Ex Parte Nasr-El-Din et al

Patent Trial and Appeal Board

Apr 3, 2018

13993462 (P.T.A.B. Apr. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/993,462 06/12/2013 Hisham Nasr-El-Din
152163 7590 04/05/2018
Akzo Nobel Chemicals LLC
525 W. Van Buren
Suite 1600
Chicago, IL 60607
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.
AFCl 1109-US-Pl 8616
EXAMINER
LI,AIQUN
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
04/05/2018 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):
sc-ipani@akzonobel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HISHAM NASR-EL-DIN,
CORNELIA ADRIANA DE WOLF,
MOHAMED AHMED NASR-EL-DIN MAHMOUD,
ALBERTUS JACOBUS MARIA BOUWMAN, and
NOBLE THEKKEMELATHETHIL GEORGE
Appeal2017-006737
Application 13/993,462 1
Technology Center 1700
Before ROMULO H. DELMENDO, A VEL YN M. ROSS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek our review of the
Examiner's rejection of claims 1, 2, and 23-30.
We have jurisdiction under 35 U.S.C. § 6.
We reverse, and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellants identify the real party in interest as Akzo Nobel Chemicals
International B.V. App. Br. 2.
Appeal2017-006737
Application 13/993,462
SUBJECT MATTER
The subject matter on appeal relates to a process for treating a
sandstone formation with a fluid containing glutamic acid N,N-diacetic acid
or a salt thereof (GLDA). Spec. 1 :4--5.
Sole independent claim 1 is illustrative of the claimed subject matter
and is copied below:
1. Process for treating a sandstone formation compnsmg
introducing a fluid containing glutamic acid N,N-diacetic acid or
a salt thereof (GLDA) and having a pH of between 1and14 into
the formation, wherein the fluid contains 5-30 wt% on the basis
of total fluid of glutamic acid N,N-diacetic acid or a salt thereof
(GLDA).
App. Br. 13.
REJECTIONS
Claims 1, 2, and 23-29 are provisionally rejected under the doctrine
of obviousness-type double patenting over claims 1-8 and 10-12 of
copending application number 13/993,788. Final Act. 4. 2
Claims 1, 2, and 23-30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Welton (US 2008/0035340 Al, published February 14,
2008). Final Act. 5.
OPINION
We begin with the obviousness rejection. The Examiner relies on the
disclosure of Welton to conclude that the subject matter of claim 1 would
2 The provisional obviousness-type double patenting rejection over co-
pending application number 13/993,831 has been withdrawn by the
Examiner in view of the Terminal Disclaimer filed September 15, 2016 over
this application, and approved September 26, 2016. Ans. 4.
2
Appeal2017-006737
Application 13/993,462
have been obvious to the skilled artisan. Final Act. 5-6. Specifically, the
Examiner finds that Welton discloses the tetrasodium salt of GLDA in a list
exemplifying "suitable chelating agents" such as ethylenediaminetetraacetic
acid ("EDT A"), nitrilotriacetic acid ("NT A"), hydroxyethylethylene-
diaminetetraacetic acid ("HEDT A"), diethylenetriaminepentaacetic acid
("DTP A"), propylenediaminetetraacetic acid ("PDT A"), ethylenediamine-
di( o-hydroxyphenylacetic) acid ("EDD HA"), glucoheptonic acid, gluconic
acid, combinations thereof, and derivatives thereof, in an amount of from 5
to 60 wt%, and concludes that the claimed process would have been
obvious. Final Act. 5, citing Welton i-f 24.
Appellants challenge the Examiner's obviousness conclusion on
several grounds. App. Br. 4--11. One such contention is that the Examples
contained in the Specification demonstrate the superiority of GLDA over
HEDT A and HCl, and that the Examiner failed to properly consider this
evidence of secondary considerations. App. Br. 8-9.
We are persuaded that Appellants have identified reversible error in
the Examiner's obviousness rejection. Welton's disclosure at paragraph 24
lists GLDA among nine possible chelating agents, and an untold number of
combinations or derivatives of such chelating agents, as well as a large
number of scale control agents. Importantly, Welton does not distinguish
between the efficacy of the listed chelating agents or scale control agents.
Rather, Welton expressly states that "any suitable chelating agent or scale
control agent may be used." Welton i-f 24.
Appellants point to Examples 1-8 contained within their Specification
to establish that the recited GLDA achieves unexpectedly superior properties
over other chelating agents such as HEDT A. App. Br. 8-9. The Examiner
3
Appeal2017-006737
Application 13/993,462
responds that because "Welton expressly discloses that GLDA is a suitable
chelating agent ([0024 ]), the use of GLDA is specifically taught and the
unexpected properties ... were immaterial." Ans. 6. See also Final Act. 4,
citing In re Sivaramakrishnan, 673 F.2d 1383 (CCPA 1982) and MPEP
2132.02. 3
The Examiner's treatment of Appellants' evidence constitutes error
for several reasons. First, because Appellants' evidence appears to be
probative to the issue that a fluid containing the recited GLDA achieves a
different permeability ratio in a Berea sandstone formation than does
