Ex Parte Pope et alDownload PDFPatent Trial and Appeal BoardJun 9, 201612532682 (P.T.A.B. Jun. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/532,682 03/11/2010 34725 7590 06/09/2016 CHALKER FLORES, LLP 14951 North Dallas Parkway, Suite 400 DALLAS, TX 75254 FIRST NAMED INVENTOR Gary A. Pope 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. UTAU:l263 9728 EXAMINER LOIKITH, CATHERINE A ART UNIT PAPER NUMBER 3674 MAILDATE DELIVERY MODE 06/09/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY A. POPE, JIMMIE R. BARAN JR., VISHAL BANG, JOHN D. SKILDUM, and MUKUL M. SHARMA Appeal2014-004039 Application 12/532,682 Technology Center 3600 Before: PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and AMEE A. SHAH, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's rejections of claims 1, 3-5, 7, 9-12, 14--16, 19, 21-25, 27, and 28. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 "The real party in interest is 3M Company." (Appeal Br. 3.) Appeal2014-004039 Application 12/532,682 STATEMENT OF THE CASE The Appellants' invention relates to "the treatment of hydrocarbon formations that have been damaged by water." (Spec. 1, lines 21-22.) Illustrative Claim2 1. A method of treating a hydrocarbon-bearing subterranean formation having non-connate water, the method comprising: contacting the hydrocarbon-bearing subterranean formation with a composition comprising solvent and a wettability modifier, wherein the solvent displaces or solubilizes the water in the formation, and wherein the wettability modifier is other than a cationic surfactant. Rejections I. The Examiner rejects claims 1, 4, 5, 7, 11, 12, 14--16, 19, and 21under35 U.S.C. § 102(e) as anticipated by Panga. 3 (Final Action 2.) II. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as unpatentable over Panga and Kippie. 4 (Id. at 4.) III. The Examiner rejects claims 9, 10, 22-25, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over Panga. (Id.) ANALYSIS Claims 1, 12, and 24 are the independent claims on appeal, with the rest of the claims on appeal depending therefrom. (See Claims App.) Independent claims 1, 12, and 24 are each directed to a method of treating or reconditioning "a hydrocarbon-bearing subterranean formation." (Id.) 2 This illustrative claim is quoted from the Claims Appendix ("Claims App.") set forth on pages 12-14 of the Appeal Brief. 3 US 2007/0029085 Al, published February 8, 2007. 4 US 2006/0116296 Al, published June 1, 2006. 2 Appeal2014-004039 Application 12/532,682 Independent Claim 1 Independent claim 1 recites the step of contacting the formation "with a composition comprising solvent and a wettability modifier" wherein "the solvent displaces or solubilizes the water in the formation." (Claims App.) The Examiner finds that Panga discloses such a contacting step. (See Final Action 2.) The Examiner explains that Panga discloses, in paragraphs 11 and 20, that "the water in the formation will be displaced by the treatment with the chemical taught by Panga" which "comprises a solvent and a wettability modifier." (Answer 2-3.) The Appellants argue the Examiner does not establish that, in Panga, "a solvent" is "responsible for" displacement of the "water in the formation." (Appeal Br. 6.) We are not persuaded by this argument because Panga discloses that solvents can "have low interfacial tension with gas phase" so that "when the well is put on production, the fluid flows out of formation or deeper into the formation." (Panga i-f 12.) Panga does, therefore, disclose that solvents can contribute to the displacement of water in a formation. The Appellants do not adequately address why the solvents introduced in Panga' s paragraph 11 are not likewise responsible for displacement of fluid (i.e., water) in the formation during the chemical treatment method described in Panga's paragraph 20. As pointed out by the Examiner (see Answer 2), Panga discloses in paragraph 20 that the chemical treatment method alters the wetting conditions of the formation. The Appellants do not otherwise argue that the Examiner fails to make a prima case of anticipation with respect independent claim 1. (See Appeal Br. 5-6). Thus, we sustain the Examiner's rejection of independent claim 1under35 U.S.C. § 102(e) as anticipated by Panga (Rejection I). 3 Appeal2014-004039 Application 12/532,682 Dependent Claims 3-5, 7, 9, 10, and 11 These claims depend from independent claim 1. (See Claims App.) They are not argued separately and/or they are not argued on issues beyond those discussed above in our analysis of independent claim 1. (See Appeal Br. 6, 8-9). Thus, we sustain the Examiner's rejection of dependent claims 4, 5, 7, and 11under35 U.S.C. § 102(e) as anticipated by Panga (Rejection I); we sustain the Examiner's rejection of dependent claim 3 under 35 U.S.C. § 103(a) as unpatentable over Panga and Kippie (Rejection II); and we sustain the Examiner's rejection of dependent claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Panga (Rejection III). Independent Claim 12 Independent claim 12 recites the steps of contacting a "formation treated with a first wettability modifier" with a fluid, and determining "whether to re-treat the hydrocarbon-bearing formation with a second wettability modifier." (Claims App.) The Examiner finds that Panga discloses such contacting and determining steps. (See Final Action 2-3.) The Examiner explains that "[s]urfactants are known in the art for changing the wettability of formations" and that Panga discloses, in paragraph 26, retreating a well with "surfactants" if water blocking problems occur. (See Answer 3.) The Appellants argue that "it is clear from [Panga's] description that the surfactants in paragraph [26] are distinct from those that alter the wettability of a formation." (Appeal Br. 8.) We are not persuaded by this