Ex Parte Szymanski et al

Patent Trial and Appeal BoardOct 7, 2016

12129189 (P.T.A.B. Oct. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/129, 189 05/29/2008 15604 7590 10/12/2016 Baker Botts L.L.P. 910 Louisiana Street, One Shell Plaza Houston, TX 77002 FIRST NAMED INVENTOR Michael J. Szymanski 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. HES 2004-IP-014896U1Dl 1664 EXAMINER BHUSHAN, KUMAR R ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 10/12/2016 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): susan.stewart@bakerbotts.com debie.hernandez@bakerbotts.com s ydney.long@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. SZYMANSKI, SAMUEL J. LEWIS, CHRISTIAN SPINDLER, and ANDREA FENCHL Appeal2015-001353 Application 12/129, 189 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's March 5, 2014 decision finally rejecting claims 1, 3-13, and 16-24. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants identify the real party in interest as Halliburton Energy Services, Inc. (Appeal Br. 3). Appeal2015-001353 Application 12/129, 189 CLAHvIED SUBJECT ivIATTER Appellants' invention is directed to an improved fluid loss control additive for cement (Spec. i-fi-12, 7). Claim 1 is representative and is reproduced below from the Claims Appendix of the Appeal Brief (key claim limitations shown in italics): 1. A cement composition fluid loss control additive comprising a polymer and a sugar connected by a pH- sensitive crosslink, wherein the cement composition fluid loss control additive is effective to control fluid loss, wherein the cement composition fluid loss control additive comprises a weight ratio of polymer to sugar of from about 1:3 to about 10: 1, wherein the cement composition fluid loss control additive is an emulsion further comprising a carrier fluid, wherein the carrier fluid is a hydrophobic carrier fluid, and wherein the cement composition fluid loss additive provides a cement composition fluid loss of less than about 100 ml as determined by American Petroleum Institute Recommended Practice for Testing Well Cements 1 OB. Appeal Br. 21 (Claims App.). REJECTIONS I. Claims 1, 3-13, and 16-21 2 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Dawson3 in view of Moulin. 4 2 The Examiner's rejection of claims 1, 3-13, and 16-24 under 35 U.S.C. Â§ 112 i12 as indefinite was withdrawn (Ans. 7). 3 Dawson, US 5, 145,590, issued Sept. 8, 1992. 4 Moulin, US 6,180,689 Bl, issued Jan. 30, 2001. 2 Appeal2015-001353 Application 12/129, 189 IL Claims 22-24 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Dawson, Moulin, and further in view of Jones. 5 III. Claims 1, 3---6, 9-13, and 16-21 are rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1, 3-14, 16, and 18 of Szymanski '0006 in view of Moulin. IV. Claims 1, 3-13, and 16-21 are rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-19 of Szymanski '3557 in view of Moulin. Appellants do not offer separate arguments in support of any of the dependent claims; arguments are directed to limitations recited in independent claim 1 (see Appeal Br. 4--20; Reply Br. 4--19). Accordingly, our discussion will focus on claim 1 over Dawson in view of Moulin (Rejections I and II), as well as the obviousness-type double patenting rejections (Rejections III and IV). Rejections underÂ§ 103(a) Rejections I and II DISCUSSION The Examiner finds that Dawson's fracturing fluid teaches the elements of the claimed fluid loss control additive except that Dawson does 5 Jones, III, US 4,631,136, issued Dec. 23, 1986. 6 Szymanski et al., US 7,067,000 Bl, issued June 27, 2006. 7 Szymanski et al., US 7,399,355 B2, issued July 15, 2008. 3 Appeal2015-001353 Application 12/129, 189 not teach its fluid, when used as a cement slurry additive, provides a fluid loss of less than about 100 ml as determined by the AMERICAN PETROLEUM INSTITUTE (API) RECOMMENDED PRACTICE (RP) FOR TESTING WELL CEMENTS lOB (Ans. 2-3). The Examiner finds, however, Moulin teaches that a fluid loss control additive used in cement slurries in amounts of 0.5 to 2 gallons per sack of cement (gps) provides a "fluid loss of less than 40 ml measured in accordance with API standards ... " (id. at 3 (citing Moulin 1:39--47; 3:6-16; and 4:21-26)). Therefore, according to the Examiner, it would have been obvious to the ordinary skilled artisan "to use in Dawson an amount of 0.5 to 2 gps [] the fluid loss additive in cement slurries, as taught by Moulin" to achieve the requisite cement composition fluid loss of less than about 100 ml as recited in claim 1 (Ans. 3; see also id. at 11). The Examiner concludes that it would have been an "obvious matter of choice or design" (id. at 9) for the ordinary skilled artisan to adjust the amount of fluid loss control additive in a cement composition "based on[] the characteristics and properties of the subterranean formation(s) or reservoir" to obtain the fluid loss of less than 40 ml (id. at 10). According to the Examiner, such derivation of the optimal amount of fluid loss control additive would be a "result of routine experimentation for process optimization or economic feasibility" (id.). 