Ex Parte Munoz et al

Patent Trial and Appeal Board

Sep 12, 2016

11522345 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111522,345 09/15/2006
99633 7590 09/14/2016
McDermott Will & Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
FIRST NAMED INVENTOR
Trinidad Munoz JR.
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.
086108-0090 3256
EXAMINER
BLAND, ALICIA
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
mweipdocket@mwe.com
ikaiser@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRINIDAD MUNOZ, JR. and KIRK L. SCHREINER
Appeal2013-006631
Application 11/522,345
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO, and
WESLEY B. DERRICK, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1--4,
6, 8-10, 15, 17, 21, and 22.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellants state that the real party in interest is "Halliburton Energy
Services, Inc." (Appeal Brief filed December 28, 2012, hereinafter "Br.," 4).
2 See Br. 1, 7; Examiner's Answer delivered electronically on January 28,
2013, hereinafter "Ans.," 2; Final Office Action delivered electronically on
August 9, 2012, hereinafter "Final Act.," 1.
Appeal2013-006631
Application 11/522,345
BACKGROUND
The subject matter on appeal relates to a method for producing
degradable polymeric particulates, which may be used in subterranean
applications such as well bore applications (Specification, hereinafter
"Spec.," iJ 2). Representative claim 1 is reproduced from the Claims
Appendix (Claims App.) to the Appeal Brief with key limitations
highlighted in italics:
1. A method comprising: providing a degradable
polymer selected from the group consisting of: poly( E-
caprolactones ); poly(hydroxy ester ethers);
poly(hydroxybutyrates ); poly( anhydrides ); polycarbonates;
poly( orthoesters ); poly( amino acids); poly( ethylene oxides);
poly(phosphazenes ); poly ether esters; polyester amides;
polyamides; and combinations thereof;
providing one solvent, wherein the one solvent is an
aqueous fluid selected from the group consisting of fresh water,
salt water, brine, seawater, and combinations thereof,
combining the degradable polymer and the one solvent to
form a degradable polymer composition, wherein the
degradable polymer composition consists of the degradable
polymer and the one solvent;
allowing the one solvent to at least partially plasticize the
degradable polymer; and
applying sufficient shear to the degradable polymer
composition, wherein the degradable polymer composition
consists of the degradable polymer and the one solvent so that
degradable particulates begin to form.
Claim 15, the only other independent claim, also recites the same or similar
key limitations (Claims App.).
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Appeal2013-006631
Application 11/522,345
THE REJECTIONS
The Final Office Action (Final Act. 3-10) sets forth the following
rejections.
I. Claims 1-3, 6, 8-10, 15, 17, and 21under35 U.S.C. § 103(a) as
unpatentable over Todd et al. (hereinafter "Todd")3 in view of
Casad et al. (hereinafter "Casad"), 4 as evidenced by Erbstoesser
et al. (hereinafter "Erbstoesser").5
II. Claims 4 and 22 under 35 U.S.C. § 103(a) as unpatentable over
Todd in view of Casad, as evidenced by Erbstoesser, further in
view of Takeuchi et al. (hereinafter "Takeuchi"). 6
III. Provisionally, claims 1, 6, 8-10, 15, 17, and 21 7 under the
judicially-created doctrine of obviousness-type double
patenting as unpatentable over claims 1 and 88 of then-
copending Application 11/983,245 (hereinafter "the '245
Application"), now claims 1 and 6 of United States Patent
8,598,092 B2 issued to Mang on December 3, 2013.
3 US 2005/0059557 Al published March 17, 2005.
4 US 4,986,355 issued January 22, 1991.
5 US 4,716,964 issued January 5, 1988.
6 US 2004/0265014 Al published December 30, 2004.
7 It appears that the Examiner inadvertently included withdrawn claims 11-
14, 18, and 20 in the statement of rejection.
8 The Examiner also identified claim 16 of the '245 Application as one of
the conflicting claims but that claim was canceled at the time the Final
Office Action was entered in the current application (see Amendment filed
August 12, 2011 in the '245 Application).
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Appeal2013-006631
Application 11/522,345
IV.
T""1o. • • .,., ., • 1 Al ,r r'\ 1 f'\. 1,.. 1,.., --. ., --o ., ,.,
1'rov1s10na11y, cianns 1--4, b, ~-1u, 1), l 1, Ll, anaLL; unaerme
judicially-created doctrine of obviousness-type double
patenting over claims 1-7 and 10-20 of then-copending
Application 11/784,579 (hereinafter "the '579 Application"),
now claims 1-7 and 10-20 of United States Patent 8,329,621
B2 issued to Munoz, Jr. et al. on December 11, 2012.
DISCUSSION
Re} ections I & II
The Examiner found that Todd describes methods for treating
subterranean formations with viscosified fluids comprising degradable
bridging agents in the form of polymeric particles (Final Act. 3). The
