Ex Parte Qu et al

Board of Patent Appeals and Interferences

Aug 17, 2010

11015928 (B.P.A.I. Aug. 17, 2010)

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.
11/015,928 12/17/2004 Qi Qu 020569-08400
(P204-1399-U
9480
71762 7590 08/18/2010
JONES & SMITH , LLP
2777 ALLEN PARKWAY
SUITE 1000
HOUSTON, TX 77019
EXAMINER
TOSCANO, ALICIA
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
08/18/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte QI QU
and XIAOLAN WANG
________________

Appeal 2009-009619
Application 11/015,928
Technology Center 1700
________________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009619
Application 11/015,928

A. Introduction2
Qi Qu and Xiaolan Wang (“Qu”) timely appeal under
35 U.S.C. § 134(a) from the final rejection3 of claims 1-6, 9-22, and 25-29.4
We have jurisdiction under 35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to a method of insulating the
production tubing in an oil well by filling an annulus surrounding the tubing
with a specified thermal insulating fluid.
Representative Claim 1 reads:
1. A method for enhancing the thermal insulation of a
production tubing or transfer pipe surrounded by at least one
annuli, comprising:
(a) adding to the at least one annuli a thermal insulating
fluid comprising:
(i) a zwitterionic surfactant;
(ii) an alcohol; and
(iii) a brine;
and
(b) maintaining the fluid in contact with the at least one
annuli to at least partially immobilize the fluid.
(Claims App., Br. 10; indentation added.)

2 Application 11/015,928, Methods and Compositions for Thermal
Insulation, filed 17 December 2004. The specification is referred to as the
“928 Specification,” and is cited as “Spec.” The real party in interest is
listed as BJ Services Company. (Appeal Brief, filed 24 November 2008,
(“Br.”), 1.)
3 Office action mailed 25 March 2008 (“Final Rejection”; cited as “FR”).
4 Co-pending claims 7, 8, 23, and 24 have been withdrawn from
consideration and are not before us. (FR 1.)
2
Appeal 2009-009619
Application 11/015,928

The Examiner has maintained the following grounds of rejection:5
A. Claims 1-6, 9-13, 15-22, and 25-29 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Samuel,6 Jones,7 and Schlumberger.8
B. Claim 14 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Samuel, Jones, and Halliday.9
C. Claims 1-6, 9, 10, 12-14, 16-22, and 25-28 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Horton,10 Jones, and Schlumberger.
D. Claim 11 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Horton, Jones, and Vollmer.11
E. Claims 15 and 29 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Horton or Jones, and Samuel
and Halliday.

5 Examiner’s Answer mailed 3 February 2009. (“Ans.”)
6 Mathew Samuel et al., Non-Damaging Fluid-Loss Pill and Method of
Using the Same, U.S. Patent Application Publication US 2003/0166471 A1
(4 September 2003).
7 Andrew G.K. Jones et al., Annular Fluids and Method of Emplacing the
Same, U.S. Patent Application Publication US 2004/0138070 A1 (15 July
2004), based on an application filed 9 January 2003.
8 Schlumberger Oil Field Glossary, illustration of a mechanical packer,
http://www.glossary.oilfield.slb.com/DisplayImage.cfm?ID=541 (last visited
12 July 2010).
9 William S. Halliday et al., U.S. Patent 6,080,704 (2000).
10 Robert L. Horton et al., Surfactant-Polymer Compositions for Enhancing
the Stability of Viscoelastic-Surfactant Based Fluid, U.S. Patent Application
Publication US 2004/0063587 A1 (1 April 2004, based on an application
filed 15 July 2003.
11 Daniel P. Vollmer et al., U.S. Patent 5,785,747 (1998).
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Appeal 2009-009619
Application 11/015,928

