Ex Parte Sheehy et alDownload PDFPatent Trial and Appeal BoardApr 13, 201814307133 (P.T.A.B. Apr. 13, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/307,133 06/17/2014 34082 7590 04/17/2018 ZARLEY LAW FIRM P.L.C. CAPITAL SQUARE 400 LOCUST, SUITE 200 DES MOINES, IA 50309-2350 FIRST NAMED INVENTOR Alan James Sheehy 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. P07686US1 1186 EXAMINER RUNYAN, SILVANAC ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 04/17/2018 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): kconrad@zarleylaw.com crasmussen@zarleylaw.com emarty@zarleylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN JAMES SHEEHY, BRADLEY RAY GOVREAU, COLIN KENNETH HILL, MICHAEL THOMAS CARROLL, and BRIAN W. G. MARCOTTE Appeal2017-008333 1 Application 14/307,133 2 Technology Center 3600 Before ANTON W. PETTING, KENNETH G. SCHOPPER, and MATTHEWS. MEYERS, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b ). 1 Our decision references the Appeal Brief ("Appeal Br.," filed Jan. 5, 2017), the Reply Brief ("Reply Br.," filed May 15, 2017), the Examiner's Answer ("Ans.," mailed Mar. 14, 2017), and Final Office Action ("Final Act.," mailed July 11, 2016). 2 The Briefs do not list a real party in interest. However, Titan Oil Recovery, Inc. is listed as an applicant and "TITAN OIL RECOVERY, INC." is the assignee recorded (January 8, 2015 with the USPTO as per reel/frame number 034662/0127. Appeal2017-008333 Application 14/307, 133 We REVERSE. BACKGROUND The Specification relates to "a method of enhancing oil recovery of low salinity water flooding" and "a method of oil recovery by causing changes in wettability or fluid relative permeability." Spec. 1, 1. 29--2, 1. 3. ILLUSTRATIVE CLAIM Claim 1 is the only independent claim on appeal and recites: 1. A method for enhancing oil recovery, comprising the steps of: determining a specific nutrient package used to initiate a microbiological response under actual reservoir conditions in combination with low salinity water injection; applying the specific nutrient package to at least one targeted well to stimulate resident microorganisms to alter hydrophobic properties so that interaction with oil contained in a reservoir rock formation is improved and optimize an effect of lower salinity water injection. Appeal Br. 6. REJECTION The Examiner rejects claims 1-12 under 35 U.S.C. § 103(a) as unpatentable over Converse3 in view of Sheehy. 4 3 Converse et al., US 2001/0045279 Al, pub. Nov. 29, 2001. 4 Sheehy, US 4,971,151, iss. Nov. 20, 1990. 2 Appeal2017-008333 Application 14/307, 133 DISCUSSION We are persuaded by Appellants' argument that the Examiner has failed to adequately support the conclusion that it would have been obvious to combine Converse and Sheehy as proposed. With respect to claim 1, the Examiner finds that Converse discloses a method as claimed except that Converse does not disclose that the specific nutrient package stimulates resident microorganisms to alter hydrophobic properties. Final Act. 3--4 (citing Converse i-fi-f 14, 51, 58, 71, 81, 82, 90). With respect to this claim requirement, the Examiner relies on Sheehy. Specifically, the Examiner finds that Sheehy teaches that the resident microorganisms alter hydrophobic properties so that "trapped oil in [] rock material [may] be readily flushed by outgoing water from a well." Id. at 4--5 (citing Sheehy col. 4, 11. 26-32, 48-64; col. 5, 11. 55-58). The Examiner concludes that it would have been obvious to apply a nutrient package to stimulate resident microorganisms to alter hydrophobic properties in Converse "as taught by Sheehy, in order [for] the microorganisms [to] permeate rock pores to act as surfactants to enable the trapped oil in the rock material to be readily flushed by outgoing water from a well." Id. The Examiner asserts that an additional rationale for making the proposed combination is that it will "enhanc[ e] oil recovery by reducing interfacial tension of oil in the reservoir." Ans. 14 (citing Sheehy col. 2, 11. 27-35) (emphasis omitted). We are persuaded that the rejection, with respect to the inclusion of Sheehy as described above, lacks articulated reasoning with the requisite rational underpinnings to support the conclusion of obviousness. See KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). As discussed below, 3 Appeal2017-008333 Application 14/307, 133 we agree with Appellants that the Examiner has not provided adequate support to show why a person of ordinary skill in the art would have sought to produce a nutrient package that stimulates microorganisms to alter hydrophobic properties in Converse's method of converting hydrocarbons to methane. Converse is directed to a method of "stimulating the activity of microbial consortia ... to convert hydrocarbons to methane." Converse Abstract. Converse discloses that The process of this invention stimulates and sustains the activity of a mixture of different microorganisms in a hydrocarbon-bearing, subterranean formation to convert hydrocarbons to methane and other gases, which can be produced. While not wishing to be held to any specific theory, it is believed that a mixture of microorganisms converts hydrocarbons to methane in multiple acts. Converse i-f 14. Thus, Converse discloses that the microorganisms themselves convert hydrocarbons to methane for recovery of methane. In contrast, Sheehy is directed to methods of "recovery of oil from oil reservoirs with assistance from microorganisms." Sheehy Abstract. In particular, Sheehy discloses that oil recovery can be enhanced "under pressure by reducing interfacial tension of oil in [an oil] reservoir" and where "microorganisms permeate rock pores to act as surfactants to enable the trapped oils in the rock material to be readily flushed by outgoing water from a well." Id. at col. 2, 11. 27-35; col. 5, 11. 55-58. Without further evidence or explanation from the Examiner, it has not been adequately shown that one of ordinary skill in the art would have recognized that the benefits of Sheehy's method, related to oil recovery and relied upon the Examiner as motivation for the proposed combination, would also be 4 Appeal2017-008333 Application 14/307, 133 realized in a method of using microorganisms to produce methane as disclosed by Converse. In short, the Examiner has not provided the requisite rational underpinnings to support the conclusion that it would have been obvious to alter the method of Converse as proposed. Based on the foregoing, we are persuaded of reversible error with respect to the rejection of claim 1. Accordingly, we do not sustain the rejection of claim 1. We also do not sustain the rejection of dependent claims 2-12 for the same reasons. CONCLUSION We REVERSE the rejection of claims 1-12. REVERSED 5 Copy with citationCopy as parenthetical citation