Ex Parte Fustos et al

Patent Trial and Appeal BoardAug 28, 2017

13829696 (P.T.A.B. Aug. 28, 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. 13/829,696 03/14/2013 Vincent Eugene Fustos JANK-52329US 3230 116 7590 08/30/2017 PFARNF fr GORDON T T P EXAMINER 1801 EAST 9TH STREET SCHNEER, RYAN M SUITE 1200 CLEVELAND, OH 44114-3108 ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 08/30/2017 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): patdocket@peame.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VINCENT EUGENE FUSTOS and RONALD J. JANOSKI1 Appeal 2016-004884 Application 13/829,696 Technology Center 3600 Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and BRADLEY W. BAUMEISTER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL 1 Ronald J. Janoski and Green Roofing Products LLC are listed as the real party in interest. App. Br. 2. Appeal 2016-004884 Application 13/829,696 STATEMENT OF THE CASE Summary Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 25—39. App. Br. 4.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 25 under 35 U.S.C. § 102(b) as being anticipated by Lee (US 3,637,019; issued Jan. 25, 1972) (“Lee”). The Invention Appellants’ invention is directed to a method for sealing an “extra pipe space,” which is a space in an underground wellbore around a pipe that is placed within the wellbore. Abstract; Spec. 1 6. The seal is established by injecting into the wellbore, a pre-mixed polymer sealant solution, which upon contacting moisture within the extra-pipe space, “cause[s] the at least first injected portion of the pre-polymer sealant solution to emit a gas and to form a sealing foam filling at least a portion of the extra-pipe space. Spec. 1 6. Appellants explain that such polymer sealant foams, including polyurethane, were known for this purpose, but that the methods of injecting these known foams had disadvantages: 2 Rather than repeat the Examiner’s positions and Appellants’ arguments in their entirety, we refer to the following documents for their respective details: the Final Action mailed April 6, 2015 (“Final Act.”); the Advisory Action mailed July 21, 2015 (“Adv. Act.”); the Appeal Brief filed August 31, 2015 (“App. Br.”); the Examiner’s Answer mailed February 23, 2016 (“Ans.”); and the Reply Brief filed April 5, 2016 (“Reply Br.”). 2 Appeal 2016-004884 Application 13/829,696 such polyurethane foams may be prepared by mixing together one or more diisocyanates and one or more polyols with appropriate catalysts and other agents at the construction site. This process may be cumbersome since separate chemicals must be supplied to the site along with a mixing and injecting device. Because water may be required to foam the polyurethane, water may also have to be supplied along with the monomeric reagents and mixed with them as well. It may be appreciated that a large scale sealing operation that may occur at a fracking site may make such multi-stage preparation and injection of the sealant precursors unwieldy. Therefore, a simpler method of merely injecting a pre-formed precursor of a polyurethane foam may be advantageous in this application. Spec. 124. Appellants’ invention addresses these drawbacks by “providing [in step] 410 a pre-mixed solution and storing [in step] 420 it on-site[, which] may have the advantage of having the sealant material available when needed, and not requiring complex components and mixing equipment to remain dormant until used.” Id. at 25. Independent claim 25, reproduced below with emphasis added, is illustrative of the appealed claims: 25. A method of creating a seal in a wellbore annulus comprising: providing a pre-mixed pre-polymer solution to a surface of a wellbore site; injecting at least a first portion of the pre-mixed pre polymer solution into an annulus between a wall of the wellbore and a pipe in the wellbore; allowing said pre-mixed pre-polymer solution to form a sealing foam filling at least a portion of said annulus; and allowing said sealing foam to cure. 3 Appeal 2016-004884 Application 13/829,696 The Rejections3 Claims 25—28 and 36 stand rejected under 35 U.S.C. § 102(b) as anticipated by Lee. Final Act. 3^4. Claims 29 and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lee and Miranda (US 3,643,741; issued Feb. 22, 1972). Final Act. 4—5. Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lee and Hilterhaus (US 5,107,928; issued Apr. 28, 1992). Final Act. 5—6. Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lee and Griffith (US 2002/0020530 Al; published Feb. 21, 2002). Final Act. 6-7. Claims 34 and 35 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lee and Duan (US 2009/0084539 Al; published Apr. 2, 2009). Final Act. 7—9. Claim 39 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lee. Final Act. 9. We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 3 The Examiner additionally had rejected claims 25—39 under 35 U.S.C. § 112,12, as being indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention (Final Act. 2), but the Examiner subsequently withdrew that rejection (Adv. Act.). 