LONZA, LLC

Patent Trials and Appeals Board

Jan 20, 2022

2021000754 (P.T.A.B. Jan. 20, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/475,850 03/31/2017 Kevin E. JANAK LZA-155 (LP2496US00) 2012 22827 7590 01/20/2022 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER BLAND, ALICIA ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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): USDOCKETING@DORITY-MANNING.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEVIN E. JANAK and STEVEN J, COLBY ____________ Appeal 2021-000754 Application 15/475,850 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, MICHELLE N. ANKENBRAND, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s final decision to reject claims 1, 3-11, 13, 14, and 19. We have jurisdiction under 35 U.S.C. § 6(a). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Lonza, LLC as the real party in interest. Appeal Br. 1; Reply Br. 2. Appeal 2021-000754 Application 15/475,850 2 The invention “relates to oil and gas recovery and production, and more specifically, to dispersants and dissolvers for the removal of asphaltene deposits.” Spec. ¶ 2. Claim 1 illustrates the invention and is reproduced below (formatting added): 1. A cleaning solution for removal of asphaltene deposits, comprising a cleaning solution booster, the cleaning solution booster comprising a first dispersant that is a quaternary ammonium compound, a second dispersant that is a pyridinium compound, and at least one alcohol, wherein the cleaning solution is free of sulfonic acid dispersants. Independent claim 19 recites a cleaning solution similar to the subject matter of claim 1, but including additional features. Appellant requests review of the Examiner’s rejection of claims 1, 3- 11, 13, 14, and 19 under 35 U.S.C. § 103 as unpatentable over Bennett (US 2015/0011453 A1, published January 8, 2015). Appeal Br. 5; Final Act. 6.2 2 We note that the Examiner rejected claim 12 under 35 U.SC. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Final Act. 5. However, the Examiner withdrew this claim from consideration in the same Office Action because of Appellant’s election without traverse from a restriction requirement. Id. at 2. In addition, Appellant did not appeal the rejection of claim 12. Appeal Appeal 2021-000754 Application 15/475,850 3 Appellant presents arguments for independent claims 1 and 19 and relies on these arguments to address the rejection of the remaining claims. See generally Appeal Br. Accordingly, we select claims 1 and 19 as representative of the subject matter claimed and decide the appealed ground of rejection based on the arguments Appellant makes in support of the patentability of claims 1 and 19. OPINION After review of the respective positions Appellant presents in the Appeal and Reply Briefs and the Examiner presents in the Final Office Action and the Answer, we AFFIRM the Examiner’s rejection of claims 1, 3-11, 13, 14, and 19 under 35 U.S.C. § 103 for essentially the reasons the Examiner presents. We add the following for emphasis. Claim 1 The Examiner finds Bennett discloses the specific components of Appellant’s claimed cleaning solution. Final Act. 6-7. The Examiner finds Bennett discloses the use of a fluid comprising a polyamine sulfonic acid and other optional additives, such as corrosion inhibitors and/or solvents. Id. at 7. That is, the Examiner recognizes Bennett’s cleaning solution is not free of sulfonic acid dispersants. The Examiner, however, determines it would have been obvious to one of ordinary skill in the art to select two corrosion inhibitors, such as those Bennett teaches, and mix them together before Br. 2. Therefore, claim 12 is not before us for review on appeal and we do not reach this rejection for the purposes of this opinion. Appeal 2021-000754 Application 15/475,850 4 adding them to the final treatment fluid to form a concentrate booster. Id. at 7-8. In other words, the Examiner’s rejection is based on an intermediate obtained by pre-mixing components in any order. See Final Act. 7. Bennett discloses the use of a fluid comprising a polyamine sulfonic acid and other optional additives such as corrosion inhibitors and/or solvents. Picking 2 corrosion inhibitors (such as those instantly claimed, which are embraced by Bennett as set forth below/previously) and mixing them together before adding them to the final treatment fluid, thereby forming a concentrate “booster” is prima facie obvious. E.G. It would be obvious to combine any of the additives (corrosion inhibitors and/or solvents and/or other additives such as alcohols and xylene) and add them at any time . . . In this instance, the Examiner is relying on an intermediate component of Bennet’s composition that does not include the polyamine sulfonic acid salt to meet the claimed subject matter. Appellant argues Bennett fails to disclose or render obvious a composition that