Ex Parte XU et al

Patent Trial and Appeal Board

Jul 31, 2018

14228152 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/228,152 03/27/2014 Liang XU
115745 7590 08/02/2018
HALLIBURTON/POLSINELLI
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
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.
00280US-518349 2223
EXAMINER
RUNYAN, SILVANAC
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
salaniz@polsinelli.com
aweaver@polsinelli.com
patentgroup@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIANG XU, QIANG FU, and JAY ANT RANE
Appeal2017-008005
Application 14/228, 152
Technology Center 3600
Before: STEFAN STAICOVICI, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-008005
Application 14/228, 152
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision, as set forth in the Final Office Action dated July 20,
2016 ("Final Act."), rejecting claims 1--4 and 14--18. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a method for determining surfactant
concentration in an aqueous solution. Specification (dated March 27, 2014)
("Spec."), at ,r 1. Claim 1, the only independent claim on appeal, is
reproduced below with disputed limitations italicized for emphasis:
1. A method for determining a first concentration of a first
component in an aqueous solution, wherein the first component
alters the surface tension of the aqueous solution, the method
compnsmg:
identifying a second concentration of at least one second
component in the aqueous solution, wherein the at least one
second component alters the surface tension of the aqueous
solution; and
determining the first concentration of the first component
in the aqueous solution by comparing
(i) a plurality of dynamic surface tension measurements of
each of a plurality of aqueous test solutions, wherein each of the
plurality of aqueous test solutions comprises: the first component
at a pre-determined concentration; and the at least one second
component at the second concentration; with
Halliburton Energy Services, Inc. ("Appellant") is the applicant under
37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Brief,
dated January 6, 2017 ("Appeal Br."), at 2.
2 Claims 5-13, 19, and 20 are withdrawn. Appeal Br. 13-19 (Claim
App.).
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Application 14/228, 152
(ii) at least one dynamic surface tension measurement of
the aqueous solution having the second component at the second
concentration, wherein each of the plurality of aqueous test
solutions has a different pre-determined concentration of the first
component,
wherein the aqueous solution is obtained from an oil well.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Kiel
Grant
Nighswander
us 3,722,595
WO 00/00815
GB2410550A
REJECTIONS
The Examiner made the following rejections:
Mar. 27, 1973
Jan.6,2000
Aug.3,2005
1. Claims 1-3 and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Grant and Nighswander.
2. Claims 4 and 15-18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Grant, Nighswander, and Kiel.
Appellant seeks our review of these rejections.
OPINION
The Rejection of Claim 1
The Examiner finds that Grant discloses the aqueous-solution testing
method disclosed in claim 1 except for the final limitation reciting "wherein
the aqueous solution is obtained from an oil well." Final Act. 3-5. To cure
this deficiency of Grant, the Examiner relies on Nighswander as teaching a
method that "includes the steps of acquiring a fluid sample at ... the
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Application 14/228, 152
wellhead or downhole." Final Act. 5. The Examiner determines one of
ordinary skill in the art would have known that "Grant was available for use
in determining the surfactant concentration of the aqueous samples obtained
from the oil wells described in Nighswander for the purpose of obtaining
fluid samples from oil wells and measuring the chemical properties thereof,
in order to get valuable information for reservoir development, as taught in
Nighswander." Answer, dated March 6, 2017 ("Ans."), 14.
Appellant does not dispute the Examiner's finding that Grant
discloses the aqueous-solution testing method described in claim 1, save the
final limitation requiring the aqueous solution be obtained from an oil well.
Rather, Appellant asserts that the rejection is erroneous for several reasons.
First, Appellant argues it would not have been obvious to modify
Grant in view of Nighswander because one of ordinary skill in the art
"would not look to determining surfactant concentrations in the complex
produced waters of an oil well [of Nighswander] in view of a clean
lithography process as in Grant." Appeal Br. 7; see Reply Brief, dated May
4, 2017 ("Reply Br."), at 2. Appellant argues that "the processes and
method developed in the clean and simple environment of Grant in the
lithography context, is not simply transitionable to the oil well context of
Nighswander," and "there is no sufficient rationale for employing the
surface tension techniques in Grant for determining surfactant level in the
complex environment of Nighswander or for the specific purpose of
determining the concentration of a component in produced waters." Appeal
Br. 6. According to Appellant, the "mere fact that Grant on the one hand
mentions surface tension, and Nigh[]swander mentions fluids from an oil
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well on the other is insufficient for modifying either reference to arrive at the
instant claims." Id. at 7.
In response to Appellant's argument, the Examiner correctly explains
that "Appellant's position that Grant is only related to [] lithography is not
accurate." Ans. 13. We agree with the Examiner that "Grant clearly and
broadly discloses that chemical solutions requiring controlled surface
tensions are used in a wide range of industries, such as the petroleum
industry." Id. ( citing Grant 1: 16-18 ("Chemical solutions requiring
controlled surface tensions are used in a wide range of industries, such as the
semiconductor, raw chemical, pulp and paper, pharmaceutical, ink jet
printer, petroleum, and medical industries.")). We also agree with the
Examiner that "Grant expressly states that the same methodology used to
determine surfactant concentration can be used to monitor the quality of any
chemical whose surface tension is a function of composition, particularly
chemicals containing surfactants." Id. ( citing Grant 16: 12-17 ("[T]he same
methodology can be used to prepare, or monitor the quality of, any chemical
whose surface tension is a function of composition, particularly but not
exclusively chemicals containing surfactants.")). As Appellant's
