Ex Parte Zupanick

Board of Patent Appeals and Interferences

Mar 26, 2009

10227057 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH A. ZUPANICK
____________________

Appeal 2008-1711
Application 10/227,057
Technology Center 3600
____________________

Decided:1 March 27, 2009
____________________

Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY and
MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, 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 (2008), 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 the Notification Date (electronic
delivery).

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Application 10/227,057

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STATEMENT OF THE CASE 1
The Appellant’s claims being twice rejected, the Appellant appeals 2
under 35 U.S.C. § 134 (2002) from the rejection of claims 1-24. We have 3
jurisdiction under 35 U.S.C § 6(b) (2002). 4
Claim 1 is typical of the claims on appeal: 5
6
1. A method for accessing a 7
subterranean zone from the surface, comprising: 8
forming a first entry well bore from the 9
surface; 10
forming one or more slanted well bores from 11
the first entry well bore to the subterranean zone; 12
forming a second entry well bore from the 13
surface, the second entry well bore located on the 14
same drilling pad as the first entry well bore at the 15
surface; 16
forming one or more slanted well bores from 17
the second entry well bore to the subterranean 18
zone; 19
forming a third entry well bore from the 20
surface, the third entry well bore located on the 21
same drilling pad as the first and second entry well 22
bores at the surface; 23
forming one or more slanted well bores from 24
the third entry well bore to the subterranean zone; 25
and 26
forming a substantially horizontal drainage 27
pattern from each of the slanted well bores into the 28
subterranean zone. 29
30
The Examiner rejects: 31
claims 1, 2, 4-6, 10-13, 15, 16, 20 and 21 under 35 32
U.S.C. § 103(a) (2002) as being unpatentable over Bell (US 33
4,773,488, issued Sep. 27, 1988), Siebold (US 4,603,592, 34
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issued Aug. 5, 1986), Murray (US 5,785,133, issued 28 Jul. 1
1998) and Wang Weiping, Trend of Drilling Technology 2
Abroad, PETROLEUM DRILLING & PROD. TECH., vol. 17, issue 6 3
at 49 (1995) [“Wang”]; 4
claims 1, 2, 4-6, 10-13, 15, 16, 20 and 21 under § 103(a) 5
as being unpatentable over Marshall (US Re. 32,623, issued 6
Mar. 15, 1988) and Murray; 7
claims 1-24 under § 103(a) as being obvious over any 8
one of fifteen (15) U.S. patents and patent applications naming 9
Appellant Joseph A. Zupanick as a co-inventor, each in view of 10
Siebold; and 11
claims 1-24 under the judicially created doctrine of 12
obviousness-type double patenting as being unpatentable over 13
the claims of Zupanick (US 6,986,388 B2, issued Jan. 17, 2006) 14
in view of Bell and Siebold. 15
The Appellant does not present any argument directed against the 16
rejections of claims 1-24 under § 103(a) as being unpatentable over the 17
fifteen U.S. patents and patent applications naming the Appellant, each in 18
view of Siebold. The Appellant also does not present any argument directed 19
against the obviousness-type double patenting rejection of claims 1-24. We 20
summarily affirm both grounds of rejection. 21
In addition, we sustain the rejection of claims 1, 2, 4-6, 10-13, 15, 16, 22
20 and 21 under § 103(a) as being unpatentable over Bell, Siebold, Murray 23
and Wang. 24
We do not sustain the rejection of claims 1, 2, 4-6, 10-13, 15, 16, 20 25
and 21 under § 103(a) as being unpatentable over Marshall and Murray. 26
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ISSUES 1
The Appellant presents no arguments suggesting that any of claims 2, 2
4-6, 10-13, 15, 16, 20 and 21 separately might be patentable over Bell, 3
Siebold, Murray and Wang if the Appellant fails to establish that the 4
Examiner erred in rejecting claim 1 under § 103(a) over those four 5
references. Claim 1 is representative of this group of claims. 37 C.F.R. 6
§ 41.37(c)(1)(vii) (2008). 7
The Appellant does not appear to contest (see App. Br. 2-3) the 8
Examiner’s conclusion (see Ans. 5) that Bell and Siebold would have 9
suggested a method for accessing a subterranean zone from the surface 10
comprising forming three entry well bores located on the same drilling pad 11
and forming one or more slanted well bores from each of the three entry well 12
