Ex parte Sydansk

Board of Patent Appeals and Interferences

Sep 25, 1997

07839640 (B.P.A.I. Sep. 25, 1997)

Application for patent filed February 21, 1992. 1
According to appellant, this application is a continuation-in-
part of Application 07/566,027 filed August 10, 1990, now U.S.
Patent No. 5,105,884 granted April 21, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT D. SYDANSK
__________
Appeal No. 94-1451
Application 07/839,6401
__________
ON BRIEF
__________
Before KIMLIN, JOHN D. SMITH and PAK, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 94-1451
Application 07/839,640
2
This is an appeal pursuant to 35 U.S.C. § 134 from the final
rejection of claims 1, 3-9 and 14-19. Claims 2 and 10-13 have
been allowed.
Claims 1 and 3 are representative and are reproduced below:
1. A foam composition for improving sweep efficiency in a
subterranean oil-bearing formation comprising:
a water-soluble, carboxylate-containing polymer selected
from a synthetic polymer or a biopolymer;
a trivalent chromium-containing crosslinking agent;
a surfactant;
an aqueous liquid solvent, the combination of said polymer,
said crosslinking agent and said surfactant in said solvent
defining a liquid foaming composition; and
a foaming gas.
3. The composition of claim 1 wherein said polymer is a
biopolymer selected from xanthan gum, guar gum, succinoglycan,
scleroglucan, polyvinylsaccharides, carboxymethylcellulose, o-
carboxychitosans, hydroxyethylcellulose, hydroxypropylcellulose,
modified starches or mixtures thereof.
The reference of record relied upon by the examiner is:
Stern 5,124,363 Jun. 23, 1992
(filed Mar. 26, 1991)
The appealed claims stand rejected under 35 U.S.C. § 103 as
unpatentable over Stern.
Essentially for the reasons set forth by the examiner in his
answer, we affirm this rejection.
Appeal No. 94-1451
Application 07/839,640
3
The subject matter on appeal is directed to a foam
composition for improving sweep efficiency in an oil-bearing
formation which comprises a water-soluble, carboxylate-containing
polymer; a trivalent chromium-containing crosslinking agent; a
surfactant; an aqueous liquid solvent; and a foaming gas.
Dependent claim 3 defines the water-soluble, carboxylate-
containing polymer as a biopolymer including, inter alia, guar
gum. A significant issue generated by the examiner’s prior art
rejection is whether or not the applied prior art reference to
Stern describes or suggests a carboxylate-containing guar gum
biopolymer as defined by appealed claim 3.
The review of any prior art rejection, whether for
anticipation or obviousness, requires first that the claims have
been correctly construed to define the scope and meaning of the
relevant limitations. Gechter v. Davidson, 116 F.3d 1454, 1457,
43 USPQ2d 1030, 1032 (Fed. Cir. 1997). In proceedings before the
Patent and Trademark Office, claims are to be given their
broadest reasonable interpretation consistent with the
specification and claim language should be read in light of the
specification as it would be construed by one of ordinary skill
in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388
(Fed. Cir. 1983). Claim construction by the Patent and Trademark
Appeal No. 94-1451
Application 07/839,640
This argument raises an issue under 35 U.S.C. § 112,2
first paragraph, as to whether the originally filed application
enables claims of the scope presented, a matter that should be
resolved in any subsequent prosecution of this case.
4
Office is required only to be reasonable, not perfect. In re
Morris, -- F.3d --, --, 43 USPQ2d 1753, 1759 (Fed. Cir. 1997).
With these legal principles in mind, we have reviewed
appellant’s claims in light of their specification. With respect
to the claim language defining the water-soluble polymer
component as a carboxylate-containing guar gum polymer,
appellant’s specification indicates at page 6, lines 2-5 that
[e]xemplary carboxylate-containing biopolymers are
xanthan gum, guar gum, succinoglycan, scleroglucan,
polyvinylsaccharides, carboxymethylcellulose, o-
carboxychitosans, hydroxyethylcellulose,
hydroxypropylcellulose and modified starches (emphasis
added).
This is the sole disclosure in the specification regarding guar
