Ex Parte Shokanov et alDownload PDFPatent Trial and Appeal BoardMay 26, 201612677719 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/677,719 08/24/2010 26722 7590 05/31/2016 OSHA LIANG/MI TWO HOUSTON CENTER 909 FANNIN STREET, SUITE 3500 HOUSTON, TX 77010 FIRST NAMED INVENTOR Talgat A. Shokanov 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. 055421187002 2646 EXAMINER WALLA CE, KIPP CHARLES ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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@OSHALIANG.COM bergman@oshaliang.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte TALGAT A. SHOKANOV, KENNETH G. NOLTE, FRANCISCO FRAGACHAN, and ADRIANA P. OVALLE Appeal2014-002690 Application 12/677,719 Technology Center 3600 Before: STEFAN STAICOVICI, BRANDON J. WARNER, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 7, 9, 10, and 12-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The claims are directed to a method of using pressure signatures to predict injection well anomalies. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal2014-002690 Application 12/677,719 A method comprising: obtaining a pressure signature for a time period; interpreting the pressure signature for the time period to determine a fracture behavior of a formation; determining a solution based on the fracture behavior of the formation; and implementing the solution during re-injection of cuttings into the formation. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: GEEHAN '876 WARE US 7,440,876 B2 US 8,091,625 B2 Oct. 21, 2008 Jan. 10,2012 Thomas Geehan et al., "The Cutting Edge in Drilling Waste Management," Oilfield Review, Winter 2006/2007, pages 54---67 (hereinafter "GEEHAN"). REJECTIONS (I) Claims 1-7, 9, 10, 12-14, and 16-20 are rejected under 35 U.S.C. § 102(b) as anticipated by Geehan. (II) Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Geehan, Geehan '876, and Ware. OPINION Rejection(!) The Examiner finds that Geehan discloses all the features recited in claim 1, and refers to text on pages 63---65 for the "determining a solution" and "interpreting the solution" steps required by claim 1. Appellants state that claim 1 requires "that any solution be based on the fracture behavior of the formation. In order to be able to achieve that, 2 Appeal2014-002690 Application 12/677,719 the pressure signature must be interpreted to determine a.fracture behavior of a formation. [Appellants] respectfully assert[] that these features are neither shown nor suggested by Geehan." Br. 6. Appellants further assert, "Geehan resolves problems associated with the injection operations, not the fracture behavior of the formation" (Br. 6) and "Geehan fails to disclose interpreting a pressure signal to associate it with a fracture behavior of the formation" (Br. 7). In response, the Examiner states, Geehan "teaches noting a pressure spike during injection, and that these can result due to fracture plugging." Ans. 2 (citing Geehan, p. 65, col. 1, i12). Additionally, the Examiner states that Geehan discloses, "it was determined that the pressure spike was a result of an increased fracture gradient, which required further pressure to open a fracture (pg. 65 col. 1 i1 5) which ties pressure signature to fracture behavior." Ans. 2. The Examiner further finds that Geehan discloses implementing solutions based on the fracture behavior of the formation by providing "daily monitoring and regular pressure analysis while continuing to inject cuttings" and by "adjusting of injection rate and slurry-viscosity specification." Ans. 2. We are not persuaded by Appellants' arguments. Geehan states: After five months of normal injection procedures, a pressure spike of 600 psi [4,137 kPa] was noted during annular injection. Sudden injection pressure increases may be related to a number of factors, including well obstruction or well plugging, fracture plugging, particle settlement and operation errors such as closed valves. Some problems are relatively easy to identify through adequate analysis of pressure signatures, but others are more elusive. Geehan, p. 65, col. 1, i12 (emphasis added). Additionally, Geehan states, "[f]ollowing a careful and extensive evaluation, engineers found that the 3 Appeal2014-002690 Application 12/677,719 CRI1 pressure spikes were related to fracture-gradient increase resulting from thermal expansion of the formation during production." Geehan, 65, ,-r 4. Thus, Geehan correlates sudden injection pressure increases with, among other things, fracture plugging and thermal expansion of the formation. Consequently, we do not agree with Appellants' assertion that "Geehan fails to disclose interpreting a pressure signal to associate it with a fracture behavior of the formation" (Br. 7). Regarding determining a solution based on the fracture behavior, Geehan states, after the above-quoted text: Daily monitoring of injection parameters and regular in- depth pressure analysis can significantly reduce risk and increase the level of injection quality assurance. Monitoring also helps to ensure environmentally safe and seamless CRI operations in spite of the significant uncertainties of data availability and quality. Regular in-depth pressure analysis allows engineers to monitor the progression of injection fractures, validate and update geomechanical models and extend the life of the injection well. Geehan, 65, ,-r 6; see also Ans. 2 (discussing solutions provided by Geehan). Geehan also states: Integration of the geologic evaluation, numerical modeling and pressure signature yielded a full picture of fracture development downhole. Analysis of the pressure data in this case allowed engineers to avoid rapid injection-pressure increases and the potential for loss of infectivity by adjusting the injection rate and slurry viscosity specifications as part of the ongoing quality-control process. Geehan, 63, ,-r 4; see also Ans. 2. Thus, after obtaining a "full picture of fracture development," engineers were able to adjust the injection rate as 1 CRI means "cuttings re-injection" in this technology area. Geehan '876, col. 1, 11. 8-11. 