Halliburton Energy Services, Inc.

Patent Trials and Appeals Board

Jul 2, 2020

2019006103 (P.T.A.B. Jul. 2, 2020)

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.
14/913,938 02/23/2016 Vikrant Bhavanishankar Wagle 2011-IP-047999U1US 4870
15604 7590 07/02/2020
Baker Botts L.L.P.
910 Louisiana Street, One Shell Plaza
Houston, TX 77002
EXAMINER
SKAIST, AVI T.
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
debie.hernandez@bakerbotts.com
susan.stewart@bakerbotts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIKRANT BHAVANISHANKAR WAGLE,
DHANASHREE GAJANAN KULKARNI, and
SHADAAB SYED MAGHRABI
__________

Appeal 2019-006103
Application 14/913,938
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Vikrant B. Wagle et al. (Appellant)1
seeks our review of the final rejection of claims 15–32 under 35 U.S.C.
§ 103(a) as unpatentable over Miller2 and Loiseau.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies “Halliburton Energy Services, Inc.” as the real party in interest.
Appeal Brief 1.
2 Miller et al., US 2011/0053808 A1, published March 3, 2011 (“Miller”).
3 Loiseau et al., US 2012/0305245 A1, published December 6, 2012
(“Loiseau”).
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Application 14/913,938

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CLAIMED INVENTION
Appellant’s “disclosure relates to oil or synthetic fluid based invert
emulsion drilling fluids which combine high ecological compatibility with
good stability and performance properties.” Spec. ¶ 1. Independent claim 15,
reproduced below, is illustrative of the subject matter on appeal.
15. A method for drilling in a subterranean formation having
shales comprising:
providing or using an invert emulsion drilling fluid
having:
a base oil;
an internal aqueous phase; and
a suspension agent comprising a combination of a
primary viscosifier and very fine sized fumed silica, the very
fine sized fumed silica having a surface area of at least 90m2/g;
and
drilling through shales in the subterranean formation with
the drilling fluid.