8 8 Appellants argue in the Reply Brief that the Examiner's characterization of the claimed invention as the result of "'optimization' or 'routine experimentation"' (Reply Br. 6) is a new ground of rejection, which was not advanced by the Examiner prior to the Examiner's Answer (see id. at 5-7). Whether the Examiner's failure to designate a rejection in an Answer as a new ground is a petitionable issue, not an appealable one and, therefore, we do not address the matter. MPEP Â§ 1207.03(b); see also MPEP Â§ 1002.02(c)(6); In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971). 4 Appeal2015-001353 Application 12/129, 189 Appellants make the following principal arguments urging reversal of the obviousness Rejections I and II: ( 1) the Examiner "has not demonstrated that Dawson's fluid exhibits 'fluid loss of less than about 100 ml ... ' or that it would have been obvious to modify Dawson's fluid such that it exhibits 'fluid loss of less than about 100 ml ... "' (Reply Br. 8; see also Appeal Br. 8); (2) the Examiner has failed to establish a prima facie case of obviousness because Dawson is silent as to the presence of a cement component within its disclosed fracturing fluid (Appeal Br. 8); and (3) "the Examiner's proposed rationale to modify Dawson's fracturing fluid" (Reply Br. 9 (emphasis in original)) fails because fracturing fluids and cement slurries "are entirely different as to character, properties, purpose, and use" (id.; see also Appeal Br. 9-12; 13). Appellants' arguments are not persuasive. With regard to argument ( 1 ), we note that the language of claim 1 is functional, indicating that the claimed fluid loss control additive provides a cement composition fluid loss of less than about 100 ml as determined by API RP lOB standards. [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). In this instance, the Examiner has explained why Moulin suggests that a fluid loss control agent used in cement slurries provides a fluid loss of less than 100 ml measured in accordance with API RP lOB standards (Ans. 3). 5 Appeal2015-001353 Application 12/129, 189 Specifically, the Examiner finds that use of ivfoulin's crosslinked polyvinyl alcohol in specified amounts provides a fluid loss from cement slurries of less than 40 ml measured in accordance with API standards (id. (citing Moulin Abstract; 1:39--47; 3:6-16; and 4:21-26)). Thus, Moulin's disclosed amount of fluid loss lies within the range required by claim 1, which recites an upper limit of "less than about 100 ml" without any lower limit requirement (see Ans. 11 ). Appellants argue that the Examiner's proposed combination fails to establish a prima facie case because "Dawson's fracturing fluid and Moulin 's cement slurry, in terms of both composition and intended use, are entirely different fluids" (Appeal Br. 8-9). The Examiner's findings, however, show that Dawson's fracturing fluid and Moulin's crosslinked polyvinyl alcohol are substantially similar compositions used in well bore applications (Ans. 2-3; 8). Specifically, the Examiner finds that Dawson's fracturing fluid is a crosslinking additive comprised of a polyvinyl alcohol polymer and a reduced sugar sorbitol (id. at 2 (citing Dawson 2:46-50; 4:3--4; 5:16-17)). The Examiner, therefore, determines that use of Dawson's fracturing fluid as an additive in cement slurries in the amounts taught by Moulin would reasonably be expected to achieve the requisite cement composition fluid loss of less than about 100 ml as recited in claim 1 (Ans. 3). Placing the burden on Appellants to show that use of Dawson's fracturing fluid in the amounts suggested by Moulin would not provide a fluid loss of less than 100 ml from a cement composition is appropriate under these circumstances. In re Schreiber, 128 F.3d at 1478. Appellants have not met this burden. 6 Appeal2015-001353 Application 12/129, 189 Appellants argue that "Dawson 's fracturing fluid comprises a 'delay additive' which would alter the way in which the fluid loss control agent acts" (Appeal Br. 9). Therefore, according to Appellants, the Examiner cannot assume that the proposed combination would achieve fluid loss of less than 40 ml (id.). We are unpersuaded because, inter alia, Appellants' argument is supported only by attorney argument, not factual evidence. Arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCP A 1979). With regards to arguments (2) and (3), Appellants do not offer a persuasive rebuttal to the Examiner's reasoned explanation that the subject matter of claim 1 is not drawn to a cement composition (Ans. 8). Rather, claim 1 is drawn to a fluid loss control additive that is incorporated into a cement composition (id.). Thus, it is immaterial that Dawson does not teach a cement component or that the disclosed use of Dawson's fluid is for hydraulic fracturing. As set forth above, the Examiner finds that Dawson's and Moulin's fluids are substantially similar compositions for use in wellbore applications. On the present record, Appellants have not demonstrated that use of Dawson's fracturing fluid in the amounts suggested by Moulin would not provide a fluid loss of less than 100 ml from a cement composition. In re Schreiber, 128 F.3d at 1478. Accordingly, Appellants have not shown reversible error in the Examiner's determination that the combination of Dawson and Moulin renders the claimed invention obvious. 7 Appeal2015-001353 Application 12/129, 189 Therefore, we affirm the rejections of claims 1 and 20 under 35 U.S.C. Â§ 103(a).9 In the absence of arguments specific to their patentability, dependent claims 3-13, 16-19, and 21-24 fall with their respective independent claims 1 and 20. 37 C.F.R. Â§ 41.37(c)(l)(iv). Rejections on ground of nonstatutory obviousness-type double patenting Rejections III and IV With the exception of the Examiner's reliance on Dawson, the Examiner's grounds for rejecting independent claim 1 in Rejection I are substantially similar to the Examiner's grounds for rejecting claim 1 in Rejections III and IV (Ans. 4--7; 13-17). Although the claims of Szymanski '000 are directed to a method of cementing comprising a fluid loss control additive and the claims of Szymanski '355 are directed to a cement composition comprising a fluid loss control additive, the Examiner finds that the composition of the fluid loss control additive claimed in both patents reads on the composition of the fluid loss control additive recited in the instant claims (Ans. 5, 6; see also Szymanski '000 claims 1 and 16, Szymanski '000 claim 1 ("the[/a] fluid loss control additive comprises[/comprising] a polymer and a sugar connected by a pH-sensitive crosslink")). The Examiner finds that the applied Szymanski patents do not teach that a fluid loss additive provides a fluid loss of less than about 100 ml as determined by API RP lOB (Ans. 5, 6). The Examiner, however, relies on Moulin for teaching the requisite functional amount of fluid loss recited in claim 1 (id.). 9 Independent claim 20 recites the same functional limitation at issue as claim 1. 8 Appeal2015-001353 Application 12/129, 189 Appellants' arguments urging reversal of Rejections III and IV rely substantially on the same arguments set forth above urging reversal of Rejection I (see generally Appeal Br. 15-20; Reply Br. 14--19). For the reasons set forth above, Appellants have not identified any deficiencies in the Examiner's combination of Moulin's teachings with either: (i) claims 1, 3-14, 16, and 18 of Szymanski '000 or (ii) claims 1-19 of Szymanski '355, with respect to the obviousness of instant claim 1. Therefore, we affirm the rejections of claims 1, 3-13, and 16-21 under 35 U.S.C. Â§ 103(a). 37 C.F.R. Â§ 41.37(c)(l)(iv). CONCLUSION We AFFIRM the rejection of claims 1, 3-13, and 16-21 under 35 U.S.C. Â§ 103(a) over Dawson in view of Moulin. We AFFIRM the rejection of claims 22-24 under 35 U.S.C. Â§ 103(a) over Dawson, Moulin, and further in view of Jones. We AFFIRivI the rejection of claims 1, 3---6, 9-13, and 16-21 on the ground of nonstatutory obviousness-type double patenting over Szymanski '000 in view of Moulin. We AFFIRM the rejection of claims 1, 3-13, and 16-21 on the ground of nonstatutory obviousness-type double patenting over Szymanski '355 in view of Moulin. 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). AFFIRMED 9