Ex Parte Ventresca et alDownload PDFBoard of Patent Appeals and InterferencesApr 27, 200910910934 (B.P.A.I. Apr. 27, 2009) Copy Citation 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 ____________ Decided:1 April 27, 2009 ____________ 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. 2 Appeal 2009-2421 Application 10/910,934 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. 3 Appeal 2009-2421 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? 4 Appeal 2009-2421 Application 10/910,934 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). 5 Appeal 2009-2421 Application 10/910,934 “[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). 6 Appeal 2009-2421 Application 10/910,934 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). 7 Appeal 2009-2421 Application 10/910,934 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. 8 Appeal 2009-2421 Application 10/910,934 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. 9 Appeal 2009-2421 Application 10/910,934 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. 10 Appeal 2009-2421 Application 10/910,934 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 cam BACHMAN & LAPOINTE, P.C. 900 CHAPEL STREET SUITE 1201 NEW HAVEN, CT 06510 11 Copy with citationCopy as parenthetical citation