Akzo Nobel Chemicals International B.V.

Patent Trials and Appeals Board

Oct 2, 2020

14406706 - (D) (P.T.A.B. Oct. 2, 2020)

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.
14/406,706 12/09/2014 Cornelia Adriana De Wolf AFC11347-US-P1 4606
152163 7590 10/02/2020
Nouryon Chemicals LLC
131 South Dearborn
Suite 1000
Chicago, IL 60603
EXAMINER
GRAY, GEORGE STERLING
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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):
nouryon@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CORNELIA ADRIANA DEWOLF, HISHAM NASR-EL-DIN,
ESTEVAO DE OLIVEIRA BARRA, EDWIN RUDOLF ANTONY BANG,
and THEODOR JOHANNES STANITZEK
____________

Appeal 2019-003200
Application 14/406,706
Technology Center 3600
____________

Before EDWARD A. BROWN, MICHELLE R. OSINSKI, and
CARL M. DeFRANCO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Akzo Nobel Chemicals International
B.V. as the real party in interest. Appeal Br. 2.
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Application 14/406,706

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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the sole independent claim on appeal.
1. A two-step process to produce oil or gas from a
subterranean formation, wherein in a first matrix acidizing
and/or fracturing step the subterranean formation is treated with
an aqueous composition having a pH in the range of 2–6 and
containing a chelating agent selected from the group consisting
of glutamic acid N,N-diacetic acid or a salt thereof (GLDA),
aspartic acid N,N-diacetic acid or a salt thereof (ASDA),
methylglycine N,N-diacetic acid or a salt thereof (MGDA), and
N-hydroxyethyl ethylenediamine N,N’,N’-triacetic acid or a salt
thereof (HEDTA) to promote the production of oil or gas from
the subterranean formation as an outlet stream from said
subterranean formation, the outlet stream comprising (i) an
aqueous phase comprising at least some of said aqueous
composition containing said chelating agent, and (ii) a non-
aqueous phase comprising said produced oil or gas, and
wherein, in a next step the aqueous phase of said outlet stream
is separated from the non-aqueous phase.
Appeal Br. 13 (Claims App.).

REJECTIONS ON APPEAL
Claims 1–7 and 12–15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Welton (US 2008/0277112 A1, published Nov. 13, 2008)
and Simon (US 5,965,029, issued Oct. 12, 1999).
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Welton, Simon, Qu (US 2002/0023752 A1, published
Feb. 28, 2002), and Collins (US 2012/0279711 A1, published Nov. 8, 2012).
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Welton, Simon, and Collins.

