Ex Parte Schaefers et al

Patent Trial and Appeal Board

Apr 28, 2017

14091198 (P.T.A.B. Apr. 28, 2017)

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.
14/091,198 11/26/2013 Justin Kyle Schaefers 2052-0001 6566
130655 7590 05/02/2017
Griffith Bates Champion & Harper LLP
5910 N. Central Expressway, Suite 1050
Dallas, TX 75206
EXAMINER
WANG, WEI
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
docketing@griffithbates.com
lisa, cast @ griffithbates. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN KYLE SCHAEFERS and
JAMES PHILLIP WALLACE
Appeal 2015-006243
Application 14/091,198
Technology Center 3600
Before MICHAEL L. HOELTER, SUSAN L. C. MITCHELL, and,
JEFFREY A. STEPHENS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s Final rejection of claims 1, 2, 4, and 6—14. Br. 2. Claims 3 and
5 have been canceled, and claims 15—29 have been withdrawn. Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-006243
Application 14/091,198
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to apparatus, systems[,] and
methods of emitting pressure waves to acoustically fracture rock
formations.” Spec. 12. Claim 1 is the sole independent claim, is illustrative
of the claims on appeal, and is reproduced below.
1. A method for stimulating a downhole rock
formation comprising:
emitting pressure waves within at least one well
extending into the downhole formation;
propagating the pressure waves beyond the at least one
well out into the downhole rock formation;
forming periodic shockwaves in a target zone within the
downhole formation at a controllable distance of up to 16,000
feet from the at least one well, wherein the distance is
controllable by changing at least one of the frequency and the
pressure of the emitted pressure waves; and
deforming the downhole rock formation in the target
zone via the shockwaves.
REFERENCES RELIED ON BY THE EXAMINER
Wesley US 4,345,650
Thomas1 2 US 6,427,774 B2
Garreton US 2011/0139441 A1
DeLaCroix US 8,113,278 B2
Aug. 24, 1982
Aug. 6, 2002
June 16, 2011
Feb. 14, 2012
THE REJECTIONS ON APPEAL
Claim 4 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention.
1 Thomas incorporates Wesley by reference. Thomas 4:51—52.
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Application 14/091,198
Claims 1, 2, 4, 6, 7, 13, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Thomas and Wesley.
Claims 8—11 are rejected under 35 U.S.C. § 103 as unpatentable over
Thomas, Wesley, and DeLaCroix.
Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over
Thomas, Wesley, and Garreton.
ANALYSIS
The rejection of claim 4 as being indefinite
The Examiner finds that claim 4 “recites the limitation ‘the periodic
seismic events’ in line 3” and that “[tjhere is insufficient antecedent basis for
this limitation in the claim.” Final Act. 2. Appellants address this matter in
their “Amendment and Response to Final Office Action Dated July 24,
2014” (hereinafter, “Response to Final”), which was mailed September 24,
2014. Appellants state, “[t]he phrase ‘periodic seismic events’ (in the plural)
is first introduced in line 2 of claim 4, which provides proper antecedent
basis for the phrase ‘the periodic seismic events’ in line 3 of claim 4.”
Response to Final, p. 8. Accordingly, “Applicant respectfully requests
reconsideration and withdrawal of the rejection.” Id. There is no indication
that this rejection of claim 4 has been withdrawn by the Examiner. See
Advisory Action mailed October 2, 2014; see also Ans. 2. Furthermore, this
rejection is not addressed in Appellants’ Appeal Brief {but see Appellants’
Pre-Brief Conference Request, p. 1, mailed October 24, 2014). In light of
the lack of any withdrawal of the rejection, or any discussion of this
rejection in Appellants’ Appeal Brief, we sustain the Examiner’s rejection of
claim 4 as being indefinite.
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Appeal 2015-006243
Application 14/091,198
The rejection of claims 1, 2, 4, 6, 7, 13, and 14
as unpatentable over Thomas and Wesley
Appellants argue these claims together. Br. 6—8. We select
independent claim 1 for review as representative, with the remaining
dependent claims standing or falling with claim 1. See 37 C.F.R. §
41.37(c)(l)(iv).
The Examiner relies on Thomas for disclosing the recited limitations
directed to the claimed steps of “emitting,” “propagating,” and “forming.”
Final Act 3—4. The Examiner acknowledges, however, that Thomas “does
not disclose” forming the shockwaves “at a controllable distance of up to
16,000 feet from the at least one well” as recited. Final Act. 4. Nonetheless,
the Examiner states, “Thomas further discloses a motivation to increase the
distance of stimulation by optimizing frequencies of acoustic pulses.” Final
Act. 4 (citations omitted). The Examiner explains, “the distance of
stimulation, the frequencies of acoustic pulses and the pressure of the
emitted pressure waves are result effective variables” and “discovering an
optimum value of a result effective variable involves only routine skill in the
art.” Final Act. 4—5.
The Examiner also acknowledges, “Thomas does not disclose” the last
“deforming” limitation. Final Act. 4. For this, the Examiner relies on
Wesley (which the Examiner also found to teach the “propagating”
