavengers
themselves may have undesirable environmental and/or toxicity
problems, and as such may be impractical to use or prohibited
altogether in certain circumstances and/or jurisdictions.
Spec. i-f 4 (emphasis added). Paragraph 14 of the Specification discloses,
with reference to the invention, that
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Application 13/927,714
[t]he fluids and sulfide scavenging additives of the present
disclosure generally comprise one or more reducing sugars. The
term "reducing sugar" is defined herein to include any saccharide
that includes an aldehyde functional group or can isomerize to
form an aldehyde functional group in basic solution.
Id. i-f 14. Paragraph 16 of the Specification discloses, with reference to the
invention, that
[ t ]he reducing sugars used in the methods, fluids, and sulfide
scavenging additives of the present disclosure may comprise any
reducing sugar (or combination thereof) known in the art. . ..
Examples of reducing sugars that may be suitable for use in
certain embodiments of the present disclosure include, but are
not limited to, ... glucosamine, acetyl glucosamine, ....
Id. i-f 16.
Claims 1 and 17 simply exclude "amines," and it is unclear whether
Appellant is arguing that the inventor was in possession of the disputed
negative claim limitation because glucosamine and/or acetyl glucosamine
are "amine-based derivative[s] of a reducing sugar" and therefore not
amines, such that the inclusion of certain reducing sugars does not contradict
the exclusion of certain sugar amine-based compounds, or that the inventor
was in possession of the disputed negative claim limitation because claims 1
and 17 cover an embodiment of the invention wherein the claimed reducing
sugar is something other than glucosamine and/or acetyl glucosamine (i.e.,
glucose, fructose, etc.), such that the disputed negative claim limitation reads
on an embodiment disclosed in the Specification. Notwithstanding, we
determine that the disclosures in the Specification, as set forth supra
(specifically, that (i) "certain amine-based chemicals" have disadvantages as
H2S scavengers; and (ii) glucosamine and acetyl glucosamine are examples
of reducing sugars useful as sulfide scavenging additive in the invented
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Application 13/927,714
treatment fluid) fail to establish that the inventor had possession of
excluding all amines from the treatment fluid, as claimed. Although
Appellant argues, as set forth supra, that the Specification provides "a
specific reason to exclude amines as sulfide scavenging additives," the
Specification more accurately provides a reason to exclude certain amine-
based chemicals and a reason to include glucosamine and acetyl
glucosamine as specific reducing sugars.
Appellant also relies on Santarus for the proposition that a disclosure
in the Specification that some of the drugs in a list (i.e., H2-antagonists,
antacids, and sucralfate) have disadvantages provides written description
support for a claim limitation excluding all of at least one of the drugs in the
list (i.e., "contains no sucralfate"). Appeal Br. 5---6.
Indeed, our reviewing court has addressed the written description
requirement as it applies to negative claim recitations by stating that
"[n]egative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation."
Santarus, 694 F.3d at 1351. In the instant appeal, as set forth supra, the
analogous list of chemicals includes a list of conventional H2S scavengers:
"aldehydes, certain amine-based chemicals, triazines, copper compounds,
hydrogen peroxide, zinc compounds, and iron compounds." However, the
disputed negative claim limitation in the present appeal is much broader than
in the Santarus case, in that in the present appeal one of the listed elements
is not excluded (i.e., "certain amine-based chemicals"), but rather, an
entirely new element (i.e., "all amines") which is not referred to in the list of
elements presenting a disadvantage. Appellant has provided no support for
determining that all amines are conventional H2S scavengers. Thus, we do
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Application 13/927,714
not agree that Santarus requires finding that the inventor, in the instant
appeal, had possession of excluding all amines from the treatment fluid, as
required by the written description requirement.
Accordingly, we sustain the Examiner's rejection of claims 1-10, 17,
and 19-22 under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement.
Re} ection II
Independent claim 23 recites, in relevant part, "providing a treatment
fluid comprising a base liquid and a sulfide scavenging additive consisting of
one or more reducing sugars." Appeal Br., Claims Appendix (emphasis
added). As acknowledged by Appellant (see, e.g., Reply Br. 4), the open-
ended transitional phrase "comprising" means that the treatment fluid may
include a base liquid and a sulfide scavenging additive, as claimed, as well
as any other ingredient (including a second sulfide scavenging additive that
includes amines), while the transitional phrase "consisting of' means that the
claimed sulfide scavenging additive must only include one or more reducing
sugars, thereby excluding any other ingredient (i.e., amines) from the
claimed sulfide scavenging additive. 6 Thus, the Examiner correctly
determines that "claim 23 does not require the fluid to be free of amines,
since the consisting language does not modify the fluid but the sulfide
scavenging additive," and we clarify further that the transitional phrase
"comprising" allows a second sulfide scavenging additive to be included in
the fluid, as long as there is a first sulfide scavenging additive that only
6 It is well settled that the transitional phrase "consisting of' excludes any
element, step, or ingredient not specified in the claim. In re Gray, 53 F .2d
520 (CCPA 1931).
