Ex Parte Huang

Patent Trial and Appeal Board

Nov 9, 2016

13415204 (P.T.A.B. Nov. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/415,204 03/08/2012 Tianping Huang
87884 7590 11/14/2016
Mossman, Kumar and Tyler, PC
P.O. Box 421239
Houston, TX 77242
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PE4-47695-USCP 2636
EXAMINER
BLAND, ALICIA
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
11/14/2016 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):
docket@mktlaw.us.com
tthigpen@mktlaw.us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIANPING HUANG
Appeal2015-005149
Application 13/415,204
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In our Opinion below, we refer to the Specification filed March 8, 2018
("Spec."), the Final Action mailed July 8, 2014 ("Final Act."), the Appeal
Brief filed December 8, 2014 ("App. Br."), the Examiner's Answer mailed
February 13, 2015 ("Ans."), and the Reply Brief filed April 8, 2015 ("Reply
Br.").
Appeal2015-005149
Application 13/415,204
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to methods of clay stabilization in a
subterranean formation with nanoparticles. Claim 1, reproduced below with
the disputed limitations emphasized, is illustrative of the claimed subject
matter:
1. A method for stabilizing clays comprising:
introducing into a subterranean formation containing clays a
treating fluid comprising:
a base fluid, and
an amount of a particulate additive effective to stabilize
the clays, the particulate additive:
having a mean particle size of 100 nm or less, and
being selected from the group consisting of alkaline
earth metal oxides, alkaline earth metal hydroxides, alkali metal
oxides, alkali metal hydroxides, transition metal oxides,
transition metal hydroxides, post-transition metal oxides, post-
transition metal hydroxides, piezoelectric crystals, pyroelectric
crystals, and mixtures thereof,
contacting the clays in the formation with the treating fluid and
inhibiting the clays from expansion and/or migration by
associating the particulate additive with the clays by surface
forces of the particulate additive as compared with introducing
an identical fluid absent the particulate additive, without being
pore plugging; and
in the absence of cementing.
App. Br. 24 (Claims App'x) (emphasis added).
2
Appeal2015-005149
Application 13/415,204
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Huang et al., ("Huang '201) US 2009/0312201 Al Dec. 17, 2009
REJECTIONS
Claims 1-16 stand rejected under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative, under 35 U.S.C. § 103(a) as obvious over Huang
'201.
OPINION
Appellant argues patentability of all of the claims on appeal as a
group. See App. Br. 9. We select claim 1 as representative of the group.
The remaining claims will stand or fall with claim 1. 3 7 C.F .R.
§ 41.37(c) (iv) (2014).
The Examiner rejects the claims over Huang '201, which is one of
two grandparent applications to the instant application. Final Act. 8; see
Spec. if 1. The pivotal issue in this appeal is the Examiner's treatment of the
limitations "without being pore plugging" and "in the absence of
cementing." All three independent claims of the application on appeal
contain the disputed limitations. App. Br. 24, 26, and 29. The limitations
raise issues of both priority and patentability.
Priority
We tum first to the issue of priority, and the limitation "in the absence
of cementing," which appears in all claims of the instant application. The
3
Appeal2015-005149
Application 13/415,204
Examiner finds, and Appellant does not dispute, that "in the absence of
cementing" is new matter to the instant application, causing the application's
effective filing date to be March 8, 2012. 2 Ans. 3; see also App. Br. 14. In
continuation-in-part applications, priority date is determined on a claim-by-
claim basis. Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 718
(Fed.Cir.2008). All of the appealed claims contain the "in the absence of
cementing" limitation. Therefore, Huang '201 qualifies as § 102(b) prior art
to all of the claims. See In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) ("Chu
[continuation-in-part of Doyle patent] is entitled to the benefit of the Doyle
patent filing date only if the Doyle patent discloses the subject matter
claimed by Chu.").
Appellant also acquiesces to the Examiner's finding that the claim
limitation "without being pore plugging" as used in claim 1 is new matter to
the instant application. Compare Final Act. 4--5 ("the limitation is still
deemed 'new and unsupported' by the parent case) with App. Br. 13 ("The
Examiner correctly notes that the limitation 'without being pore plugging' in
claim 1 is new to the instant application.") (emphasis added).