is free sulfonic acid derivatives. Appeal Br. 5-6; Bennett ¶ 60. According to Appellant, Bennett teaches combining the polyamine component and the sulfonic acid component together to form a polyamine sulfonic acid salt during formation of the composition without removing any excess sulfonic acid component. Appeal Br. 8; Bennett ¶¶ 122, 137, 139. In addition, Appellant contends that removal of the polyamine sulfonic acid salt from Bennett’s composition would have destroyed Bennett’s invention because the polyamine sulfonic acid salt is key to the invention. Id. at 7-8. Appellant further contends there would have been no motivation to form a composition free of sulfonic acid derivatives based upon the teachings of Bennett, as the composition of Bennett requires a polyamine sulfonic acid Appeal 2021-000754 Application 15/475,850 5 salt. Id. at 8. Appellant also argues Bennett contains no teaching of composition that contains a polyamine sulfonic acid salt that is separate from the corrosion inhibitor and synergist. Id. Appellant’s arguments do not point to reversible error in the Examiner’s determination of obviousness. In determining obviousness, the question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Where it appears from the prior art that different orders of mixing will accomplish the same or substantially the same predictable result, the burden is on the applicant to show that a change in the order of mixing is critical for producing an unexpected result. See In re Hampel, 162 F.2d 483, 485 (CCPA 1947) (“There is nothing in the instant record which indicates that the particular order of steps produces results differing in any way from those which would be brought about if another order of steps were followed”); see also In re Burhans, 154 F.2d 690, 692 (CCPA 1946) (upholding the rejection “in the absence of any proof in the record that the order of performing the steps produces any new and unexpected results”). As the Examiner explains, the premise of the rejection is not to remove the polyamine sulfonic acid salt from Bennett’s composition. Ans. 7. Instead, as the Examiner further explains, the premise of the rejection relies on a mixture of inhibitors that is separate from the polysulfonic acid salt and that could be added to the polyamine sulfonic acid salt in any order prior to adding the combined composition to the well bore. Id. at 9. That is, as we note above, the Examiner is relying on an Appeal 2021-000754 Application 15/475,850 6 intermediate component of Bennet’s composition that does not include the polyamine sulfonic acid salt to meet the claimed subject matter. Bennett’s disclosure supports the Examiner’s reasoning. Bennett describes that “compositions of the invention can be prepared by combining a polyamine component and a sulfonic acid component to provide a polyamine sulfonic acid salt. To the polyamine sulfonic acid salt can be added one or more additional corrosion inhibitors, synergists, and/or solvents.” Bennett ¶ 122. One skilled in the art would have reasonably inferred from this disclosure that the polyamine sulfonic salt is first prepared as a separate component of Bennett’s composition with additional components added afterwards to complete the composition. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992) (holding that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom); see also KSR, 550 U.S. at 418 (“the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). That is, one skilled in the art would have reasonably inferred that Bennett suggests making a cleaning composition from at least two separate components, one that comprises the polyamine sulfonic acid salt and one that does not. Therefore, there is a reasonable basis for one skilled in the art to have arrived at the claimed invention from Bennett’s composition component that does not comprise a polyamine sulfonic salt. See In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. Appeal 2021-000754 Application 15/475,850 7 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.”). While Appellant argues that Bennett teaches combining the polyamine component and the sulfonic acid component together to form a polyamine sulfonic acid salt during formation of the composition without removing any excess sulfonic acid component (Appeal Br. 8; Bennett ¶¶ 137,139), we note that the examples of Bennett Appellant highlights also specifically state that the polyamine sulfonic salt is formed before the addition of the additional components. In fact, Example 2 suggests adding a mixture of inhibitors. Bennett ¶ 139. Appellant does not direct us to any portion of Bennett that indicates the particular order of addition of the components is critical. Nor does Appellant direct us to objective evidence with respect to the subject matter of claim 1 showing that a change in the order of mixing is critical for producing an unexpected result.3 