Ex Parte Witham et al

Patent Trial and Appeal Board

Aug 28, 2018

14344690 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/344,690 03/13/2014 Cole A. Witham
109 7590 08/30/2018
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
UNITED ST A TES OF AMERICA
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.
71531-US-PCT 8643
EXAMINER
SUE-AKO, ANDREW B.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLE A. WITHAM, MICHAEL K. POINDEXTER,
and ROGER L. KUHLMAN 1
Appeal2017-010879
Application 14/344,690
Technology Center 3600
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Cole A. Witham et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 2-7, 9, and 11-13.2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants' Appeal Brief lists Dow Global Technologies LLC as the real
party in interest. Br. 3.
2 Claims 8 and 10 are canceled and claim 1 is withdrawn from consideration.
Id.
Appeal2017-010879
Application 14/344,690
CLAIMED SUBJECT MATTER
The claims are directed to the use of a cementing composition
comprising anionically- and hydrophobically-modified cellulose ethers and a
dispersant. Sole independent claim 2 is reproduced below:
2. A method for cementing a casing in a borehole of a well
comprising injecting into a subterranean formation and setting
into a hard mass an aqueous cementing composition consisting
of:
(a) water
and
(b) a cementing composition consisting essentially of:
(i) a hydraulic cement,
(ii) an anionically- and hydrophobically-modified
cellulose ether polymer,
(iii) a dispersant selected from a melamine
formaldehyde condensate, a naphthalene formaldehyde
condensate, a branched polycarboxylate polymer, or non-
branched polycarboxylate polymer,
and optionally,
(iv) one or more additives selected from calcium
chloride, sodium chloride, gypsum, sodium silicate, sea water,
bentonite, diatomaceous earth, coal, perlite, pozzolan, hematite,
ilmenite, barite, silica flour, sand, lignins, sodium
lignosulfonates, calcium lignosulfonates,
carboxymethylhydroxyethyl-cellulose ether, gilsonite, walnut
hulls, cellophane flakes, gypsum cement, bentonite-diesel oil,
nylon fibers, or latex.
Baker
Yamashita
Arisz
REFERENCES RELIED ON BY THE EXAMINER
US 4,462,837 July 31, 1984
US 6,569,234 B2 May 27, 2003
US 2006/0182703 Al Aug. 17, 2006
2
Appeal2017-010879
Application 14/344,690
THE REJECTION
Claim 2-7, 9, and 11-13 are rejected under 35 U .S.C. § 103(a) as
unpatentable over Baker, Arisz, and Yamashita.
OPINION
The Examiner finds that Baker discloses most of the limitations of
claim 2 including a cementing composition having hydraulic cement, a
cellulose ether polymer, namely, hydroxyethylcellulose (HEC) ether, and a
dispersant. Final Act. 2. The Examiner relies on Arisz as teaching an
anionically and hydrophobically modified cellulose ether polymer, namely,
HEC and considers that it would have been obvious to a person of ordinary
skill in the art to use the HEC of Arisz in the cementing composition of
Baker "in order to 'lower the HEC use-level needed."' Final Act. 4 ( citing
Arisz ,r 58). The Examiner also considers the modification of Baker based
on Arisz to be a simple substitution of one known element for another with
predictable results. Id. The Examiner notes that only one of the claimed
dispersants is required to meet the claim and that Baker discloses one of the
claimed dispersants, namely, a naphthalene formaldehyde condensate. Id.
Nonetheless, the Examiner states that Yamashita evidences that the other
claimed dispersants are conventional in the art and are obvious variants to
the dispersants disclosed by Baker, and that it would have been obvious to
use one of the alternative dispersants of Yamashita "in order to provide
dispersibility to the cement." Id.
3
Appeal2017-010879
Application 14/344,690
Appellants argue that the Examiner's statement that it is desirable to
lower the HEC level of Baker based on the disclosure of Arisz is baseless
and unjustified because "it is not stated as or implied as an objective of
Baker or as an objective of the Applicant's present invention." Br. 7
(emphasis added). Thus, according to Appellants, the Examiner's proposed
modification is "done through [impermissible] hindsight." Br. 8. Appellants
assert that the Examiner's proposed modification is also not a simple
substitution because "there is no teaching, suggestion, or motivation in
Baker and Arisz to do so," and thus, this modification "could only be done
through hindsight." Br. 8.
The Examiner responds that Arisz discloses an anionically- and
hydrophobically-modified cellulose ether polymer, and the basis for using
such a polymer, to lower the HEC use-level needed, comes directly from
Arisz. Ans. 3. The Examiner states that since the rejection is only based on
"knowledge which was within the level of ordinary skill at the time the
claimed invention was made," and not based on information gleaned from
Appellants' Specification, the rejection was not done through impermissible
hindsight. Ans. 4. The Examiner also states that because each of the
