Ex Parte Ezell et al

Patent Trial and Appeal BoardOct 24, 2017

12621329 (P.T.A.B. Oct. 24, 2017)

United States Patent and Trademark Office 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. 12/621,329 11/18/2009 Ryan G. Ezell HES 2008-IP-015171U1 2258 27683 7590 10/26/2017 HAYNES AND BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219 EXAMINER DITRANI, ANGELA M ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 10/26/2017 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): ipdocketing@haynesboone.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYAN G. EZELL and B. RAGHAVA REDDY Appeal 2016-001844 Application 12/621,329 Technology Center 3600 Before JENNIFER D. BAHR, EDWARD A. BROWN, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ryan G. Ezell and B. Raghava Reddy (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s February 2, 2015, final decision (“Final Act.”) rejecting claims 1, 2, 4—7, 10—12, 23, 31—35, and 37-44.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 The Appeal Brief identifies Halliburton Energy Services, Inc. as the real party in interest. Appeal Br. 2. 2 Claims 3, 8, 9, 13—22, 24—30, and 36 are canceled. Id. Appeal 2016-001844 Application 12/621,329 SUMMARY OF THE DECISION We REVERSE. SUMMARY OF THE INVENTION Appellants’ disclosure is directed to “compositions and systems for servicing a wellbore in a subterranean formation.” Spec. 11. Claim 1 is the sole independent claim and is reproduced below from page 12 (Claims Appendix) of the Appeal Brief: 1. A method of servicing a wellbore in a subterranean formation comprising: circulating a drilling fluid in the wellbore; losing a portion of the drilling fluid to a lost circulation zone in the subterranean formation, wherein the lost circulation zone comprises cavities and the cavities comprise slots having widths ranging from 500 to 5000 microns; preparing a composition comprising a base fluid, a thixotropic viscosifier, a gellable composition and a bridging material; applying a shear force to the composition such that the composition viscosity decreases; introducing the composition into the lost circulation zone wherein the composition has a pump time of from about 30 min to about 48 hrs; decreasing the shear force applied to the composition; and allowing the composition to set in the lost circulation zone, wherein the thixotropic viscosifier comprises an associative polymer thickener selected from the group consisting of a cellulose-based polymer, an amorphous pyrogenic silica, an alkali swellable latex, a polysaccharide, and combinations thereof, wherein the gellable composition gels by thermal activation and 2 Appeal 2016-001844 Application 12/621,329 wherein the composition in the absence of the bridging material has a viscosity of from about 5 centipoise to about 5000 centipoise. REJECTIONS3 Claims 1, 2, 4—7, 10, 11, 23, 31—33, 35, and 37-44 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Alexander (US 4,836,940, issued June 6, 1989) and Dalrymple (US 2006/0234871 Al, published Oct. 19, 2006).4 Final Act. 3; Ans. 2. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Alexander, Dalrymple, and Robertson (US 2007/0042914 Al, published Feb. 22, 2007). Final Act. 11; Ans. 2. Claim 34 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Alexander, Dalrymple, and Santra (US 2006/0084580 Al, published Apr. 20, 2006). Final Act. 12; Ans. 2. ANAFYSIS Rejection Based on Alexander and Dalrymple The Examiner finds that Alexander discloses a method of servicing a wellbore substantially as recited in claim 1, including, inter alia, introducing a composition into the lost circulation zone of a wellbore and allowing the composition to set, but does not disclose the recited constituents of the 3 Rejections of claims 29 and 36 under 35 U.S.C. § 112 have been withdrawn due to the cancellation of these claims. See Ans. 2—3; Final Act. 2—3. Similarly, a rejection of claim 36 under 35 U.S.C. § 103(a) has been withdrawn. See Ans. 3; Final Act. 13. 4 Claim 29 has been withdrawn from this rejection due to its cancellation. See Ans. 3; Final Act. 3,7. 3 Appeal 2016-001844 Application 12/621,329 composition, applying a shear force to the composition such that its viscosity decreases, or decreasing the shear force to the composition. Final Act. 3^4 (citing Alexander, Abstract, 11:50—55). The Examiner clarifies that “[although Alexander may disclose the use of a pelleted composition within the disclosed invention, the reference teachings relied upon for the rejection are general method steps for servicing a wellbore so as to control lost circulation therein.” Id. at 14. The Examiner also states that “[although Alexander discloses the use of pellets to control lost circulation, Alexander discloses gels as previously used alternatives to the inventive pellets. Therefore, Alexander acknowledges the previous use of crosslinkable gels for the same purpose of the inventive pellets to control lost circulation.” Adv. Act. 2 (dated Apr. 20, 2015). The Examiner relies on Dalrymple to cure the deficiencies of Alexander. Final Act. 4—6 (citing Dalrymple Tflf 2, 6, 11—15, 48—56, 112—14, 116, 126—32, 134, 139, 142, 143). The Examiner reasons that it would have been obvious to one of ordinary skill to apply a shear force to Dalrymple’s composition such that its viscosity decreases, introduce the composition into Alexander’s lost circulation zones, and decrease the shear force applied thereto “in order to yield the predictable result of providing an improved gel system plug within the lost circulation zones of Alexander.” Id. at 6. Appellants traverse, arguing that, because “the entire focus of [Alexander] is the use of pre-cross-linked or pre-polymerized polymer pellets to avoid the use of compositions that require in situ crosslinking and/or polymerization for controlling lost circulation in a wellbore” and because Dalrymple’s compositions “require in situ crosslinking or 4 Appeal 2016-001844 Application 12/621,329 polymerization to form a gel,” “[i]t is clear error for the Examiner to combine the method of [Alexander] with the composition of [Dalrymple], because [Alexander] teaches against the use of compositions that require in situ crosslinking or polymerization, such as those disclosed in [Dalrymple].” Appeal Br. 5—7. Appellants also argue that “[t]o substitute the in situ cross- linkable gels of [Dalrymple] into the method of [Alexander] would frustrate the intended purpose of [Alexander], which was to use pre-cross-linked pellets to avoid the drawbacks of in situ cross-linkable gels.” Id. at 9. The Examiner answers that “there is no explicit example within the disclosure and detailed description of [Alexander’s] invention illustrating the superiority of Alexander’s inventive water-swellable polymers over the lost circulation materials of the prior art.” Ans. 4—5. The Examiner also notes that Alexander discusses U.S. Patent No. 4,059,552 (“Zweigle”) in the background section thereof, and determines that, because “[t]he water- swellable polymers of [Zweigle] are in the form of particles, which would appear to be of a similar structure to the pellets disclosed by Alexander,” it would appear should Alexander be “teaching away” from the use of an in situ crosslinkable polymer, as Appellants] allege[], Alexander would also be “teaching away” from the use of a water absorbent/swellable particle since such a teaching is also taught as a prior art lost circulation material having a deficiency. Id. at 5. A reference teaches away from a claimed invention or a proposed modification if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the 5 Appeal 2016-001844 Application 12/621,329 applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, as noted by Appellants, Alexander identifies disadvantages with prior compositions for and methods of reducing or eliminating lost circulation in a wellbore without undue interruption of the drilling process. See, e.g., Alexander 5:16—20. Regarding known gel “soft plugs,” such as that disclosed in U.S. Patent No. 3,785,437 (“Clampitt”), Alexander states “in practical applications of the method of [Clampitt], it was difficult to control gellation characteristics of the water-soluble polymer, and therefore difficult to assure reduction of lost circulation.” Id. at 3:54—57. We, thus, agree with Appellants that Alexander disparages the use of water-soluble polymers with gelation characteristics that are difficult to control. The Examiner’s rejection, however, relies on the composition of Dalrymple, which also recognizes problematic gelation characteristics with known gel systems. See Dalrymple 6 (discussing unacceptably short gel times). Dalrymple provides improved gel compositions that control the gel time to ensure “that they can be properly placed in permeable zones downhole to prevent fluids from flowing into the wellbore” and to “limit leak off into the surrounding formation.” Id.', see also id. ^ 12, 139. Accordingly, we are not persuaded that the compositions disclosed by Dalrymple are equivalent to the compositions disparaged by Alexander, and, therefore, we are not 6 Appeal 2016-001844 Application 12/621,329 persuaded that Alexander teaches away from its combination with Dalrymple. However, we do agree with Appellants that the Examiner’s modification of Alexander would frustrate its intended purpose. Alexander solves the aforementioned problems of known compositions by providing a homogeneous mixture of a water-insoluble polymer and bentonite in pellet form. Alexander 9:66—10:58. Notably, “[t]he pellet form sufficiently delays hydration of the bentonite and water-absorbent polymer to allow more efficient placement of the lost circulation composition at the area of lost circulation,” and, once the pellets reach the area of lost circulation, they “accumulate, absorb water over time, swell to several hundred times their original volume, and therefore seal the porous formation.” Id. at 10:30-33, 41 44. Indeed, the portion of Alexander cited by the Examiner explicitly requires Alexander’s method to include such pellets: It generally can be stated that an amount of pellets sufficient to eliminate the loss of drilling fluid to a porous formation having holes of about - in. in diameter or less, can be added to the aqueous drilling mud to stop lost circulation without adversely affecting the drilling mud. Id. at 11:50-55. As best that we can understand, the Examiner’s rejection relies on this pellet placement method of Alexander, but replaces the pellets with the sealant composition disclosed by Dalrymple. As correctly noted by Appellants, this elimination of Alexander’s pellets would impermissibly alter the intended purpose and principle of operation of Alexander’s method. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (setting forth that, if a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or 7 Appeal 2016-001844 Application 12/621,329 motivation to make the proposed modification); In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (holding that combinations of prior art that change the “basic principles under which the [prior art] was designed to operate” may not support a conclusion of obviousness). Accordingly, we do not sustain the rejection of claim 1 and its dependent claims 2, 4—7, 10, 11, 23, 31—33, 35, and 37-44 as being unpatentable over Alexander and Dalrymple. We make no determination regarding Dalrymple being an improvement over the process of Clampitt, or Dalrymple alone, satisfying the requirements of claim 1. Rejection Based on Alexander, Dalrymple, and Robertson Robertson is not relied upon by the Examiner in any manner that would remedy the deficiencies noted above with respect to the rejection of independent claim 1, from which claim 12 depends. The rejection of claim 12 is therefore not sustained. Rejection Based on Alexander, Dalrymple, and Santra Santra is not relied upon by the Examiner in any manner that would remedy the deficiencies noted above with respect to the rejection of independent claim 1, from which claim 34 depends. The rejection of claim 34 is therefore not sustained. DECISION The Examiner’s decision to reject claims 1, 2, 4—7, 10-12, 23, 31—35, and 37-44 is reversed. REVERSED 8