Ex Parte Crick et al

Patent Trial and Appeal Board

Sep 12, 2018

13739172 (P.T.A.B. Sep. 12, 2018)

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).
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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
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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
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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
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