4 Appeal2014-002690 Application 12/677,719 part of the quality-control process. Accordingly, we do not agree with Appellants' assertion that "Geehan resolves problems associated with the injection operations, [but] not the fracture behavior of the formation" (Br. 6). Appellants also argue, "Geehan fails to show or suggest associating pressure signatures with a particular fracture behavior" (Br. 7) and "[ w ]hile Geehan discloses looking at a pressure signal, it does not show or suggest assigning that pressure signal to a particular fracture behavior and then determining a solution based on the fracture behavior as recited in claim 1" (Br. 8). However, we find these assertions unpersuasive because claim 1 recites only "interpreting the pressure signature for the time period to determine a fracture behavior of a formation," claim 1 does not require associating pressure signatures with any particular fracture behavior of a formation or determining any particular fracture behavior of a formation. Accordingly, Appellants' arguments on this point are not commensurate with the scope of claim 1. Appellants next argue, Geehan "does not enable one to actually interpret any pressure signals. There is no disclosure of how a given pressure signature would be indicative of a given formation condition." Br. 8 (emphasis added). Appellants further argue, "there is no tie between determining a formation condition and solving the issue based on that formation condition, as required by the claims." Br. 8. Additionally, Appellants state, "Geehan indicates a problem, presents several solutions that worked, without ever investigating the root cause of the problem. Simply succeeding at a problem through trial and error, and disclosing that process, is not enabling nor equivalent to the claimed method of interpreting and determining." Br. 9. 5 Appeal2014-002690 Application 12/677,719 Appellants' arguments are not persuasive. Prior art references are presumed to enable that which they disclose. Consistent with the statutory framework and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under§ 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012). Appellants do not adequately rebut this presumption of enablement. Rather, Appellants' assertion that Geehan is not an enabling reference is not supported by any persuasive argument or evidence. For example, Appellants do not address the quantity of experimentation required in order to successfully complete the process disclosed by Geehan, much less whether the required experimentation would rise to the level of undue experimentation. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (discussing considerations for determining whether a disclosure is enabling). Nor do Appellants address persuasively other factors relevant to the question of enablement, such as: the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims. See id. at 737. Accordingly, we do not agree with Appellants' arguments on this point. Although we have considered all of Appellants' arguments regarding independent claim 1, we are not persuaded, and we sustain the Examiner's decision to reject claim 1 as anticipated by Geehan. Claims 516 6 Appeal2014-002690 Application 12/677,719 Dependent claim 6 depends from dependent claim 5, which recites, "[t ]he method of claim 1, wherein the determining the solution includes determining a cause of the fracture behavior." The Examiner refers to page 65, paragraphs 3--4 of Geehan in the rejection of claims 5 and 6. Final Act. 4. After summarizing the features recited in claims 5 and 6, Appellants assert, "Geehan fails to determine a cause of the fracture behavior, and instead merely speculates as to potential causes." Br. 9. Geehan states, "engineers found that the CRI pressure spikes were related to fracture-gradient increase resulting from thermal expansion of the formation during production." Geehan, 65, i-f 4. Geehan further states, "[t]he effect of the rise in temperature resulting from production operations was greatest near the wellbore, increasing formation stress by about 600 psi. The CRI injection pressure had to overcome this effect to open the fracture, causing a sudden increase in the injection pressure." Geehan, 65, i-f 5. Thus, we do not agree that "Geehan fails to determine a cause of fracture behavior," (Br. 9) and we sustain the Examiner's rejection of claims 5 and 6 as anticipated by Geehan. Appellants do not make separate arguments for any of claims 2--4, 9, and 10, which depend from independent claim 1. Accordingly, these claims fall with claim 1. Claim 12 Independent claim 12 recites, in part, "characterizing a risk associated with the determined fracture behavior of the formation; and implementing a solution based on the characterized risk." The Examiner finds that Geehan discloses this feature in paragraphs 3--4 of page 63. Final Act. 5. Appellants argue that Geehan fails to disclose the step of characterizing a risk and that 7 Appeal2014-002690 Application 12/677,719 the Examiner errs in relying on the disclosure in Geehan of "creating a full picture of fracture development." Br. 10. In response, the Examiner states, "the pressure spike which was observed during the monitoring of the pressure signature (pg. 65 col. 1 i-f 3) in this example is the risk (characterized in i-f 2 of pg. 64 where Geehan states that unexpected pressure trends (which includes a pressure spike) can provide early warning signs of unexpected fracture development and extension)." Ans. 2-3 (emphasis added). Appellants' arguments are persuasive. The Examiner does not explain how the pressure spike equates to a risk or how identification of a pressure spike qualifies as characterization of a risk. In other words, characterization of a risk, in the context of claim 12 and Appellants' Specification (see, e.g., paragraph 31 ), requires more than the mere identification of an event such as a pressure spike. Accordingly, we do not sustain the Examiner's rejection of claim 12 and claims 13, 14, and 16-20, depending therefrom, as anticipated by Geehan. Rejection (II) The Examiner's unsupported finding that "the pressure spike which was observed during the monitoring of the pressure signature ... is the risk" (Ans. 2) is not remedied by the Examiner's use of Geehan'876 and Ware. Accordingly, we do not sustain the Examiner's rejection of claim 15 as unpatentable over Geehan and Geehan'876 or Ware. 8 Appeal2014-002690 Application 12/677,719 DECISION2 (I) The Examiner's rejection of claims 1-7, 9, 10, 12-14, and 16- 20 as anticipated by Geehan is affirmed as to claims 1-7, 9, and 10 and is reversed as to claims 12-14 and 16-20. (II) The Examiner's rejection of claim 15 as unpatentable over Geehan, Geehan '87 6, and Ware is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 2 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101. See Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347 (2014) and associated Examiner guidance. 9 Copy with citationCopy as parenthetical citation