Ex Parte Nguyen

Board of Patent Appeals and Interferences

Sep 28, 2009

10915024 (B.P.A.I. Sep. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIP D. NGUYEN
____________

Appeal 2009-010698
Application 10/915,024
Technology Center 3600
____________

Decided: [Date of mailing]
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Philip D. Nguyen (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final decision rejecting claims 1, 3-12 and 14-22. Claims
2, 13, and 23-33 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
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SUMMARY OF DECISION
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

THE INVENTION
The Appellant’s claimed invention relates to methods and
compositions for carrier fluids comprising water-absorbent fibers for
hydraulic fracturing treatments. Spec. para. 0008. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A method of treating a portion of a
subterranean formation, comprising:
providing a slurry wherein the slurry
comprises a servicing fluid, particulates, and
degradable, water-absorbent fibers wherein the
degradable, water-absorbent fibers impede the
particulates from settling out of the slurry; and,
introducing the slurry into the portion of the
subterranean formation.

THE EVIDENCE
The Examiner relies upon the following evidence:
Laird US 4,632,876 Dec. 30, 1986
Alexander US 4,836,940 Jun. 6, 1989
Le US 6,169,058 B1 Jan. 2, 2001
Nguyen US 6,209,643 B1 Apr. 3, 2001
Cooke US 6,949,491 B2 Sep. 27, 2005

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THE REJECTIONS
The Appellant seeks review of the following rejections by the
Examiner:
1. Rejection of claims 1, 3, 4, 12, 14, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Cooke and Laird.
2. Rejection of claims 5, 6, 10, 16, 17 and 21 under 35 U.S.C. § 103(a)
as unpatentable over Cooke and Le.
3. Rejection of claims 7-9 and 18-20 under 35 U.S.C. § 103(a) as
unpatentable over Cooke and Alexander.
4. Rejection of claims 10, 11, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Cooke and Nguyen.

ISSUES
The Examiner found that Cooke discloses degradable, water-
absorbent material having a sphere or other shape, but does not explicitly
disclose the material as a fiber. Ans. 3. The Examiner found that “Laird
teaches that fibers are a well known shape in the art and can be used in place
of spheres.” Ans. 4. The Examiner concluded that it would have been
obvious to a person of ordinary skill in the art to use the fiber shape of Laird
for the shape of the degradable, water-absorbent material of Cooke because
“it is a well known shape in the art” and because Cooke teaches that any
shape can be used. Ans. 4.
The Appellant argues that Cooke teaches away from use of fiber so
that the proposed combination with Laird’s teaching to use fiber is improper.
Reply Br. 2-4.
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The first issue before us is:
Has the Appellant demonstrated that the Examiner erred in
determining that a person of ordinary skill in the art would have been led to
combine Cooke with Laird in the manner claimed?
In both the Office Action dated May 29, 2007, and in a subsequent
Office Action dated October 15, 2007 (the Final Rejection that led to this
appeal), the Examiner rejected claims 5, 6, 10, 16, 17 and 21 under 35
U.S.C. § 103(a) as unpatentable over Cooke and Le; claims 7-9 and 18-20
under 35 U.S.C. § 103(a) as unpatentable over Cooke and Alexander; and
claims 10, 11, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over
Cooke and Nguyen.1 In those rejections, neither the heading, nor the body
of the rejection appears to rely on any disclosure from Laird in reaching the
conclusion of obviousness. Then, in the Examiner’s Answer, Laird is added
to the headings of each of those three rejections, but there is no approval of
this new ground of rejection by a Technical Center Director or designee.2
Ans. 4-6. We review these three rejections as presented in the Office Action
of October 15, 2007, and not as amended in the Examiner’s Answer.
The Appellant argues that the combination of Cooke and either Le, or
Alexander, or Nguyen does not teach each element of the claims because
neither Cooke, nor Le, nor Alexander, nor Nguyen disclose degradable,
water-absorbent fibers. App. Br. 5-8.