Specification explains, tools for monitoring surfactants in produced waters
of oil wells are known in the art. Ans. 14 ( citing Spec. 2 :2-7).
Appellant's argument does not persuasively show error in the
Examiner's findings or reasoning. In light of the broad disclosure that
Grant's surface tension testing method is applicable to many fields,
including the petroleum industry, Appellant's conclusory and unsupported
assertion that Grant teachings are not "transitionable to the oil well context
of Nighswander" (Appeal Br. 6) is unpersuasive. In re De Blauwe, 736 F.2d
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699, 705 (Fed. Cir. 1984) (lawyer arguments and conclusory statements that
are unsupported by factual evidence are entitled to little probative value).
Here, a person of ordinary skill in the art would have readily recognized that
Grant's surfactant testing method would improve similar testing methods in
petroleum applications such as oil wells. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) ("[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill."). As the Examiner
explains, one of ordinary skill in the art would have known that Grant's
testing methodology would determine "the surfactant concentration of the
aqueous samples obtained from the oil wells described in Nighswander for
the purpose of obtaining fluid samples from oil wells and measuring the
chemical properties thereof, in order to get valuable information for
reservoir development, as taught in Nighswander." Ans. 14 ( citing
Nighswander 7, last partial paragraph, second sentence). Appellant does not
persuasively explain why using Grant's testing method with aqueous
solutions obtained from oil wells would be beyond the skilled artisan's
abilities. See Appeal Br. 8-9; Reply Br 3.
Second, Appellant argues Nighswander does not teach or suggest "the
aqueous solution is obtained from an oil well," as recited in claim 1 because
"Nighswander fails to disclose an aqueous solution." Appeal Br. 11. We
agree with the Examiner that Nighswander discloses an aqueous solution.
Ans. 15. "Aqueous" is defined as "made from, with, or by water."
Merriam-Webster.com, https://www.merriam-webster.com/ dictionary
/aqueous (last visited June 25, 2018)). Nighswander explicitly discloses that
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its samples may be composed, at least in part, of water. Nighswander 9,
para. 3 ("water fraction in the bottle"). Appellant does not identify error by
the Examiner.
Third, Appellant's argument that "the references are non-analogous
art" (Appeal Br. 7-8) is not clearly articulated, but we understand that
Appellant contends that Grant's surface-tension testing method is not
applicable to determining components in aqueous solutions from oil wells
and Nighswander is not directed to determining the surfactant levels of water
from an oil well, but merely to obtaining clean samples from an oil well for
testing. Id. at 4.
To qualify as prior art for an obviousness analysis, a reference must
qualify as "analogous art," i.e., it must satisfy one of the following
conditions: (1) the reference must be from the same field of [the inventor's]
endeavor; or (2) the reference must be reasonably pertinent to the particular
problem with which the inventor is involved. K-TEC, Inc. v. Vita-Mix
Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (citing Innovention Toys, LLC
v. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)). Here, the
Specification explains that the inventor is broadly concerned with testing
methods for determining various components in aqueous solutions, and,
more specifically, testing methods for determining residual surfactant
concentrations in water from oil or gas wells. Spec. ,r 1.
We discern no error in the Examiner's finding, and Appellant does not
dispute, that Grant discloses the same testing method disclosed in claim 1.
We also discern no error in the Examiner's finding that Nighswander is
reasonably pertinent to testing aqueous solutions from oil wells. Final Act.
15 ( citing Nighswander, Abstract ("Page 1 Summary lines 2-3 ") ("analyzing
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physical and chemical properties of the fluid sample"). "Familiar items may
have obvious uses beyond their primary purposes." KSR, 550 U.S. at 420.
The decision in In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994), is instructive.
In Paulsen, the Federal Circuit found that an inventor considering a latch
mechanism for portable computers would naturally look to references
employing other "housings, hinges, latches, springs, etc.," which came from
areas such as "a desktop telephone directory, a piano lid, a kitchen cabinet, a
washing machine cabinet, a wooden furniture cabinet, or a two-part housing
for storing audio cassettes." Id. at 1481-82. Here, the problems encountered
by the inventors-the need for testing aqueous solutions for various
components-are not unique to oil wells. A skilled artisan considering
component testing in oil wells would naturally look to references that
address component testing in other aqueous solutions. Appellant does not
persuasively identify Examiner error.
For the reasons above, the rejection of claim 1 is sustained.
The Rejections of Claims 2-4 and 14-18
Appellant makes no separate arguments as to the rejections of claims
2--4 and 14--18, which depend from independent claim 1. With respect to
claims 2, 3, and 14, Appellant asserts that "[d]ependent claims 2-3 and 14
are allowable at least by virtue of their dependency on claim 1, and for
additional recited subject matter." Appeal Br. 11. With respect to claims 4
and 15-18, Appellant asserts that "Kiel does not cure the deficiencies of
Grant and Nighswander, alone or in any combination, with respect to claim
1," and "requests the rejection of claims 4 and 15-18, which depend from
allowable independent claim 1, be reconsidered and withdrawn for the
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substantially the same reasons as discussed with respect to claim 1." Id. at
12.
For the reasons discussed above, claim 1 is not patentable over the
cited prior art. Although Appellant references "additional recited subject
matter" (Appeal Br. 11 ), because Appellant does not specifically identify
any patentable features of these claims over claim 1, we sustain the
rejections of claims 2--4 and 14--18. See also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (37 C.F.R. § 41.37 requires "more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
DECISION
The Examiner's rejections of claims 1--4 and 14--18 are 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
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