Appeal 2019-003200
Application 14/406,706

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ANALYSIS
Rejection of claims 1–7 and 12–15 over Welton and Simon
As to claim 1, the Examiner finds that Welton discloses a process to
produce oil or gas from a subterranean formation, wherein in a first matrix
acidizing step (Abstract, ¶¶ 4, 11) and/or fracturing step the subterranean
formation is treated with an aqueous composition that has “a less than
strongly acidic pH” (¶¶ 14–16, “either greater than 2, greater than 5, or in
the range of 6–12”) and contains a chelating agent as claimed (¶ 18), to
promote the production of oil or gas from the subterranean formation as an
outlet stream from the subterranean formation (Abstract, ¶¶ 4, 11, “the acid
enhances the flow of hydrocarbons”), and the outlet stream comprising (i) an
aqueous phase comprising at least some of the aqueous composition
containing the chelating agent and (ii) a non-aqueous phase comprising the
produced oil or gas. Final Act. 5–6. According to the Examiner, “the
purpose of the matrix acidizing treatment, i.e. to enhance formation fluid
production, this treatment resulting in a combination of at least
oil/hydrocarbons and water (the original aqueous portion of the treatment
fluid and possibly formation water), either initially or as the flow back takes
place.” Id. at 6 (bold face omitted).
The Examiner finds that Welton does not specifically describe that the
aqueous composition has a pH in the range of 2–6, as claimed. Final Act. 6.
The Examiner determines, however, that it would have been obvious to one
of ordinary skill in the art to modify Welton’s range to match the claimed
range, which is within Welton’s disclosed range, because “where the general
conditions of a claim are disclosed in the prior art, discovering the optimum
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or workable range involves only routine skill in the art.” Id. (citing In re
Aller, 220 F.2d 454 (CCPA 1955); MPEP § 2144.05).
The Examiner also concedes that Welton does not explicitly disclose
that, in a next step, an aqueous phase of an outlet stream is separated from a
non-aqueous phase, as claimed. Final Act. 6. To address this omission, the
Examiner relies on Simon as teaching the separation of an aqueous phase
from a non-aqueous phase for streams returning from a subterranean
reservoir after an acid treatment. Id. at 6–7. The Examiner concludes that it
would have been obvious to one or ordinary skill in the art to modify
Welton’s process to include the separation method of Simon to separate the
aqueous phase (at least water) from the non-aqueous phase (at least oil),
which “would . . . achieve[] the predictable result that the oil could be stored
for sale without inappropriate amounts of water, spent acid, etc. remaining in
the oil.” Id. at 7.
Appellant contends that, in contrast to the claimed process, Welton
fails to disclose a matrix acidizing step, or a fracturing step, that results in an
outlet stream containing an aqueous phase and a non-aqueous phase
comprising produced oil or gas. Appeal Br. 6; Reply Br. 1. Appellant
contends that Welton discloses a method of treating a matrix of a
subterranean formation in a pre-existing fracture or perforation to increase
permeability and enhance production. Appeal Br. 4–5 (citing Welton ¶ 4).
Welton uses an aqueous treatment fluid comprising a chelating agent to
dissolve carbonates from the matrix of the subterranean formation or
proppant pack, adding a viscosity-increasing agent to the treatment fluid to
improve placement or diversion (delivery) of the chelating agent to the
formation. Id. at 5 (citing Welton ¶ 7).
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Appellant points out that Welton discloses that its treatment methods
are expected to be effective in applications associated with well completion
and remediation, not in a matrix acidizing step. Appeal Br. 6 (citing Welton
¶¶ 8, 10); Reply Br. 1. Appellant states, “‘[c]ompletion’ of a well takes
place before hydrocarbon production has commenced, and ‘remediation’
takes place after hydrocarbon production has ceased, such that these are not
steps in which hydrocarbons are produced from a well.” Appeal Br. 6
(citing Second Declaration of Cornelia De Wolf under 37 C.F.R. § 1.132
(herein, “Second De Wolf Declaration” or “Sec. De Wolf Decl.”) ¶ 8, Ex. A
(Schlumberger Oilfield Glossary – meaning of “completion”), B (APPEA –
meaning of “remediation”)).
According to the Examiner, “both of these activities [i.e., completion
and remediation] are known to persons of ordinary skill in the art to include
matrix acidizing at least at the beginning and during the producing life of the
well.” Ans. 10. As to “remediation,” the Examiner refers to an article that
“explicitly deems acidizing as a remedial well treatment to enhance
production.” Id. at 11. However, as noted by Appellant, the Examiner states
that the rejection does not rely on this article. Id.; Reply Br. 5. As to
“completion,” the Examiner submits, “[p]ersons of ordinary skill in the art
recognize that the ‘completion’ of a well includes the initial perforations and
also treating such perforations using many techniques, with acidizing and
fracturing being very common.” Ans. 11. In support, the Examiner refers to
an article entitled “Acidizing” from the American Petroleum Institute
(hereafter, “API article”).” Id. However, as also noted by Appellant, the
Examiner also does not rely on this article in the rejection. Id.; Reply Br. 5.
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Appellant contends that, in Welton’s process, the fluid that flows back
is the carbonate treatment fluid after its viscosity has been broken. Appeal
Br. 6 (citing Welton ¶ 30). Appellant asserts, “Welton does not disclose that
this recovered treatment fluid contains any oil or other hydrocarbon, and
does not teach or suggest that any hydrocarbon is to be recovered from that
fluid.” Id. (citing Sec. De Wolf Decl. ¶ 8). Appellant further contends that
Welton does not suggest that the described treatment results in an outlet
stream comprising an aqueous phase containing an aqueous composition
with the chelating agent, and a non-aqueous phase comprising produced oil
or gas, as claimed, and, in fact, Welton’s process would not result in such
outlet stream, either initially or as flow back takes place. Id. To the
contrary, Appellant contends, “the absence of hydrocarbon in the returning
workover fluids is consistent with Welton’s stated use of the fluids for well
completion and remediation, steps which occur when no hydrocarbon is
being produced. Reply Br. 6–7.
We are persuaded that the Examiner has not established with
