Chevron U.S.A. Inc.

Patent Trials and Appeals Board

Jul 8, 2020

13763458 - (D) (P.T.A.B. Jul. 8, 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.
13/763,458 02/08/2013 John A. Segerstrom T-7008 3605
34014 7590 07/08/2020
CHEVRON CORPORATION
P.O. BOX 6006
SAN RAMON, CA 94583-0806
EXAMINER
SKAIST, AVI T.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
07/08/2020 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):
kande@chevron.com
patents@chevron.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN A. SEGERSTROM

Appeal 2018-008872
Application 13/763,458
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5–7, 10–15, 17, 18, and 20–27. We
have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
June 4, 2020, a transcript of which has been entered into the record (“Tr.”).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Chevron U.S.A. Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 15 are the independent claims on appeal. Claim 15,
reproduced below, is illustrative of the claimed subject matter.
15. A system for recovering hydrocarbons, the system
comprising:
a source for providing a fluid consisting essentially of
water;
an oilfield water heater at a surface location having a
capacity in a range of about 50 to 150 mmbtu/hr for receiving
the fluid from the source and heating the fluid from the source
to a temperature from 374°C to 1000°C at a pressure from 3205
to 10000 psia to generate a first supercritical dense phase fluid
consisting essentially of water;
a delivery system configured to receive the first
supercritical dense phase fluid consisting essentially of water
and deliver the first supercritical dense phase fluid for injection
directly into an underground hydrocarbon reservoir bearing
hydrocarbons via a wellbore to heat the hydrocarbons of the
underground hydrocarbon reservoir to reduce viscosity of at
least a portion of the hydrocarbons of the underground
hydrocarbon reservoir, wherein the first supercritical dense
phase fluid is delivered through one or more venturi chokes
installed in a wall of the wellbore to the underground
hydrocarbon reservoir such that the first supercritical dense
phase fluid drops in pressure and flashes across the one or more
venturi chokes to a range of about 70% to 100% steam quality
or superheated steam; and
a well configured to recover the heated hydrocarbons
from the underground hydrocarbon reservoir that have been
heated by the first supercritical dense phase fluid.
Appeal Br., Claims App.

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Rejections2
Claims 1, 5, 6, 15, 17, and 20–27 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over O’Brien (US 2009/0236092 A1, pub. Sept. 24,
2009) and Luke (US 4,648,455, iss. Mar. 10, 1987).3
Claims 7, 10–14, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over O’Brien, Luke, and Morimoto et al. (Effect of
supercritical water on upgrading reaction of oil sand bitumen, Journal of
Supercritical Fluids 55, 223–231 (2010)- cited previously) (“Morimoto”)
www.elsevier.com/locate/supflu.

ANALYSIS
The Appellant argues the rejection of claims 1, 5–7, 10–15, 17, 18,
and 20–27 together and further argues the rejection of claims 20, 21, 24,
and 25. See Appeal Br. 7, 13. Many of the Appellant’s arguments rely on
the premise that the process of independent claim 1 and the system of
independent claim 15 require the use a supercritical dense phase fluid. See,
e.g., Reply Br. 1 (“O’Brien’s steam ≠ supercritical fluid (particularly at the

2 In the Advisory Action, mailed Dec. 21, 2017, the Examiner indicated that
the rejection of claim 10 under 35 U.S.C. § 112(b), as presented in the Final
Office Action, mailed Sept. 25, 2017, was overcome by the claim
amendment, filed Nov. 27, 2017, and not maintained.
3 Under this ground of rejection the Examiner includes claim 18 in the
statement of the rejection, but does not list claim 18 in the body of the
rejection. Final Act. 3–8. The Examiner rejects claim 18 in the statement of
the rejection of the other ground of rejection and includes claim 18 in the
body of the rejection. Therefore, we understand the Examiner’s inclusion of
claim 18 in this ground of rejection as a minor oversight and have removed
claim 18 from the statement of the rejection.
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cited 200°C)”). As will be discussed below, the Appellant’s premise is valid
for the process of independent claim 1, but the premise is not valid for the
system of claim 15. For that reason, we have separated the analysis for
independent claim 1 and its dependent claims from independent claim 15
and its dependent claims.