1 These are now rejections two through four of this appeal.
2 See MPEP § 1207.03 (requiring that a new ground of rejection in an
Examiner’s Answer must be approved by a Technology Center Director or
designee and be prominently identified.)
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The second issue before us is:
Has the Appellant demonstrated the Examiner erred in the rejection of
claims 5-11 and 16-22 because the Examiner failed to adequately articulate
how the proposed combinations render obvious the use of degradable, water-
resistant fibers?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Cooke discloses methods for treating wells to increase the
production rate by hydraulic fracturing. Cooke, col. 1, ll. 10-11.
2. Cooke discloses a polymer phase fracturing fluid comprised of
proppant 26 contained within pellets 25 made of a degradable
polymer 24. The pellets 25 may be cylinders, spheres, or any other
shape. Cooke, col. 8, ll. 57-59; col. 9, ll. 3-5; fig. 2c.
3. Laird discloses low density, high strength ceramic spheroids that
will not absorb fluid over time, for use as proppants and filter
material. Laird, col. 1, ll. 20-27. Laird discloses the ceramic
spheroids may be shapes other than spheres, such as fibers. Laird,
col. 9, ll. 47-49.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art,
(3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
Rejection of claims 1, 3, 4, 12, 14, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Cooke and Laird.
Claim 1 is for a method of treating a portion of a subterranean
formation comprising a slurry that includes: a servicing fluid, particulates,
and degradable, water-absorbent fibers that impede the particulates from
settling out of the slurry.
Cooke discloses a method for treating wells to increase production
rate by hydraulic fracturing, including use of a fracturing fluid with proppant
contained within pellets made of a degradable polymer (Fact 1). Laird
discloses low density, high strength ceramic spheroids that will not absorb
fluid over time for use as proppant (Fact 3). Laird further discloses the
ceramic spheroids may have other shapes, such as a fiber (Fact 3).
We agree with the Appellant that the Examiner’s rationale that “it is a
well known shape in the art” does not adequately explain why a person of
ordinary skill in the art would modify the shape of the degradable, water-
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absorbent pellets of Cooke into a fiber shape as disclosed by Laird. While
Laird discloses that non-absorbent ceramic spheres usable as proppant may
be fiber-shaped, Laird makes no disclosure regarding the shape of
degradable, water-absorbent polymer pellets such as used by Cooke (Fact 3).
Laird’s disclosure regarding proppant shape might provide a rationale for
modifying the shape of a proppant, but the Examiner provides no
explanation as to why a person of ordinary skill in the art would modify
Cooke’s cylinder-shaped polymer pellets.3 Thus, absent hindsight, we see
no reason, and the Examiner has not provided an adequate articulation of a
reason, why a person of ordinary skill in the art would have been led to
modify the shape of Cooke’s cylinder-shaped polymer pellets based on
Laird’s disclosure regarding proppant shape.

Rejections of claims 5-11 and 16-22 under 35 U.S.C. § 103(a) as
unpatentable over Cooke and either Le, or Alexander, or Nguyen
Independent claims 1 and 12 require degradable, water-absorbent
fibers. Claims 5-11 depend from claim 1, and claims 16-22 depend from
claim 12.
The Examiner made no finding in the rejections of these dependent
claims that any of the applied references discloses degradable, water-
absorbent fibers, or provided an explanation as to why the proposed
combinations would have led one having ordinary skill in the art to the
invention as claimed, including the use of degradable, water-absorbent
fibers. Ans. 4-5. By not addressing this element of the claims, the Examiner

3 As noted in the new ground of rejection, infra, we find that Cooke alone,
discloses, or at least suggests, that the pellets can be fiber-shaped.
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has failed to make a prima facie case of obviousness. In re Fine, 837 F.2d
1071, 1074 (Fed. Cir. 1988) (The Examiner can satisfy the burden of a
prima facie case by showing that some objective teaching in the prior art or
knowledge generally available to one of ordinary skill in the art suggests the
claimed subject matter.).

NEW GROUNDS OF REJECTION
We enter the following new grounds of rejection:
A. Rejection of claims 1, 3, 4, 12, 14, and 15 under 35 U.S.C. § 102(b) as
anticipated by Cooke, or in the alternative under 35 U.S.C. § 103(a) as
unpatentable over Cooke.
B. Rejection of claims 1, 3, 4, 7-9, 12, 14, 15, and 18-20 under 35 U.S.C.
§ 103(a) as unpatentable over Cooke and Alexander.
C. Rejection of claims 5, 6, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Cooke and Le, or alternatively, as unpatentable
over Cooke, Alexander, and Le.
D. Rejection of claims 10, 11, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Cooke and Nguyen, or alternatively, as
unpatentable over Cooke, Alexander, and Nguyen.

The following additional findings of fact are pertinent to the new
grounds of rejection.

