Ex Parte 7,786,054 et al

Patent Trial and Appeal BoardJan 23, 2014

90011471 (P.T.A.B. Jan. 23, 2014)

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. 90/011,471 02/02/2011 7,786,054 09328.105269 1659 19331 7590 01/24/2014 King & Spalding 1180 Peachtree Street NE Atlanta, GA 30309-3521 EXAMINER JASTRZAB, KRISANNE MARIE ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 01/24/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEALS BOARD ____________________ Ex parte KEMIRA CHEMICALS, INC., Patent Owner and Appellant ____________________ Appeal 2013-007228 Reexamination control 90/011,471 Patent 7,786,054 B2 Technology Center 3900 ____________________ Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE Kemira Chemicals, Inc. (hereinafter “Appellant”), the real party in interest 1 of Patent 7,786,054 B2 (hereinafter the “’054 patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to reject claims 1-6 and 10-12 under 35 U.S.C. § 103(a) as unpatentable over the BASF reference 2 in view of 1 See Appellant’s Appeal Brief filed November 26, 2012 (hereinafter “App. Br.”) at 3. Kemira Chemicals, Inc. is identified as being a subsidiary of Kemira Oyj. Id. 2 “BASF Biocides: Water and oilfield biocides” publication, August 2000 (hereinafter “BASF reference”). Appeal 2013-007228 Reexamination control 90/011,471 Patent 7,786,054 B2 2 Herbert 3 and to reject claims 7-8 under 35 U.S.C. § 103(a) as unpatentable over the BASF reference in view of Herbert, Ryles, 4 and Lee. 5 App. Br. 8; Examiner’s Answer 3, mailed February 20, 2013 (“Ans.”) (incorporating all but the withdrawn rejection under 35 U.S.C. § 112, second paragraph, set forth in Final Office Action, mailed May 25, 2012, pp. 3-7). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM. This reexamination proceeding arose from a third-party request for ex parte reexamination filed by Luke A. Kilyk of the law firm Kilyk & Bowersox, P.L.L.C. Request for Ex Parte Reexamination, filed February 2, 2011. The ’471 patent relates to the use of biocides, and particularly, to the use of 3,5-dimethyl-l,3,5-thiadiazinane-2-thione (“Dazomet”) 6 in gas and oil field well stimulation and treatment fluids. ’054 patent, col. 1, ll. 14-17. Representative independent claim 1 on appeal reads as follows (with underlining showing added text and bracketing showing deleted text relative to the original patent claims): 1. A production well injection composition, comprising: 3 B.N. Herbert, “Biocides in oilfield operations,” Chapter 6, Handbook of Biocide and Preservative Use, pp. 185-206, H.W. Rossmoore (1995) (hereinafter “Herbert”). 4 US 4,573,533, issued March 4, 1986, to Roderick G. Ryles et al. (hereinafter “Ryles”). 5 US 6,465,591 B1, issued October 15, 2002, to Ivan S. Lee (hereinafter “Lee”). 6 While the ’054 patent also refers to 3,5-dimethyl-l ,3,5-thiadiazinane-2-thione as “Thione,” the Examiner and Appellant consistently refer to 3,5-dimethyl-l ,3,5- thiadiazinane-2-thione as “Dazomet.” See e.g. Final Office Action 3; Ans. 3; App. Br. 12. Appeal 2013-007228 Reexamination control 90/011,471 Patent 7,786,054 B2 3 an injection fluid for removing a production fluid from a subterranean formation; an oxygen scavenger; and a biocide [comprising] consisting of 3,5-dimethyl-l ,3,5- thiadiazinane-2-thione in an amount effective to inhibit bacterial growth. (Claims App’x, App. Br. 19.) Appellant presents no substantial arguments with respect to claims 2-6 and 10-12 or to separately rejected claims 7 and 8 over those made with respect to independent claim 1. App. Br. 16-18. Accordingly, all of the rejected claims on appeal stand or fall with independent claim 1. II. ISSUES ON APPEAL The Examiner finds that the BASF reference discloses the use of 3,5- dimethyl-l ,3,5-thiadiazinane-2-thione, also referred to as Dazomet, for use as a biocide in fracturing fluid for subterranean oil and gas wells. Final Office Action 3. The Examiner finds that Herbert and Appellant’s own Specification evince that it was known in the art to use oxygen scavengers, such as bisulfites, with biocides “to counteract oxygen-induced or microbially-enhanced corrosion through the use of compositions including oxygen scavengers.” Id. at 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to include an oxygen scavenger with the fracturing fluid containing Dazomet taught by the BASF reference “[i]n view of the well-recognized