Ex Parte Miller

Board of Patent Appeals and Interferences

Jul 23, 2010

11042534 (B.P.A.I. Jul. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY J. MILLER
____________

Appeal 2009-002138
Application 11/042,534
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-20. We have jurisdiction pursuant to
35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-002138
Application 11/042,534

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Appellant’s claimed invention is directed to a method of treating a
wellbore using a drilling fluid including organophilic clay treated with a
quaternary ammonium surfactant having an amide linkage.
Claims 1 and 4 are illustrative and reproduced below:
1. A method of treating a wellbore, comprising:

providing a drilling fluid comprising a nonaqueous phase
and an organophilic clay treated with a quaternary ammonium
surfactant having an amide linkage;

and placing at least a portion of the drilling fluid into the
wellbore.

4. The method of claim 1, wherein the quaternary
ammonium surfactant comprises a compound generally
represented by the following formula:

wherein the R is an alkyl group and the X- is an anion.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Kinney 2,966,221 Dec. 27, 1960
Subramanian WO 01/18147 A1 Mar. 15, 2001
Dino EP 1 138 740 A1 Oct. 4, 20012

2 References are made to Dino (US 6,462,096 B1) issued on October 08,
2002, which is employed by the Examiner as a US equivalent to the applied
European Patent Publication.
Appeal 2009-002138
Application 11/042,534

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The Examiner maintains the following grounds of rejection:
Claims 1, 2, and 5-13 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Dino;
Claims 3 and 14-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dino;
Claims 4, 5, and 17-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dino in view of Subramanian;
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinney in view of Dino; and
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinney in view of Dino and Subramanian.
We affirm the Examiner’s rejections as they pertain to claims 1-3, 5-
16, and 20. We reverse as to claims 4 and 17-19. Our reasoning follows.
Like Appellant’s process, the Examiner has found that Dino discloses
a process for treating a wellbore with a drilling fluid including organophilic
clay treated with quaternary ammonium surfactant (Ans. 3-4). Appellant
does not dispute these determinations. Rather, Appellant makes the same
basic argument as to all of the Examiner’s anticipation and obviousness
rejections over Dino. In this regard, Appellant urges that Dino’s surfactant
does not include an amide linkage, as called for in independent claims 1 and
6 (Br. 5-11).3 The Examiner contends otherwise as Dino teaches that the

3 Arguments not timely made in the Appeal Brief are generally treated as
having been waived unless good cause has been shown.
37 C.F.R. § 41.37(c)(1)(vii), second sentence. Here, Appellant only argues
the amide linkage limitation of claims 1 and 6 with respect to the first three
stated rejections over Dino, including the Examiner’s separately stated
Appeal 2009-002138
Application 11/042,534

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quaternary surfactant employed in the disclosed process can include an
amide group (Ans. 3-4).
Giving the contested amide linkage limitation found in claims 1 and 6
its broadest reasonable interpretation as it would be understood by one of
ordinary skill in the art, we agree with the Examiner that the claimed
surfactant having an amide linkage embraces the surfactant of Dino that has
an amide group.4 In this regard, Appellant indicates in the Summary of the
Invention section of the Specification that none of the statements made
therein “limit the claims in any way” (Spec. para. 0008). Moreover, in the
Detailed Description of the Embodiments section, the Specification provides
that “[a]ny quaternary ammonium surfactant having an amide linkage that is
suitable for displacing the cations of the organophilic clay may be employed
to treat the clay” (Spec. para. 0015). Dino discloses that the quaternary
ammonium surfactants disclosed therein exchange (displace) cations of the
organophilic clay (col. 6, l. 59- col. 8, l. 6).
Appellant has not defined the claim term “having an amide linkage”
in the Specification in a manner that excludes having an amide group that is
combined or linked with the quaternary ammonium surfactant as taught by
Dino, as reasonably found by the Examiner.

anticipation/obviousness rejection of dependent claims 5 and 7-12 over Dino
and the Examiner’s separate obviousness rejection of dependent claims 3
and 14-16.
4 We note that a similar determination was made in a Board Decision
rendered in Appeal No. 2008-5754, involving Applicant’s U.S. Application
No. 11/042,560. Neither decision is binding on the other, as the facts
underlying claim interpretation depend on the specific facts and
circumstances of each case.
Appeal 2009-002138
Application 11/042,534

