Ex Parte Sanchez Reyes et al

Patent Trial and Appeal Board

Apr 24, 2018

13033643 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/033,643 02/24/2011 Javier Sanchez Reyes
27452 7590 04/26/2018
SCHLUMBERGER TECHNOLOGY CORPORATION
10001 Richmond Avenue
IP Administration Center of Excellence
Houston, TX 77042
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.
ISl 1.0060-US-NP 9322
EXAMINER
LI,AIQUN
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
04/26/2018 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):
USDocketing@slb.com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAVIER SANCHEZ REYES and MICHAEL D. PARRIS
Appeal2017-006038
Application 13/033,643
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
JANEE. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 32-35 and 37--43 under 35 U.S.C.
§ 103(a) over at least the combined prior art of Dobson '575 (US 6,936,575
B2, issued Aug. 30, 2005), Rietjens (US 6,310,008 B 1, issued Oct. 30,
2001), and Crews (US 2003/0092581 Al, published May 15, 2003), as
evidenced by Dobson '271 (US 5,629,271, issued May 13, 1997). 2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 The real party in interest is identified as Schlumberger Technology
Corporation (Appeal Br. 2).
2 The Examiner applies an additional reference, Pauls (US 2006/0205606 Al
published Sept. 14, 2006), in the rejection of dependent claim 42 (Final
Action 6, Ans. 4).
Appeal2017-006038
Application 13/033,643
We AFFIRM.
Independent claim 32 is illustrative of the subject matter on appeal:
32. A method comprising:
hydrating a hydratable polymer with an aqueous liquid to form a
hydrated polymer-aqueous liquid solution;
utilizing a crosslinking concentrate solution comprising water, a
polyol, a polymer viscosifying agent, a crosslinking agent able to release a
borate ion and a calcium ion, and
a chelating agent able to complex with said calcium ion, wherein said
crosslinking agent is selected from the group consisting of ulexite,
colemanite, and mixtures thereof, and wherein the crosslinking concentrate
solution does not contain an organotitanate chelate and an organozirconate
chelate; and
adding the crosslinking concentrate solution to the hydrated polymer-
aqueous liquid solution to crosslink the hydrated polymer of the hydrated
polymer-aqueous liquid solution and form a well treating fluid.
ANALYSIS
Upon consideration of each of Appellants' contentions, we determine
that the preponderance of evidence supports the Examiner's conclusion that
the subject matter of Appellants' claims is unpatentable over the applied
prior art. We sustain the Examiner's§ 103 rejections essentially for the
reasons set out by the Examiner in the Answer. We add the following
primarily for emphasis.
Appellants mainly argue the claims as a group, and only separately
argue dependent claim 35 and 42 (Appeal Br. 10-11).
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
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Application 13/033,643
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
Appellants' main argument is that there is no reason to use a polyol as
exemplified in Reitjens' borate-containing well treating fluid in the borate-
containing well treating fluid of Dobson '575 because to do so would
frustrate Dobson's '575 stated desire for a sparingly soluble borate in its
well treating fluid (e.g., Appeal Br. 7-10; Reply Br. 2-5). Appellants rely
upon a declaration filed under 37 C.F.R. § 132 by inventor Javier Sanchez
Reyes on June 17, 2016 in support of their argument (Evidence Appendix).
Appellants' argument is not persuasive of reversible error.
There is no dispute that both references disclose use of, e.g., ulexite
(as recited in claim 32), as a source of the borate ions in a well treating fluid.
Borate ions have "long been used" for well treating fluids (e.g., Reitjens, col.
2: 46-52), and alkaline earth metal borates (e.g., ulexite) are described by
Dobson'575 as known "sparingly soluble borates" (Dobson '575 col. 2, 11.
56-60).
However, even assuming arguendo that Appellants are correct that
using a polyol could undesirably increase the solubility of the borate used in
Dobson '575, there is no dispute that polyols are known components useful
for their anti-freezing properties in well treating fluids as exemplified in
Reitjens (Reitjens col. 4:26-36; Spec. 2 i-f 6 (describing known use of
"polyol ethers, glycols" in well treating fluids)). 3 While use of sufficient
3 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
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Appeal2017-006038
Application 13/033,643
amounts of a glycol may increase the solubility of borate material as asserted
by Appellants (e.g., Appeal Br. 7), this does not mean it would not have
been prima facie obvious to include a polyol as recited in claim 32. Whether
a reference teaches away from a claimed invention is a question of fact. In
re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). Notably, our reviewing
court has determined that a reference can distinguish prior art in order to
show the novelty of an invention without teaching away from combining the
prior art with the invention disclosed in the reference. See Ricoh Co., Ltd. v.
Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008). Furthermore,
"[t]he fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another."
Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
2000).
As the Examiner pointed out, one of ordinary skill in the art would
have reasonably expected that the use of a polyol (e.g., glycol) would have
the predictable desirable effect of lowering the freezing point of the well
treatment fluid of Dobson '575 (Ans. 6). Indeed, Appellants describe that
the use of polyol in their invention is for this reason (Spec. i-f 24). One of
ordinary skill would have readily inferred that the borate well treatment fluid
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Device, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) and In re Nomiya, 509
F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant that certain
matter is prior art is an admission that the matter is prior art for all
purposes).
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Application 13/033,643
with a polyol would still function in the well treatment fluid of Dobson '575.
KSR Int 'l Co., 550 U.S. at 417 ("the predictable use of prior art elements
according to their established functions" is normally prima facie obvious).
Furthermore, taking into account "the inferences and creative steps that a
person of ordinary skill in the art would employ," KSR Int'! Co., 550 U.S. at
418, one of ordinary skill in the art would have also employed a known
chelating agent, as exemplified in Crews for its known function of
preventing scale (e.g., Ans. 6). According to Appellants, the presence of a
chelating agent "addresses this deleterious effect [of increased solubility]"
(Appeal Br. 10). Accordingly, the combination of known components
reasonably determined to be an obvious combination by the Examiner would
have also de facto addressed any negative consequences of including the
freezing point depressant glycol additive. "[A] reasonable expectation of
success, not absolute predictability" supports a conclusion of obviousness.
In re Langi, 759 F.2d 887, 897 (Fed. Cir. 1985).
Additionally, as pointed out by the Examiner, claim 32 does not
require any specific amount of polyol, or ulexite (Ans. 5, 6). Appellants
have not shown persuasive evidence that adding, e.g., some minimal amount
of polyol will deleteriously impact the composition suggested by the applied
prior art.
To the extent Appellants separately argue dependent claims 35 and
42, they have not shown reversible error in the Examiner's position for the
reasons stated by the Examiner (Ans. 7).
Accordingly, for all the reasons stated above and in the Answer,
Appellants have not shown reversible error in the Examiner's obviousness
determination.
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Application 13/033,643
Accordingly, we affirm the Examiner's prior art rejections of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner's§ 103 rejections are affirmed.
TIME PERIOD FOR RESPONSE
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 ).
AFFIRMED
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