Ex Parte Fox

Patent Trial and Appeal Board

Sep 26, 2014

12371895 (P.T.A.B. Sep. 26, 2014)

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

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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.
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Application 12/371,895

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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.
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Application 12/371,895

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ORDER
The Examiner’s prior art rejection is reversed.

REVERSED

cdc