limitation). Final Act. 5. The Examiner concludes that it would have been
obvious “to deform the downhole rock formation as taught by Wesley via
the pressure waves (of Thomas) in order to enhance the oil recovery as a
goal of Thomas.” Final Act. 5 (citations omitted).
Appellants do not present arguments regarding the “up to 16,000 feet”
limitation that the Examiner finds to be optimization of result-effective
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Appeal 2015-006243
Application 14/091,198
variables. Instead, Appellants contend that both Thomas and Wesley can be
distinguished because they are both directed to methods involving
“producing shockwaves within a well bore rather than forming the
shockwaves out in a target zone.” Br. 6; see also Br. 7, 8. In other words,
Appellants are focusing on the “location of shockwave formation” or
‘ forming” the shockwave, “not within the well bore but rather in a target
zone out in the formation, away from the well.” Br. 7, 8; see also Spec.
11 19, 53, 54, and Figs. 2A-2C.
The claim limitation at issue recites, “forming [] shockwaves in a
target zone . . .”. When addressing shockwaves, Appellants’ Specification
employs the claim term “forming” (or its variations) as being
interchangeable with the word “producing” (or its variations). See Spec.
11 6, 8, 53, 55, 56, 64, 69, 70. Regarding the claim term “target zone,”
Appellants’ Specification provides guidance that this term “may comprise
any portion of formation 300 to be stimulated.” Spec. 1 60; see also Spec.
114. To the extent Appellants argue that claim 1 precludes formation of
shockwaves within the well, the language of the claim does not support such
an assertion.
Additionally, the Examiner references Appellants’ acknowledgement
that the cited art discloses a shockwave that “impacts the well casing and
then continues through the formation toward the producing well.”2 Ans. 2
2 This is consistent with Wesley’s teaching of an important feature being
“wherein narrow wave fronts may be controllably oriented so as to ensure
extensive shock wave propagation through the formation.” Wesley 4:9—14.
To achieve this, Wesley states, “wherein shock waves, the amplitude, shape
and duration of discharge frequency thereof are adjustable in conformation
with the density and other characteristics of the oil bearing formation.”
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Application 14/091,198
(referencing Br. 6). As understood by the Examiner, “wherein there was no
shock wave before, [the formation outside the well] now experiences the
shock waves. In other word[s], the shock waves form in the target zone.”
Ans. 2. The Examiner also notes that “the limitation of ‘forming the shock
waves in a target zone within the downhole formation’ recited in this claim
does not preclude that the shock waves first form outside of a target zone.”
Ans. 4. Further, the Examiner notes, “Thomas’s disclosure (figs 5 and 6A—
6B) are identical to [Appellants’] disclosure (figs 3 and 4B-4C). And both
systems produce shock waves from the well and the shock waves propagate
into formations.” Ans. 5.
In view of the above, and based on the understanding of the claim
terms at issue and the teachings of the cited art regarding shockwaves being
formed beyond the well casing boundary (where there was no shockwave
before), we are not persuaded by Appellants of Examiner error.
Appellants further contend that as the cited art’s “shockwaves impact
the well casing, [they] diminish to a lower pressure wave, and then continue
through the formation toward a producing well.” Br. 7. However, this
assertion is inconsistent with the above teachings of Wesley that “an
important feature of this invention” is the ability to control waves “so as to
ensure extensive shock wave propagation through the formation” Wesley
4:9-14 (emphasis added). Nevertheless, even presuming that the
effectiveness of the prior art’s shockwave degrades or attenuates as it
propagates through the formation (see Br. 7), this is not persuasive that the
Wesley 4:3—6. Thomas states that Wesley’s “strong acoustic vibrations”
“have an effective limit of about 1000 feet.” Thomas 5:1—4.
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Application 14/091,198
cited art fails to teach a shockwave being formed/produced in the formation
as recited. See also Ans. 3^4.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1, 2, 4, 6, 7, 13, and 14 as unpatentable over
Thomas and Wesley.
The rejection of (a) claims 8—11 as unpatentable over Thomas, Wesley, and
DeLaCroix; and, (b) claim 12 as unpatentable over Thomas, Wesley, and
Garreton
For each rejection, Appellants do not present arguments regarding the
Examiner’s additional reliance on DeLaCroix or Garreton for the additional
limitations recited. Instead, Appellants contend that these references “fail[]
to make up for the deficiencies of Thomas and Wesley.'” Br. 8—9.
Appellants’ contentions are not persuasive of Examiner error. We
sustain the Examiner’s rejection of claims 8—12.
DECISION
The Examiner’s rejections of claims 1, 2, 4, and 6—14 are affirmed.
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
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