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Thus, we affirm the Examiner’s first three stated rejections on this
appeal record.
As for the separate obviousness rejection of independent claim 20
over Kinney in view of Dino, Appellant, once again, principally disputes the
Examiner’s obviousness assessment based on the argument that Dino does
not teach the claimed amide linkage. Consequently, we shall also sustain
both of the Examiner’s obviousness rejections of claim 20 that employ the
combination of Kinney and Dino.5
Claims 4 and 17 require a tri-methyl quaternary ammonium
surfactant. Claims 18 and 19 depend on claim 17. Concerning the
Examiner’s obviousness rejection of claims 4, 5, and 17-19 over Dino in
view of Subramanian, the Examiner maintains that it would have been
obvious to one of ordinary skill in the art to use the tri-methyl quaternary
ammonium surfactant of Subramanian in Dino’s method to improve the
gelling characteristics of the drilling fluid of Dino (Ans. 7-8).
Appellant argues that Subramanian’s surfactants are taught as being
limited to an aqueous environment. In this regard, Appellant notes that
Subramanian employs surfactants to form stable gels in an aqueous
environment and teaches that “[t]he gel-like structure formed by the
surfactants of the present invention may be disrupted on contact with
hydrocarbon liquids, resulting in loss of viscosity” (Br. 13; Subramanian, p.
15, ll. 20-21). Dino is drawn to an oil based drilling fluid (col. 4, ll. 32-43).
Based thereon, Appellant maintains that Subramanian’s teachings would

5 The Examiner’s additional application of Subramanian in the other
obviousness rejection of claim 20 is unnecessary to that rejection in light of
our claim interpretation of the disputed “amide linkage” limitation as
embracing the amide group of the quaternary ammonium surfactant of Dino.
Appeal 2009-002138
Application 11/042,534

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militate against and/or not be suggestive of the Examiner’s proposed
modification of the oil based drilling fluid of Dino based on the surfactant
disclosed for aqueous based environments of Subramanaian (Br. 12-14).
The Examiner furnishes a rebuttal contention asserting that only the
surfactant of Subramanian is being relied upon to replace the surfactants of
Dino (Ans. 11). However, the Examiner does not carry the burden to
explain, in the face of Appellant’s reasoned arguments to the contrary, why
it is that one of ordinary skill in the art would have found a suggestion to
employ the aqueous environment surfactant of Subramanian as a
replacement surfactant for use in improving the gelling characteristics of the
oil based drilling fluid of Dino with a reasonable expectation of success in so
doing while taking into account all of the teachings of the applied references
taken as a whole, including the teachings of Subramanian which are directed
to an aqueous environment gelling characteristic. This is so because
Appellant argues that this oil /aqueous environment distinction refutes the
Examiner’s rebuttal position as the teachings of Subramanian would have
contraindicated any motivation that may have been furnished by Dino
suggesting the use of a surfactant corresponding to Subramanian’s tri-methyl
quaternary ammonium surfactant in the oil based drilling fluid of Dino (Br.
13-14).
Consequently, on this appeal record, we reverse the Examiner’s
obviousness rejection of claims 4 and 17-19 over Dino taken with
Subramanaian.
As for rejected dependent claim 5, however, we are not persuaded by
Appellant’s arguments concerning the combination of Dino with
Subramanian. This is because claim 5 does not require a tri-methyl
Appeal 2009-002138
Application 11/042,534

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quaternary ammonium surfactant. The Examiner has explained, on this
appeal record, why the teachings of Dino alone are sufficient to render the
subject matter of claim 5 at least prima facie obvious (Ans. 5). On this
appeal record, Appellant’s arguments with respect to the combination of
Dino and Subramanian indicate only harmless error in the Examiner’s
obviousness rejection of claim 5. This is so because the Examiner’s
additional reliance on Subramanaian is unnecessary to the obviousness
rejection of claim 5.

CONCLUSION/ORDER
The Examiner’s decision to reject claims 1, 2, and 5-13 under 35
U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as being unpatentable over Dino; to reject claims 3 and 14-
16 under 35 U.S.C. § 103(a) as being unpatentable over Dino; to reject claim
5 under 35 U.S.C. § 103(a) as being unpatentable over Dino in view of
Subramanian; to reject claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Kinney in view of Dino; and to reject claim 20 under 35
U.S.C. § 103(a) as being unpatentable over Kinney in view of Dino and
Subramanian is affirmed.
The Examiner’s decision to reject claims 4 and 17-19 under 35 U.S.C.
§ 103(a) as being unpatentable over Dino in view of Subramanian is
reversed.
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-IN-PART

Appeal 2009-002138
Application 11/042,534

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sld

CRAIG W. RODDY
HALLIBURTON ENERGY SERVICES
P.O. BOX 1431
DUNCAN, OK 73536-0440