bores to the subterranean zone. Instead, the Appellant contends that the 13
Examiner has not provided evidence of a teaching, suggestion or motivation 14
sufficient to support the conclusion that Bell, Siebold, Murray and Wang 15
would have suggested forming a substantially horizontal drainage pattern 16
from each of the slanted well bores into the subterranean zone. (App. Br. 3). 17
The Appellant further contends that Bell teaches away from combination 18
with Murray (Reply Br. 2) and that modifying Bell’s well bores to add 19
horizontal drainage patterns as suggested by Murray would have changed 20
the principle of operation of Bell (App. Br. 5). 21
Marshall discloses an offshore drilling apparatus including a generally 22
horizontal work platform supported above a water surface and a plurality of 23
curved well conductors extending from the platform to the floor of the body 24
of water. (Marshall, col. 2, ll. 6-9 and 62-64; col. 3, ll. 3-5). The 25
Appellant’s sole contention with respect to the rejection of claims 1, 2, 4-6, 26
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10-13, 15, 16, 20 and 21 under § 103(a) as being unpatentable over Marshall 1
and Murray is that Marshall teaches away from combination with Murray. 2
(App. Br. 5; Reply Br. 2-3). 3
Two issues before us are: 4
Has the Appellant shown that the Examiner failed to 5
articulate reasoning with some rational underpinning sufficient 6
to support the conclusion that Bell, Murray, Siebold and Wang 7
would have suggested forming substantially horizontal drainage 8
patterns from slanted well bores formed from entry well bores 9
drilled from a single drilling location? 10
Has the Appellant shown that the Examiner failed to 11
articulate reasoning with some rational underpinning sufficient 12
to support the conclusion that Marshall and Murray would have 13
suggested forming substantially horizontal drainage patterns 14
from slanted well bores formed from entry well bores drilled 15
through curved conduits from a work platform of an offshore 16
drilling apparatus such as Marshall’s? 17
18
FINDINGS OF FACT 19
The record supports the following findings of fact (“FF”) by a 20
preponderance of the evidence. 21
1. Bell teaches that, in accordance with Bell’s invention: 22
23
[A] plurality of wellbores are deliberately and 24
systemically drilled so as to pass through one or 25
more subsurface mineral producing geologic 26
formations at an angle from vertical. Thus, 27
pursuant to this invention, drilling a wellbore so as 28
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to pass through a formation essentially at right 1
angles is deliberately avoided and drilling a 2
deviated wellbore essentially horizontally in that 3
formation is also deliberately avoided. The 4
wellbores of this invention are drilled at an angle 5
from vertical but not horizontal so that the 6
wellbores pass through the formation at varying 7
angles all of which are substantially different from 8
vertical and horizontal. Wells drilled at these 9
varying angles cumulatively provide for 10
substantially greater wellbore exposure in the 11
producing formation or formations than would be 12
obtained by using a substantially larger number of 13
essentially vertical wellbores. These wells can 14
also reach a plurality of spaced apart formations 15
which would not be achieved with drainhole 16
wellbores that are confined to a single producing 17
formation. 18
19
(Bell, col. 1, ll. 34-53 (emphasis added)). 20
2. Bell further discloses that developing a field by means of 21
slanted well bores radiating from a central drill site achieves substantial 22
exposure of the well bores in the interior of the subsurface mineral 23
producing formation without using the horizontal drainhole concept. (Bell, 24
col. 2, ll. 56-60). 25
3. Wang discloses that advantages of drilling wells with horizontal 26
branches include that one well covers multiple oil formations, thus 27
increasing single well output; that the use of horizontal branches saves space 28
at the well site; and that the use of horizontal branches increases the 29
exposure of the oil formation, enhancing the recovery rate. (Wang 49). 30
4. Murray discloses that those of ordinary skill in the art of 31
hydrocarbon recovery operations had long recognized the benefits of drilling 32
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multiple laterals off a single vertical or inclined borehole extending to the 1