The Examiner finds that both Samuel and Horton describe a well
fluid—more specifically, a fluid loss pill composition—that meets the
compositional limitations of the insulating fluid recited in claim 1. The
Examiner finds further that both Samuel and Horton teach that the fluid loss
pill can be used as a packer fluid, which is another species of well fluid.
Accordingly, the Examiner concludes that it would have been obvious to
substitute such known packer fluids for the packer fluid described by Jones.
(Ans. 3-4 (Samuel); 5-6 (Horton).)
Qu argues that the Examiner has misinterpreted the teachings of
Samuel and of Horton. According to Qu, both Samuel and Horton describe
“well fluids” that are taught to be useful as “fluid loss pills,” not “packer
fluids.” (Br. 3, last two paras.) Fluid loss pills, Qu explains, are introduced
into the formation surrounding the well bore in order to prevent the later-
introduced packer fluid from leaking into the permeable formation. (Id. at 5,
last para.) In contrast, packer fluids, of which the fluid recited in method
claim 1 is a species, are fluids that are introduced into the annulus
surrounding a production pipe. (Id. at 6, first full para.) Accordingly, Qu
argues, the Examiner’s suggestion that it would have been obvious to
substitute the fluids described by Samuel or by Horton for the insulating
packing fluid taught by Jones is based on a false premise, and the
obviousness rejections must be reversed. (Id., 3rd full para.)
4
Appeal 2009-009619
Application 11/015,928

B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The preponderance of the evidence of record supports Qu’s
arguments. We begin by noting that the Examiner indicated that each
rejection maintained in the Final Rejection was “as set forth in the action
dated 9/25/07.” (FR 2, 4, and 5.) In response to the “action dated 9/25/07,”
Qu filed a declaration under 37 C.F.R. § 1.132 signed by Dr. Qi Qu.12
Dr. Qu testifies that he has B.S. and M.S. degrees in chemistry from Beijing
University and a Ph.D. in chemistry from The University of Oklahoma, and
that he has worked for 11 years in oilfield chemistry for BJ Services
Company (the real party in interest) and its predecessor. (Qu Decl. 1,
¶¶ 2-3.)
Dr. Qu testifies that “[t]he only reference cited by the Examiner
relating to an insulating packer fluid is [Jones].” (Id. at 2, ¶ 6.) “None of
the other references cited by the Examiner,” Dr. Qu testifies, “disclose an
insulating packer fluid or a method of using a composition for enhancing the
thermal insulation of a production tube or transfer pipe surrounded by an
annuli[ ]13 using a thermal insulating fluid.” (Id.) Dr. Qu testifies further that
“[g]enerally, the term ‘packer fluid’ refers to the fluid which is placed in the

12 Declaration dated 23 January 2008, by Dr. Qi Qu, and filed on 25 January
2008. (“Qu Declaration.”) We have relied on the copy filed in the Evidence
Appendix to the Principal Brief on Appeal.
13 The art appears to use the terms “annulus” and “annuli” interchangeably.
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Appeal 2009-009619
Application 11/015,928

annulus between the production tubing and the production casing or liner.”
(Id. at ¶ 7.) Referring to the Figure reproduced on the next page,
{A Figure depicting a well bore is shown below:}
Dr. Qu explains that,
[i]n operation, once a well is completed, thermal
insulating fluid is pumped into the wellbore down
area A[ ]14 and returns into annulus B. (“A” becomes
the production area of the wellbore.) Annulus B is
then closed at the bottom, through a mechanical
valve, as well as at the top.
(Id. at ¶ 8.)
{The Figure is said to illustrate a well bore}
According to Dr. Qu, “[t]hermal insulating fluid usually does not contact
and enter the reservoir formation during this process.” (Id.; emphasis
added.) Dr. Qu testifies that annulus C represents the cemented inner casing
of the wellbore. (Id.)
We note that the Examiner has not acknowledged Dr. Qu’s
declaration, let alone come forward with credible evidence that Dr. Qu’s
qualifications or the accuracy of his testimony should be doubted. We find
that Dr. Qu’s academic credentials and work experience support his ability
to testify on the technical aspects of wellbore practices, and we find his
testimony credible.
The Examiner finds that Samuel teaches the use of the disclosed fluid-
loss fluids as packer fluids in paragraph [0003] (Ans. 3), although the
Examiner acknowledges that Samuel does not disclose adding the fluids to