Examiner acknowledged, however, that Todd does not disclose the method
for making the polymeric particles (id.). The Examiner then relied on Casad
as disclosing a method "meeting the providing, combining and shearing
methods of the [claims]" (id. at 3--4 ). The Examiner concluded: "It would
have been obvious to one of ordinary skill in the art ... to include in Todd
the use of the method of Casad since it is recognized in the art as a suitable
method for making the desired particles of Todd" (id. at 4). Furthermore,
the Examiner appreciated that Casad describes organic solvents-not a
water-based solvent as required by the claims-in the preparation of the
degradable particulates, but nonetheless concluded (id.):
It would have been obvious to one of ordinary skill in the
art ... to replace the organic solvents of Casad with water since
it is recognized in the art that both functionalize as suitable
9 Again, it appears that the Examiner inadvertently included withdrawn
claims 11-14, 18, and 20 in the statement of rejection.
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Appeal2013-006631
Application 11/522,345
solvents for polylactic acid polymers (including their
copolymers with glycolic acid) particles used in subterranean
formations.
The Appellants contend that the Examiner failed to articulate "any
motivation or other apparent reason known to a person of skill in the art for"
combining the references in the manner as proposed by the Examiner (Br.
8). The Appellants argue that, contrary to the Examiner's assertions, the
water-based solvents recited in the claims have not been shown to be
"equivalents" and, in fact, using a water-based solvent in the preparation of
the degradable polymer particulates would be "expressly against" Casad' s
teachings that water would hydrolyze and thus begin degradation of the
polymer particulates (id. at 8-10).
We agree with the Appellants that the Examiner's rejection is not
well-founded. Casad describes a method of making degradable polymeric
particulates by subjecting a mixture of polymer and organic diluent (and
optionally a dispersing agent) to shearing conditions at elevated
temperatures to form the degradable particulates (col. 4, 1. 65-col. 5, 1. 15;
Example 1 ). Casad states that the organic diluent "is inert to the polymer
and does not adversely affect the formation" of the degradable particulates
(col. 4, 11. 27-29).
Contrary to the Examiner's stated position, the relied-upon evidence
and/or reasoning fall short of establishing that organic diluents and water-
based solvents would have been considered by a person having ordinary skill
to be interchangeable in Casad and/or Todd. The Examiner did not direct us
to any teaching in Casad, Todd, or Erbstoesser, or provide other persuasive
evidence or technical reasoning, establishing that a water-based solvent
would satisfy the requirements disclosed in Casad, including the formation
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Appeal2013-006631
Application 11/522,345
of a polymer dispersion under elevated temperatures and shearing
conditions-not polymer degradation. Thus, the Examiner failed to
demonstrate that a person having ordinary skill in the art would have
reasonably expected that a water-based solvent can be used successfully
under conditions of sufficient shear "so that degradable particulates begin to
form," as recited in claim 1. Indeed, Casad would appear to suggest the
opposite because it teaches that, under the temperature conditions
contemplated for the preparation of the degradable polymers, the polymers
would hydrolyze and degrade in the presence of water to form oil and water-
soluble monomers and dimers rather than form "degradable particulates," as
required by the claims (col. 3, 11. 23-43). Although the Examiner surmises
that the hydrolysis would be "minor" (Ans. 3), that position is not supported
by objective evidence or acceptable technical reasoning and is therefore
insufficient to support a prima face case of obviousness.
For these reasons, we cannot uphold Rejections I and II.
Rejections III & IV
Relying on a Terminal Disclaimer filed October 31, 2012, the
Appellants had argued previously that the double patenting rejections were
overcome (Pre-Appeal Brief Request for Review filed October 31, 2012, at
1 ). The Examiner did not object to the Terminal Disclaimer, which appears
to have been "APPROVED" on November 7, 2012, nor dispute the
Appellants' contention that the rejections were overcome (Ans. 2--4; Notice
of Panel Decision from Pre-Appeal Brief Review mailed December 3,
2012). Therefore, these rejections appear to have been mooted and,
accordingly, we decline to reach Rejections III and IV.
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Application 11/522,345
SUivIIvIAR Y
Rejections I and II are reversed.
We decline to reach Rejections III and IV.
REVERSED
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