Ex Parte PONE et alDownload PDFPatent Trial and Appeal BoardOct 17, 201713537268 (P.T.A.B. Oct. 17, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/537,268 06/29/2012 Jean Denis PONE 41582US 4796 28841 7590 10/19/2017 PnnnonPhillins; Pnmnanv EXAMINER 600 North Dairy Ashford Houston, TX 77079-1175 SUE-AKO, ANDREW B. ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 10/19/2017 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): Legal-IP@conocophillips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEAN DENIS PONE and DAVID J. BLUMER Appeal 2016-002767 Application 13/537,268 Technology Center 3600 Before JILL D. HILL, NATHAN A. ENGELS, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jean Denis Pone and David J. Blumer (“Appellants”)1 seek review under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final Office Action dated December 23, 2014 (“Final Act.”), rejecting claims 1— 16 under 35 U.S.C. § 103(a) as unpatentable over Shaw (US 4,732,690, issued Mar. 22, 1988) and Berger (US 2008/0312108 Al, published Dec. 18, 2008). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify CONOCOPHILLIPS COMPANY as the real party in interest. Br. 1. Appeal 2016-002767 Application 13/537,268 BACKGROUND The disclosed subject matter “relates to a method of improving post primary oil recovery by using a surfactant system.” Spec. 12. Claims 1, 6, and 12 are independent. Claim 1 is reproduced below, with emphasis added: 1. A post-primary process for the displacement and recovery of oil from a subterranean formation comprising the steps of: (a) injecting into a crude oil-bearing subterranean formation an aqueous saline surfactant composition comprising (1) brine, (2) Alkyl Polyglucoside, (3) Linear Primary Alcohol Ethoxylate, (4) sodium hydroxide and (5) alcohols; (b) thereafter displacing the aqueous composition through the oil-bearing formation and driving oil from the oil-bearing formation; and (c) recovering oil displaced from the subterranean formation. DISCUSSION Appellants argue the patentability of the three independent claims (claims 1, 6, and 12) as a group and do not provide separate arguments for any dependent claims. Br. 3. We select independent claim 1 as representative, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). Claim 1 recites the step of “injecting into a crude oil-bearing subterranean formation an aqueous saline surfactant composition comprising,” inter alia, “sodium hydroxide.” Br. 5 (Claims App.). In the Final Office Action, the Examiner relied on Shaw as teaching the “injecting” step, but the Examiner stated, “it appears that Shaw fails to disclose the 2 Appeal 2016-002767 Application 13/537,268 exact composition” recited. Final Act. 2. The Examiner found, however, that Berger teaches the claimed “composition.” Id. at 2—3. The Examiner also provided reasoning as to why it would have been obvious for one of ordinary skill in the art at the time of the invention to modify Shaw with the composition purportedly taught in Berger. Id. at 3. As to the presence of “sodium hydroxide” in the “composition” of Berger, the Examiner stated sodium hydroxide ([0026] “Green non-toxic biodegradable strong alkali metal salts of polymerized weak acids include salts formed by reacting a polymerized weak acid with a strong alkali. [ . . . ] Strong alkalis include, but are not limited to, sodium hydroxide,” [0036]—[0041] “when using inorganic alkali such as sodium hydroxide,” and e.g., [0004]). Final Act. 3.2 Appellants argue that “Berger teaches that sodium hydroxide is used to react with a polymerized weak acid such as ‘polylactic acid and polyaspartic acid’ to form non-toxic biodegradable strong alkali metal salts of polymerized weak acids” and, “[m]oreover, Berger teaches that this green non-toxic biodegradable strong alkali metal salt of polymerized weak acid may be combined with one or more surfactants, an aqueous solvent, optionally mobility control agents, and optionally one or more co-solvents.” Br. 3 (citing Berger 126 and claim 1, respectively). From these assertions, Appellants conclude that “it is clear that the composition that Berger intends to form and inject cannot be the same or equivalent composition as recited in the present application.” Id. Appellants argue that Berger teaches that “sodium hydroxide is used as a reagent (in a precursor reaction) to form an 2 The bracketed text in this quotation indicates paragraphs from Berger cited by the Examiner and does not indicate text added by the panel in this appeal. 