OPINION
The obviousness rejection of claims 15–32 is premised, in part, upon
the Examiner’s determination that the combination of the teachings of Miller
and Loiseau would yield a predictable result. See Final Action 3.
Alleging error in the rejection of claims 15–32 as unpatentable over
Miller and Loiseau, Appellant argues that “[b]ecause of significant
differences between the fluids of Loiseau and Miller, the Examiner’s
combination does not merely yield a predictable result.” Appeal Br. 3
(emphasis omitted). Appellant contends “Loiseau teaches fracturing fluids
that are primarily water-based (see Loiseau at ¶ 0016 & Tables 1 & 3
(noting the use of tap water in each sample fluid tested)), in contrast with the
oil-based invert emulsion drilling fluids of Miller.” Id. at 4. “Appellant
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submits that it would not have been predictable that the very fine sized
fumed silica of Loiseau could be successfully substituted into the invert
emulsion fluids of Miller since the fluids in Loiseau and Miller do not share
any relevant common compositional properties.” Id.
The Examiner responds that “Appellant is basing this argument based
upon an incorrect understanding of the reference. Loiseau does indeed recite
an oil-based drilling fluid.” Ans. 4 (citing Loiseau ¶ 16). We agree.
There is no dispute that Miller teaches an oil-based drilling (see Miller
¶ 9) and “more specifically teaches the invert emulsion element of
Appellant’s claims.” Reply Br. 2. Loiseau is directed to a method of
treating a subterranean formation of a well bore by providing a treatment
fluid comprising a carrier fluid, a particulate material, a viscosifying agent
and fumed silica, wherein fumed silica is in such concentration to reduce the
settling rate of the particulate material in the treatment fluid; and introducing
the treatment fluid into the wellbore. Loiseau, Abstract. The Examiner
finds that “Loiseau teaches a drilling fluid comprising fumed silica to reduce
settling rate (i.e., aid suspension).” Final Act. 3 (citing Loiseau ¶¶ 8, 33, 40,
49, and 50); see also Final Act. 8 (citing Loiseau, Tables 3–4 (examples of
formulations of samples including fumed silica)). Appellant does not
dispute the Examiner’s findings as to the reduced settling rate induced by
fumed silica in Loiseau. Contrary to Appellant’s argument that the fluids in
Loiseau and Miller do not share any relevant properties, Loiseau discloses
that its “treatment fluids may be used for carrying out a variety of
subterranean treatments, including, but not limited to, drilling operations,
fracturing treatments, and completion operations (e.g., gravel packing).” Id.
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¶ 40 (emphasis added). As the Examiner observes, Loiseau teaches that the
carrier fluid of the treatment fluid may be “an oil-based fluid.” Id. ¶ 16;
Ans. 5 (“[A]ny additives taught as suitable for oil-based drilling fluid as
taught by Loiseau can indeed be considered suitable for the oil-based drilling
fluid disclosed by Miller.”). Indeed, Loiseau does not limit its use of fumed
silica to water-based fluids; rather, Loiseau’s claimed invention teaches the
use of its suspension aid with various types of carrier fluids, including oil-
based fluids. See id.
Further, Appellant argues “[e]ven if the Examiner had established a
prima face case of obviousness as to the combination of Loiseau and Miller,
the claimed invention achieves unexpected synergistic results, demonstrating
that such a combination would not have been obvious to a person of ordinary
skill in the art.” Appeal Br. 6. According to Appellant, “[t]he test examples
in the present specification demonstrate that the combination of a primary
viscosifier and very fine sized fumed silica in an invert emulsion fluid
reduces sag and oil separation to an unexpected degree, indicating the
nonobviousness of the claimed combination.” Id. at 7 (citing Spec., Tables
1, 3). Appellant contends the Examiner has not addressed these unexpected
results of the claimed combination. Id.
It is well established that the burden of showing unexpected results
rests on Appellant by establishing that the reported tests provide results that
are unexpected, that the comparisons are with the closest prior art, and that
the showing is commensurate in scope with the claimed subject matter. See
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). However, as noted by the
Examiner, “Appellant’s arguments are more limiting than the claims
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themselves” (Ans. 6); and the showing of unexpected results must be
commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325,
1330–31 (Fed. Cir. 2003). The claims on appeal broadly cover drilling
fluids that possess neither the particular components nor the particular
proportions set forth in Table 3. And the record contains no evidence or
technical reasoning as to why the same or similar unexpected results would
be reached for the broad range of drilling fluids covered by the claims on
appeal. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In
re Tiffin, 448 F.2d 791, 792 (CCPA 1971)) (“Establishing that one (or a
small number of) species gives unexpected results is inadequate proof, for ‘it
is the view of this court that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support.”’). Based on the totality of the record, including due consideration
of Appellant’s evidence and arguments, we determine that the
preponderance of evidence weighs more heavily in favor of an obviousness
determination for the claimed subject matter.
In rejecting claims 18 and 26, which recite that “the primary
viscosifier” of the drilling fluid is selected from a Markush group listing
“pentaerythirtol tetrastearate,” the Examiner finds that one of ordinary skill
in the art would infer from the teachings of Miller that pentaerythirtol
tetrastearate could be incorporated into an oil-based drilling fluid as an
“additional suspension additive.” Ans. 7 (emphasis added). As noted by the
Examiner, Miller discloses pentaerythirtol tetrastearate as an additive to an
oil-based drilling fluid; and Miller teaches that “[a] number of additives may
be included” in an oil-based drilling fluid. Miller ¶ 2.
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Appellant argues that the rejections of these claims relies on
impermissible hindsight because “even if the proposed substitution of
Miller’s suspension agents with those of Loiseau would be obvious, the
resulting fluid would not comprise any of the primary viscosifiers recited.”
Appeal Br. 8. According to Appellant, “the Examiner merely uses
Applicant’s claims as a roadmap to arrive at the claimed combination of
fumed silica with one of the specific viscosifiers listed in independent claim
26 (from which claims 27-32 depend) and dependent claim 18, without
providing any rationale based on the prior art for doing so.” Id. at 8–9.
However, the Examiner does provide rationale based on Miller for doing so
(see Ans. 7), but Appellant’s arguments overlook this rationale.
Specifically, the Appellant does not address why one of ordinary skill in the
art would not infer from Miller that pentaerythirtol tetrastearate could be
incorporated as an additional suspension additive into this so-called resulting
fluid. Accordingly, we are not apprised of reversible error by the Examiner.
CONCLUSION
The rejection of claims 15–32 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15–32 103(a) Miller, Loiseau 15–32

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED