Ex Parte Jamison et al

Patent Trial and Appeal BoardMar 18, 2019

13752949 (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/752,949 01/29/2013 Dale E. Jamison 112839 7590 03/20/2019 C. Tumey Law Group PLLC - HES C. Tumey Law PO Box 890226 Houston, TX 77062-9998 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. 1560-092900 9814 EXAMINER AHUJA, ANURADHA ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 03/20/2019 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): ctumey@ctumeylawgroup.com docketing@ctumeylawgroup.com bdempsey@ctumeylawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DALE E. JAMISON, CHARLES LANDIS, JAY DEVILLE, and CATO MCDANIEL Appeal2017-005375 Application 13/752,949 Technology Center 3600 Before LINDAE. HORNER, JEFFREY A. STEPHENS, and ERIC C. JESCHKE, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. Â§ 134(a) from the Examiner's Final Office Action ("Final Act.") rejecting claims 10-20, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). For the reasons explained below, we AFFIRM-IN-PART. 1 Appellant is the Applicant, Halliburton Energy Services, Inc., which is also identified by the Appeal Brief as the real party in interest. Br. 3. Appeal2017-005375 Application 13/752,949 Claimed Subject Matter The claimed subject matter "relates to mineral particles that provide for wellbore fluids with tailorable properties and capabilities." Spec. ,r 1. The mineral particles "may advantageously serve as weighting agents and other wellbore additives [(select] viscosifiers, cement particles, sag control additives, proppants, and the like), which may allow for the production of wellbore fluids with tailorable properties and capabilities using minimal types of wellbore additives." Id. ,r 13. The Specification states that use of the described mineral particles "in wellbore fluids for multiple purposes may reduce the complexity, and consequently the cost, of such wellbore fluids." Id. Claims 10 and 14 are independent, and are reproduced below with selected limitations emphasized to illustrate the claimed subject matter. 10. A method comprising: circulating a wellbore fluid with a density of about 7 ppg to about 50 ppg in a wellbore penetrating a subterranean formation, the wellbore fluid comprising a base fluid and a plurality of linkable mineral particles, and the wellbore fluid having first viscosity; introducing a linking agent into the wellbore fluid in response to a condition encountered in the wellbore during circulating so as to yield a second viscosity that is greater than the first viscosity of the well bore fluid without forming a non- pumpable fluid; and recovering the plurality of linkable mineral particles from the wellbore without forming the non-pumpable fluid. 14. A method comprising: circulating a wellbore fluid with a density of about 7 ppg to about 50 ppg in a wellbore penetrating a subterranean formation, the wellbore fluid comprising a base fluid and a 2 Appeal2017-005375 Application 13/752,949 plurality of mineral particles, and the wellbore fluid having first viscosity and is pumpable; introducing a degradation agent into the wellbore fluid at the first viscosity in response to a condition encountered in the wellbore during circulating; and degrading the plurality of mineral particles with the degradation agent so as to yield a second viscosity for the well bore fluid that is less than the first viscosity of the well bore fluid. Rejections I. Claim 17 stands rejected under pre-AIA 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Final Act. 2. II. Claims 10-20 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Morgan (US 2010/0186956 Al, published July 29, 2010) and Todd (US 2004/0000434 Al, published Jan. 1, 2004). Final Act. 2-9. III. Claim 10 stands provisionally rejected on the ground of nonstatutory obviousness-type double patenting over claims 5 and 8 of copending Application No. 14/940,472 (the "'472 Application") in view of Todd. Final Act. 10-11. DISCUSSION Rejection 1-35 US.C. Â§ 112, second paragraph Claim 17 Appellant does not argue the rejection of claim 17 under 35 U.S.C. Â§ 112, second paragraph, is in error. Accordingly, we summarily sustain the rejection. 3 Appeal2017-005375 Application 13/752,949 Rejection 11-35 US.C. Â§ 103(a) Appellant argues the rejection of claims under 35 U.S.C. Â§ 103(a) based on independent claims 10 and 14. We select claim 10 as representative of claims 10-13, 19, and 20, and claim 14 as representative of claims 14--18. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claims 10-13, 19, 20 The Examiner finds Morgan teaches several elements of claim 10, but does not explicitly limit the density to the claimed range, does not explicitly disclose yielding a second viscosity that is greater than the first, and does not disclose recovering the plurality of linkable mineral particles. Final Act. 2- 4. As to the desired density, the Examiner finds Morgan's range overlaps with the claimed range and that one of ordinary skill in the art would have discovered optimum or workable ranges by routine experimentation. Id. at 3. As to the second viscosity, the Examiner reasons that "it would have been obvious to one of ordinary skill in the art to suitably tailor the viscosity of the wellbore fluid in order to yield predictable results for a desired wellbore treatment." Id. at 4 (citing Morgan ,r,r 16-18, 23, 27, 38). The Examiner relies on Todd for teaching recovery of the linkable mineral particles, and finds one of ordinary skill in the art would have modified Morgan in view of Todd to recover the mineral particles in order to clean the wellbore and/or restore permeability for oil recovery. Id. (citing Todd ,r,r 2, 3, 8-10). Regarding claim 10' s requirement that the linking agent is introduced so as to yield the second viscosity "without forming a non-pumpable fluid," the Examiner states that Morgan's "wellbore fluid is pumpable during circulation." Id. at 3. 4 Appeal2017-005375 Application 13/752,949 Appellant argues Morgan does not teach the introducing and recovering steps "without forming a non-pmnpable fluid," as recited in claim 10, because Morgan teaches forming a hardened resin material. Br. 6. In particular, Morgan teaches introducing a wellbore servicing composition that includes at least a liquid hardenable resin component and liquid hardening agent component, ,r 3 8, and teaches that the composition may "set into a flexible, resilient and tough material," ,r 39, "form a non-flowing, intact mass," id., and set in an annular space "thereby forming an annular sheath of hardened, substantially impermeable resin," ,r 41. In the Answer, the Examiner explains that "the limitation of 'without forming a non-pumpable fluid' is recited in the step of 'introducing ... during circulating,"' and finds Morgan teaches the wellbore fluid is pumpable during introduction/circulation. Ans. 2-3 (omission in original). The Examiner finds "Morgan discloses the formation of a hardened mass or a flexible, resilient and tough material after the wellbore fluid is placed in a desired location (Morgan: Sections [0039] & [0042]-[0046]), which is considered after introduction/circulation." Ans. 3; see Final Act. 12. The Examiner also notes that paragraph 25 of Morgan teaches wherein the amount of liquid hardening agent in the wellbore fluid is selected to impart a desired elasticity or compressibility to a resulting wellbore plug. Ans. 3; Final Act. 12. Appellant contends the Examiner is picking an arbitrary point in time to state that Morgan teaches "without forming a non-pumpable fluid." Br. 6. Appellant argues Morgan's compositions will always form a non-pumpable composition, while claim 10 requires that the well bore fluid not become non-pumpable. 5 Appeal2017-005375 Application 13/752,949 We agree with Appellant that there is insufficient evidence to support the Examiner's finding that Morgan teaches introducing a linking agent so as to yield the second, higher viscosity "without forming a non-pumpable fluid." The Examiner's finding is based on an overly broad interpretation of claim 10. Whether claim 10 precludes the linking agent from causing the wellbore fluid to form a non-pumpable fluid at any time, the claim language requires that the linking agent be introduced "so as to yield a second viscosity that is greater than the first viscosity of the wellbore fluid" without forming a non-pumpable fluid. The Specification reinforces that the pumpability is considered after the viscosity increase, in teaching that "[ v ]iscosity increases from linking with linking agents may, in some embodiments, yield wellbore fluids that remain pumpable, wellbore fluids that are non-pumpable, or hardened masses." Spec. ,r 65. Even if Morgan's wellbore servicing composition is introduced by pumping, and the wellbore fluid is pumpable for some time after introduction and during circulation, these facts are insufficient to show that Morgan teaches "without forming a non-pumpable fluid" in the context of claim 10. Having reviewed the Examiner's findings and the recited portions of Morgan, we do not see where Morgan indicates the wellbore fluid remains pumpable after the linking agent increases the viscosity to form the hardened mass. Paragraph 25 of Morgan relates to a desired elasticity or compressibility of a wellbore plug, but a plug that is relatively elastic or compressible is not necessarily pumpable. And although paragraph 27 of Morgan indicates the particulate size of the weighting material included in the