sufficient evidence that Welton discloses a matrix acidizing step that results
in an outlet stream comprising (i) an aqueous phase containing the chelating
agent used in the treatment fluid, and (ii) a non-aqueous phase comprising
produced oil or gas, let alone where the treatment fluid has a pH in the range
of 2–6, as required by claim 1. Nor does the Examiner establish with
sufficient evidence that Welton discloses a fracturing step that results in an
outlet stream comprising a non-aqueous phase comprising produced oil or
gas, let alone where the treatment fluid has a pH in the range of 2–6, as
required by claim 1. As discussed, the Examiner relies on the Abstract and
paragraphs 4 and 11 of Welton as support for the finding that Welton
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discloses the first step of claim 1. Ans. 4. However, these portions of
Welton do not describe that the introduction of the chelating agent-
containing treatment fluid into a subterranean formation results in an outlet
stream comprising, in part, a non-aqueous phase comprising produced oil or
gas. As the Examiner does not show that Welton expressly discloses these
claimed features, we understand that the Examiner’s position is based on
inherency. Even assuming, however, this outlet stream is a possible result of
introducing the chelating agent-containing treatment fluid into a
subterranean formation in Welton’s process, this is still insufficient as
“[i]nherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citations and internal quotation marks omitted). The Examiner does not
establish with sufficient evidence that the recited outlet stream is necessarily
(i.e., inherently) produced by practicing the method disclosed in Welton.
The Examiner also relies on the same portions of Welton’s disclosure
as support for the finding that “the acid enhances the flow of hydrocarbons.”
Final Act. 5–6; Ans. 4 (emphasis omitted). However, we are unable to find
support for this finding as the cited portions of Welton do not describe an
“acid,” or any treatment that necessarily uses an acid.
The mere general description in Welton of “production enhancement
to increase hydrocarbon production from a subterranean formation” (Welton
¶ 4) and “hydrocarbon production [can be] enhanced” (id. ¶ 11) does not, by
itself, establish that Welton’s fluid treatment necessarily results in an outlet
stream containing a non-aqueous phase of oil or gas, as claimed. In other
words, this description does not establish that such “production
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enhancement” inherently occurs during the step of applying the treatment
fluid containing a chelating agent and a viscosity-increasing agent to a
carbonate-containing formation, thereby producing an outlet stream, as
claimed.
We also disagree with the Examiner that, in regard to Welton, “this is
the purpose of the matrix acidizing treatment, i.e.[,] to enhance formation
fluid production, this treatment resulting in a combination of at least
oil/hydrocarbons and water (the original aqueous portion of the treatment
fluid and possibly formation water), either initially or as the flow back takes
place.” Final Act. 6; Ans. 4 (emphasis omitted). As discussed, we are not
convinced that Welton discloses “matrix acidizing” as well as a treatment
that would result in producing an outlet stream containing a combination of
oil/hydrocarbons and water.
We are not persuaded by the Examiner that “Welton discloses acidic
treatment fluids and explicitly states in paragraph [0004] that he will be
‘treating a portion of a matrix of a subterranean formation’. This is matrix
acidizing under a plain reading of the term.” Ans. 12 (emphasis added). As
described in Exhibit C (Schlumberger Oilfield Glossary) provided with the
Second De Wolf Declaration, “matrix acidizing,” as defined and understood
in the oil industry, is a treatment of a reservoir formation with a stimulation
fluid containing a reactive acid, and “[m]atrix acidizing operations are
ideally performed at high rate, but at treatment pressures below the fracture
pressure of the formation.” (emphasis added). We note this definition of
matrix acidizing is consistent with the description in the API article, which
describes, “[i]n matrix acidizing, the acid treatment is injected below the
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formation fracturing pressure. In fracture acidizing, acid is pumped above
the formation fracturing pressure.” API article 1.
Although Welton discloses that the treatment fluid may have an acidic
pH, Welton further discloses that the methods can be advantageous for
treatment of subterranean formations using treatment fluids that are non-acid
containing, thus indicating that acid is not required to achieve the desired
formation treatment. Consistent with this disclosure, Appellant asserts,
“Welton is directed to treatment with chelating agents, not with acid.”
Reply Br. 6. Appellant contends, “[t]he fact that in some Welton
embodiments some acid may be present does not mean that Welton is a
matrix acidizing process that results in an outlet stream containing
hydrocarbons that must be separated from an aqueous phase.” Id. We agree
with Appellant that this disclosure alone is insufficient to establish that the
introduction of such treatment fluid to a subterranean formation is a matrix
acidizing step that will necessarily produce an outlet stream containing a
non-aqueous phase of oil or gas, as required by claim 1.
The Examiner relies on Simon as teaching the recited “next” (second)
step of the two-step process. As such, Simon is not relied on to cure the
deficiency in Welton as to the first step of the two-step process. Thus, as the
combination of Welton and Simon as applied by the Examiner fails to
disclose or suggest all limitations of claim 1, we do not sustain the rejection
of claim 1, and dependent claims 2–7 and 12–15, as unpatentable over
Welton and Simon.

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Rejection of claims 8 and 9 over Welton, Simon, Qu, and Collins
Rejection of claims 10 and 11 over Welton, Simon, and Collins
The Examiner’s additional reliance on Qu and/or Collins in rejecting
dependent claims 8–11 does not cure the deficiency in the rejection of claim
1 discussed above. Final Act. 9–11. Thus, we do not sustain the rejection of
claims 8 and 9 as unpatentable over Welton, Simon, Qu, and Collins, or the
rejection of claims 10 and 11 as unpatentable over Welton, Simon, and
Collins for the same reasons as for claim 1.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 12–15 103(a) Welton, Simon 1–7, 12–15
8, 9 103(a) Welton, Simon,
Qu, Collins
8, 9
10, 11 103(a) Welton, Simon,
Collins
10, 11
Overall
Outcome
1–15

REVERSED