Ex Parte Amanullah

Patent Trials and Appeals BoardMar 11, 2019

15436116 - (D) (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 15/436,116 35979 7590 Bracewell LLP P.O. Box 61389 FILING DATE 02/17/2017 03/13/2019 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. 0004159.005532 8222 EXAMINER TISCHLER, FRANCES ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 03/13/2019 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 Appeal2019-001047 Application 15/436,116 Technology Center 1700 Before KAREN M. HASTINGS, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-11 under 35 U.S.C. Â§ 103(a) as being unpatentable over Burts (US 6,016,879 issued Jan. 25, 2000) in view of Stamp (US 2006/0160907 Al; published July 20, 2006). The Examiner also made a number of provisional obviousness typed double patenting rejections (Final Act. 3, 4). We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellant is the Applicant, Saudi Arabian Oil Company, which is also stated to be the real party in interest (Appeal Br. 2). Appeal2019-001047 Application 15/436,116 CLAIMED SUBJECT MATTER 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 of lost circulation into the lost circulation zone, wherein the altered drilling fluid comprises a drilling fluid and a lost circulation material (LCM), wherein the LCM comprises a plurality of date fruit caps. Claims Appendix (Appeal Br. 14). As an initial matter, we note that Appellant does not address, never mind present any arguments with respect to, the six provisional nonstatutory double patenting rejections (see generally Appeal Br. and Reply Br.). 37 C.F.R. Â§ 4I.37(c)(l)(iv) (Requiring that "arguments shall explain why the examiner erred as to each ground of rejection [and that] any arguments or authorities not included in the appeal brief will be refused consideration by the Board."); see also Manual of Patent Examining Procedure (MPEP) Â§ 1205.02 (9th ed. Mar. 2014) ("If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner's answer.") Thus, we summarily sustain all six provisional2 double patenting rejections of claims 1-11. 2 Note, however, a Notice of Allowance was mailed June 1, 2018 for Application No. 15/458,452, December 21, 2017 for Application No. 2 Appeal2019-001047 Application 15/436,116 OPINION We review the appealedÂ§ 103 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, 107 5 (BP AI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t 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 identifies 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 mainly argues that the Examiner reversibly erred in rejecting claim 13 because Stamp is non-analogous art, contending that the Examiner's alleged field of endeavor is unsupported, and that the Examiner improperly conflates two of the tests4 for non-analogous art (Appeal Br. 5, 6; 15/135,057, and Feb. 19, 2019 for Application No. 15/436,134, each of which was used in one of the six provisional rejections (Final Act. 3, 4). Application No. 15/436,129 used in another of these rejections was appealed (Appeal No. 2019-001088) and this Board rendered a decision therein mailed March 5, 2019 affirming the Examiner's rejection of the claims. 3 Appellant does not present separate arguments for the rejection of claims 2, and 5-11. See, e.g., Appeal Br. 3-12. 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 "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 3 Appeal2019-001047 Application 15/436,116 Reply Br. 3-8). These arguments fail to show reversible error in the Examiner's rejection. In KSR 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 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 (e.g., F.2d 656, 658-59 (Fed. Cir. 1992). These two tests have been interpreted broadly by the Supreme Court as discussed herein. 4 Appeal2019-001047 Application 15/436,116 cited in Ans. 4). On the other hand, Stamp discloses a process for the treatment of palm waste, including date fruit caps (fronds and bunches and shells from date trees), according to the desired end use. Stamp ,r,r 1, 10, 14, 15, 22. Based on these undisputed teachings of Burts and Stamp, we are unpersuaded that the Examiner reversibly erred in determining that a skilled artisan would have combined Burts with Stamp for the reasons presented by the Examiner (see generally Ans. and Final Act.). 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 fruit caps" as recited in claim 1 (Appeal Br. 7, 8) and that these date fruit caps are not comminuted (Appeal Br. 8, 9). Notably, claim 1 does not preclude comminuted materials ( or not comminuted), as it does not recite any size limitation (Ans. 8-10). In any event, Appellant has not shown error in the Examiner's determination that one of ordinary skill in the art, using no more than ordinary creativity, would have used any biomass plant waste material comparable to the non- exhaustive list in Burts, such as the date fruit caps of Stamp, in the process of using waste plant material as a LCM in the process of Burts. We are, likewise, unpersuaded by Appellant's argument that the "equivalency" to the recited "date fruit caps" must be recognized in the prior art (Appeal Br. 9). Appellant has not explained sufficiently 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. See also, Ans. 10-14). As a result, we sustain the Examiner's rejection of claim 1. 5 Appeal2019-001047 Application 15/436,116 Claim 3 Claim 3 depends from claim 1 and additionally recites "wherein the LCM consists of the plurality of date fruit caps." Appellant argues that whereas claim 3 requires the LCM to include solely the recited "date fruit caps," Burts requires the LCM to include other components such as "a water soluble crosslinkable polymer and a crosslinking agent" (Appeal Br. 11 ). Appellant, however, does not adequately address the Examiner's position that Burts "treats the waste biomass as a 'reinforcing material' (see abstract, 4: 11-28) regardless of additional ingredients that go into the fluid" and, thus, whether the fiber material is used alone or in combination with others, the use of an LCM consisting of date fruit caps would have been readily inferred and obvious to one of ordinary skill in the art (Ans. 15). See In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992) (it is also well settled 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). Accordingly, we sustain the Examiner's rejection of claim 3. Claim 4 Claim 4 depends from claim 1 and additionally recites "wherein the date fruit caps comprise a concentration of at least 10 pounds-per-barrel in the altered drilling fluid." Appellant argues that the Examiner reversibly erred here because Burts does not teach any specific amount of plant material in a drilling fluid (Appeal Br. 12). Appellant's conclusory statement that, contrary to the Examiner's position, it would not have been obvious to determine the amount of date fruit caps plant material needed in Burts through routine 6 Appeal2019-001047 Application 15/436,116 experimentation is not sufficient to show error in the Examiner's position (e.g., Ans. 16, 17; Appeal Br. 12). In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (It is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters). Thus, we sustain the Examiner's rejection of claim 4. 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 7