Ex Parte Ventresca et al

Board of Patent Appeals and Interferences

Apr 27, 2009

10910934 (B.P.A.I. Apr. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARIA LUISA VENTRESCA,
IRAIMA FERNANDEZ, and
GEIDY NAVARRO-PEREZ
____________

Appeal 2009-2421
Application 10/910,934
Technology Center 1700
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Decided:1 April 27, 2009
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-2421
Application 10/910,934

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-14 and 18-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

I. STATEMENT OF THE CASE
The invention relates to a reversible gelling system for temporarily
sealing areas of a formation within a hydrocarbon producing well, to avoid
losing a treating fluid to undamaged portions of a well that are more
permeable than the damaged portions of a well. (Spec. ¶¶ 1-4). The system
includes a crosslinkable polymer, which forms a gel when introduced to the
high temperature of the permeable formation. (Spec. ¶ 31). After a given
amount of time, the gel subsequently decomposes into oil soluble
components which can be pumped from the permeable formation. (Spec. ¶
31). Claims 1 and 9 are illustrative of the subject matter on appeal:
1. A reversible gelling system, comprising:

a polymer;

a crosslinker;

a gel accelerator; and

an oxidant;

wherein temperature activates the crosslinker so as to cause the
system to form a gel, and the oxidant subsequently decomposes the gel.

9. A system of claim 1, wherein the oxidant is a hydroperoxide.

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The Examiner relies on the following prior art references to show
unpatentability:
Morgenthaler et al. (“Morgenthaler”) US 4,595,513 Jun. 17, 1986
Mahabadi et al. (“Mahabadi”) US 5,414,052 May 9, 1995
Hasaka et al. 2 (“Hasaka”) DE 19963304 Jun. 29, 2000
Dawson et al. (“Dawson”) US 2002/0160920 A1 Oct. 31, 2002
The Examiner maintains the following rejections:
1. Claims 1-4, 6-8, 11-13, and 18 rejected under 35 U.S.C. § 103(a)
as obvious over Morgenthaler in view of Hasaka;
2. Claims 5, 9, 10, 19, and 20 rejected under 35 U.S.C. § 103(a) as
obvious over Morgenthaler in view of Hasaka and Mahabadi; and
3. Claims 1, 7, 8, 11-14, and 18 rejected under 35 U.S.C. § 103(a) as
obvious over Dawson in view of Hasaka.
Appellants present arguments for each of these rejections separately.
With respect to the first and third rejections, Appellants present no separate
arguments for any individual claims over the others. Accordingly, we
decide this Appeal on the basis of representative independent claim 1, for the
first and third rejections. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple
claims subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of claims that
are argued together to decide the appeal with respect to the group of claims
as to the ground of rejection on the basis of the selected claim alone.”).
With respect to the second rejection, Appellants first present general

2 Though the rejection is based on the German publication, the Examiner
references U.S. Patent No. 6,607,828 B1, issued Aug. 19, 2003, to Hasaka et
al., which is the U.S. equivalent to the German publication. A translation of
the German publication prepared for the USPTO by The McElroy
Translation Co. (PTO 08-5122 May 2008) is made of record in the Office
Communication mailed May 23, 2008.
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Application 10/910,934

arguments directed to all the rejected claims and further present particular
arguments with respect to claims 9 and 10 as a group, accordingly, we select
claim 9 to represent all the rejected claims and to represent the group of
claims separately argued. See 37 C.F.R. § 41.37(c)(1)(vii).
II. FIRST REJECTION
A. ISSUE ON APPEAL
Claim 1 is rejected under 35 U.S.C. § 103 as obvious over
Morgenthaler in view of Hasaka. (Ans. 3). Appellants do not contest the
Examiner’s finding of a suggestion for using a gel accelerator in the well
treating fluid of Morgenthaler based on the teachings of Hasaka. Rather,
Appellants contend that Morgenthaler does not teach an “oxidant” as recited
in claim 1, because Morgenthaler teaches hydroperoxides that function as
crosslinking agents rather than function to decompose the gel after a given
time. (Br. 10-11) According to Appellants, a person of ordinary skill in the
art would not have arrived at the invention from the teachings of
Morgenthaler. (Br. 10).
The Examiner responds: (a) that the hydroperoxides taught by
Morgenthaler are clearly known oxidants, (b) that Appellants’ Specification
indicates that peroxides function as both crosslinking agents and oxidants,
and (c) that claim 1 does not require that the crosslinking agent and the
oxidant necessarily be different components. (Ans. 8).
Accordingly, a first issue on appeal arising from the contentions of
Appellants and the Examiner is: have Appellants shown that the Examiner
reversibly erred in finding that the hydroperoxides of Morganthaler are
“oxidants” within the meaning of claim 1?