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includes one or more reducing sugars. Ans. 8 (emphasis added); cf Reply
Br. 4 ("a reasonable interpretation of claim 23 must, at a minimum, exclude
sulfide scavenging additives other than reducing sugars.").
Regarding independent claim 23, the Examiner finds, inter alia, that
Davidson generally discloses the claimed method, except that Davidson fails
to disclose a sulfide scavenging additive consisting of one or more sugars, as
claimed. Final Act. 15. The Examiner relies on Thompson for disclosing
"chelated metallic complexes of reducing sugars" and for specifically
teaching "ferric fructose which provides Fe+ 3 and Fe+ 2 ions for use in [a]
variety of industrial applications where Fe+3 and Fe+2 are useful including
the removal of hydrogen sulfide from gases." Id. (citing Thompson 4:40-
45, 64---65). 7 The Examiner reasons that it would have been obvious
to substitute the ferric fructose disclosed in Thompson for the
glutonate in Davidson with a reasonable expectation of success
to provide Fe+3 and Fe+2 to scavenge hydrogen sulfide in
subterranean formations because this substitution merely
involves substituting one chelating compound for another,
Thompson provides a teaching of a compound whose purpose is
to provide Fe+ 3 and Fe+ 2 ions and Thompson discloses
advantages to using the Fe+3 and Fe+2 disclosed therein that are
useful to the drilling industry such as cost, non-toxicity and water
solubility. Further, substituting one compound for another
compound when the purpose of both compounds is the same
(here to provide Fe+3 and Fe+2 ions) would have been obvious
to one having ordinary skill in the art.
7 See Spec. 16 ("The reducing sugar optionally may be chelated with any
metal ion known in the art, including but not limited to iron, zinc, copper,
nickel, manganese, and the like. Chelated reducing sugars that may be
suitable for use in certain embodiments of the present disclosure include, but
are not limited to, ferric fructose.").
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Id. 16-17. The Examiner also reasons that it would have been obvious to
"use only the sugar as a scavenging agent with a reasonable expectation of
success because Thompson discloses to use reducing sugars to scavenge
sulfide." Id. at 17.
For clarification, we note that the Examiner's proposed modification,
as set forth supra, does not propose modifying Davidson's "Composition for
Scavenging Sulphide in Drilling Fluids" (Davidson, Title) to replace
Davidson's "sulphide scavenger" (i.e., "ferrous gluconate" (see, e.g.,
Davidson, Abstract)) with Thompson's "Type B chelating agent" (i.e., "a
reducing sugar" (see, e.g., Thompson 4:40-43)), and also to add
Thompson's "Type A chelating agent" (i.e., "amines" (see, e.g., id. 4:1-2)).
However, such a modification would result in the claimed subject matter
according to the claim construction set forth supra. We have not considered
whether such a modification would be obvious to a person of ordinary skill
in the art.
Appellant argues that "Thompson discusses the use of certain reducing
sugars as a 'Type B' chelating agent, but only in combination with a 'Type
A' amine-based chelating agent such as ethylenediamine tetraacetic acid
(EDTA)," and "[b]ecause of the presence of the 'Type A' amine component,
this process cannot read on Appellant's claims." Appeal Br. 7-8. As noted
supra, the Examiner has not proposed modifying Davidson to include
Thompson's Type A chelating agent, nor does claim 23 exclude a second
sulfide scavenging sugar consisting of amines. Thus, Appellant's argument
does not address the rejection as articulated by the Examiner or apprise us of
error in the Examiner's findings or reasoning.
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Appellant also argues that "[ t ]he Examiner has cited nothing in
Thompson or elsewhere in the prior art identifying the use of a Type B
chelating agent alone as a sulfide scavenger, and thus has not carried the
burden to establish a prima facie case of obviousness," nor has the Examiner
"suppl[ied] any other rationale for omitting the amine component from the
catalytic process described in Thompson, particularly in view of Thompson's
additional teachings." Id. at 8-9.
Although the Examiner acknowledges that "Thompson does disclose
the benefits of using two scavengers together," the Examiner determines that
it would be "obvious to ... try" using the sugar compound as a scavenger
alone. Ans. at 9-10.