HEDT A, it was improper for the Examiner to dismiss such evidence as
"immaterial." Ans. 6; Final Act. 4. In re Arkley, 455 F.2d 586, 587-588
(CCP A 1972) (explaining that "the applicant must be afforded an
opportunity to rebut with objective evidence any inference of obviousness
which may arise from the similarity of the subject matter which he claims to
the prior art."). When, as here, Appellants present evidence of secondary
considerations, failure to consider or give such evidence the weight that it is
due is erroneous. In re Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011).
Moreover, to the extent the Examiner considered Appellants' data, it
is not entirely clear from this record that the Examiner had a full
appreciation of the scope and content of such data. Specifically, the
Examiner asserts that "[a ]ll the examples Appellant presented are
3 We agree with Appellants (App. Br. 9) that the Examiner's citation to In re
Sivaramakrishnan is misplaced because such case dealt with anticipation,
not obviousness. Further, MPEP 2131.02, Revision 6 (Sept. 2007) cited by
the Examiner pertains to anticipation in genus-species situations, explaining
that, in the Sivaramakrishnan case, "because the claim was anticipated, the
unexpected properties were immaterial."
4
Appeal2017-006737
Application 13/993,462
comparison[s] between GLDA and HEDTA or MGDA at one particular
concentration of 0.6 M." Ans. 6. See also Non-Final Act. 4 3 (noting that
"Applicant's examples are directed to GLDA of a specific concentration of
0.6M at the specific pH of 4."). However, Appellants' Example 2 compares
GLDA and HEDTA at different pH levels (i.e., 3.8 and 6.8) (Spec. 27:6-17;
Fig. 4), while Appellants' Examples 3 and 4 compare the permeability ratio
of GLDA at three different concentrations (i.e., 0.4M, 0.6M, and 0.9M) and
two different pH levels (i.e., 4 and 11) (Spec. 27:21-28; Figs. 5, 6).
In view of the above, we reverse the Examiner's obviousness rejection
over Welton.
Our reversal of the obviousness rejection leaves the provisional
obviousness-type double patenting rejection over claims 1-8, and 10-12
over co-pending application number 13/993,788. Final Act. 4. We decline
to reach the merits of this provisional rejection and leave it to the Examiner
to address it consistent with MPEP § 804 upon return of this application to
the jurisdiction of the Examiner.
New ground of re} ection
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we newly reject
claim 1under35 U.S.C. § 103(a) as unpatentable over LePage (J.N. LePage
et al., An Environmentally Friendly Stimulation Fluid for High-Temperature
Applications, SPE JOURNAL 1-7 (2010)). 5
LePage discloses a process for treating a sandstone formation
comprising introducing a fluid containing glutamic acid N,N-diacetic acid or
4 Non-Final Official Action dated February 10, 2016.
5 LePage was relied on by the Examiner to reject certain claims in co-
pending application number 13/993,788.
5
Appeal2017-006737
Application 13/993,462
a salt thereof (GLDA), having a pH of between 1 and 14 into the formation,
wherein the fluid contains 5-30 wt% on the basis of total fluid of GLDA.
See LePage 1, Summary, where GLDA is described as a stimulation
chemical to be used to dissolve materials in sandstone formations,
particularly CaC03; and LePage 6, Conclusions, disclosing that "aqueous
solutions [of GLDA] of up to 40 wt% are possible at pH 2."
It is well-settled that where claimed ranges "overlap or lie inside
ranges disclosed by the prior art," a prima facie case of obviousness exists.
In re Wertheim, 541F.2d257, 267 (CCPA 1976). In cases, such as the one
here, where "the claimed ranges are completely encompassed by the prior
art, the [obviousness] conclusion is even more compelling than in cases of
mere overlap" and "shifts the burden to the applicant to show that his
invention would not have been obvious." In re Peterson, 315 F.3d 1325,
1330 (Fed. Cir. 2003).
Because LePage discloses that aqueous solutions of GLDA of up to
40 wt% are possible, LePage's disclosure completely encompasses the
recited range of 5-30 wt%, and the burden is properly shifted to Appellants
to demonstrate nonobviousness.
Our new ground of rejection focuses on sole independent claim 1. We
leave it to the Examiner to determine the propriety of rejecting dependent
claims 2 and 23-30 consistent with the factual findings and reasoning set
forth herein.
DECISION
The Examiner's rejection of claims 1, 2, and 23-30 under 35 U.S.C.
§ 103(a) as unpatentable over Welton is reversed.
6
Appeal2017-006737
Application 13/993,462
We decline to reach the Examiner's provisional obviousness type-
double patenting rejection over co-pending application serial number
13/993,788.
We enter a new ground of rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over LePage, pursuant to our authority under 37
C.F.R. § 41.50(b).
REVERSED
37 C.F.R. § 41.50(b)
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
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
7
Appeal2017-006737
Application 13/993,462
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.
8