argument because the Appellants do not point, with particularity, to statements in Panga conveying this distinction. The Appellants also do not 4 Appeal2014-004039 Application 12/532,682 provide us with a technical explanation as to why the surfactants discussed in paragraph 26 differ from those discussed in conjunction with Panga's wettability modifiers. (See e.g., Panga i-fi-f 10, 17, 29, 33, etc.)5 The Appellants do not otherwise argue that the Examiner fails to make a prima case of anticipation with respect to independent claim 12. (See Appeal Br. 6-8.) Thus, we sustain the Examiner's rejection of independent claim 12 under 35 U.S.C. § 102(e) as anticipated by Panga (Rejection I). Dependent Claims 14-16, 19, and 21-23, These claims depend from independent claim 12 (see Claims App) and the Appellants do not provide further or separate arguments with respect to their patentability (see Appeal Br. 8, 9). Thus, they fall with independent claim 12; and we sustain Examiner's rejection of dependent claims 14--16, 19, and 21under35 U.S.C. § 102(e) as anticipated by Panga (Rejection I); and we sustain the Examiner's rejection of dependent claims 22 and 23 under 35 U.S.C. § 103(a) as unpatentable over Panga (Rejection III). Independent Claim 24 Independent claim 24 sets forth a step wherein a fluid contacts a formation "having connate brine" and "not otherwise blocked or damaged by liquid." (Claims App.) The Examiner determines that such a step would have been obvious over Panga. (See Final Action 5.) The Examiner finds 5 Moreover, we note that the surfactants discussed in Panga's paragraph 26 are described as "interfacial tension reducers" (Panga i1 26), and the Appellants define a "wettability modifier" as a compound "that affects the surface energy of a material" (Spec. 8, lines 7-8). The Appellants do not adequately address why an interfacial tension reducer would not be considered such a surface-energy-altering compound. 5 Appeal2014-004039 Application 12/532,682 Panga shows, in Figure 6, that its method can be used in a brine saturated formation; the Examiner finds Panga teaches, in paragraph 8, that its method can be used to treat a formation not otherwise blocked or damaged by water; and the Examiner finds that one of ordinary skill in the art would choose to try Panga's method in a formation having connate brine. (See id.) The Appellants argue that Panga "does not teach or suggest connate brine and effectively teaches away from hydrocarbon-bearing formations having connate brine but not otherwise liquid blocked or damaged by liquid." (Appeal Br. 9-10.) We are not persuaded by this argument because Panga does teach multiple "sources for water accumulation" (see Panga ,-r 3), and Panga does not criticize, discredit, or otherwise discourage treatment of formations having connate brine. 6 In view of Panga's teaching regarding the treatment of "brine saturation" (id. ,-r 18), and in view of Panga's teaching regarding treatment of oil wells "with no water or condensate block problems" (id. ,-r 8), we agree with the Examiner's position that one of ordinary skill in the art would infer that Panga's treatment is applicable to both connote and non-connote brine in formations both with and without water block problems.7 6 See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (A reference does not teach away if it merely expresses a general preference for an alternative invention but does not "criticize, discredit, or otherwise discourage" investigation into the invention claimed.) 7 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (An obviousness evaluator "need not seek out precise teachings directed to the specific subject matter of the challenged claim" as "the inferences and creative steps that a person of ordinary skill in the art would employ" can be taken into account). 6 Appeal2014-004039 Application 12/532,682 The Appellants also argue that the Specification (i.e., Example 1) "demonstrates a remarkable gas permeability improvement in a core sample provided with a brine saturation level analogous to connate brine saturation." (Appeal Br. 10.) We are not persuaded by this argument because the Appellant does not sufficiently show that it is the difference between connate brine and non-connate brine that achieves this improvement. 8 The Appellants do not argue, much less evidence, that a different result would be obtained if the claimed contacting step is performed on a formation having non-connate brine but not otherwise blocked or damaged by liquid. The Appellants do not otherwise argue that the Examiner fails to make a prima case of obviousness with respect to independent claim 24. (See Appeal Br. 9-10). Thus, we sustain the Examiner's rejection of independent claim 24 under 35 U.S.C. § 103(a) as unpatentable over Panga (Rejection III). Dependent Claims 25, 27, and 28 Claims 25, 27, and 28 depend from independent claim 24 (see Claims App.) and the Appellants do not provide further or separate arguments with respect to their patentability (see Appeal Br. 10). Thus, they fall with independent claim 24; and we sustain the Examiner's rejection of dependent claims 25, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over Panga (Rejection III). 8 See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) ("In order for a showing of 'unexpected results' to be probative evidence of non- obviousness," it falls upon the Appellant to at least establish "that there actually is a difference between the results obtained through the claimed invention and those of the [closest] prior art"). 7 Appeal2014-004039 Application 12/532,682 DECISION We AFFIRM the Examiner's rejections of claims 1, 3-5, 7, 9-12, 14--16, 19, 21-25, 27, and 28. 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 8 Copy with citationCopy as parenthetical citation