Independent Claim 1 and Dependent Claims 5–7, 10–14, 20, 22, 24, and 26
Independent claim 1 recites “[a] process for recovering
hydrocarbons,” including
providing a first supercritical dense phase fluid consisting
essentially of water to an underground hydrocarbon reservoir
bearing hydrocarbons, wherein the first supercritical dense
phase fluid consisting essentially of water is generated by
heating water to a supercritical dense phase at a temperature
from 374°C to 1000°C and a pressure from 3205 to 10000 psia
in an oilfield water heater at a surface location.
Appeal Br., Claims App.
The Examiner finds that “heating water to a supercritical dense phase
at a temperature from 374°C to 1000°C,” as recited in claim 1, corresponds
with “heating water to a supercritical dense phase at a temperature from
200°C to 1100°C,” as taught by O’Brien. Final Act. 3 (citing O’Brien ¶¶ 16,
17, 21, 54–57, Figs. 1–2). In making this finding, the Examiner relies on
only one embodiment taught by O’Brien, namely the embodiment that
injects steam. See Ans. 4. This “steam embodiment” that the Examiner
relies on is shown in O’Brien’s Figures 1 and 2, where steam is injected into
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an oil sands formation.4 O’Brien ¶¶ 3, 41, 56. Accordingly, the Examiner’s
rejection does not rely on other embodiments taught by O’Brien, including
the embodiment shown in Figure 3 where supercritical material 436 is
injected into an oil sands formation.5 Id. ¶ 64.
The Appellant argues that the temperature of the fluid for O’Brien’s
“steam embodiment” does not correspond to the claimed “temperature,” and
therefore, is not a supercritical fluid. Reply Br. 1. The Appellant’s
argument is persuasive.
O’Brien, at paragraph 16, describes with added emphasis:
In the method and system for extracting hydrocarbon
products from oil sands it is contemplated that supercritical
material will be injected into the formation to produce
fracturing and porosity that will maximize the production of
useful hydrocarbons from the oil sands formation. The use of a
nuclear reactor may reduce energy input cost as compared to
employing finished hydrocarbons to produce thermal energy
and/or electricity. Nuclear reactors produce the supercritical
temperature in the range from 200° to 1100° C[] (depending on
the material to be used) necessary for increasing the pressure
used in the fracturing process compared to conventional hydro
fracturing and/or the use of explosives. In oil sand formations,
the maximization of fracturing is advantageous to hydrocarbon
accumulation and recovery.

4 “[Figure] 1 is a schematic diagram of a method and system for producing
energy products from oil sands using a nuclear energy source in accordance
with the principles of the present invention.” O’Brien ¶ 28 (emphasis
omitted). “[Figure] 2 is a schematic diagram of the components of the
method and system shown in [Figure] 1, in the injection stage.” Id. ¶ 29
(emphasis omitted).
5 “[Figure] 3 is a schematic diagram of an alternate embodiment of the
components of the method and system for fracturing oil sands formations
shown in [Figure] 1.” O’Brien ¶ 30 (emphasis omitted).
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Here, O’Brien teaches the capability of a nuclear reactor to produce a
supercritical temperature for water, which is above a minimum temperature
of 374°C at a minimum pressure of 3,205 psi. See Spec. 5:8–11;
Tr. 3:11–14; Ans. 4 (citing O’Brien ¶¶ 16, 56). However, the capability of
O’Brien’s nuclear reactor to produce a supercritical temperature of water is a
separate matter from the actual temperature of steam in O’Brien’s “steam
embodiment.” To the extent that O’Brien discloses the temperature of the
fluid in the “steam embodiment,” O’Brien does so by example. O’Brien
¶¶ 86–87. The example explains that steam is injected at temperatures of
approximately 300°C or greater for a period of weeks to months. Id.
In view of the foregoing, we determine that the Examiner fails to
adequately explain on this record –– using evidence and/or technical
reasoning –– how O’Brien’s “steam embodiment” corresponds to the step of
“heating water to a supercritical dense phase at a temperature from 374°C to
1000°C,” as recited in claim 1.
Further, we note that the Examiner determines:
Regarding claim 1, O’Brien discloses wherein the
temperature is 200°C to 1100°C ([0016]) and wherein the
pressure is from 7,252 to 72,519 psi ([0056]). Although silent
to wherein the temperature is “from 374°C to 1000°C” and the
pressure is “from 3205 to 10000 psia,” as instantly claimed, it
would have been obvious to a person having ordinary skill in
the art at the time the invention was made to provide for a
temperature and pressure as claimed insofar as because it has
been held[.] “[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”
In re Aller, 220 F. 2d 454, 456 . . . (CCPA 1955).
Final Act. 4. This determination is based on the inadequately supported
finding that the process particular to O’Brien’s “steam embodiment” heats
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steam in the temperature range of 200°C to 1100°C and does not remedy the
deficiency in the Examiner’s rejection.
Lastly, the Examiner fails to rely on the teachings of Luke and/or
Morimoto in any manner that would remedy the deficiency in the
Examiner’s rejection.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 and the rejections of claims 5–7, 10–14, 20, 22, 24,
and 26, which depend therefrom.

