Ex Parte Miller

Board of Patent Appeals and Interferences

Nov 28, 2008

11042560 (B.P.A.I. Nov. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY J. MILLER
____________

Appeal 2008-5754
Application 11/042,560
Technology Center 1700
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Decided: November 28, 2008
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-20. Claims 1
and 6 are illustrative:
1. A drilling fluid comprising a nonaqueous phase and an
organophilic clay treated with a quaternary ammonium surfactant having an
amide linkage.

Appeal 2008-5754
Application 11/042,560

2
6. The drilling fluid 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 upon the following references in the rejection of
the appealed claims:
Subramanian WO 01/18147 A1 Mar. 15, 2001
Dino EP 1 138 740 A1 Oct. 4, 2001
Appellant's claimed invention is directed to a drilling fluid comprising
a nonaqueous phase and a clay treated with a quaternary ammonium
surfactant having an amide linkage. Claim 6 recites a specific formula for
the surfactant.
Claims 1, 2, 10-14, 16-18, and 20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Dino. Claims 3-5, 9, 15, and 19 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.
Also, claims 6-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dino in view of Subramanian.
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. With the exception of the Examiner's § 103
rejection of claims 6-8, we will sustain the Examiner's rejections.
Appeal 2008-5754
Application 11/042,560

3
Concerning the Examiner's § 102 and § 102/103 rejections over Dino,
the sole argument advanced by Appellant is that the surfactant of Dino does
not contain the presently claimed "amide linkage." Appellant contends that
Dino's disclosure of amide groups on the quaternary nitrogen atom is not a
disclosure of an amide linkage. Appellant maintains that the "Specification
clearly refers to amide linkages as amide groups that link one or more
functional groups . . . Appellant's Specification discloses hydrocarbon chains
both between the quaternary nitrogen atom and the amide group and
between the amide group and the end of the functional group containing the
amide group (i.e., the amide group forms a linkage)" (Br. 5, first para.).
The flaw in Appellant's argument is that the Specification does not
define the claim language "amide linkage" as an amide group linking two
separate hydrocarbon chains. While Appellant's Specification exemplifies
surfactants having an amide moiety between hydrocarbon chains, the
Specification relates 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" (¶ 0015). Consequently, when the
claim language at issue is given its broadest reasonable interpretation, we
concur with the Examiner that it encompasses an amide group that is linked
to a quaternary ammonium surfactant as disclosed by Dino. We find nothing
unreasonable in interpreting the claim language to embrace quaternary
ammonium surfactants that are linked to an amide group. Indeed, Appellant
has chosen to argue the broadest claim on appeal and not the more limiting
claim 2 which is more representative of Appellant's argument.1

1 With the exception of claims 6-8, Appellant has not separately argued the
claims on appeal. Accordingly, claims 1-5 and 9-20 stand or fall together.
Appeal 2008-5754
Application 11/042,560

4
We will not sustain the Examiner's § 103 rejection of claims 6-8,
which define the nitrogen atom of the quaternary ammonium group as
having three methyl groups. Dino requires that one of the substituents on
the nitrogen atom has 8 to 30 carbon atoms which are considerably more
than the one carbon atom of a methyl group. While the Examiner cites
Subramanian for the obviousness of substituting a methyl group at the
location of Dino's compound which requires 8 to 30 carbon atoms, we agree
with Appellant that one of ordinary skill in the art would not have been
motivated to do so since Subramanian is directed to aqueous based fluids,
whereas Dino and Appellant are directed to oil-based systems. The
Examiner maintains that one of ordinary skill in the art would have been
motivated to make the methyl substitution on the quaternary ammonium
nitrogen atom of Dino "to improve the gelling characteristics of the drilling
fluid, which would improve the removal of solid matter from the site of
operation" (Ans. 10, first para.). The Examiner has not explained, however,
why one of ordinary skill in the art would have had the requisite reasonable
expectation that the effective performance of the Subramanian surfactant in
an aqueous-based composition would translate to the oil-based composition
of Dino.
In conclusion, based on the foregoing, the Examiner's rejections of
claims 1-5 and 9-20 are sustained, whereas the Examiner's § 103 rejection of
claims 6-8 is reversed. Accordingly, the Examiner's decision rejecting the
appealed claims is affirmed-in-part.
Appeal 2008-5754
Application 11/042,560

5

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)(iv)(effective
Sept. 13, 2004).
AFFIRMED-IN-PART

cam

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