ADDITIONAL FINGINGS OF FACT
4. Cooke discloses embodiments for placing degradable polymer in a
wellbore and moving it downhole to be injected into the formation
to be fractured. For example, a pump 42 moves carrier fluid along
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fluid line 50, and further downstream, pump 70 feeds polymer
through orifice 74 into line 50, following which, line 50 carries the
combined fluid and polymer into the wellbore 10. Cooke discloses
that this method is particularly appropriate for injecting degradable
polymer at the end of conventional fracturing treatments where
accumulation of polymer in the wellbore before injection into the
formation is not necessary. Cooke, col. 11, l. 66 to col. 12, l. 7;
col. 12, ll. 38-42; figs. 1, 4(a). See also claim 24 disclosing a
method that does not include settling of the degradable polymer.
Cooke, col. 17 to 18.
5. Cooke discloses the cylindrical-shaped pellets may have a length
about equal to the diameter, but that larger or smaller sizes may be
used. Cooke, col. 14, ll. 12-15.
6. Cooke discloses the degradable, water-absorbent material may
have a length between about 1/16 inch (about 1587 microns) to
about an inch (about 25,400 microns). Cooke, col. 8, ll. 41-43.
7. Cooke discloses the polymer may be poly(D,L-lactide). Cooke,
col. 5, l. 41.
8. Le discloses a method of treating a subterranean formation that
improves fluid loss through addition of hydrophilic, swelling
polymer particles in a concentration of between about 0.1% and
1.5% by volume of the fracturing treatment fluid. Le, col. 3, 33-
34, 51-61; col. 6, ll. 51-56.
9. Alexander discloses that it was known to add a fibrous bulk
material such as feathers to the drilling mud, in order to form a
bridge or mat over the cracks of interstices responsible for drilling
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mud escape. Alexander discloses these materials had known
drawbacks, such as a tendency to deteriorate under high drilling
pressure. Alexander, col. 2, l. 60 to col. 3, l. 19.
10. Alexander discloses a method and composition useful in reducing
or eliminating fluid loss to porous or cracked subterranean
formations. Alexander discloses use of pellets comprised of water-
swellable absorbent polymers such as: crosslinked
carboxymethylcellulose, polyvinyl alcohols, cross linked
polysaccharide, acrylic acid graft copolymers. The pellets retain
original size as they pass through the borehole, to the point of lost
circulation, where they accumulate and then swell due to further
water absorption and seal the formation. The pellets are not
displaced or forced into the porous formation by the pressure
encountered in the borehole. Alexander, col. 6, ll. 3-10, col. 8, ll.
19-50; col. 10, ll. 16-24.
11. Nguyen discloses a method and a fluid for treating a subterranean
formation that inhibits the flow of particulates back through the
wellbore by coating at least a portion of the particulates in a
tackifying compound or resin. Nguyen, col. 3, ll. 40-46, 49-58.

ANALYSIS
Claims 1, 3, 4, 12, 14, and 15 under 35 U.S.C. § 102(b) as anticipated by
Cooke
Independent claims 1 and 12 include a slurry comprised of a servicing
fluid, particulates, and degradable, water-absorbent fibers (that impede
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settling of the particulates) that is introduced into a subterranean formation.4
Cooke discloses a method of placing proppant into a fracture within a
subterranean formation including a slurry comprising: a servicing fluid, and
degradable, water-absorbent pellets containing particulates (Facts 1, 2).
Cooke discloses the pellets may be any shape, and specifically discloses a
cylindrical shape having a length about equal to the diameter and further
discloses larger or smaller sizes may be used (Facts 2, 5). Because Cooke
discloses the pellets may be any shape, including larger or smaller than a
cylinder with a 1-to-1 length-to-diameter ratio, Cooke discloses, or at least
suggests, a fiber shape (a length-to-diameter ratio greater than 10-to-1).5 A
fiber shape will create a mechanical network that impedes the pellets, and
the particulates contained within those pellets, from settling out of the slurry.
Cooke discloses introducing the slurry into a fracture within a portion of the
subterranean formation (Fact 4).
Claim 3 depends from claim 1, and claim 14 depends from claim 12.
Claims 3 and 14 each contain the limitation that fibers have a length of
between 50 microns and 50,000 microns. Cooke discloses pellets with a
length between 50 and 50,000 microns (Fact 6).
Claim 4 depends from claim 1, and claim 15 depends from claim 12.
Claims 4 and 15 each recite the limitation that the degradable, water-
absorbent fibers comprise at least one fiber selected from a specified group.

4 Nothing in claims 1 or 12 prohibits the particulates from being contained
within the degradable, water-absorbent polymer.

5 The Appellant’s Specification describes an embodiment wherein the fibers
have a length-to-diameter ratio greater than about 10. Spec. 7, para. 0023.
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Cooke discloses the degradable, water-absorbent material may be poly (D,L-
lactide), a member of the specified group (Fact 6).