4 Appeal 2016-004884 Application 13/829,696 CONTETIONS AND ANALYSIS /. Lee—the prior art relied upon in the anticipation rejection—is directed to a method of sealing the extra-pipe space of a wellbore with a polyurethane foam, and that method entails injecting diisocyanate and a foam producing resin into a mixing zone of the wellbore, mixing these precursors to produce the foam, and allowing the foam to cure into a hardened state. Lee col. 1,11. 52—71. The Examiner interprets independent claim 25 as reading on Lee’s method when the claim limitation “providing a pre-mixed pre-polymer solution to a surface of a wellbore site” is interpreted broadly such that the “surface of a wellbore site” reads on a subterranean surface present within the wellbore (Linal Act. 3)—specifically, Lee’s “interface between [underground] mixing zone 11 and lost circulation zone 18” (id. at 10). Appellants argue this interpretation of “surface of a wellbore site” is unreasonably broad. App. Br. 8—11. We agree. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the Specification. In re Am. Acad. ofSci. Tech Ctr., 367 L.3d 1359, 1364 (Led. Cir. 2004). Within the context of Appellants’ disclosure, a wellbore site surface is distinguishable from a wellbore surface. The former is located aboveground (see, e.g., Spec. ^fl[ 6, 24), while the latter is underground (see, e.g., id. 114). To erase this distinction is to ignore the word “site” from the claim term “surface of a wellbore site.” Our reviewing court has held “[a] claim construction that gives meaning to all the terms of the claim is preferred over 5 Appeal 2016-004884 Application 13/829,696 one that does not do so.” Merck & Co. v. leva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). For the foregoing reasons, Appellants have persuaded us of error in the Examiner’s anticipation rejection of independent claim 25. Accordingly, we do not sustain the rejection of that claim, or of claims 26—28 and 36, which ultimately depend from claim 25. With respect to the remaining obviousness rejections of dependent claims 29-35 and 37—39, the Examiner does not rely on the additionally cited references or reasoning to cure the deficiency of the anticipation rejection explained above. See Final Act. 4—9. Accordingly, we do not sustain the rejections of these claims for the reasons discussed above. II. This conclusion does not end our inquiry, though. We may surmise that Appellants intended the claim 25’s limitation “providing a pre-mixed pre-polymer solution to a surface of a wellbore site” to mean that the pre polymer solution was pre-mixed prior to being transported to the wellbore site. See, e.g., Spec. 1 6. But this claim limitation, as currently written, is broad enough to additionally read on mixing the pre-polymer solution at the wellbore site, thereby providing a pre-polymer solution that is pre-mixed at the site prior to injection into the wellbore. Furthermore, although Lee’s invention is directed to a method of mixing the polyurethane foam precursor polymers in situ—i.e., underground (see generally Lee), Lee’s teachings are not so limited. Lee additionally expressly teaches that prior to Lee’s invention, it already was known to mix pre-polymer solutions on the surface of the wellbore site: 6 Appeal 2016-004884 Application 13/829,696 Still another system premixing the polyurethane components at the well head and thereafter pumping the same downward to the porous formation. However, the foam in this instance is quite likely to set up the pumping operation and result in clogging of the conduits through which the foam is pumped. Lee, col. 1,11. 28—33. To be sure, Lee determined that the conventional surface-mixing method may present unacceptable problems, at least in an unacceptable percentage of occasions the method is used. But this recognition does not negate that the surface-mixing method was, in fact, known or that the surface-mixing method worked on at least some occasions. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), then, we enter a new ground of rejection for claim 25 under 35 U.S.C. § 102(b) as being anticipated by Lee. Although we decline to reject claims 26—39 pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean that the remaining claims are necessarily patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. DECISION The Examiner’s decision rejecting claims 25—39 is reversed. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 25 under 35 U.S.C. § 102(b) as being anticipated by Lee. Rule 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Rule 41.50(b) also provides the following: 7 Appeal 2016-004884 Application 13/829,696 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure (MPEP) § 1214.01 (9th Ed., Rev. 9, Nov. 2015). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). REVERSED 37 C.F.R, $ 41.50(b) 8