use of oxygen scavengers such as bisulfites with biocides in production well compositions, as taught in the Biocide Handbook and evidenced by Patent Owner’s admission of the state of the art.” Id. at 4-5. Appellant argues that it would not have been obvious to combine the claimed biocide with an oxygen scavenger because the BASF reference is a Appeal 2013-007228 Reexamination control 90/011,471 Patent 7,786,054 B2 4 commercial sales brochure and Herbert provides no guidance as to which biocides, out of the many potential biocides known in the art, that is compatible with other chemicals including oxygen scavengers. App. Br. 13-14. Appellant relies on the testimony provided by the Gammon declaration 7 in support of its position. The issue on appeal is: Whether a fractioning fluid including both Dazomet and an oxygen scavenger would have obvious to one of ordinary skill in the art having the teachings of the BASF reference and Herbert? We answer this question in the affirmative. III. ANALYSIS We adopt the Examiner’s findings in the Answer as our own and add any additional findings of fact appearing below for emphasis. Appellant’s arguments are substantially directed to whether Herbert provides guidance for selecting Dazomet out of all the known biocides because Herbert does not describe which biocide would have appropriate activity and does not describe the compatibility of various biocides with an oxygen scavenger and other components of a fracturing fluid composition. Herbert acknowledges the arguments and evidence provided by the Gammon Declaration that there were a variety of biocidal products available at the time of the invention. See Herbert, p. 199 (“The variety of possible recommendations for biocide application are so huge that it would be a hopeless task to list them all in detail.”); see also Gammon Decl. ¶ 7. However, Appellant’s arguments are unpersuasive as they fail to address the 7 The Declaration under 37 C.F.R. § 1.132 of Sherrill Gammon, dated July 25, 2012 (hereinafter “Gammon Declaration” or “Gammon Decl.”). Appeal 2013-007228 Reexamination control 90/011,471 Patent 7,786,054 B2 5 specific guidance provided by the BASF reference for using Dazomet for elimination of specific bacteria in fracturing fluids in the oil and gas industry. The BASF reference states that Dazomet (Protectol® DZ) “offers broad- spectrum antibacterial activity against major slime-forming and spoilage bacterial and is extremely effective at controlling the pathogenic Legionella bacteria and the anaerobic SRB [sulfate-reducing bacteria].” BASF reference, p. 14, col. 1. The reference provides specific dosages “to inhibit the growth of slime forming bacteria.” Id., col. 2. Further, the reference provides “Minimum Inhibitory Concentrations” for six “Test Organisms” said to be controlled by the use of Dazomet. Id., col. 1. Thus, the skilled artisan would have particular interest in using Dazomet in the concentrations described for predictably controlling the particular bacteria described. Therefore, the issue is not whether the skilled artisan would have chosen Dazomet for use with an oxygen scavenger, but whether the skilled artisan would have added an oxygen scavenger to the known Dazomet containing fracturing fluid described by the BASF reference. See Final Office Action 4-5. Herbert discloses that To combat the risk of oxygen-induced or microbially-enhanced corrosion, treatment packages may be added to the hydrotest water. The risk of corrosion, and in particular SRB activity, is far greater where seawater is used for this purpose—usually in pipelines located offshore. These packages typically consist of an oxygen scavenger, a corrosion inhibitor and a biocide. Herbert, p. 191. Thus, the skilled artisan would have a particular interest in using an oxygen scavenger in the fracturing fluid comprising Dazomet as described in the BASF reference in order to combat the risk of oxygen-induced corrosion, as taught by Herbert. The addition of an oxygen scavenger would have been no more Appeal 2013-007228 Reexamination control 90/011,471 Patent 7,786,054 B2 6 than the predictable use of a known fracturing fluid additive according to its established function. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Further, Herbert also states that particular biocidal products are recommended for treating a particular problem after some initial efficacy testing, which is consistent with the teachings of the BASF reference. Herbert, p. 199. Moreover, Herbert identifies Dazomet as one of the “the biocides most typically used.” Id., pp. 199 and 205 (Table 6.4). Herbert acknowledges that compatibility of oxygen scavengers and biocides is a known concern. Herbert, p. 191-192 (“The main requirement here for a biocide is long-term stability, compatibility with the oxygen scavenger and corrosion inhibitor and the ability to be disposed of in an environmentally acceptable manner which complies with legislation.”). However, Appellant provides no meaningful evidence that the skilled artisan would have expected any compatibility problems modifying the Dazomet fracturing fluid by adding an oxygen scavenger. While testing may have been necessary to confirm that Dazomet is in fact compatible with the known oxygen scavengers identified by Herbert, such confirmation alone is insufficient to establish non obviousness. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1367-69 (Fed. Cir. 2007) (simply because the formation and properties of a new compound must be verified through testing does not mean that the compound satisfies the test for patentability “since the expectation of success need only be reasonable, not absolute”); In re Merck & Co., Appeal 2013-007228 Reexamination control 90/011,471 Patent 7,786,054 B2 7 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Obviousness does not require absolute predictability.”). Appellant provides no meaningful evidence that testing the compatibility of the oxygen scavengers taught by Herbert for use in the fracturing fluid containing Dazomet taught by the BASF reference would have been anything other than routine. 8 We are not persuaded by Patent Owner’s argument that Dazomet had known disadvantages at the time of the invention. See App. Br. 15; Gammon Decl. ¶ 11. The BASF reference and Herbert both acknowledge Dazomet as a known biocide for use in fracturing fluids. Accordingly, the evidence shows that the skilled artisan would have considered Dazomet for it known biocidal benefits notwithstanding the allegedly known disadvantages identified in the Gammon Declaration. In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) (“A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”). Patent Owner also points to Example 4 as showing that the oxygen reducing potential (ORP) “for a composition including Dazomet was significantly lower than similar compositions including other common biocides, indicating that the composition with Dazomet has better oxygen scavenging efficiency.” App. Br. 15- 16. However, Patent Owner neither argues nor presents persuasive evidence that Dazomet provides unexpectedly superior or better oxygen scavenging efficiency 8 Appellant argues that the testing of a variety of biocides to determine their microbial activity “would take months for each biocide.” App. Br. 14; Gammon Decl. ¶ 8. However, the suitability of Dazomet for the treatment of SRB was already well known and disclosed by the BASF reference. BASF reference, p. 14, col. 1. Appeal 2013-007228 Reexamination control 90/011,471 Patent 7,786,054 B2 8 when compared to other biocides known in the art. In addition, the prior art provides no evidence to suggest that the use of Dazomet would result in reduced oxygen scavenging efficiency. Specifically, while the BASF reference clearly acknowledges oxygen scavenger compatibility problems with BASF products, the BASF reference is silent as to such problems with the Dazomet product. Further, the skilled artisan would have expected some variation in oxygen scavenging efficiency with the use of various biocides based on the teachings of Herbert and would opt for a biocide product whose product literature suggested a lack of compatibility problems, such as the Dazomet product provided by the BASF reference. The weight of the evidence taken as a whole supports the Examiner’s conclusion of obviousness under the law. IV. CONCLUSION On the record before us, we affirm the rejections maintained by the Examiner. V. TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED Appeal 2013-007228 Reexamination control 90/011,471 Patent 7,786,054 B2 9 ack FOR PATENT OWNER: KING & SPALDING 1180 PEACHTREE STREET NE ATLANTA, GA 30309-3521 FOR THIRD-PARTY REQUESTER: KILYK & BOWERSOX, P.L.L.C. 400 HOLIDAY COURT SUITE 102 WARRENTON, VA 20186