surface. (Murray, col. 1, ll. 15-20). Murray further discloses that multiple 2
horizontally extending laterals off a horizontal portion of a bore hole allow 3
for more efficient recovery of hydrocarbons from a zone. (Murray, col. 1, ll. 4
26-29). 5
5. Fig. 3 of Murray depicts an inclined borehole 34 with a casing 6
22 which extends through a thin production zone 10 into a relatively thick 7
production zone 32. Murray discloses initially recovering hydrocarbons 8
from zone 32 by perforating the casing 22 within the zone 32. Murray 9
discloses subsequently drilling a lateral through the casing 22 from the 10
inclined borehole 34 into the relatively thin zone 10 to recover hydrocarbons 11
from the thin production zone 10 after the relatively thick production zone 12
32 is substantially depleted. (Murray, col. 6, ll. 45-55). 13
6. The conductors of Marshall’s offshore drilling apparatus curve 14
downwardly and outwardly in such a manner as to provide a smooth bore 15
throughout substantially the entire extent of each conductor. (Marshall, col. 16
3, ll. 9-13 and 20-25). The conductors provide support for well casings and 17
tubings which may be drilled into communication with a subterranean 18
production zone. (Marshall, col. 3, ll. 50-53). 19
7. Since Marshall’s conductors are vertical at their top end and 20
have smooth bores throughout substantially their entire extent, conventional 21
vertical drilling techniques may be used. (Marshall, col. 3, ll. 20-30). 22
Specialized drilling equipment such as slant rigs are not required, resulting 23
in a saving of deck space on the work platform and avoiding the need to 24
design the work platform to accommodate such equipment. (Marshall, col. 25
4, ll. 7-13). 26
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PRINCIPLES OF LAW 1
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if 2
“the differences between the subject matter sought to be patented and the 3
prior art are such that the subject matter as a whole would have been obvious 4
at the time the invention was made to a person having ordinary skill in the 5
art to which said subject matter pertains.” In Graham v. John Deere Co., 6
383 U.S. 1 (1966), the Supreme Court set out factors to be considered in 7
determining whether claimed subject matter would have been obvious: 8
9
Under § 103, the scope and content of the prior art 10
are to be determined; differences between the prior 11
art and the claims at issue are to be ascertained; 12
and the level of ordinary skill in the pertinent art 13
resolved. Against this background, the 14
obviousness or nonobviousness of the subject 15
matter is determined. 16
17
Id., 383 U.S. at 17. 18
The Appellant does not rely on any objective evidence of patentability 19
in this appeal. (See App. Br. 13). Therefore, the Appellant’s burden in this 20
appeal is to show that the Examiner has identified insufficient evidence to 21
support a conclusion of prima facie obviousness. In re Kahn, 441 F.3d 977, 22
985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 23
1998)). For example, “if a technique has been used to improve one device, 24
and a person of ordinary skill in the art would recognize that it would 25
improve similar devices in the same way, using the technique is obvious 26
unless its actual application is beyond his or her skill.” KSR Int’l Co. v. 27
Teleflex, Inc., 550 U.S. ___, ___, 127 S. Ct. 1727, 1740 (2007). The 28
Examiner “need not seek out precise teachings directed to the specific 29
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subject matter of the challenged claim” to support the conclusion of 1
obviousness, for the Examiner’s reasoning “can take account of the 2
inferences and creative steps that a person of ordinary skill in the art would 3
employ.” KSR Int’l, 550 U.S. at ___, 127 S. Ct. at 1741. That said, 4
“rejections on obviousness grounds cannot be sustained by mere conclusory 5
statements; instead, there must be some articulated reasoning with some 6
rational underpinning to support the legal conclusion of obviousness.” 7
Kahn, 441 F.3d at 988. 8
As a general rule, a reference which “teaches away” from the subject 9
matter of a claim does not support a prima facie case that the subject matter 10
would have been obvious. A reference teaches away from the subject matter 11
of a claim only if “a person of ordinary skill, upon reading the reference, 12
would be discouraged from following the path set out in the reference, or 13
would be led in a direction divergent from the path that was taken by the 14
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). 15
16
ANALYSIS 17
As noted earlier, the Appellant does not appear to contest the 18
Examiner’s conclusion that Bell and Siebold would have suggested a 19
method for accessing a subterranean zone from the surface comprising 20
forming three entry well bores located on the same drilling pad and forming 21
one or more slanted well bores from each of the three entry well bores to the 22
subterranean zone. (See Ans. 12). Murray would have suggested extracting 23
hydrocarbons from relatively thick production zones merely by perforating 24
the slanted well bore in the production zone. (FF 5). Extracting 25
hydrocarbons from relatively thick production zones in this manner would 26
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have been consistent with Bell’s suggestion to deliberately avoid drilling 1
essentially horizontal deviated well bores from slanted well bores, at least in 2
relatively thick production zones. (See FF 1). 3
One of ordinary skill in the art would have recognized that the use of 4
horizontal drainage patterns could allow for more efficient recovery of 5
hydrocarbons from a zone. (See FF 3 and 4). Since the combined teachings 6
of Bell and Siebold would have suggested slanted well bores similar to 7
Murray’s inclined bore holes, Murray would have complemented Bell’s 8
teachings by suggesting that Bell’s slanted well bores might be improved by 9
using horizontal drainage patterns to extract hydrocarbons from thin 10
production zones once the relatively thick production zones were depleted. 11
(See FF 5; cf. Ans. 14 (pointing out that drilling a horizontal drainage pattern 12
from an inclined well bore after the inclined well bore itself ceases to 13
produce would not prevent the inclined well bore from operating in 14
accordance with Bell’s teachings)). As the Examiner correctly reasons (see 15
Ans. 5 and 12), Murray and Wang would have suggested that the use of 16
horizontal drainage patterns to extract hydrocarbons from thin production 17
zones once the relatively thick production zones were depleted would secure 18
more efficient production of hydrocarbons. The well bores improved by 19
forming horizontal drainage patterns would have met representative claim 1, 20
albeit after the depletion of the relatively thick zones rather than when first 21
drilled. 22
Although the Appellant contends that improving the slanted well 23
bores taught by Bell and Siebold as suggested by Murray would require 24
substantial reconstruction and redesign of the well bores (see App. Br. 5), 25
the Appellant does not appear to contend that the improvement would have 26
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required skill beyond the level of ordinary skill in the art. Neither does the 1
Appellant appear to contend that improving Bell’s slanted wellbores by 2
forming substantially horizontal drainage patterns from the wellbores into 3
thin subterranean zones after the depletion of relatively thicker zones would 4
have produced results which one of ordinary skill in the art could not have 5
predicted. 6
Bell would not have taught away from forming horizontal drainage 7
patterns from slanted well bores. Bell teaches deliberately avoiding drilling 8
essentially horizontal deviated bores from Bell’s slanted well bores. (FF 1). 9
Bell further teaches that slanted well bores may achieve substantial exposure 10
within a subterranean zone without a horizontal drainage pattern. (FF 2). 11
Bell does not teach that forming an essentially horizontal deviated bore will 12
render a slanted well bore inoperable for extracting hydrocarbons from a 13
production zone. Bell’s teachings may be fairly characterized as suggesting 14
that a method which forms an essentially horizontal deviated bore from one 15
of Bell’s slanted well bores is somewhat inferior to a method which does 16
not. In view of the recognition in the art that a horizontal drainage pattern 17
might improve the efficiency of hydrocarbon recovery (see FF 3 and 4), such 18
a teaching would not have discouraged one of ordinary skill in the art from 19
believing that the use of horizontal drainage patterns likely would produce 20
desirable efficiency in recovering hydrocarbons particularly in thin 21
production zones. 22
The Appellant argues that Bell teaches away from forming 23
