Ex Parte Crick et alDownload PDFPatent Trial and Appeal BoardSep 12, 201813739172 (P.T.A.B. Sep. 12, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/739, 172 01/11/2013 124929 7590 09/14/2018 Senniger Powers LLP (Ecolab USA Inc.) 100 N. Broadway, 17th Floor Saint Louis, MO 63102 FIRST NAMED INVENTOR Youseffi Y. Crick 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. ECL El0191.US 1926 EXAMINER SKAIST,AVIT. ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 09/14/2018 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): uspatents@senniger.com ecolab_PAIR@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOUSEFFI Y. CRICK and GREG D. SUTTON 1 Appeal2017-007731 Application 13/739,172 Technology Center 3600 Before JOHN C. KERINS, BRANDON J. WARNER, and ANTHONY KNIGHT, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Youseffi Y. Crick and Greg D. Sutton ("Appellants") appeal under 35 U.S.C. § 134(a) from a final rejection of claims 19, 22, and 24--38. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Ecolab USA Inc., is the real party in interest. Br. 2. Appeal2017-007731 Application 13/739,172 THE INVENTION Appellants' invention is directed to a method of fracturing a subterranean formation. Claim 19, reproduced below, is illustrative: 19. A method of fracturing a subterranean formation, compnsmg: introducing a fracturing fluid through a well bore into the subterranean formation, wherein the fracturing fluid comprises an amine oxide of the formula (CH3)NO(R1)(R2), where R1 and R2 are independently selected from linear or branched alkyl groups having from 8 to 16 carbon atoms; pressurizing the fracturing fluid to fracture the subterranean formation; and allowing the fracturing fluid to flow back into the well bore from the subterranean formation, wherein the concentration of the amine oxide in the fracturing fluid is between 0.00005 and 2.5 percent by weight. REJECTIONS The Examiner rejects: (i) claims 19, 22, and 24--38 under 35 U.S.C. § I03(a) as being unpatentable over Thompson (US 6,302,209 B 1, issued Oct. 16, 2001) in view of Smith (US 4,970,340, issued Nov. 13, 1990); and (ii) claim 38 under 35 U.S.C. § I03(a) as being unpatentable over Thompson in view of Smith and Hinkel (US 2003/0188870 Al, published Oct. 9, 2003). 2 Appeal2017-007731 Application 13/739,172 ANALYSIS Claims 19, 22, and 24-38--Unpatentability over Thompson and Smith The Examiner finds that Thompson discloses all of the method steps set forth in claim 19, with the exception of using an amine oxide having the claimed composition. Final Act. 3. The Examiner cites to Smith as teaching such an amine oxide, and concludes that it would have been obvious to use the amine oxide disclosed in Smith in place of the amine oxide disclosed in Thompson, because the former "'offer[s] large freight savings in shipping the amine oxides to remote locations,' such as remote oilfields." Id., quoting Smith, Abstract. The Examiner also regards the modification to employ the Smith amine oxide as being a simple substitution of one known equivalent amine oxide for another, asserting that the substitution will yield a predictable result, and because "the amine oxide taught by Smith is stated as being an improvement over specifically the very same amine oxide that Thompson [] discloses." Id. Finally, the Examiner concludes that the concentration range recited in claim 19 would have been obvious, even though not disclosed in the references, as finding an optimal or workable range involving only routine experimentation. Id. at 3--4. Appellants argue that the properties of the amine oxide disclosed in Thompson (stearyl dimethylamine oxide, or SDMAO) making it suitable for use in a fracturing fluid are very different from the properties of Smith's amine oxide (methyl didecylamine oxide, or DDMAO), where the Smith reference involves surfactants identified as being useful for hair conditioners in shampoo. Br. 6-9. Appellants present data in support of this position, and maintain that a person of ordinary skill in the art would not assume that the two would be interchangeable, nor would that person have any 3 Appeal2017-007731 Application 13/739,172 reasonable expectation that substituting the Smith amine oxide for the Thompson one would lead to success. Id. at 9. Appellants also point to disclosure in Thompson that solid surfactants have significant advantages over liquid surfactants, the latter being known to cause undesired effects in surface mixing and pumping equipment. Id. Appellants note, in this respect, that the Smith amine oxide would not form a solid surfactant suspension as would the Thompson amine oxide, and thus the modification cannot be regarded as a simple substitution for which a person of ordinary skill in the art would have a reasonable expectation of success. The Examiner responds, acknowledging that the two amine oxides in question have "some differences," but that, whereas Thompson recites certain benefits for a solid surfactant, Smith recites benefits for a soluble surfactant. Ans. 4. The Examiner takes the position that a person of ordinary skill in the art "would weigh the different benefits and drawbacks and select the surfactant with the appropriate benefits for that individual application." Id. The Examiner reiterates that Smith teaches that its amine oxide provides an improvement over the very amine oxide disclosed in Thompson, which, according to the Examiner, seemingly would compel consideration of the substitution. Id. In weighing the respective benefits and disadvantages known to attend the two amine oxides, the Smith composition may provide savings in transportation costs, whereas the Thompson composition is known to work satisfactorily in a fracturing fluid. Thompson also strongly suggests that liquid surfactants are known to cause processing problems. As such, it has not been shown that a person of ordinary skill in the art would obviously run 4 Appeal2017-007731 Application 13/739,172 the risk of having a fracturing fluid that presents operational difficulties, merely to save on transportation cost in moving the amine oxide from one place to another. The cost savings may take precedence in using the amine oxide in hair conditioners for shampoo, as disclosed by Smith, where ability to later perform as required is not compromised or adversely effected, but the evidence here suggests that degraded performance is likely to occur. Accordingly, the rejection of claim 19 as being unpatentable over Thompson and Smith is not sustained. Claims 22 and 24--3 8 depend from claim 19, and the rejection of those claims is likewise not sustained. Claim 38--Unpatentability over Thompson, Smith, and Hinkel This rejection suffers from the same deficiencies noted above with respect to the proposed substitution of the Smith amine oxide for the amine oxide of Thompson. The Examiner does not rely on Hinkel in any manner which overcomes this deficiency. The rejection of claim 3 8 is therefore not sustained. DECISION The rejection of claims 19, 22, and 24--38 as being unpatentable over Thompson and Smith is reversed. The rejection of claim 38 as being unpatentable over Thompson, Smith, and Hinkel is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation