Ex Parte Snider

Patent Trial and Appeal Board

Nov 23, 2016

12102687 (P.T.A.B. Nov. 23, 2016)

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.
12/102,687 04/14/2008 Philip M. Snider 200702 USA P01 1618
426 7590 11/28/2016
MARATHON OIL COMPANY
C/O LAW OFFICE OF JACK E. EBEL
165 SOUTH UNION BOULEVARD
SUITE 750
LAKEWOOD, CO 80228
EXAMINER
ANDREWS, DAVID L
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
j ack @ ebeliplaw .com
j ack_alope @comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP M. SNIDER
Appeal 2015-001070
Application 12/102,687
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Philip M. Snider (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1, 3—6, 8, 10, 15—17, 19, 20, and
26—30.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant submits the real party in interest is Marathon Oil Company.
Appeal Br. 3.
Appeal 2015-001070
Application 12/102,687
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A process comprising [:]
positioning tools in a well penetrating a subterranean
environs, said tools capable of being operated in any desired
sequence after being positioned in the well; and
fracturing the subterranean environs in any desired
sequence at spaced apart locations along the well penetrating
the subterranean environs, said tools being used in and
remaining in the well during said fracturing.
REJECTIONS
1) Claims 1, 4—6, 8, 10, 15—17, 19, 20, and 26—28 are rejected under
35 U.S.C. § 103(a) as unpatentable over Szarka (US 5,029,644, iss.
July 9, 1991).
2) Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Szarka and Phi (WO 2006/101618 A2, pub. Sept. 28, 2006).
3) Claims 29 and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Szarka and Aronstam (US 6,443,228 Bl, iss.
Sept. 3, 2002).
DISCUSSION
Rejection 1
Appellant argues claims 1, 4—6, 8, 10, 15—17, 19, 20, and 27—28 as a
group.2 Appeal Br. 6. Pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we select
2 Appellant argues claim 26 separately. Appeal Br. 10. Thus, we address
claim 26 below.
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Application 12/102,687
claim 1 to decide the rejection as to these claims. The other claims stand or
fall with claim 1.
The Examiner finds that Szarka discloses the subject matter of claim 1
including one sequence of fracturing the subterranean environs. Final Act.
3; Ans. 3. Appellant contends that Szarka discloses “fracturing a
subterranean well bore in one particular sequence, i.e. opening the
lowermost casing valve first and fracturing the formation, then the next
lowest casing valve and finally the valve closest to the surface along the
well.” Appeal Br. 8. Appellant also contends that Szarka’s disclosure at
column 17, lines 52—57, concerns reopening the valves selectively after
fracturing the subsurface formations and is “standard oil field practice,” not
a disclosure of the limitation “fracturing the subterranean environs in any
desired sequence.” Id. Appellant also contends that a skilled artisan would
not be led by Szarka to reopen valves in any desired sequence but would be
led to do so “in a sequence beginning with casing valve 28 adjacent the
lowermost zone deemed productive . . . and proceeding upwardly to the next
lowermost zone.” Id. at 9—10. The Examiner responds that Szarka column
17, lines 52—57, is “relied on only to show that the system is capable of
having the valves opened in any sequence,” and the sequence in Szarka “is
at least one of ‘any desired sequence.’” Ans. 3. For the following reasons,
we sustain the rejection.
Appellant does not dispute that Szarka discloses selective reopening
of the valves, which the Examiner finds discloses the recited “tools capable
of being operated in any desired sequence.” Final Act. 3. Appellant also
does not dispute that Szarka discloses one of the recited “desired” sequences
for fracturing the subterranean environs. Appeal Br. 8. Appellant, thus, fails
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Application 12/102,687
to persuasively apprise us of error in the Examiner’s factual findings or
rationale for the rejection, which we determine to be reasonable and
supported by rational underpinnings. We, thus, sustain the rejection of
claims 1, 4—6, 8, 10, 15—17, 19, 20, and 27—28 under 35 U.S.C. § 103(a).
Claim 26, which depends from claim 1, recites “the sequence of
fracturing comprises fracturing the subterranean environs at one of said
spaced apart locations after fracturing the subterranean environs at another
of said spaced apart locations which is closer to the surface of the earth
along the well.” Appeal Br. 18 (Claims App.). Appellant contends “this
concept is not disclosed in Szarka et al., nor would it be obvious to modify
Szarka et al. to do so, without any disclosure, suggestions or teaching to do
so.” Appeal Br. 10. The Examiner responds it would be obvious “to choose