3 Appeal 2016-002767 Application 13/537,268 intermediate compound (i.e., non-toxic biodegradable strong alkali metal salts) that is used ... to form the ‘composition for recovering oil.’” Id. (quoting Berger, claim 1). According to Appellants, “it cannot be concluded that sodium hydroxide is part of the composition described in Berger.” Id. Under the broadest reasonable interpretation, “comprises” in the claim language at issue means “includes but is not limited to.” See Versa Corp. v. Ag-Bag Inti Ltd., 392 F.3d 1325, 1329 (Fed. Cir. 2004) (addressing “comprising” in the body of a claim and stating that “‘comprising’ language is not limiting and may include features not recited in the claim”). In the context of the claim language here, this understanding of “comprises” means that the five listed aspects (e.g., brine, Alkyl Polyglucoside, etc.) must be included in (i.e., present in) the composition used to perform step (a). We first address the teachings of paragraph 26 of Berger. As argued by Appellants, this paragraph describes “reacting a polymerized weak acid with a strong alkali,” such as sodium hydroxide, to form certain salts (which Berger refers to generally as “[gjreen non-toxic biodegradable strong alkali metal salts of polymerized weak acids” (hereinafter “strong alkali metal salts”). Berger 126. We agree with Appellants that Berger discloses using strong alkali metal salts in compositions to “enhance oil recovery.” Id. 127; see also id., claim 1. For the reasons argued by Appellants, however, the record does not support a finding (to the extent made) that sodium hydroxide is present in the compositions described in, for example, paragraphs 26 and 27, and claim 1. Instead, as argued by Appellants (Br. 3), Berger indicates that the sodium hydroxide is used up in the reaction that forms the strong alkali metal salts. Berger 126 (“Green non-toxic biodegradable strong alkali 4 Appeal 2016-002767 Application 13/537,268 metal salts of polymerized weak acids include salts formed by reacting a polymerized weak acid with a strong alkali.”). Appellants’ arguments do not demonstrate error, however, in the Examiner’s reliance on other teachings in Berger regarding sodium hydroxide. See Ans. 3 (citing Berger 126, and also H 4, 36-41). For example, paragraphs 36 through 39 describe comparative testing of various “injection fluid compositions”—some including “[ijnorganic alkali” (such as, for example, sodium hydroxide) and some, instead, including the strong alkali metal salts described above. Berger 136 (“Table 2 shows the injection fluid compositions used for testing. Inorganic alkali and the green non-toxic biodegradable strong alkali metal salt of polymerized weak acids are used in the formulation to compare their effect on [interfacial tension] and oil recovery.”); see id. 138 (discussing “when using inorganic alkali such as sodium hydroxide”), quoted at Final Act. 3. Although Berger teaches that fluid compositions with strong alkali metal salts provide “unexpected oil recovery improvements” over fluid compositions with “inorganic alkali” {id. 137), Berger also teaches the use of fluid compositions that include sodium hydroxide {see, e.g., id. 138, Table 2 (listing “Na2C03 or NaOH or Baypure® DS-100/40% or Baypure® DS 100 solid” as the “Alkali or alkali substitute”), Table 3 (describing tests 3 and 4, each using 1.0% NaOH by weight as an alkali)). Appellants do not address these teachings in Berger, and thus have not demonstrated error in the Examiner’s reliance on these teachings. See Final Act. 3 (citing Berger 1136-41), 4 (“Therefore, ‘sodium hydroxide’ as a compositional element is reasonably construed to encompass wherein the sodium hydroxide would be present by virtue of e.g., being . . . added to (i.e., ‘when using inorganic 5 Appeal 2016-002767 Application 13/537,268 alkali such as sodium hydroxide’ [(see Berger 138)]) the composition, as in Berger et al.”). For these reasons, we sustain the rejection of claim 1. Claims 2—16 fall with claim 1. DECISION We affirm the decision to reject claims 1—16. 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 6 Copy with citationCopy as parenthetical citation