Ex Parte Amanullah

Patent Trial and Appeal BoardMar 5, 2019

15436129 (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 15/436, 129 35979 7590 Bracewell LLP P.O. Box 61389 FILING DATE 02/17/2017 03/07/2019 Houston, TX 77208-1389 FIRST NAMED INVENTOR Md Amanullah 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 0004159.005533 4835 EXAMINER TISCHLER, FRANCES ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 03/07/2019 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): docketing@bracewell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MD AMANULLAH Appeal2019-001108 Application 15/436,129 Technology Center 1700 Before KAREN M. HASTINGS, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. Â§ 134(a) from a rejection2 of claims 1-10. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellant identifies "Saudi Arabian Oil Company" as the real party in interest. Appeal Brief of August 29, 2018 ("Br."), 2. 2 Final Office Action of April 25, 2018 ("Final Act."). In this opinion, we also refer to the Examiner's Answer of September 28, 2018 ("Ans.") and the Reply Brief of November 19, 2018 ("Reply Br."). Appeal2019-001108 Application 15/436,129 CLAIMED SUBJECT MATTER The claims are directed to lost circulation material (LCM) that "includes a plurality of date tree waste fibers produced from date tree waste." Spec. ,r 7. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method to control lost circulation in a lost circulation zone in a wellbore, comprising: introducing an altered drilling fluid into the wellbore such that the altered drilling fluid contacts the lost circulation zone and reduces a rate oflost circulation into the lost circulation zone, where the altered drilling fluid comprises a drilling fluid and a lost circulation material (LCM), wherein the LCM comprises a plurality of date tree waste fibers produced from date tree waste, wherein the date tree waste comprises waste from date palm processmg. Claims Appendix (Br. 13). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Burts Jr. ("Burts") Stamp US 6,016,879 Jan. 25, 2000 US 2006/0160907 Al July 20, 2006 REJECTIONS 1. Claims 1-10 are rejected under 35 U.S.C. I03(a) as being unpatentable over Burts in view of Stamp. Final Act. 2. 2. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of copending Application No. 15/436, 116. Final Act. 3. 2 Appeal2019-001108 Application 15/436,129 3. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of Application No. 15/458,452.3 Final Act. 3. 4. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of Application No. 15/135,057 in view ofBurts. 4 Final Act. 3. 5. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1--42 of copending Application No. 15/250,301 in view of Burts. Final Act. 4. 6. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-38 of copending Application No. 15/436,134 in view of Burts. Final Act. 4. 7. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 15/658,895. Final Act. 4. OPINION Rejections 2-7 "If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board." MPEP Â§ 1205.02 (8th ed., July 2010); see also MPEP Â§ 1205.02 (9th ed., March 2014). We summarily affirm all provisional double patenting rejections of claims 1-10 (rejections 2-7) because Appellant does 3 Our record shows a June 1, 2018 Notice of Allowance for Application No. 15/458,452. 4 Our record shows a December 21, 201 7 Notice of Allowance for Application No. 15/135,057. 3 Appeal2019-001108 Application 15/436,129 not present arguments or evidence showing error in those rejections. See Br. 3-12 (presenting arguments solely for the obviousness rejection based on Burts and Stamp). Rejection 1 We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). After having considered the evidence presented in this Appeal and each of Appellant's contentions, we are not persuaded that Appellant identify reversible error, and we affirm the Examiner's Â§ 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim 1 Appellant argues that the Examiner reversibly erred in rejecting claim 1 5 because Stamp is non-analogous art. Br. 5. Appellant argues that whereas the claims at issue "are directed to a lost circulation material [LCM] for addressing the problem of controlling lost circulation in a well bore during drilling with a drilling fluid and are in the field of oil and gas 5 Appellant does not present separate arguments for the rejection of claims 2, 4, 5, and 7-10. See, e.g., Br. 3-10. These claims, therefore, stand or fall with claim 1. See id. 9; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). 4 Appeal2019-001108 Application 15/436,129 drilling," Stamp "is directed to the treatment of palm waste by shredding palm fibrous waste and combining the shredded palm fibrous waste with a dried plant mill effluent and peat to produce a soil medium." Br. 6, 7. "Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992). InKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007), the Supreme Court stated that: In determining whether the subject matter of a ... claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is ... [unpatentable] underÂ§ 103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of the invention a known problem for which there was an obvious solution encompassed by the patent's claims. "The Supreme Court's decision in KSR . .. directs us to construe the scope of analogous art broadly," stating that 'familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle."' Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 420). In this case, Burts "relates to lost circulation additives comprising polymer and fibers or comminuted plant materials, [and] to lost circulation 5 Appeal2019-001108 Application 15/436,129 treatment fluids made therefrom[.]" Burts 1: 12-16. Burts provides a lengthy "nonexhaustive list of such loss circulation" including "nut and seed shells or hulls (peanut almond, walnut, peach, brazil, coconut, peanut, sunflower, flax, cocoa bean, cottonseed, rice, linseed)" as well as "wood fiber," "bark chips" and the like. Burts 2:23--47, 4:16-28, 7:12-33 (cited in Ans. 4); see also Final Act. 5-6. On the other hand, Stamp discloses a process for the treatment of palm waste, including fibrous date palm waste, according to the desired end use. Stamp ,r,r 1, 14, 15, 22. Based on these undisputed teachings of Burts and Stamp, we are unpersuaded that the Examiner reversibly erred in finding that a skilled artisan would have combined Burts with Stamp, which undisputedly teaches that "palm fibrous waste" (Stamp ,r 10) is known, for the reasons presented by the Examiner. Final Act. 3---6; see In re Clay, 966 F.2d at 658 (holding that whether a prior art reference is "analogous" is a question of fact). Appellant next argues that Burts does not teach or suggest that "the LCM comprises a plurality of date tree waste fibers" as recited in claim 1 because "Burts only discloses comminuted particles of coconut hulls" and not from date palm processing. Br. 7, 8. The record before us, however, shows that Stamp undisputedly teaches that "palm fibrous waste" is known. See Stamp ,r 1 O; compare Final Act. 7, with Br. 7-8. We note that while claim 1 is a process claim without requiring any particular structure, composition or physical property of the recited "date tree waste fibers," Appellant does not argue if the prior art fibrous materials differ in structure, composition, physical properties, or other parameters. We are therefore not persuaded that reversibly error has been identified in the Examiner's findings here. 6 Appeal2019-001108 Application 15/436,129 We are likewise unpersuaded by Appellant's argument that the "equivalency" to the recited "date tree waste fibers" must be recognized in the prior art. Br. 8. The record in this case shows that it is known to include various fibrous materials in a lost circulation fluid (Burts 2: 2:23--47, 4: 16- 28, 7:12-33) and palm fiber waste is a known fibrous material (Stamp ,r 10). Appellant has not sufficiently explained why the process recited in claim 1 is "more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417. As a result, we sustain the Examiner's rejection of claim 1. Claim 3 Claim 3 depends from claim 1 and additionally recites "wherein the LCM consists of the plurality of date tree waste fibers produced from date tree waste." Appellant argues that whereas claim 3 requires the LCM to include solely the recited "date tree waste fibers produced from date tree waste," Burts require the LCM to include other components such as "a water soluble crosslinkable polymer and a crosslinking agent." Br. 10. Appellant, however, does not address the Examiner's finding that Burts "treats the fibers as a reinforcing material regardless of additional ingredients that go into the fluid" whether the fiber material is used alone or in combination with others. Compare Br. 10, with Final Act. 8 (citing Burts Abs., 4:11-28); compare Ans. 10, with Reply Br. 2-8. Because these findings are reasonable and the Appellant has not challenged them, we accept them as facts. See In re Kunzmann, 326 F.2d 424,425 n.3 (CCPA 1964). We accordingly sustain the Examiner's rejection of claim 3. 7 Appeal2019-001108 Application 15/436,129 Claim 6 Claim 6 depends from claim 1 and additionally recites "wherein the plurality of date tree waste fibers comprise a concentration of at least 30 pounds-per-barrel (ppb) in the altered drilling fluid." Appellant argues that the Examiner reversibly erred here because Burts "teaches relative amounts of the various components in the alleged LCM composition" but not "any amount of plant material in an altered drilling fluid." Br. 11. Appellant, however, does not address the Examiner's finding that a skilled artisan would have arrived at claim 6 based on Burts' teaching through routine experimentation. Compare Br. 11, with Final Act. 9; compare Ans. 13-14, with Reply Br. 2-8. Because this finding is reasonable and the Appellant has not challenged it, we accept it as fact. See In re Kunzmann, 326 F.2d at 425 n.3. We accordingly sustain the Examiner's rejection of claim 6. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8