Ex Parte Yu et al

Patent Trials and Appeals Board

Jun 13, 2019

14907359 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/907,359 01/25/2016 Wanglin Yu
109 7590 06/17/2019
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
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.
75351-US-PCT 8139
EXAMINER
SUE-AKO, ANDREW B.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
06/17/2019 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 WANGLIN YU and HARPREET SINGH1
Appeal2018-007670
Application 14/907,359
Technology Center 3600
Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
SEAN P. O'HANLON, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action ("Final Act.") rejecting claims 6-11 in the present
application. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
The claimed invention is directed to a method for reducing accretion
of bitumen on drilling components. Title. Representative independent claim
6 reads as follows:
1 The Appellant is the Applicant, Dow Global Technologies LLC, which is
identified as the real party in interest. Appeal Brief ("App. Br.") 3.
Appeal2018-007670
Application 14/907,359
6. A method for drilling a wellbore through a formation
comprising the steps of:
a) operating a drilling assembly to drill a wellbore;
and
b) circulating an aqueous-based drilling fluid through the
wellbore as it is drilled, the aqueous-based drilling fluid
comprising an anti-accretion additive comprising:
i) from 5 to 30 parts by weight of a propoxylated
alcohol of the formula:
RO-(PO)x-H
wherein
R is a linear or branched alkyl having from 8
to 16 carbons and
x is from 1 to 10
and
ii) from 95 to 70 parts by weight of a propoxylated
and ethoxylated alcohol of the formula:
R10-(PO)y-(E'.O)z-H,
wherein
R 1 is a linear or branched alkyl having from
8 to 16 carbons,
y is from 2 to 10,
and
z is from 3 to 20,
wherein parts by weight is based on the combined
weight of the propoxylated alcohol i and a
propoxylated and ethoxylated alcohol ii and E:O and
PO denote ethylene oxide and propylene oxide
units, respectively.
App. Br. 13 (Claims App'x).
2
Appeal2018-007670
Application 14/907,359
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv); In re Jung, 637 F.3d 1356,
1365-66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010 (precedential)).
The Examiner rejects claims 6-11 under 35 U.S.C. § 103 as obvious
over Stoian et al. (US 2011/0281777 Al, pub. Nov. 17, 2011 ("Stoian")) in
view of Hoffarth (US 5,705,476, iss. Jan. 6, 1998). Final Act. 3. The
Examiner finds that Stoian discloses a method for drilling a wellbore
substantially as claimed, including a propoxylated and ethoxylated alcohol
as recited in limitation "ii)" of claim 6. Final Act. 3 ( citing Stoian ,i 41,
Table 1 ). The Examiner states that Stoian "does not provide further detail"
which would allow determination of whether ethoxylated and propoxylated
alcohols that limit accretion via water wetting have the claimed degrees of
propoxylation (y) and ethoxylation (z). Final Act. 3.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to derive, by routine experimentation, the optimal
or workable ranges for the propoxylated and ethoxylated alcohol, wherein
"y" is from 2 to 10, and "z" is from 3 to 20. Final Act. 4. In that regard, the
Examiner further finds that Hoffarth discloses
non-ionic ethoxylated propoxylated alcohol surfactants with
water wetting, detergent characteristics ... includ[ ing] those
with these [ claimed] degrees of propoxylation and ethoxylation,
[Hoffarth] describing ethoxylated propoxylated alcohol wetting
agents with y = 1-10 and z = 1-10 ( abstract, "(le)") such as "J)
3
Appeal2018-007670
Application 14/907,359
2-ethylhexanol+8 P0+6 EO" (i.e., y = 8; z = 6) (Col. 4, line
52).
Final Act. 4 ( emphasis omitted).
As to limitation "i)" of claim 6, the Examiner finds that Stoian
discloses "non-ionic surfactants that may be useful in a drilling fluid" to
"limit tar sand accretion to metal surfaces" via its "water wetting, detergent
characteristics," but that Stoian again does not specify if surfactants "include
known/commercially available propoxylated alcohols." Final Act. 4.
However, the Examiner further finds that Hoffarth discloses "a
'low-foaming' 'wetting' agent" having propoxylated alcohol and
propoxylated and ethoxylated alcohol, and further discloses the proportions
thereof, and x, y, and z values within the ranges recited in the claims,
which provide "water-dispersible wetting agents distinguished by their
low-foaming characteristics." Final Act. 4-5. Indeed, Hoffarth discloses a
low-foaming wetting agent consisting of 30 to 90% by weight, substance of
the formula "(le)," and 70 to 10% by weight, substance of formula "(II),"
these formulas corresponding to the recited formulas R10-(PO)y-(EO)z-H,
and RO-(PO)x-H of the claims, respectively. Compare Hoffarth Abstract,
with appealed claim 6.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to have used such known non-ionic surfactants
having the claimed mixture of propoxylated alcohol, and propoxylated and
ethoxylated alcohol "with 'water wetting' and 'low foaming' characteristics
(as in Stoian and Hoffarth)" during drilling of well bores in order to "'limit
tar sand accretion to metal surfaces' (as in Stoian)," and to realize
"'advantages and simplifications when preparing the wetting agents' by
4
Appeal2018-007670
Application 14/907,359
including 'water-dispersible wetting agents distinguished by their
low-foaming' with pure propoxylates (as in Hoffarth)." Final Act. 5.