Independent Claim 15 and Dependent Claims 17, 18, 21, 23, 25, and 27
The system of claim 15 does not require water to be in a supercritical
dense phase at a particular temperature and pressure. See Appeal Br.,
Claims App. For example, claim 15 recites, “an oilfield water heater . . . for
. . . heating the fluid from the source to a temperature from 374°C to 1000°C
at a pressure from 3205 to 10000 psia to generate a first supercritical dense
phase fluid consisting essentially of water.” Id. (emphasis added). This
recitation is directed to the oilfield water heater’s capability to heat fluid to a
particular temperature and pressure. See Tr. 4:14–5:25. The recitation does
not require a step of heating a fluid (e.g., water) to a supercritical dense
phase at a temperature from 374°C to 1000°C.
The Appellant’s arguments against the Examiner’s rejection of
claim 15 heavily rely on the premise that the system of claim 15 requires
heating water to a supercritical dense phase temperature and pressure. See
Appeal Br. 8–12; Reply Br. 1–8. For example, the Appellant argues that
“O’Brien teaches away from the limitation of heating to a supercritical dense
phase at ‘a pressure from 3205 to 10000 psia’ as required in independent
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Claims 1 and 15.” Reply Br. 1. The Appellant, from a similar posture,
argues that “[t]he [i]nstant [i]nvention [h]as [s]urprising and [u]nexpected
[r]esults [a]s [p]roven by Appellant’s [p]rior [u]nrebutted September 10,
2017 Declaration.” Appeal Br. 11 (emphasis omitted). The Appellant’s
arguments are not persuasive of Examiner error.
First, the Appellant’s arguments are particular to the requirements of
the process of claim 1 and not the requirements of the system of claim 15.
See, e.g., id. (“The first supercritical dense phase fluid of independent
claim 1 has produced unexpected results.”). As discussed above, the
premise that claim 15 requires heating water to a supercritical dense phase at
a temperature from 374°C to 1000°C is not valid. Similarly, the premise
that claim 15 requires heating water to a supercritical dense phase at a
pressure from 3205 to 10000 psia is likewise not valid. Accordingly, the
arguments are not persuasive of Examiner error because they are not
commensurate in scope with the subject matter of claim 15.
Second, O’Brien teaches the capability of a nuclear reactor to produce
a supercritical temperature and pressure for a fluid consisting essentially of
water, which is in the claimed temperature and pressure ranges. See Ans. 4
(citing O’Brien ¶¶ 16, 56 (“200–1100° and 7252–72519 psia”)). We note
that the Appellant does not include an assertion that O’Brien’s “steam
embodiment” lacks an “oilfield water heater” as required by claim 15. We
appreciate that Appellant’s point that O’Brien discloses numerous
embodiments, including one in which high pressure pumps 430 deliver
supercritical material. See Appeal Br. 8; Reply Br. 3–4. However, none of
O’Brien’s embodiments criticize, discredit, or otherwise discourage
investigation into the use of the claimed invention. See DePuy Spine, Inc. v.
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Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.”) (quoting In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Third, the Appellant’s arguments appear to heavily rely on the
premise that the Examiner is relying on the embodiment shown in O’Brien’s
Figure 3 where supercritical material 436 is injected into an oil sands
formation by use of high pressure pump 430 for fracturing purposes. See,
e.g., Reply Br. 4, 6–7. As discussed above, the Examiner solely relies on the
“steam embodiment,” as shown in Figures 1 and 2, for the rejection of
claim 15. See supra. Accordingly, the Appellant’s arguments in that regard
are not particular to the Examiner’s rejection of claim 15 and therefore, not
persuasive.
Fourth, to rebut the Examiner’s rejection, the Appellant presents a
declaration from the inventor, John A. Segerstrom (“Segerstrom
Declaration”), as evidence. We note that the statements made in the
Segerstrom Declaration are like the Appellant’s arguments in that they
heavily rely on the premise that the system of claim 15 requires heating
water to a supercritical dense phase temperature and pressure, and appear to
rely on the premise that the Examiner is relying on the embodiment shown