The filing of a continuation-in-part application to overcome a
rejection does not give rise to an irrebuttable presumption of acquiescence in
the rejection. Pennwalt Corp. v. Akzona Inc. 740 F.2d. 1573, 1578-79 (Fed.
Cir. 1984). However, here the applicant unambiguously acknowledges that
the limitation "without being pore plugging" is new matter to the instant
application. App. Br. 13. Appellant is thus estopped from arguing for
2 Only claims to inventions that are disclosed in the manner provided by 35
U.S.C. § 112 i-f 1 in the prior-filed applications are entitled to the benefit of
the filing date of the prior-filed application. 35 U.S.C. § 120 (2006).
4
Appeal2015-005149
Application 13/415,204
priority to the filing date of Huang '201. See, Litton Sys., Inc. v. Whirlpool
Corp., 728 F.2d 1423, 1440 (Fed. Cir. 1984) ("Litton chose instead to
abandon its right to review via PTO appellate procedure, and rather,
acquiesced to the PTO' s requirement for a C-I-P declaration, for whatever
reason. Litton is now bound to its acquiescence."); Pennwalt Corp., 740
F.2d at 1580 ("In view of Armak's failure to show that it did not acquiesce,
Armak is estopped from asserting that the grandparent application complied
with the first paragraph of 35 U.S.C. § 112 in order to gain benefit of that
application's [] filing date under 35 U.S.C. § 120."). For this additional
reason, Huang '201 qualifies as § 102(b) prior art.
Anticipation or obviousness
With Huang '201 available as § 102(b) prior art, the question becomes
whether the reference anticipates or renders obvious all elements of the
appealed claims.
It is undisputed that in both the grandparent (Huang '201) and the
instant case, Appellant added the limitation "without being pore plugging" to
the claims in order to overcome the prior art. Ans. 4. In Huang '201, the
Examiner rejected the limitations as new matter, Appellant deleted them
from the claims, and filed the instant application as a continuation-in-part.
Id.
The language related to pore plugging in the Specification is found in
paragraphs 1 7 and 18:
In many cases, the ability of the treating fluids to stabilize clays
may be improved by use of nano-sized particulate additives that
may be much smaller than the pores and pore-throat passages
within a hydrocarbon reservoir, thereby being non-pore
plugging particles that are much less damaging to the reservoir
permeability than the clays themselves. This smaller size
5
Appeal2015-005149
Application 13/415,204
permits the nanoparticles to readily enter the formation, and then
stabilize the clays in place so that both the clays and the
nanoparticles remain in the formation and do not travel as far-
or at least are restrained to the point that damage to the near-
wellbore region of the reservoir is minimized.
These very small particle sizes permit the very small
particulate additives to easily flow through the pores of the
subterranean formation and thus these particulate additives
are non-pore plugging. Further, it has been discovered that the
associations or connections or agglomerations or agglomerate
composites of the particulate additives (e.g. nanoparticles) with
the fines are non-pore plugging as well. That is, the fixation of
the fines according to the methods described herein is without
being pore plugging.
Spec. i-fi-f 17-18.
One of ordinary skill in the art at the time of the invention would have
viewed the Specification as teaching that "without being pore-plugging"
(used interchangeably by the Appellant with "non-pore plugging") means
that nano-sized particulate additives much smaller than the pores within a
hydrocarbon reservoir, alone or associated or agglomerated with fines, allow
fluid to flow through the pores of the subterranean formation and are less
damaging to the reservoir permeability than the fines themselves. Because
some damage may occur to the reservoir permeability as a result of the
nano-sized particulate additives, alone or associated or agglomerated with
fines, some minimal obstruction of pores may occur when the additives or
agglomerates are said to be "non-pore plugging."
Appellant contends that "without being pore plugging" cannot be both
unsupported by the parent case and taught/suggested by Huang '201. App.
Br. 21. Appellant argues that, if Huang '201 lacked written description for
6
Appeal2015-005149
Application 13/415,204
the limitation "without being pore plugging" during its prosecution (the
application is now abandoned), then the same publication could not
anticipate or render obvious the claims of the instant invention. App. Br.
21-22 ("How can the same lack of written description support for claim
language in a parent application be subsequently found to explicitly teach or
render obvious the same language in the claims of a CIP application?").
We need not resolve any purported issue of inconsistency. Although
Appellant presumes the Examiner's finding of new matter in the grandparent
application was correct, we do not make the same presumption. Rather, we
consider the question of inherency and obviousness in the context of the
anticipation and obviousness rejections before us. There is no issue of lack
of written descriptive support before us. Appellant's acquiescence to the
entitlement of the grandparent filing date removes that issue from our
review.
Appellant contends that claim 1 is not anticipated by Huang '201.
App. Br. 7-8.
The Examiner notes that the same compositions and methods are used
in Huang '201 as in the instant application. Ans. 9. "It is elementary that
the mere recitation of a newly discovered function or property, inherently
possessed by things in the prior art, does not cause a claim drawn to those
things to distinguish over the prior art." In re Swinehart, 439 F .2d 210, 213
(CCPA 1971).
In Huang '201, the entirety of the disclosure regarding pore plugging
is almost identical to paragraph 1 7 of the Specification:
In many cases, fines fixing ability of the treating fluids may be
improved by use of nano-sized particulate additives that may be
much smaller than the pores and pore-throat passages within a
7
Appeal2015-005149
Application 13/415,204
hydrocarbon reservoir, thereby being non-pore plugging
particles that are less damaging to the reservoir permeability
than the fines themselves. This smaller size permits the
nanoparticles to readily enter the formation, and then bind up or
fix the fines in place so that both the fines and the nanoparticles
remain in the formation and do not travel as far---or at least are
restrained to the point that damage to the near-wellbore region of
the reservoir is minimized.
Huang '201 i-f 9 (emphasis added). Huang '201 does not include
paragraph 18 of the Specification given above, which conveys that not only
are nano-size particulate additives non-pore plugging, but specifies that
"associations or connections or agglomerations or agglomerate composites
of the particulate additives with fines" are non-pore plugging as well. See
Spec. ,-r 18.
Huang '201 teaches mixing treating fluids with nano-sized particulate
additives. See, e.g., Huang '201 i-f 9. The properties of this composition,
which is the same as disclosed in the Specification, are inseparable from the
composition itself, and because Huang '201 teaches the composition, the
properties are necessarily present in the reference. See In re Best, 562 F.2d
1252, 1256 (CCPA 1977). Therefore, Appellant has not persuaded us of
reversible error in the Examiner's rejection of claim 1 as anticipated by
Huang '201.
In most cases when matter added through amendment to a
continuation-in-part application is deemed inherent to the disclosure in the
parent application, that matter is entitled to the filing date of the parent
application. Litton, 728 F.2d at 1438. But where, as here, Appellant has
filed a continuation-in-part application in response to a finding of new
matter and have stated on the record that the matter lacks written descriptive
8
Appeal2015-005149
Application 13/415,204
support in the parent case, Appellant has acquiesced and estoppel applies
with regard to the priority date.
The instant application claims methods that do not differ from the
methods-and compositions---disclosed in Huang '201. See, e.g., Huang
'201 i-fi-17-10. As a consequence, it is reasonable to presume that "without
pore plugging" and "in the absence of cementing"3 are inherent properties of
the methods claimed. On the other hand, "a prior art reference without
express reference to a claim limitation may nonetheless anticipate by
inherency." In re Omeprazole Patent Litigation, 483 F.3d 1364, 1373 (Fed.
Cir. 2007).
Under the facts of the present record, Huang '201 qualifies as prior art
and anticipates the method of claim 1. Claims 2-16 stand or fall with claim
1, therefore also are rejected 35 U.S.C. § 102(b) as anticipated by Huang
'201. We also affirm the rejection of these claims under 35 U.S.C. § 103(a)
as obvious over Huang '201. See In re McDaniel, 293 F.3d 1379, 1385
(Fed. Cir. 2002) ("[A]nticipation is the epitome of obviousness.").
DECISION
For the above reasons, the Examiner's rejection of claims 1-16 is
AFFIRMED.
3 The Examiner finds that Huang '201 does not use cement anywhere in the
reference, thus the reference meets the "in the absence of cementing"
limitation of the claims. Final Act. 3. Appellant has not identified
reversible error in this finding. Huang '201 is sufficient to meet all the claim
limitations in an anticipatory manner since the same composition is used
therein.
9
Appeal2015-005149
Application 13/415,204
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) (2009).
AFFIRMED
10