The Examiner further explains that
the modification is obvious as no more than the use of familiar
elements (known low-foaming wetting agents) according to
known techniques (known drilling with non-ionic surfactants)
in a manner that achieves predictable results (known reduction
of tar/bitumen accretion).
Final Act. 6.
We agree with the Examiner's conclusion and address the Appellant's
arguments below.
The Appellant argues that "Hoffarth discloses low-foaming wetting
agents ... for aqueous liquids used in textile processes, in particular to
improve dying processes, formulating crop protection agents, and the like,"
but fails to teach or suggest use as an anti-accretion additive and/or "in a
drilling fluid for the use in a wellbore of an oil well." App. Br. 7; see also
id. at 9 (quoting Hoffarth, col. 4, 11. 10-24). This argument is unpersuasive
because although Hoffarth provides example uses for the disclosed agent
(such as in dying and crop protection), Hoffarth is clearly not limited
thereto, and broadly discloses a low-foaming wetting agent without limiting
it to specific uses. See, e.g., Hoffarth, Title; col. 1, 11. 10-16, 32-41, 45-46;
col. 1, 1. 45-col. 2, 1. 19; claim 1.
The Appellant also argues that Stoian discloses nonionic surfactants
with capped alcohol ethoxylate, and does not disclose
(i) the structure of the uncapped-propoxylated and ethoxylated
alcohol, specifically a (PO) block, (EO) block copolymer with
the (PO) block reacted on to the alcohol, (ii) that it should be
mixed with a propoxylated alcohol, (iii) the structure of the
5
Appeal2018-007670
Application 14/907,359
propoxylated alcohol, or (iv) the weight ratio of these two
alcohols in the composition.
App. Br. 8.
This argument is unpersuasive for various reasons. First, Stoian
actually discloses that "[ s Jome useful nonionic surfactants include capped or
branched alcohol ethoxylate, such as for example ethoxylated alcohols,
ethoxylated propoxylated alcohols, etc." Stoian ,i 11; see also id. ,i 16.
Thus, as the Examiner points out (Ans. 5), Stoian also discloses "branched"
alcohol ethoxylate which is encompassed by the claimed non-ionic
surfactants, for example, claim 6 reciting "linear or branched alkyl." This
portion of Stoian' s disclosure is overlooked by the Appellant. Second, as
the Examiner also points out, the specific surfactants "are provided by
Hoffarth, not Stoian. Therefore, this difference between 'capped'
surfactants and the claimed surfactants appears moot, and the 'capped'
evidence does not indicate nonobviousness." Ans. 5. Third, as noted above,
Hoffarth discloses an agent having a chemical composition satisfying the
limitations of claim 6.
The Appellant argues that it is not possible to apply Hoffarth with
"Stoian' s broadly disclosed capped or branched alcohol ethoxylate and
capped-ethoxylated propoxylated alcohols to arrive at Applicant's anti
accretion composition." App. Br. 10. However, this assertion is not
substantiated by any reasoning, and the evidence of record indicates the
contrary, considering Hoffarth discloses an agent with both propoxylated
alcohol, and ethoxylated and propoxylated alcohol together. As the
Examiner notes, the Appellant has not established any "technical
incompatibility." Ans. 5.
6
Appeal2018-007670
Application 14/907,359
The Appellant argues that there is no teaching in Stoian to alter its
composition (App. Br. 10), and as to Hoffarth, argues that
There is no hint of suggestion or teaching that either ( 1)
his low-foaming wetting agent would act as anti-accretion
agents and/or (2) that his low-foaming wetting agent would
have any usefulness in the drilling of a well bore. Applicant
respectfully assets that there is NO reason one skilled in the art
would think to combine Hoffarth's low-foaming wetting agent
with Stoian' s drilling method to arrive at Applicant's present
invention.
App. Br. 9.
However, although the Appellant appears to imply that an explicit
teaching or suggestion in the art for the suggested combination or
modification is required, such explicit teaching is not required. KSR Int 'l v.
