Ex Parte Sheehy et al

Patent Trial and Appeal Board

Feb 13, 2018

14147355 (P.T.A.B. Feb. 13, 2018)

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.
14/147,355 01/03/2014 Alan James Sheehy P07622US1 8695
34082 7590 02/15/2018
7ART FY T AW FTRM PT .f
EXAMINER
CAPITAL SQUARE SKAIST, AVI T.
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350 ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
02/15/2018 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
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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,
BRIAN W. G. MARCOTTE, MICHAEL THOMAS CARROLL, and
COLIN KENNETH HILL
Appeal 2016-003470
Application 14/147,355
Technology Center 3600
Before STEVEN D.A. MCCARTHY, LYNNE H. BROWNE, and
NATHAN A. ENGELS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alan James Sheehy et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 1—14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appeal 2016-003470
Application 14/147,355
CLAIMED SUBJECT MATTER
Sole independent claim 1, reproduced below, is illustrative of the
claimed subject matter:
1 A method of determining fluid flow in an oil reservoir and
connections thereof, comprising the steps of:
delivering a nutrient package to an oil reservoir;
permitting the nutrient package to stimulate resident
microorganisms causing growth and compositional change to the
resident microorganisms;
taking and analyzing a sample of fluid from wells in the
oil reservoir; and
determining the movement of fluids in the oil reservoir
based upon changes in the resident microorganisms.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bryant US 4,905,761 Mar. 6, 1990
REJECTIONS1
Claims 1—4, 8, and 12—14 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Bryant.
Claims 5—7 and 9-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bryant.
1 The rejection of claims 5—7 under 35 U.S.C. § 112(b) was withdrawn by
the Examiner in the Advisory Action mailed June 15, 2015.
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Appeal 2016-003470
Application 14/147,355
DISCUSSION
Rejection I
The Examiner finds that Bryant discloses each and every limitation of
claim 1. See Final Act. 3^4. In particular, the Examiner finds that Bryant
discloses the step of “permitting the nutrient package to stimulate resident
microorganisms causing growth and compositional change to the resident
microorganisms.” Id. at 3 (citing Bryant 14:25—31).
Noting that “[cjlaim 1 requires, in part, the step of permitting a
nutrient package to stimulate resident microorganisms causing growth and
compositional change to the resident microorganisms,” Appellants contend
that “Bryant does not teach this step.” Appeal Br. 3. In support of this
contention, Appellants that note that, “[i]n contrast, Bryant teaches injecting
a microbial formulation into an injection well along with molasses.” Id.
(citing Bryant 14:11—19).
Responding to this argument, the Examiner determines that “Bryant
does indeed disclose stimulating injected organisms, once the organisms
have been injected they are thereafter considered ‘resident’ organisms,
inasmuch as they are now located within the reservoir and moreover, have
increased in number (any organisms produced while in the reservoir are
certainly considered ‘resident’).” Ans. 2. The Examiner further notes that
Appellant has not provided a definition for the claim term “resident.” See id.
at 3.
In construing claim terms, we apply “the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in [Appellants’] specification.” In re Morris, 127 F.3d 1048, 1054
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Appeal 2016-003470
Application 14/147,355
(Fed. Cir. 1997). During examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004); In re Prater, 415 F.2d 1393, 140A-05 (CCPA 1969). The
ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed.
Cir. 2005) (en banc).
Neither the Examiner nor Appellants have proffered a definition of the
claim term “resident.” An ordinary and customary definition of “resident” is
“living in a place for some length of time” or residing. See Merriam-
webster.com, http://www.merriam-webster.com/dictionary/resident (last
visited February 8, 2018). See In re Trans Texas Holdings Corp., 498 F. 3d
1290, 1299 (Fed. Cir. 2007) (Dictionaries may clarity the meaning of claim
terms during prosecution).
The Specification’s use of the claim term “resident” is consistent with
this definition. See Spec. 1—4. Accordingly, we adopt this definition as the
broadest reasonable interpretation of the claim term “resident.” As noted by
Appellants’ the microorganisms in Bryant’s method are introduced along
with the nutrient package. See Appeal Br. 3; Bryant 14:12—14. Bryant’s
microorganism do not reside in the reservoir and, thus, cannot fairly be
construed to be “resident” microorganisms as claimed.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 2-4, 8, and 12—14 which depend therefrom.
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Appeal 2016-003470
Application 14/147,355
Rejection II
The rejection of claims 5—7 and 9—11 suffers from the same
deficiency as the rejection of claim 1 discussed supra. Accordingly, we do
not sustain the Examiner’s decision rejecting these claims for the same
reason.
DECISION
The Examiner’s rejections of claims 1—14 are REVERSED.
REVERSED
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