Ex Parte Smith et al

Patent Trials and Appeals BoardMar 25, 2019

14205654 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/205,654 03/12/2014 Stanton R. Smith 24112 7590 03/25/2019 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 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. 6900-019 4604 EXAMINER ALI, WAQAAS A ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 03/25/2019 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 STANTON R. SMITH, JEREMY CARDIN, BENOIT TRANAPE, BRAD BIAGINI, and MARK W. HESS Appeal2018-003457 Application 14/205,654 Technology Center 1700 Before JAMES C. HOUSEL, GEORGE C. BEST, and MICHAEL G. McMANUS, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision finally rejecting claims 1-15. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Our decision refers to the Specification ("Spec.") filed March 12, 2014, Appellant's Appeal Brief ("Appeal Br.") filed August 7, 2017, the Examiner's Answer ("Ans.") dated December 11, 2017, and Appellant's Reply Brief ("Reply Br.") filed February 9, 2018. 2 Appellant is the Applicant, Veolia Water Technologies, Inc., which is identified in the Appeal Brief as the real party in interest (Appeal Br. 2). Appeal2018-003457 Application 14/205,654 STATEMENT OF THE CASE The invention relates to oil recovery processes that yield produced water containing anti-scaling additives (Spec. ,r 2). Appellant discloses that the processes include a step of deactivating the anti-scaling additives that otherwise prevent precipitation and subsequent removal of soluble salts from the produced water, wherein the deactivation is performed by mixing an oxidant and/or multivalent coagulant salt into the produced water (id. ,r,r 3- 4). Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. The limitations at issue are italicized. 1. A method of recovering oil from an oil-bearing formation and treating produced water containing an anti-sealant compound, compnsmg: recovering an oil-water mixture from the oil-bearing formation; separating oil from the oil-water mixture to produce an oil product and the produced water; deactivating the anti-sealant compound by mixing an oxidant and multivalent coagulant salt with the produced water, thereby precipitating compounds previously kept in solution due to the presence of the anti-sealant compounds; and after deactivating the anti-sealant compound, directing the produced water through a ceramic membrane to remove residual oil from the produced water and producing a permeate stream and a retentate stream. Independent claims 7 and 13 similarly recite methods of recovering oil from an oil-bearing formation and treating produced water containing anti-scaling additives, involving deactivation of the anti-scaling additives by mixing at least an oxidant into the produced water to precipitate compounds therefrom. 2 Appeal2018-003457 Application 14/205,654 REJECTIONS The Examiner maintains, and Appellant requests our review of, the following grounds of rejection under 35 U.S.C. Â§ I03(a): 1. Claims 1---6 and 13-15 as unpatentable over Lombardi 3 in view ofHennige, 4 and further evidenced by Rogers5 or Lawson; 6 and 2. Claims 7-12 as unpatentable over Lombardi as evidenced by Rogers or Lawson. ANALYSIS For purposes of this appeal, to the extent that the claims on appeal are separately argued, we will address them separately consistent with 3 7 C.F .R. Â§ 4I.37(c)(l)(iv) (2016). The dispositive issue before us is whether Appellant has identified reversible error in the Examiner's finding that Lombardi's process inherently deactivates anti-scaling compounds, where the presence of such anti-scaling compounds was a well-known produced water additive in the art. Appellant argues that because Lombardi does not inherently include such anti-sealants in the produced water, i.e., the anti-sealants are not always present, Lombardi's process cannot inherently deactivate such compounds (Appeal Br. 6-8). Appellant further argues that because Lombardi does not recognize the problems associated with anti-sealants in produced water and 3 Lombardi et al., US 2007/0102359 Al, published May 10, 2007 ("Lombardi"). 4 Hennige et al., US 2005/0070193 Al, published March 31, 2005 ("Hennige"). 5 L.A. Rogers, et al., Use of Inhibitors for Scale Control in Brine-Producing Gas and Oil Wells, SPE PRODUCTION ENGINEERING, February 1990, pp. 77- 82 ("Rogers"). 6 Lawson et al., US 5,346,009, issued September 13, 1994 ("Lawson"). 3 Appeal2018-003457 Application 14/205,654 Lombardi's use of an oxidant and a coagulant are for a different purpose than Appellant's purpose, the Examiner's obviousness analysis based on inherency is the result of impermissible hindsight (id. at 9). In addition, Appellant argues that the Examiner's determination that Lombardi's process would be capable of deactivating anti-sealants because Lombardi performs the same process steps as claimed is in error (id. at 9--10; see also Reply Br. 2-3). Specifically, Appellant contends that there is no legal basis for this determination (Appeal Br. 9--10). 7 After review of the opposing positions articulated by Appellant and the Examiner, the applied prior art, and Appellant's claims and Specification disclosures, we determine that the Appellant's arguments are insufficient to identify reversible error in the Examiner's obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated obviousness rejections for substantially the fact findings and the reasons set forth by the Examiner in the Examiner's Answer. We offer the following for emphasis only. When there is a ... problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options . . . . If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under Â§ 103. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Moreover, it is well settled that it is not required for a finding of obviousness that the 7 Appellant does not challenge the Examiner's findings regarding Hennige, nor do they challenge the Examiner's conclusion of obviousness based on Hennige (see Appeal Br. generally). We, therefore, will not further discuss Hennige in our Decision. 4 Appeal2018-003457 Application 14/205,654 motivation or purpose of the skilled artisan be the same as an applicant's for practicing a claimed invention. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). Indeed, the Supreme Court has articulated this same sentiment when emphasizing that the patentee's motivation and purpose do not control an obviousness determination: In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under Â§ 103. KSR, 550 U.S. at 419. Finally, the mere discovery of a new property achieved by a known process does not render that process unobvious. See In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) ("Even ifno prior art of record explicitly discusses the ... [limitation], [Appellants'] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [ claimed invention], but rather a property necessarily present in [ the claimed invention]."). The evidence before us establishes that Lombardi performs the same steps as recited in claim 1, except that the mixing of an oxidant and multivalent coagulant salt with the produced water is for an expressed purpose that is different from Appellant's purpose. In other words, Lombardi adds the oxidant to break up organic and inorganic suspended solid emulsions, including hydrocarbon emulsions, and form an oxidized produced water, whereas Appellant adds the oxidant to deactivate anti- sealant compound present in the produced water ( compare Lombardi ,r 69 with Spec. ,r 4). See In re May, 574 F.2d 1082, 1090 (CCPA 1978); In re Tomlinson, 363 F.2d 928, 934 (CCPA 1966). The Examiner finds that 5 Appeal2018-003457 Application 14/205,654 although Lombardi does not disclose adding such an anti-sealant to the produced water, doing so was well-known to those skilled in this art for the purpose of inhibiting precipitation of sparingly soluble salts present in such water to prevent the formation of scale that decreases wellbore permeability and impairs well productivity (Ans. 5; Spec. ,r,r 3, 14; Rogers 77, Summary and Introduction; Lawson 1: 11-22). Thus, even though Lombardi does not disclose treating produced water that contains an anti-sealant compound, such produced water was well-known in this art. This situation is akin to a disclosed genus, i.e., Lombardi's produced water treatment process, and a claimed species within that genus, i.e., claim 1 's produced water containing anti-sealant treatment process. Here, the evidence suggests that the claimed species represents one of two possible and known species within the disclosed genus: ( 1) produced water with anti-sealant; and (2) produced water without anti-sealant. In such a situation, we cannot say that the claimed species is patentably distinct over the genus because it is one of only two known species within the genus. Thus, because anti-sealants were "commonly used in oilfield and gasfield produced water treatment as mineral scale and corrosion inhibitors" (Spec. ,r 3), it is reasonable to expect that Lombardi's process would have been used on such produced water for the purpose Lombardi discloses and also that Lombardi's process, when used on such produced water, would necessarily deactivate any anti-sealant compound present therein. Appellant further argues that the Examiner does not address claims 4, 6, 10, 12, and 14, in that the Examiner does not maintain that the prior art shows a process where an anti-sealant compound is deactivated by employing sodium hypochlorite (Appeal Br. 10; Reply Br. 4--5). However, 6 Appeal2018-003457 Application 14/205,654 the Examiner explains that Lombardi uses an oxidant, such as hypochlorite (Ans. 5, 13). We note that hypochlorite is a known anion, Clo-, that is generally associated with a cation, such as sodium as in household bleach. Appellant next argues that the Examiner has not made out a prima facie case of obviousness with respect to claims 5 and 11 (Appeal Br. 10). In particular, Appellant urges that simply because phosponates may be well- known anti-sealants does not necessarily make it obvious to employ such in Appellant's invention (id. at 10-11). However, Appellant's misapprehend the Examiner's rejection which relies on the fact that phosphonates are well- known anti-sealant compounds that are commonly used in produced water in oil recovery processes to establish that it would have been obvious to have performed Lombardi's process on produced water in which phosphonates have been added. Therefore, not only do Appellant's arguments fail to persuade us of reversible error in the Examiner's obviousness rejections, we find that a preponderance of the evidence supports the Examiner's obviousness conclusion. Accordingly, we sustain the Examiner's obviousness rejections of claims 1-15. DECISION Upon consideration of the record, and for the reasons given above and in the Examiner's Answer, the decision of the Examiner rejecting claims 1- 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Lombardi, alone or in view of Hennige, and further evidenced by Rogers or Lawson, is affirmed. 7 Appeal2018-003457 Application 14/205,654 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.I36(a)(l). AFFIRMED 8