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B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Appellants’ Specification states an “oxidant can be any suitable
gel decomposition causing oxidant” and particularly includes
hydroperoxides, specifically cumyl hydroperoxide and/or tert-butyl
hydroperoxide, as preferred examples. (Spec. ¶ 40).
2. Morgenthaler teaches a polymer having a crosslinking agent
that reacts to achieve a high viscosity at a temperature between the well site
surface temperature and the reservoir temperature and teaches that the
polymer subsequently acquires a low viscosity to facilitate its removal from
the reservoir. (Morgenthaler, col. 2, ll. 36-68).
3. Morgenthaler teaches that the one or more crosslinking agents
may be dialkyl peroxides or hydroperoxides. (Morgenthaler, col. 6, ll. 14-
25).
4. Morgenthaler teaches that gel breakdown, i.e., reduced
viscosity, is a natural occurrence due to the fact that the polymer is heated to
a relatively high reservoir temperature for a relatively long period of time.
(Morgenthaler, col. 6, ll. 31-39). However, the breakdown rate can be
adjusted (i.e. the breakdown can be slowed) by using more crosslinking
agent to increase the extent of gel formation. (Morgenthaler, col. 6, ll. 39-
46).
C. PRINCIPLES OF LAW
“[A] compound and all of its properties are inseparable; they are one
and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963).
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“[T]he discovery of a previously unappreciated property of a prior art
composition, or of a scientific explanation for the prior art’s functioning,
does not render the old composition patentably new to the discoverer.” Atlas
Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); see also
In re Omeprazole Patent Litigation v. Andrx Pharms., Inc., 483 F.3d 1364,
1373 (Fed. Cir. 2007) (“The record shows [the claimed limitation] in the
prior art even though that process was not recognized at the time. The new
realization alone does not render that necessary prior art patentable.”);
Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003)
(“[I]nherent anticipation does not require that a person of ordinary skill in
the art at the time would have recognized the inherent disclosure.”).
Further, the recitation of certain physical characteristics does not
render patentable a claimed invention which is clearly obvious over a
reference that is otherwise silent as to those characteristics. In re Skoner,
517 F.2d 947, 950 (CCPA 1975) (“Appellants have chosen to describe their
invention in terms of certain physical characteristics of the roughened
substrate surface . . . Merely choosing to describe their invention in this
manner does not render patentable their method.”).
D. ANALYSIS
Claim 1 is directed to a reversible gelling system, i.e., a composition,
that requires only four compounds: a polymer, a crosslinking agent, a gel
accelerator, and an oxidant. (See Claim 1).
Appellants’ Specification clearly identifies hydroperoxides as
oxidants having the claimed function of decomposing the gel. (FF 1).
Morgenthaler describes a gel that decomposes when exposed to the high
temperature of a well reservoir for a long period of time. (FF 2 and 4).
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Morgenthaler also clearly discloses adding hydroperoxides to the gel. (FF
3). It is of no consequence that Morgenthaler teaches the use of
hydroperoxides as a crosslinking agent. Without any proof that the
hydroperoxides disclosed by Morgenthaler are different from the
hydroperoxides disclosed by Appellants’ Specification, a burden that must
be met by Appellants, Appellants have not shown error in the Examiner’s
reasonable finding that Morgenthaler teaches adding a compound, i.e., a
hydroperoxide, that meets the requirements of an “oxidant” as claimed, and
further finding that the claimed decomposition function would be an
inherent property of the hydroperoxide disclosed in Morgenthaler.
Appellants have not shown that the Examiner reversibly erred in
finding that the hydroperoxides of Morgenthaler are oxidants, which
decompose a gel, and in concluding that it would have been obvious to
include the hydroperoxides in the gel system such that the resulting
composition would contain an oxidant subsequently decomposing the gel as
claimed.
III. SECOND REJECTION
Claim 9 stands rejected under 35 U.S.C. § 103 as obvious over
Morgenthaler in view of Hasaka, as applied to claim 1 above, and further in
view of Mahabadi. (Ans. 4). The Examiner reasons that Mahabadi teaches
that benzoyl peroxide, which is a preferred crosslinking agent of