substantially horizontal drainage patterns from slanted wellbores because 24
“using a horizontal pattern as suggested by the Examiner would limit the 25
number of formations that the wellbores disclosed by Bell may reach.” 26
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(Reply Br. 2 (italics in original)). Bell states that slanted well bores can 1
reach a plurality of spaced apart formations which would not be achieved 2
with drainhole wellbores that are confined to a single producing formation. 3
(FF 1). This statement also may be fairly characterized as suggesting that a 4
method which forms an essentially horizontal drainage pattern from one of 5
Bell’s slanted well bores is somewhat inferior to a method which does not. 6
Particularly in view of Wang’s teaching that horizontal drainage patterns 7
themselves may enable one of ordinary skill in the art to cover more than 8
one production zone with a single primary well bore (see FF 3), Bell’s 9
statement would not have discouraged one of ordinary skill in the art from 10
believing that the use of horizontal drainage patterns likely would produce 11
desirable efficiency in recovering hydrocarbons, even in fields with multiple 12
production zones. 13
The Appellant argues that improving the slanted well bores of Bell 14
and Siebold as suggested by Murray would change the principle of operation 15
taught by Bell. (App. Br. 5). As noted earlier, the improvement suggested 16
by Murray complements the principle of operation taught by Bell. Murray 17
would have suggested forming horizontal drainage patterns to extract 18
hydrocarbons from thin production zones only after completing the 19
extraction of hydrocarbons from relatively thick production zones in 20
accordance with the teachings of Bell. 21
The Appellant also contends that Marshall teaches away from 22
combination with Murray. More specifically, the Appellant argues that 23
Marshall discloses the use of curved conduits with vertical top ends that 24
allow the drilling of slanted well bores using conventional vertical drilling 25
equipment. (Reply Br. 2). The Examiner does not appear to address this 26
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contention. (See Ans. 9 and 14-15). Marshall teaches that the use of the 1
curved conduits allows the driller to dispense with specialized drilling 2
equipment, resulting in a saving of deck space on the work platform and 3
avoiding the need to design the work platform to accommodate such 4
equipment. (FF 6 and 7). This teaching would have discouraged one of 5
ordinary skill in the art from attempting to use specialized equipment such as 6
that which might be necessary to drill horizontal drainage patterns from slant 7
well bores on a work platform such as that disclosed by Marshall. 8
9
CONCLUSIONS 10
The Appellant has not shown that the Examiner failed to articulate 11
reasoning with some rational underpinning sufficient to support the 12
conclusion that Bell, Murray, Siebold and Wang would have suggested 13
forming substantially horizontal drainage patterns from slanted well bores 14
formed from entry well bores drilled from a single drilling location. 15
Therefore, the Appellant has not shown that the Examiner erred in rejecting 16
claims 1, 2, 4-6, 10-13, 15, 16, 20 and 21 under § 103(a) as being 17
unpatentable over Bell, Siebold, Murray and Wang. 18
The Appellant has shown that the Examiner failed to articulate 19
reasoning with some rational underpinning sufficient to support the 20
conclusion that Marshall and Murray would have suggested forming 21
substantially horizontal drainage patterns from slanted well bores formed 22
from entry well bores drilled through curved conduits from a work platform 23
of an offshore drilling apparatus such as Marshall’s. Therefore, the 24
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Appellant has shown that the Examiner erred in rejecting claims 1, 2, 4-6, 1
10-13, 15, 16, 20 and 21 under § 103(a) as being unpatentable over Marshall 2
and Murray. 3
4
DECISION 5
The Examiner’s rejections of claims 1-24 is affirmed. 6
No time period for taking any subsequent action in connection with 7
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 8
§ 1.136(a)(1)(iv) (2007). 9
10
AFFIRMED 11
12
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hh 15
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FISH & RICHARDSON P.C. 17
P.O. BOX 1022 18
MINNEAPOLIS, MN 55440-1022 19
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