in O’Brien’s Figure 3, rather than on O’Brien’s “steam embodiment,” as
shown in Figures 1 and 2. Segerstrom Declaration, passim. The Appellant
presents arguments based on statements made in the Segerstrom Declaration.
See Appeal Br. 10–12; Reply Br. 5–6.
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For example, the Appellant argues that “[t]he high density [of water]
leads to the unexpected result of an oilfield type steam generator to be able
to produce the first supercritical dense phase fluid of independent claim 1
without exceeding heat flux capacity of the heater tubes.” Appeal Br. 11
(citing Segerstrom Decl. ¶ 6); see id. at 11–12 (citing Segerstrom Decl. ¶ 7).
In addition to the reasons discussed above, this argument is not persuasive
because claim 15 does not require heater tubes with any particular heat flux
capacity or thermal efficiency. See Ans. 5. Also, the Appellant’s argument
is particular to “water,” rather than the claimed fluid, i.e., “a fluid consisting
essentially of water.” Similarly, the Appellant contends that the
“supercritical dense phase fluid of independent claim 1 can be distributed on
the surface and subsurface to venturi chokes through much smaller surface
and subsurface distribution piping, casing and tubing, and maintain latent
heat targets as with conventional two-phase steam.” Appeal Br. 12 (citing
Segerstrom Decl. ¶ 8); see Reply Br. 5, 6. The Appellant’s contention is not
persuasive. In addition to the reasons discussed above, the argument is not
commensurate in scope with the claimed subject matter because claim 15
does not require piping of any particular size or made of any particular
material. Notably, the Appellant points out that claim 23, which depends
from claim 15, does require “high pressure piping having a diameter in a
range of about 6 to 61 cm.” See Appeal Br. 12; Reply Br. 5; Segerstrom
Decl. ¶ 8. However, the arguments based on the statements in the
Segerstrom Declaration lack quantitative measurements (see Tr. 12:25–
13:20) and/or comparative data to be able to ascertain whether the results
would have been understood as surprising or unexpected. Therefore, the
evidence presented is not strong evidence of non-obviousness.
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The Appellant also contends that “[t]his less expensive and simpler
SCW system thus meets a long standing unmet need for easy and consistent
latent heat distribution to injector wellheads and into the reservoir.” Appeal
Br. 12. The Appellant’s contention is not persuasive because it fails to be
supported by evidence that establishes on the record that an art-recognized
problem existed in the art for a long period of time without solution, that the
need was persistent, or that others tried to meet the need and failed.
We have considered the Appellant’s remaining arguments in the
Appeal Brief and the Reply Brief and determined that they are not
persuasive of error. Thus, we sustain the Examiner’s rejection of
independent claim 15 and claims 17, 23, and 27, which depend therefrom.
For the rejection of claims 21 and 25, the Appellant appears to argue
that the Examiner is relying on an embodiment in O’Brien in which the
minimum pressure is 14,504 psi. See Appeal Br. 13; Reply Br. 8. This
embodiment referenced by the Appellant is not the one that the Examiner
relies on. Ans. 5–6. As discussed above, the Examiner relies on the “steam
embodiment” as shown in Figures 1 and 2, where the minimum disclosed
pressure is 7,252 psi (i.e., 50 MPa). Final Act. 5 (citing O’Brien ¶ 56);
Ans. 4 (citing O’Brien ¶ 56). Accordingly, the Appellant’s argument is
unpersuasive as it relies on a faulty premise. Therefore, we sustain the
Examiner’s rejection of claims 21 and 25.
The remaining rejection of claim 18, which depends from claim 15,
under a combination of O’Brien, Luke, and Morimoto is not argued
separately. For the reasons discussed above, we sustain the Examiner’s
rejection of claim 18.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 5, 6, 15,
17, 18, 20–
27
103(a) O’Brien, Luke 15, 17, 21,
23, 25, 27
1, 5, 6, 20,
22, 24, 26
7, 10–14, 18 103(a) O’Brien, Luke,
Morimoto
18 7, 10–14
Overall
Outcome
15, 17, 18,
21, 23, 25,
27
1, 5–7, 10–
14, 20, 22,
24, 26

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).

AFFIRMED IN PART