14 All element labels in figures are presented in bold font for clarity,
regardless of their presentation in the original documents.
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Appeal 2009-009619
Application 11/015,928

an annuli (id.). Samuel states that, “[w]hen drilling or completing wells in
earth formations, various fluids typically are used in the well for a variety of
reasons. The fluid is often aqueous. For the purposes herein, such fluid will
be referred to as ‘well fluid.’” (Samuel 1, [0003].) Samuel then lists a
number of common uses for well fluids, one of which is “implacing a packer
fluid.” (Id., 3 lines from the end of [0003].) The Examiner has not directed
our attention to any other evidence indicating that fluid loss pills are
equivalents to packer fluids.
Samuel teaches that, during the drilling of a “hydrocarbon or injection
well” (id. at [0004]), “highly permeable and/or poorly consolidated
formations” are penetrated, in which large quantities of well fluid may be
lost to the formation (id. at [0005]). The technique of using “fluid loss
pills,” also known as “lost-circulation-control pill[s]”, to provide effective
fluid loss control is said to be the subject of the invention disclosed by
Samuel. (Id. at 2, [0015] and [0019].) The sealing mechanism of a fluid
loss pill, according to Samuel, “is a combination of viscosity, solids
bridging, and cake buildup on the porous rock.” (Id. at 1, [0007]; emphasis
added.) Samuel teaches further that the fluid loss pills typically “work by
enhancing filter-cake buildup on the face of the formation to inhibit fluid
flow into the formation from the well bore.” (Id. at [0008]; emphasis
added.) “At some point in the completion operation,” Samuel adds, “the
filter cake must be removed to restore the formation’s permeability,
preferably to its original level.” (Id. at [0008]; emphasis added.)
Horton contains similar disclosures, including the identical definition
of the term “well fluid” (Horton 1, [0002]) and the mention of “emplacing a
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Appeal 2009-009619
Application 11/015,928

packer fluid in the completed wellbore during production” as a “common
use” of well fluids (id.). Horton also describes fluid loss control pills, and
defines the term “pill” as “a quantity of fluid added to the well fluid so as to
temporarily change the properties of the well bore fluid at or near a specific
point in the well bore.” (Id. at [0005].) In Horton’s words, “the fluids in
accordance with the claimed subject matter are effective by developing
extremely high viscosity in the environment at and just within the face of the
formation to inhibit fluid flow into the formation from the wellbore.” (Id.;
emphasis added.)
Neither Samuel nor Horton supports the Examiner’s finding that fluid
loss control pills are used as packer fluids, i.e., that they are used in an
annulus. Both Samuel and Horton teach that the site of action of the fluid
loss pills is in the geological formation surrounding the wellbore, not in the
annulus surrounding the production pipe. Thus, both Samuel and Horton
support Qu’s argument that “Samuel does not disclose, or even remotely
suggest, that the disclosed fluid loss pill could be placed in the annuli
surrounding a production tubing or transfer pipe.” (Br. 5.) This argument
applies equally well to Horton.
We conclude that the Examiner misconstrued the teachings of Samuel
and Horton. Moreover, we find that the Examiner has not relied on any of
the remaining references in a way that corrects the reliance on Samuel or
Horton. We therefore conclude that the error is fatal to all of the rejections
of record.
8
Appeal 2009-009619
Application 11/015,928

C. Order
We REVERSE the rejection of claims 1-6, 9-13, 15-22, and 25-29
under 35 U.S.C. § 103(a) in view of the combined teachings of Samuel,
Jones, and Schlumberger.
We REVERSE the rejection of claim 14 under 35 U.S.C. § 103(a) in
view of the combined teachings of Samuel, Jones, and Halliday.
We REVERSE the rejection of claims 1-6, 9, 10, 12-14, 16-22, and
25-28 under 35 U.S.C. § 103(a) in view of the combined teachings of
Horton, Jones, and Schlumberger.
We REVERSE the rejection of claim 11 under 35 U.S.C. § 103(a) in
view of the combined teachings of Horton, Jones, and Vollmer.
We REVERSE the rejection of claims 15 and 29 under
35 U.S.C. § 103(a) in view of the combined teachings of Horton or Jones,
and Samuel and Halliday.
REVERSED

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JONES & SMITH , LLP
2777 ALLEN PARKWAY
SUITE 1000
HOUSTON, TX 77019
9