among a finite number of identified, predictable solutions (i.e. sequences of
operation) with a reasonable expectation of success, particularly as provided
with a system such as that of Szarka et al. enabling such a choice of
sequence.” Ans. 4. The Examiner does not direct us to any disclosure in
Szarka of the sequence recited in claim 26, nor does the Examiner provide
any evidentiary support for the assertion that the recited sequence is a
predictable solution with a reasonable expectation of success. The rejection
of claim 26 thus, lacks rational underpinnings and we do not sustain the
rejection.
Rejection 2
The Examiner finds that Szarka discloses the limitations of claim 3
except for “fracturing from two of the spaced apart locations
simultaneously.” Final Act. 4. The Examiner finds that Phi “discloses a
process of fracturing a plurality of spaced apart locations . . . and teaches
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Application 12/102,687
that multiple spaced apart locations operated together . . . would provide for
fracturing simultaneously.” Id. The Examiner reasons it would have been
obvious to modify the process of Szarka “to include fracturing from multiple
locations simultaneously since it may provide for a more efficient operation
depending on well design.” Id.
Appellant contends that in Phi, “the sequence in which the burst disks
. . . rupture must be determined at the surface prior to running the liner into
the well bore.” Appeal Br. 11. Appellant argues that Phi is “devoid of tools
capable of being operated in any desired sequence once positioned within
the well” because the “pressure ratings of the burst disks of Phi et al. are
determined at the surface of the earth.” Id. at 11—12. The Examiner
responds that Phi “was not relied on in any rejection for” the limitation that
the tools be capable of “being operated in any desired sequence.” Ans. 4.
Appellant’s argument is, thus, directed to this limitation in claim 1. As
noted above, we sustain the rejection of claim 1 based on Szarka alone. We,
thus, sustain the rejection of claim 3 because Appellant does not apprise us
of error in the Examiner’s rejection of claim 3 which is based on the
combination of Szarka and Phi.
Rejection 3
The Examiner finds that Szarka discloses the limitations of claims 29
and 30 except for the tools operated by a signal device. Final Act. 4. The
Examiner finds that Aronstam discloses a method of actuating tools
“wherein a signal device is conveyed in the well.” Id. The Examiner
reasons that it would have been obvious to obvious to modify “the process of
Szarka et al. to include a signal device in order to efficiently actuate the tools
without inserting an entire length of string.” Id.
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Application 12/102,687
Appellant contends that Aronstam discloses “multilateral well
systems,” but fails to disclose “using sliding sleeves during the fracturing of
a well, let alone how to circulate flowable devices to control a sliding sleeve
used in a fracturing process.” Appeal Br. 12—13. Appellant also contends
that it would not be obvious “to circulate the flowable devices within the
casing of Szarka et al. to activate the sliding sleeves contained therein since
Aronstam et al. is totally devoid of any disclosure, suggestion or teaching of
controlling operations of tools deployed in the same well in which the
flowable devices thereof are circulated.” Id. at 13.
The Examiner relies on Szarka, not Aronstam, for disclosure of the
use of sliding sleeves during fracturing of a well as recited in claim 10, from
which claim 30 depends. Ans. 4; Szarka, col. 3,11. 7—8.3 Appellant’s
argument amounts to an attack on Aronstam individually, while the rejection
is based on the combined teachings of Szarka and Aronstam. However,
nonobviousness cannot be shown by attacking references individually when
the rejection is based on a combination of references. See In re Keller, 642
F.2d 413, 425 (CCPA 1981). Appellant, thus, fails to persuasively apprise
us of error in the Examiner’s factual findings or rationale for the rejection of
claims 29 and 30, which we determine to be reasonable and supported by
rational underpinnings. We thus, sustain the rejection of claims 29 and 30.
DECISION
The Examiner’s decision rejecting claims 1, 3—6, 8, 10, 15—17, 19, 20,
and 27—30 is affirmed.
3 Appellant did not dispute the Examiner’s finding that Szarka discloses the
use of sliding sleeves, as recited in claim 10, in connection with rejection 1.
Appeal Br. 6—10. We sustain the rejection of claim 10 as discussed above.
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Application 12/102,687
The Examiner’s decision rejecting claim 26 is reversed.
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).
AFFIRMED-IN-PART
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