Ex Parte FoxDownload PDFPatent Trial and Appeal BoardSep 26, 201412371895 (P.T.A.B. Sep. 26, 2014) Copy Citation 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. 12/371,895 02/16/2009 Kelly B. Fox 211187US00 (4081-12900) 8633 37814 7590 09/26/2014 CHEVRON PHILLIPS CHEMICAL COMPANY 5601 Granite Parkway, Suite 500 PLANO, TX 75024 EXAMINER FIGUEROA, JOHN J ART UNIT PAPER NUMBER 1768 MAIL DATE DELIVERY MODE 09/26/2014 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 KELLY B. FOX ____________ Appeal 2013-000188 Application 12/371,895 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and GEORGE C. BEST, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1 through 5, 7, 9, and 11 through 27. We have jurisdiction under 35 U.S.C. § 6. Appellant’s invention is directed to a wellbore servicing fluid, a cationic polymer and a brine and a method of placing it into a wellbore. App. Br. 4. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A method comprising: placing a wellbore servicing fluid comprising a cationic polymer and a brine into a wellbore, wherein the cationic Appeal 2013-000188 Application 12/371,895 2 polymer has a molecular weight of from about 300,000 Daltons to about 10,000,000 Daltons; wherein the brine has a density of from about 8.4 lb/gal to about 19.2 lb/gal; and wherein the wellbore servicing fluid displays shear thinning rheology at a shear rate of from about 3 sec-1 to about 300 sec-1 and a temperature of from about 75 oF to about 500 oF. The Examiner relied on the following references in rejecting the appealed subject matter: Fox US 5,849,674 Dec. 15, 1998 Schwartz US 2003/0125215 A1 July 3, 2003 Patel US 7,084,092 B2 Aug. 1, 2006 Appellant (App. Br. 5) requests review of the following rejection from the Examiner’s final office action: Claims 1–5, 7, 9, and 11–27 rejected under 35 U.S.C. § 103(a) as unpatentable over Schwartz and either Fox or Patel. OPINION Prior Art Rejection1 After review of the respective positions provided by Appellant and the Examiner, we REVERSE for the reasons presented by the Appellant. We refer to the Examiner’s Final Action for a complete statement of the rejection. Final Action 3–6. The Examiner found that Schwartz discloses a method of placing an aqueous gel composition (wellbore servicing fluid comprising) comprising a 1 We limit our discussion to independent claim 1. A discussion of Fox and Patel is unnecessary for disposition of this appeal. The Examiner cited Fox and Patel to address additional elements of the claimed subject matter not related to the dispositive issue. Appeal 2013-000188 Application 12/371,895 3 cationic polymer and a brine into a wellbore. Final Act. 3–4; Schwartz ¶¶ 9– 17, 23, 24. We agree with Appellant. The Examiner has not adequately established the gel composition of Schwartz comprises a brine nor does the Examiner direct us to any portion of Schwartz that suggests the use of a brine in the inventive gel composition. Appellant argues that the disclosure of Schwartz is directed to a gel used to fracture a subterranean formation and does not disclose the presence of a brine in the gel composition. App. Br. 4, 9–10; Schwartz ¶ 24. Appellant argues that Schwartz’s discussion of brine is limited to the statement “[t]he gel may be used in the absence of conventional brine-forming salts.” App. Br. 9–10, 13–14; Schwartz ¶ 24. Schwartz discloses inorganic salts can be used as gel breakers. Schwartz ¶ 24. Schwartz does not disclose the combination of the inventive gel and brine-forming salts. Further, as noted by Appellant, Schwartz discloses the shear-thinning properties of the disclosed compositions lack a brine. App. Br. 12; Schwartz Figures 11, 12, ¶¶ 63–66. Thus, a skilled artisan would have no reasonable expectation of success in achieving the gel composition properties disclosed by Schwartz if a brine were added to the gel composition. App. Br. 11, 13–14. “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Accordingly, we reverse the Examiner’s prior art rejection of claims 1–5, 7, 9, and 11–27 under 35 U.S.C. § 103(a) for the reasons given above and presented by Appellant. Appeal 2013-000188 Application 12/371,895 4 ORDER The Examiner’s prior art rejection is reversed. REVERSED cdc Copy with citationCopy as parenthetical citation