gum. Thus, when reasonably construed, the claim language in
question covers guar gum per se since, as described in the
specification guar gum is said to be a carboxylate-containing
biopolymer.
Appellant’s counsel contends in the brief at page 5 that
only certain commercially available or naturally occurring guar2
gums contain carboxylate groups. Thus, according to appellant’s
counsel, “it is only these guar gums that are suitable for use in
Appeal No. 94-1451
Application 07/839,640
5
the present invention.” However, appellant has provided no
objective evidence in support of this statement, which itself is
inconsistent with the originally filed disclosure in the
specification. It is well settled that attorney argument cannot
take the place of objective evidence in the record.
With respect to the applied prior art reference to Stern,
appellant contends that Stern specifies the structure of guar gum
useful in his foam composition as not containing a carboxylate
group. See the brief at page 5, lines 4 and 5. However, no
disclosure in Stern specifies a complete guar gum structure
without a carboxylate group. What Stern discloses is a partial
structure of a guar gum repeating unit (not a complete structure
of the copolymer) which is said to be the accepted structure of
that repeating unit. See Stern at column 5, lines 30-53. In any
event, Stern broadly teaches the use of any of the water-soluble,
polyhydroxy polymers known in the art, for example, as disclosed
in the “Handbook of Water-Soluble Gums and Resins” published by
McGraw-Hill Book Co. (1988). See Stern at column 4, lines 56-61.
Thus, even if the argument by appellant’s counsel is ultimately
confirmed, i.e., that only “certain” commercially available or
“certain” naturally occurring guar gums contain carboxylate
Appeal No. 94-1451
Application 07/839,640
6
groups, these materials are contemplated for use in the Stern
composition.
Based on the above, the examiner correctly determined that
the Stern disclosure meets every limitation of the instantly
claimed invention with the exception of the identity of a
trivalent chromium crosslinker. The examiner points out that
Stern does suggest the use of hexavalent chromium crosslinkers,
and the examiner further contends that a person of ordinary skill
in the art was aware that chromium crosslinking may be effected
by reducing hexavalent chromium to trivalent chromium. Thus the
examiner persuasively argues that a person of ordinary skill in
the art, familiar with the environmental concerns and laws which
prohibit hexavalent chromium salts from being injected into the
earth, would have been motivated to use a hexavalent chromium
system combined with a redox system, thus to effectively produce
a trivalent chromium crosslinker in Stern’s composition. See the
Answer at page 3.
Appellant has not challenged the examiner’s factual
assertions or rationale regarding the use of a hexavalent
chromium redox system in the composition of Stern. What counsel
for appellant contends is that a skilled artisan would realize
that trivalent chromium crosslinking agents are not capable of
Appeal No. 94-1451
Application 07/839,640
This argument also raises an enablement issue under 353
U.S.C. § 112, first paragraph, because, if factual, a skilled
artisan would also expect to see the same relative effect with
carboxylate groups.
7
crosslinking polyhydroxy polymers in an aqueous air foam as
disclosed in Stern by complexation, through hydrogen bonding, of
cis 1,2-diol or 1,3 -diol groupings of such polymers, since
trivalent chromium would allegedly have a significantly stronger3
interaction with water present in the aqueous air foam than with
the cis 1,2-diol or 1,3-diol groupings. See the Brief at page 6.
Objective evidence to support counsel’s contention is not of
record, however.
In light of the foregoing, we affirm the examiner’s
rejection of the appealed claims under 35 U.S.C. § 103.
The decision of the examiner is affirmed.
Appeal No. 94-1451
Application 07/839,640
8
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge)
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge)
Appeal No. 94-1451
Application 07/839,640
9
Patent Department
Marathon Oil Company
P.O. Box 269
Littleton, CO 80160