Claims 1, 3, 4, 7-9, 12, 14, 15, and 18-20 under 35 U.S.C. § 103(a) as
unpatentable over Cooke and Alexander
Even if Cooke’s disclosure were found not to explicitly disclose, or
alone suggest, a fiber shape, Alexander discloses that it was known in the art
that fibrous materials prevent fluid loss by forming a bridge or mat over
cracks (Fact 9). It would have been obvious to a person of ordinary skill in
the art to modify the cylindrical pellets of Cooke to have a fibrous shape as
Alexander discloses was known in the art, to form a bridge or mat over
cracks and in order to prevent fluid loss.
Claim 3 depends from claim 1, and claim 14 depends from claim 12.
Claims 3 and 14 each contain the limitation that fibers have a length of
between 50 microns and 50,000 microns. Cooke discloses pellets with a
length between 50 and 50,000 microns (Fact 6).
Claim 4 depends from claim 1, and claim 15 depends from claim 12.
Claims 4 and 15 each recite the limitation that the degradable, water-
absorbent fibers comprise at least one fiber selected from a specified group.
Cooke discloses the degradable, water-absorbent material may be
poly(D,L-lactide), a member of the specified group (Fact 6).
Claim 7 depends from claim 1, and claims 8 and 9 depend from
claim 7. Claim 18 depends from claim 12, and claims 19 and 20 depend
from claim 18. Claims 7 and 18 add the limitation that the slurry further
comprises a super-absorbent material. Claims 8, 9, 19, and 20 recite that the
super-absorbent material must come from a specified group. Alexander
discloses use of a water-swellable, absorbent polymer to include crosslinked
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carboxymethylcellulose, polyvinyl alcohols, cross linked polysaccharide,
and acrylic acid graft copolymers, members of the specified groups of
claims 8, 9, 19, and 20 (Fact 9). It would have been obvious to a person or
ordinary skill in the art to modify Cooke’s slurry by adding a super-
absorbent material as taught by Alexander, in order to reduce or eliminate
fluid loss to porous or cracked subterranean formations (Fact 9).

Claims 5, 6, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over
Cooke and Le, or alternatively, as unpatentable over Cooke, Alexander, and
Le
Claims 5 and 6 depend from claim 1, and claims 16 and 17 depend
from claim 12. Claims 5 and 16 recite that the water-absorbent fibers are
present in an amount from about 0.01% to about 10% of the weight of the
slurry. Claims 6 and 17 recite that the water-absorbent fibers are present in
an amount from about 0.1% to about 2% of the weight of the slurry. Neither
Cooke nor Alexander discloses the weight percentage of the water-absorbent
material. Le discloses a method of treating a subterranean formation using
hydrophilic, swelling polymer particles as part of the fracturing treatment
fluid in a concentration of between about 0.1% and 1.5% by volume of the
fracturing treatment fluid (Fact 8). It would have been obvious to a person
of ordinary skill in the art to modify Cooke’s slurry, either alone or as
modified by the teaching of using a known fiber-shape for the pellets, by
using the degradable, water-absorbent fibers in the concentration taught by
Le in order to reduce or eliminate fluid loss (Fact 8).
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Claims 10, 11, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over
Cooke and Nguyen, or alternatively, as unpatentable over Cooke, Alexander,
and Nguyen
Claims 10 and 11 depend from claim 1, claims 21 and 22 depend from
claim 12. Claims 10 and 21 add the limitation that the particulates are at
least partially covered in a curable resin. Claims 11 and 22 add the
limitation that the particulates are at least partially coated in a tackifying
agent. Nguyen discloses coating at least a portion of particulates for use in a
subterranean formation in curable resin or a tackifying agent (Fact 9). It
would have been obvious to a person of ordinary skill in the art to modify
Cooke’s slurry, either alone or as modified by the teaching of using a known
fiber-shape for the pellets, by coating at least a portion of the particulates
with a resin or tackifying agent in order to inhibit the flow of particulates
back through the wellbore (Fact 9).

CONCLUSIONS
The Appellant has demonstrated that the Examiner erred in
determining that one having ordinary skill in the art would have been led to
combine Cooke with Laird in the manner claimed. Thus, the Appellant has
demonstrated the Examiner erred in rejecting claims 1, 3, 4, 12, 14, and 15.
The Appellant has demonstrated that the Examiner erred in the
rejection of claims 5-11 and 16-22 because the Examiner failed to
adequately articulate how the proposed combinations would have led to the
use of degradable, water-absorbent fibers.
We enter a new ground of rejection of claims 1, 3, 4, 12, 14, and 15
under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35
U.S.C. § 103(a) as unpatentable over, Cooke.
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We enter a new ground of rejection of claims 1, 3, 4, 7-9, 12, 14, 15,
and 18-20 under 35 U.S.C. § 103(a) as unpatentable over Cooke and
Alexander.
We enter a new ground of rejection of claims 5, 6, 16, and 17 under
35 U.S.C. § 103(a) as unpatentable over Cooke and Le, or alternatively, as
unpatentable over Cooke, Alexander, and Le.
We enter a new ground of rejection of claims 10, 11, 21, and 22 under
35 U.S.C. § 103(a) as unpatentable over Cooke and Nguyen, or alternatively,
as unpatentable over Cooke, Alexander, and Nguyen.

DECISION
We REVERSE the Examiner's decision to reject claims 1, 3-12 and
14-22.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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) (2007).

REVERSED, 37 C.F.R. § 41.50(b)

Vsh

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P.O. BOX 1431
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