Ex Parte Dawson et al

Patent Trial and Appeal BoardMay 2, 2014

11144567 (P.T.A.B. May. 2, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/144,567 06/03/2005 Jeffrey C. Dawson 020569-15100 (P204-1392) 1590 71762 7590 05/02/2014 JONES & SMITH , LLP 2777 ALLEN PARKWAY SUITE 1000 HOUSTON, TX 77019 EXAMINER FIGUEROA, JOHN J ART UNIT PAPER NUMBER 1768 MAIL DATE DELIVERY MODE 05/02/2014 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 APPEAL BOARD ____________ Ex parte JEFFREY C. DAWSON and HOANG VAN LE ____________ Appeal 2012-003889 Application 11/144,567 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, PETER F. KRATZ, and ROMULO H. DELMENDO, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 4-8, 12-21, 23, and 25-29. We have jurisdiction under 35 U.S.C. Â§ 6(b). Claim 1 is illustrative: 1. A method of fracturing a subterranean formation, comprising pumping into the formation a crosslinked fracturing fluid of an aqueous base fluid, a high molecular weight non-derivatized guar having an intrinsic viscosity greater than or equal to 16 dl/g and a crosslinking agent, wherein the crosslinked fracturing fluid is pumped into the formation at a pressure sufficient to fracture the formation. Appeal 2012-003889 Application 11/144,567 2 The Examiner relies upon the following references in the rejection of the appealed claims: Holtmyer U.S. 4,033,415 Jul. 5, 1977 Qiu U.S. 5,981,446 Nov. 9, 1999 Appellants' claimed invention is directed to a method of fracturing a subterranean formation with a crosslinked fracturing fluid comprising a high molecular weight non-derivatized guar, having an intrinsic viscosity greater than or equal to 16 dl/g, and a crosslinking agent. According to Appellants, "[t]he intrinsic viscosity of the non-derivatized guar used in the fracturing fluids of the prior art is lower than the intrinsic viscosity of the non- derivatized guar claimed by Appellants" (Prin. Br. 3, 2nd para.). We are told that "[t]he intrinsic viscosity of standard non-derivatized guar (non- derivatized guar of the prior art) ("GW-4") is 14.3" (id.). Appellants further explain that "[t]he increased viscosity of the non-derivatized guar claimed by Appellants is principally attributed to the processing for making the guar wherein guar split (seed endosperm) is converted to a fine powder" (id.). The high intrinsic viscosity of the claimed guar allows for less guar to be used in the fracturing fluid compared to the fracturing fluids of the prior art (Prin. Br. 4, 1st para.). Appealed claims 1, 4-8, 18-21, 26, 27, and 29 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Holtmyer. Claims 1, 4-8, 12-21, 23, and 25-29 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Holtmyer in view of Qiu. Appeal 2012-003889 Application 11/144,567 3 We have thoroughly reviewed the respective positions advanced by Appellants and the Examiner. In so doing, we agree with Appellants that the Examiner's rejections are not sustainable. We appreciate the considerable effort expended by the Examiner in formulating the rejections on appeal. However, it is our judgment that the prior art evidence cited by the Examiner falls short of establishing that Holtmyer describes a fracturing fluid comprising a high molecular weight non-derivatized guar having an intrinsic viscosity greater than or equal to 16 dl/g, or that the combined teachings of Holtmyer and Qiu would have made it obvious to one of ordinary skill in the art to use the claimed non- derivatized guar in the fracturing fluid of Holtmyer. Appellants have proffered substantial affidavit and declaration evidence that the fracturing fluids taught by Holtmyer comprise derivatized guar that is crosslinked by transition metal crosslinking agents at an acidic pH, and that the high molecular weights within the range taught by Holtmyer for guar correspond to derivatized guar. Also, although Appellants acknowledge that Qiu teaches the use of derivatized and non-derivatized guar, the Le Affidavit presented by Appellants establishes that Qiu does not teach the preparation of the non-derivatized guar in accordance with Appellants' Specification that results in an intrinsic viscosity greater than or equal to 16 dl/g. Appeal 2012-003889 Application 11/144,567 4 In conclusion, based on the foregoing, it is our judgment that the evidence for patentability of the claimed subject matter presented by Appellants outweighs the evidence of non-patentability provided by the Examiner. Accordingly, we are constrained to reverse the Examiner's rejections. REVERSED cam