servicing composition "may be selected to impart a desired viscosity to the well bore servicing composition" ( emphasis added), there is no specific 6 Appeal2017-005375 Application 13/752,949 teaching that introducing the composition into the wellbore fluid will result in a well bore fluid that results in a second, higher viscosity without forming a non-pumpable fluid at that second viscosity. The rejection also does not provide a specific reason that one of ordinary skill in the art would have modified Morgan's teaching of forming a hardened resin plug to form a higher viscosity wellbore fluid that remains pumpable at the higher viscosity. Accordingly, for the reasons discussed above, we do not sustain the rejection of independent claim 10 under 35 U.S.C. Â§ 103(a) over Morgan and Todd. For the same reasons, we do not sustain the rejection on the same ground of dependent claims 11-13, 19, and 20, which are not argued separately. Claims 14-18 In rejecting claim 14, the Examiner finds Morgan teaches or suggests all limitations except introducing a degradation agent and degrading the plurality of mineral particles. Final Act. 5-6. The Examiner finds Todd teaches that a portion of mineral particles in a well bore forms plugs, which can be removed by introducing a degradation agent. Id. at 6 ( citing Todd ,r,r 2, 3, 8-12). The Examiner reasons that "it would have been obvious to one of ordinary skill in the art to have modified Morgan with the aforementioned teachings of Todd to introduce a degradation agent as instantly claimed in order to remove/dissolve temporary plugs formed from the mineral particles and to restore permeability for oil recovery." Id. at 6- 7. Appellant argues Morgan teaches plugs formed of hardened resin material and not plugs formed of mineral particles. Br. 8. Appellant 7 Appeal2017-005375 Application 13/752,949 acknowledges, however, that because the fluids of Morgan may include weighting agent, the resultant plugs may have weighting agent incorporated therein. Id. Appellant argues that because Todd does not relate to hardened resin material, one of ordinary skill in the art would not have looked to Todd to teach degradation of the plugs of Morgan, but would have looked to references that teach degradation of hardened resin material. Br. 8-9. The Examiner responds that "the rejection does not set forth employing the same degradation mechanism/agent as Todd in the method of Morgan." Ans. 7. The Examiner clarifies that one of ordinary skill in the art would have modified Morgan with the teachings of Todd to introduce a degradation agent in order to remove/dissolve temporary plugs formed from the mineral particles and to restore permeability for oil recovery. Id. We agree with the Examiner's explanation that the precise degradation agent in Todd need not be used, and that Todd shows the desirability of removing plugs through degradation. We note also that the Examiner previously found that a portion of the mineral particles in Todd forms plugs, which are removed by introducing the degradation agent. Final Act. 6 (citing Todd ,r,r 2, 3, 8-12). Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner's rejection of claim 14 under 35 U.S.C. Â§ 103(a) as unpatentable over Morgan and Todd. For the same reasons, we sustain the rejection of claims 15-18, which are rejected on the same ground and not argued separately. 8 Appeal2017-005375 Application 13/752,949 Rejection III-Double Patenting Claim 10 The '472 Application relied on in provisionally rejecting claim 10 on the ground of nonstatutory obviousness-type double patenting issued as a patent subsequent to the Examiner's provisional rejection. See US 9,920,604 B2 (issued Mar. 20, 2018). Prior to issuance, amendments to claims 1 and 8 of the '4 72 Application potentially altered the scope of claims 5 and 8 relied on by the Examiner in the provisional rejection of claim 10 in the application on appeal. See '472 Application, Amendment filed Nov. 14, 2017. In light of these changed circumstances, we do not reach the provisional rejection so that, should there be further prosecution, including any review for allowance, the Examiner may consider in the first instance whether to enter or maintain a rejection based on double patenting. DECISION We affirm the Examiner's decision to reject claim 17 under 35 U.S.C. Â§ 112, second paragraph. We reverse the Examiner's decision to reject claims 10-13, 19, and 20 under 35 U.S.C. Â§ 103(a). We affirm the Examiner's decision to reject claims 14--18 under 3 5 U.S.C. Â§ 103(a). We do not reach the provisional rejection of claim 10 on the grounds of nonstatutory obviousness-type double patenting. 9 Appeal2017-005375 Application 13/752,949 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 10