Morgenthaler, and t-butyl hydroperoxide (i.e., tert-butyl hydroperoxide) are
equivalent crosslinking agents, so as to render the use of t-butyl
hydroperoxide as one of the disclosed hydroperoxides in the polymer of
Morgenthaler obvious. (Ans. 5-6).
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Appellants contend that, in addition to the arguments made regarding
claim 1, claim 9 is further patentable because Mahabadi also teaches the use
of t-butyl hydroperoxide as a crosslinking agent and not as an oxidant that
functions to decompose the gel after a given time. (Br. 11-12).
Appellants do not contest the Examiner’s rationale that one of
ordinary skill of art would have considered tert-butyl hydroperoxide to be a
suitable equivalent for the disclosed hydroperoxide crosslinking agents
taught by Morgenthaler, a proposition with which we agree. (See Mahabadi,
col. 12, ll. 16-50). Rather, Appellants limit their arguments to the same
contentions which we have already addressed with respect to the previous
rejection. Above, we accepted as true the Examiner’s finding that the
hydroperoxides disclosed in Morgenthaler would inherently function as the
claimed oxidant, noting that Appellants had not provided evidence to
establish the contrary. We extend this reasoning to the specific recitation of
tert-butyl hydroperoxide in Mahabadi. Without further evidence as to the
difference between the tert-butyl hydroperoxide disclosed in Mahabadi and
the tert-butyl hydroperoxide disclosed in Appellants’ Specification, the
claimed function would be an inherent property of the tert-butyl
hydroperoxide disclosed in Mahabadi. Since Appellants have not presented
any new contentions of Examiner error over what has previously been
argued with respect to claim 1, we determine that Appellants have not shown
that the Examiner reversibly erred in concluding that it would have been
obvious for one of ordinary skill in the art to use tert-butyl hydroperoxide in
the gel formulation taught by Morgenthaler as modified by Hasaka.
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IV. THIRD REJECTION
A. ISSUE ON APPEAL
Claim 1 stands rejected under 35 U.S.C. § 103 as obvious over
Dawson in view of Hasaka. (Ans. 6). As above, Appellants do not contest
the combination of Dawson and Hasaka. Rather, Appellants contend that
“Dawson teaches even less with respect to an oxidant than Morgenthaler”
and rely on the arguments presented with respect to the first ground of
rejection to demonstrate the differences between a crosslinking agent and an
oxidant. (Br. 12). The Examiner responds that Dawson clearly teaches the
presence of an oxidant at ¶¶ 10 and 40. (Ans. 8).
An issue on appeal arising from the contentions of Appellants and the
Examiner is: have Appellants shown that the Examiner reversibly erred in
determining that an oxidant, which decomposes a gel, would have been
obvious to include in a gel system as claimed, based on the teachings of
Dawson?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
5. Though Dawson teaches the use of a delayed release chelating
agent as a “breaker” component that functions to reduce viscosity of the
polymer (Dawson, ¶¶ 5 and 17), Dawson further discloses that it was well
known in the art to use oxidants “to cause viscosity loss due to polymer
degradation.” (Dawson, ¶ 10).
C. PRINCIPLES OF LAW
The principles of law presented above are equally applicable to the
present issue.
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D. ANALYSIS
Dawson discloses the use of an oxidant, which clearly performs the
function claimed. (FF 5). Appellants do not contest this fact. Thus,
Dawson as modified by Hasaka would have suggested to an ordinary artisan
using an oxidant that decomposes a gel, as recited in claim 1. Accordingly,
Appellants have not shown that the Examiner reversibly erred in
determining that an oxidant, which decomposes a gel, would have been
obvious to include in a gel system as claimed, based on the teachings of
Dawson.
V. CONCLUSION
For the reason discussed above and presented by the Examiner, we
sustain the following rejections:
1. Claims 1-4, 6-8, 11-13, and 18 rejected under 35 U.S.C. § 103(a)
as obvious over Morgenthaler in view of Hasaka;
2. Claims 5, 9, 10, 19, and 20 rejected under 35 U.S.C. § 103(a) as
obvious over Morgenthaler in view of Hasaka and Mahabadi; and
3. Claims 1, 7, 8, 11-14, and 18 rejected under 35 U.S.C. § 103(a) as
obvious over Dawson in view of Hasaka.
VI. DECISION
We affirm the Examiner’s decision.
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VII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v)(2008).
AFFIRMED

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