Appellant argues Bennett includes thousands of possible corrosion inhibitors with no preference for a quaternary ammonium compound and a pyridinium compound in combination with at least one alcohol. Appeal Br. 12-13; Bennett ¶¶ 86-100. According to Appellant, Bennett teaches these two claimed inhibitors used individually and not in combination. Appeal Br. 13 (Bennett ¶ 91). Appellant’s arguments do not persuade us of reversible error in the Examiner’s determination of obviousness. “That the [prior art] patent discloses a multitude of effective 3 While Appellant points to evidence of unexpected results in the Appeal Brief, Appellant only discusses this evidence within the context of the subject matter of claim 19. Appeal Br. 14. Appeal 2021-000754 Application 15/475,850 8 combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.” Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). While Bennett teaches “thousands of possible corrosion inhibitors,” the Examiner finds, and Appellant does not contest adequately, that Bennett specifically teaches Appellant’s claimed quaternary ammonium and pyridinium inhibitors and indicates they will be effective as components for a cleaning solution that removes asphaltene. Appellant’s contention that Bennett does not teach using a combination of quaternary ammonium and pyridinium inhibitors is also unavailing because “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Appellant fails to explain why one skilled in the art, using no more than ordinary creativity, would not have been capable of combining two inhibitors known to be useful in a cleaning solution for the removal of asphaltene and would not have reasonably expected the combined inhibitors to be suitable for that same purpose. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). Claim 19 Independent claim 19 differs from independent claim 1 in that it further recites that the cleaning solution includes an aromatic hydrocarbon Appeal 2021-000754 Application 15/475,850 9 solvent comprising xylene or toluene in combination with the cleaning solution booster. The Examiner finds that Bennett’s composition may further include a solvent such as xylene or toluene. Final Act. 8; Ans. 10; Bennett ¶ 104. We have considered Appellant’s arguments for this claim in full. However, the arguments do not address the Examiner’s finding noted above and therefore, are unpersuasive of reversible error. Unexpected Results (Claim 19) Appellant contends the subject matter of claim 19 exhibits an unexpected synergistic effect, such as boosted dissolution and/or dispersion of asphaltenes, when combining a xylene or toluene solvent with a cleaning solution booster. Appeal Br. 14. In support of this statement, Appellant directs attention to Application Figure 8 and a sample formulation shown in Table 4 (following Spec. ¶ 43). Appeal Br. 15. When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). The burden of establishing unexpected results rests on the Appellant. Appellant may meet this burden by establishing that the difference between the claimed invention and the closest prior art is an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellant must establish the unexpected results with factual evidence; attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results with evidentiary support must be reasonably Appeal 2021-000754 Application 15/475,850 10 commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); see also In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). We have considered Appellant’s evidence and agree with the Examiner’s analysis that the evidence is insufficient to show nonobviousness. Ans. 10-11. First, it is unclear whether the showing that Appellant relies upon compares the inventive cleaning solution to the closest prior art (Bennett). In addition, Appellant points to a single inventive example comprising xylene and the cleaning booster. Appeal Br. 15. Appellant does not explain why this single inventive example is representative of the broad range of compositions encompassed by claim 19, which is open to any concentration of either xylene or toluene with any concentration of the cleaning solution booster components. Thus, on this record, Appellant has not explained adequately why one of ordinary skill in the art would have found the evidence relied upon unexpected or why that evidence is reasonably commensurate in scope with the claims. Accordingly, we affirm the Examiner’s prior art rejection of claims 1, 3-11, 13, 14, and 19 for the reasons the Examiner presents and we give above. CONCLUSION The Examiner’s prior art rejection of claims 1, 3-11, 13, 14, and 19 is affirmed. Appeal 2021-000754 Application 15/475,850 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-11, 13, 14, 19 103 Bennett 1, 3-11, 13, 14, 19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). (1)(iv). See 37 C.F.R. § 1.136(a) AFFIRMED