Appellant argues that the Examiner has not met the burden of
establishing "(a) a recognized problem in the art, (b) that the proposed
modification was one of a finite number of known, predictable solutions to
that problem, and ( c) that those of ordinary skill in the art could have
pursued the known solutions with a reasonable expectation of success,"
which is required for reliance on an "obvious to try" rationale. Appeal Br. 8
(citing MPEP § 2143). We disagree, in that Davidson recognizes the
problem of "removal of hydrogen sulfide or soluble sulfide ions from other
fluids such as fluids in sewage system and fluids produced from
subterranean wells" (Davidson i-f 3), as does Thompson, albeit by a "catalytic
oxidation-reduction system" (Thompson 1: 11-15 ("[ t ]his invention relates to
improvements in the removal of hydrogen sulfide gas from a gaseous fluid
stream"). Further, as set forth supra, the Examiner has identified
Thompson's Type B chelating agent as one of a known number of sulfide
scavenging additives (see, e.g., Ans. 8 ("the teaching of Thompson is that a
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Application 13/927,714
reducing sugar may be used to scavenger sulfide"), which Appellant does
not dispute. The Examiner also determines that one of ordinary skill in the
art could have pursued the use of Thompson's Type B chelating agent in
Davidson's formulation as a substitute for Davidson's ferrous gluconate,
with a reasonable expectation of success, because "the Type B sugar
scavenging compounds disclosed in Thompson ... chelate and precipitate
sulfur." Ans. 11.
Appellant argues that "nothing in Thompson teaches or suggests that a
reducing sugar could be used as a sulfide scavenger without an amine," or,
put another way, that Thompson's Type B chelating agent could be used
without Thompson's Type A chelating agent. Appeal Br. 9. However,
Appellant does not provide any argument or evidence to dispute the
Examiner's finding that Thompson teaches that the Type B chelating agent
chelates and precipitates sulfur without an amine. Moreover, a
preponderance of evidence supports the Examiner's finding that although
Thompson discloses "the benefits of using two scavengers together" in a
catalytic chelating solution (Final Act. 10, 23), Thompson teaches the
advantages of the Type A chelating agent (i.e., the reducing sugar) apart
from its use in a reaction with the Type B (i.e., the amine) in a catalytic
chelating solution. For example, Thompson discloses that
[ t ]he Type B chelating agents are neutral materials and are
entirely ineffective for controlling the pH of the reaction
solution. The Type B chelating agents are, however, particularly
effective in avoiding the formation and precipitation of insoluble
iron compositions by complexing with the ferric ions in the
reaction solution. Thus, the Type B chelating agent readily
complexes with ferric ions in solution to form the (Fe.Che1Bt3
complex and binds ferric ions sufficiently strongly in highly
alkaline solution to maintain the Fe+3 ion concentration below the
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solubility product constant for ferric hydroxide. Furthermore,
the addition of a Type B chelating material of the present
invention to a catalytic chelating solution containing a Type A
chelating material permits formulation of practical working
solutions without the large excesses of EDTA normally required
to avoid Fe(OH)J preciptation at high pH values.
Thompson 4:57-5:5 (emphasis added); see Ans. 9-11. In other words,
Thompson discloses to a person of ordinary skill in the art that Type B
chelating agents are known for certain functional characteristics, which
when combined with the Type A chelating agent of Thompson's invention,
produces certain additional advantages in the reaction specifically of interest
in Thompson.
Appellant further argues that "omitting the amine-based component
would render Thompson's catalytic scavenger compositions unsatisfactory
for their intended use, and thus would not be obvious to a person of ordinary
skill in the art." Appeal Br. 9; Reply Br. 5-6. However, Appellant's
argument does not apprise us of error in the Examiner's proposed
modification to Davidson's composition, as set forth supra. In other words,
the Examiner is not proposing a modification to Thompson's two-part
system, but only relying on Thompson for teaching that the Type B chelating
agent is a known sulfide scavenging additive consisting of one or more
reducing sugars.
Finally, Appellant's argument that the Examiner has improperly taken
Official Notice is moot, in view of the Examiner's withdrawal of reliance on
the Official Notice. See Ans. 3 ("The portion of the rejection of claims 23-
27 as being unpatentable under 35 U.S.C. § 103 as being obvious over
Davidson in view of Thompson containing official notice is withdrawn.").
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Accordingly, we sustain the Examiner's rejection of independent
claim 23 under 35 U.S.C. § 103(a) as unpatentable over Davidson and
Thompson. Appellant chose not to present separate arguments for the
patentability of claims 24--27, which depend from independent claim 23, and
therefore, for the same reasons set forth supra, we sustain the Examiner's
rejection of claims 24--27. Appeal Br. 7-12.
DECISION
The Examiner's decision rejecting claims 1-10, 17, and 19-22 under
35 U.S.C. § 112(a) is affirmed.
The Examiner's decision rejecting claims 23-27 under 35 U.S.C.
§ 103(a) 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)(l )(iv).
AFFIRMED
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