Ex Parte Fonseca et al

Patent Trial and Appeal Board

Aug 16, 2017

13923238 (P.T.A.B. Aug. 16, 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.
13/923,238 06/20/2013 Ernesto Rafael FONSECA TH5345-US-NP 2813
23632 7590
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
SUE-AKO, ANDREW B.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
USPatents@Shell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERNESTO RAFAEL FONSECA, ARTHUR HERMAN HALE,
MAURICIO JOSE FARINAS MOYA,
GUY LODE MAGDA MARIA VERBIST,
GERARDUS JOHANNES LEONARDUS, HENRICUS VAN SELST
Appeal 2016-005823
Application 13/923,238
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005823
Application 13/923,238
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—3, 5, 9-13, and 15—20.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
Representative Claim
Representative claim 1 under appeal reads as follows (emphasis and
bracketing added):
1. A method of treating a subterranean formation,
comprising:
[A.] designing a mortar slurry to set to form a mortar
with a compressive strength below a fracture closure pressure
of the subterranean formation, and above an effective
confinement stress, the mortar slurry comprising a cementitious
material and water;
[B.] preparing the mortar slurry;
[C.] injecting the mortar slurry into the subterranean
formation at a pressure sufficient to create a fracture in the
subterranean formation;
[D.] while maintaining a pressure higher than the
fracture closure pressure, allowing the mortar slurry to set,
forming the mortar in the fracture;
[E.] reducing the pressure below the fracture closure
pressure; and
[F.] allowing the mortar in the fracture to crack,
forming a cracked mortar, wherein, prior to allowing the mortar
in the fracture to crack, the mortar comprises a pervious mortar
having a first conductivity, and wherein the cracked mortar has
1 An After Final Amendment was filed by the Appellants on December 4,
2015, and entered by the Examiner in the Advisory Action of January 26,
2016. The amendment amended claim 3 to incorporate the subject matter of
claims 1 and 2. Claims 1, 2, 4—9, and 11—18 were canceled. Claim 10 was
previously cancelled. Advisory Act. 5.
2
Appeal 2016-005823
Application 13/923,238
a second conductivity at least 2,000 mD-ft greater than the first
conductivity.
Rejections
The Examiner rejected claims 1—3, 5, 9-13, and 16—19 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Hamsberger et al. (US 3,654,990; iss. Apr. 11, 1972) and Clark et al.
(US 7,909,096 B2; iss. Mar. 22, 2011).
The Examiner rejected claims 15 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hamsberger, Clark, and various
other references.2
Appellants ’ Contentions3
1. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The teachings pointed to by the Examiner, in particular,
lines 13, lines 38—46, suggest that the cement could be made
permeable by designing a cement that is designed to be cracked
by creation of “stress fractures”, (among other ways) but does
not suggest either that the cement be in the fracture, or that the
formation provide the force to crack the cement.
App. Br. 5 (emphasis added).
2 We select claim 1 as representative. Separate patentability is not argued
for claims 2, 3, 5, 9—13, and 16—19. Except for our ultimate decision, these
claims are not discussed further herein.
3 Separate patentability is not argued for claims 15 and 20. Thus, the
rejections of these claims turns on our decision as to claim 1. Except for our
ultimate decision, these claims are not discussed further herein.
3
Appeal 2016-005823
Application 13/923,238
2. Appellants also contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The Examiner argues that the reference to “controlled
stress fractures” in this context suggests designing a mortar
slurry to set to form a mortar with a compressive strength
below a fracture closure pressure of the subterranean
formation, and above an effective confinement stress, [and]
allowing the mortar in the fracture to crack, forming a cracked
mortar'”. Applicant respectfully disagrees that a person of
ordinary skill in the art would conclude this from a mere
suggestion that cement in an annulus could be made permeable
by “creation of controlled stress fractures”.
The combination of Hamsberger et al. and Clark et al.
does not teach or suggest that the formation characterization be
considered in the design of the cement so that the formation
cracks but does not crush the cement after fracture opening
pressure is released from the wellbore fluids, and that the
mortar be tailored to result in a mortar that results in a cracked
mortar within the fracture of the formation. A prima facie
basis for the rejection under 35 U.S.C. 103 is not provided by
the references of record.
App. Br. 6—7 (emphasis added).
3. Appellants also contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[I]f the intent [of Examiner] is that the cement would be that of
Hamsberger but with modification in view of Clark, we note
that the Examiner recognizes that cement designed to be
permeable is an alternative to cement cracked to create
permeability. Clark and Hamsberger’s cements are two
different choices and it is unreasonable to combine them. In
fact, it is possible that mixing the formulas of both would result
in a cement that fails to satisfy both claim features discussed
above.
Moreover, there is no motivation to alter the design of
Hamsberger for the purpose of enhanced permeability because
4
Appeal 2016-005823
Application 13/923,238
Hamsberger already indicates that it meets the goal of
permeability.
Finally, if the cement of Hamsberger were modified to
crack, the stated purpose of the cement (proppant) would likely
be frustrated. Hamsberger teaches a cement having
permeability, acting as a proppant, and that it is undesirable for
propping agents to be cmshed.
Reply Br. 3 (footnotes omitted).
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellants’ above contention 1, the Examiner reminds
Appellants:
Regarding the “cement in the fracture,” Appellant is
reminded that this feature is already provided by Hamsberger,
not Clark.
Therefore, this argument with respect to cement in the
fracture appears moot for Clark.
Ans. 3.
We disagree with Appellants that the Examiner has erred.
First, Appellants attack Clark singly for lacking a teaching (mortar in the
fracture) that the Examiner relied on a combination of references to show.
Particularly, the Examiner points to Hamsberger for this limitation. Final
Act. 3. It is well established that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In
5
Appeal 2016-005823
Application 13/923,238
re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). Appellants argue a finding
the Examiner never made by addressing Clark instead of Hamsberger. This
form of argument is unavailing to show Examiner error.
As to Appellants’ above contention 2, we disagree. The Examiner
finds Clark provides “an alternative known technique” in the technique of
Hamsberger. Final Act. 4. The Examiner concludes it would have been
obvious to combine these techniques to improve similar products (known
permeable cements) in a manner that achieves predictable results (improved
production of formation fluids). Id. We agree. Contrary to Appellants’
argument, we conclude that a prima facie basis for the rejection under
35 U.S.C. 103 was provided, and the Examiner appropriately reached a final
conclusion of obviousness on the totality of the record, by a preponderance
of the evidence with due consideration to the persuasiveness of “Applicant’s
arguments4 filed 5 May 2015.” Final Act. 14.
As to Appellants’ above contention 3, Appellants present in the Reply
Brief new arguments against the rejection of claim 1. These arguments were
not previously argued in the Appeal Brief or newly raised by the Examiner
in the Answer. In the absence of a showing of good cause by Appellants, we
decline to consider an argument raised for the first time in the Reply Brief,
as the Examiner has not been provided a chance to respond. See 37 C.F.R.
§ 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000)
(noting that an argument not first raised in the brief to the Board is waived
on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010)
(informative) (explaining that arguments and evidence not timely presented
4 The arguments presented on May 5, 2015, parallel the arguments presented
in Appellants’ Appeal Brief.
6
Appeal 2016-005823
Application 13/923,238
in the principal brief will not be considered when filed in a reply brief,
absent a showing of good cause explaining why the argument could not have
been presented in the principal brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”). Appellants have
provided no showing of good cause.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—3, 5, 9-13, and
15—20 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1—3, 5, 9-13, and 15—20 are not patentable.
DECISION
The Examiner’s rejections of claims 1—3, 5, 9-13, and 15—20 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7