Teleflex, Inc., 550 U.S. 398, 418-19 (2007) ("the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim" and "obviousness analysis cannot be confined ... by overemphasis
on the importance of published articles and the explicit content of issued
patents."). Indeed, what is required is "some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
Id. at 418 ( quotation marks and citation omitted). The Examiner has
provided such reasoning as set forth above, i.e., to "'limit tar sand accretion
to metal surfaces' (as in Stoian)," and to realize "'advantages and
simplifications when preparing the wetting agents' by including 'water-
dispersible wetting agents distinguished by their low-foaming' with pure
propoxylates (as in Hoffarth)" (Final Act. 5), and further, that
the modification is obvious as no more than the use of familiar
elements (known low-foaming wetting agents) according to
known techniques (known drilling with non-ionic surfactants)
7
Appeal2018-007670
Application 14/907,359
in a manner that achieves predictable results (known reduction
of tar/bitumen accretion).
Final Act. 6; see also KSR, 550 U.S. at 415-16. ("The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.")).
As the Examiner notes, the Appellant does not address the rationales
provided by the Examiner as set forth in the Final Office Action to support
the obviousness rejection. Ans. 4-5 (quoting Final Act. 5, 6).
The Appellant further argues that there is no disclosure in the art that
"making such a change [to Stoian] would solve the problem of providing an
improved anti-accretion additive with good biodegradability and low aquatic
toxicity" (App. Br. 10), and that these benefits are demonstrated by the
examples set forth in the Specification (App. Br. 8-9). However, we agree
with the Examiner that "Stoian in view of Hoffarth provides all claimed
elements," and that the "Appellant's data merely demonstrates that a mixture
of two nonionic surfactants prevents more oil from sticking than just one
nonionic surfactant. This effect is well-known in the art, as with other types
of detergents/soaps." Ans. 6 ( emphasis omitted). As to the asserted
biodegradability and low toxicity, we also agree with the Examiner that
because "Hoffarth provides the same composition as claimed, the
surfactants, if subjected to testing, would act in the same manner as
claimed." Ans. 6. In that regard, we also agree with the Examiner that "the
fact that Appellant has recognized another advantage which would flow
naturally from following the suggestion of the Prior Art cannot be the basis
for patentability when the differences would otherwise be obvious." Ans. 6.
8
Appeal2018-007670
Application 14/907,359
The Appellant further argues that there is no reason to combine
Hoffarth with Stoian in the manner suggested because Hoffarth does not
suggest which of the three disclosed alcohols, Ia, lb, or le, "is a better
low-foaming wetting agent," and "would be the preferred anti-accretion
agent for an aqueous based drilling fluid." App. Br. 9-10. This argument is
also unpersuasive for various reasons. First, the fact that Hoffarth does not
disclose which of the alcohols are better does not detract from the fact that
the propoxylated and ethoxylated alcohol claimed is explicitly disclosed in
Hoffarth. Second, as noted by the Examiner, "there is no claimed degree of
'anti-accretion."' Ans. 6. As such, it is not material that one of the three
alcohols of Hoffarth may be superior to the others.
Finally, the Appellant argues that in contrast to claim 6, which
requires that
the propoxylated alcohol is present in an amount of "5 to 30
parts by weight" and that the propoxylated and ethoxylated
alcohol is present in an amount of "from 95 to 70 parts by
weight"[,] Hoffarth requires that the propoxylated alcohol is
present in an amount of "67 to 33 parts by weight" and that the
propoxylated and ethoxylated alcohol is present in an amount of
"from 3 0 to 60 parts by weight".
App. Br. 10.
However, it is not apparent where these weighed values are disclosed
in Hoffarth. To the extent that the Appellant may be referring to claim 1 of
Hoffarth, which claims 30 to 67% propoxylated and ethoxylated alcohol,
and 67 to 33% propoxylated alcohol, the Appellant overlooks the broader
scope of Hoffarth's disclosure. Hoffarth clearly discloses 30 to 90%
propoxylated and ethoxylated alcohol, and 70 to 10% propoxylated alcohol.
Hoffarth Abstr.; col. 1, 1. 45-col. 2, 1. 19. Thus, as the Examiner explains,
9
Appeal2018-007670
Application 14/907,359
Hoffarth discloses the weight proportions in the recited range of the claims.
Ans. 4.
Therefore, in view of the above considerations, we are not persuaded
of Examiner error in rejecting claim 6. The Examiner relies on similar
reasoning in rejecting independent claims 7 and 8. Final Act. 6-7. These
claims fall for the same reasons discussed above relative to claim 6.
The Appellant does not submit any separate arguments directed to
multi-dependent claims 9-11. Accordingly, these dependent claims fall with
independent claims 6-8.
CONCLUSIONS
The Examiner's rejection of claims 6-11 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
10