elements set forth by the Supreme Court to establish "simple substitution" is
set forth in the rejection, hindsight was not used as a basis for the rejection.
Ans. 4--5 (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415--421
(2007)).
We find Appellants' arguments that the rejection is based on
impermissible hindsight to be unpersuasive for a number of reasons. First,
[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . [ A ]ny need or problem
4
Appeal2017-010879
Application 14/344,690
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
KSR, 550 U.S. at 419--20. Appellants do not adequately explain why
lowering the HEC use-level needed as taught by Arisz would not be
beneficial to Baker. Nor do Appellants adequately explain why the
Examiner's rationale for the proposed modification, i.e., lowering the HEC
use-level needed, is inadequate.
Second, the Examiner found that Baker teaches a known cellulose
ether (HEC) polymer used as an oilfield cement and that Arisz teaches a
known anionically- and hydrophobically-modified cellulose ether (HEC)
polymer used as an oilfield cement. Ans. 5. As the Examiner correctly
notes, Arisz's HEC polymer can be used "instead of 'commercial HEC's
available today' for viscosification of oilfield cement." Id.; see also Arisz ,r
58. We find no reason to believe a person of ordinary skill in the art would
have had any difficulty in substituting the HEC polymer of Arisz for that of
Baker, or that doing so would yield anything other than a predictable result
with respect to cementing a casing to a well. Furthermore, Appellants do not
assert that the result of the substitution would have been unpredictable or
that doing so would have been beyond the level of ordinary skill in the art.
Appellants also argue that Baker and Arisz do not teach or suggest the
claimed "dispersant in combination with an anionically- and
hydrophobically-modified cellulose ether polymer." Br. 8.
The Examiner responds that Baker discloses the claimed dispersant,
namely, naphthalene formaldehyde condensate, and Arisz teaches
anionically and hydrophobically-modified cellulose ethers. Ans. 5. The
5
Appeal2017-010879
Application 14/344,690
Examiner states that the combined teachings of Baker and Arisz establish a
prima facie case of obviousness. Ans. 6.
Appellants' argument on this point is unavailing because the
Examiner acknowledges that Baker fails to disclose an anionically- and
hydrophobically-modified cellulose ether polymer as recited and modifies
the polymer of Baker, based on the teachings of Arisz, to include an
anionically- and hydrophobically-modified cellulose ether polymer as
recited. See Ans. 5---6. Appellants do not dispute that Baker discloses the
claimed dispersant. Thus, Appellants' contention amounts to an individual
attack on the references when the rejection is based on their combination.
Appellants also contend that because Yamashita must be considered
in its entirety there is no suggestion of using Yamashita's dispersant that
does not include a "copolymer derived from an unsaturated (poly)
alkyleneoxide glycol ether and an unsaturated monocarboxylic acid
monomer." Br. 8. According to Appellants, "eliminating Yamashita's
dispersant comprising a copolymer derived from an unsaturated
(poly)alkyleneoxide glycol ether and an unsaturated monocarboxylic acid
monomer from the claimed cementing composition would change the
principle of operation of Yamashita or render the reference inoperable for its
intended purpose." Id. Appellants assert that it would not have been
obvious "to eliminate Yamashita' s required dispersant" and replace it with
the claimed dispersant. Id.
In response, the Examiner notes that "Yamashita is not modified, nor
relied upon for the claimed elements, nor for the motivation to combine."
Ans. 6. The Examiner states that Yamashita is relied upon to provide
evidence that the claimed "dispersants and anionically- and
6
Appeal2017-010879
Application 14/344,690
hydrophobically-modified cellulose ethers are known together in oilfield
cements." Id.
We are not persuaded by Appellants' argument on this point because
it does not address the Examiner's rejection of claim 2, which modifies the
cement composition of Baker based on the teachings of Arisz. See Final
Act. 3--4. Thus, the prior art reference being modified is Baker, not
Yamashita. As the Examiner correctly notes, Yamashita is relied upon in
the rejection to show that the other members of the Markush group of
dispersants are known and to provide evidence that the claimed dispersants
and anionically- and hydrophobically-modified cellulose ethers are
conventional and used together in oilfield cements. See Final Act. 4; see
also Ans. 6.
We have considered all of Appellants' arguments, but we find the
Examiner to have the better position. Thus, we affirm the Examiner's
rejection of claims 2-7, 9, and 11-13 as unpatentable over Baker, Arisz, and
Yamashita.
DECISION
The Examiner's decision to reject claims 2-7, 9, and 11-13 is
affirmed.
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
7