RECOVER ENERGY SERVICES INC.

Patent Trials and Appeals BoardDec 2, 2021

2021003133 (P.T.A.B. Dec. 2, 2021)

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. 15/981,587 05/16/2018 Matthew SCALLEY P54990 2468 7055 7590 12/02/2021 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER SKAIST, AVI T. ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 12/02/2021 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): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW SCALLEY Appeal 2021-003133 Application 15/981,587 Technology Center 3600 Before JENNIFER D. BAHR, BRETT C. MARTIN, and MICHELLE R. OSINSKI, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 3–7. Claim 2 was canceled and claims 8–20 were withdrawn during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Recover Energy Services Inc. Appeal Br. 3. Appeal 2021-003133 Application 15/981,587 2 CLAIMED SUBJECT MATTER The claims are directed to base oil for re-use. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A process for producing a base oil composition particularly adapted for use in oil-base drilling mud compositions comprising: contacting drilling waste containing an oil-base mud phase with a liquid solvent to produce a mixture containing liquids and solids; separating the two phases to produce a solid phase substantially lacking in a liquids phase, and a liquids phase substantially lacking in a solids phase, and evaporating at least some portion of the components of the liquids phase to produce a base oil composition substantially lacking low molecular weight carbon chain compounds and substantially lacking benzene, toluene, xylene, and/or ethyl benzene, and having increased closed-cup flashpoint compared to the oil phase, wherein the process is carried out in a gas-tight, substantially oxygen deficient environment, resulting in reduced exposure to low molecular weight carbon chain compounds and benzene, toluene, xylene, and/or ethyl benzene for workers interacting with and otherwise exposed to the base oil composition during transporting, conditioning or using such compositions. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Morris US 4,606,774 Aug. 19, 1986 Goel US 2005/0236015 A1 Oct. 27, 2005 Appeal 2021-003133 Application 15/981,587 3 REJECTION Claims 1 and 3–7 stand rejected under 35 U.S.C. § 103 as unpatentable over Goel and Morris. Final Act. 3. OPINION Goel The Examiner finds that because Goel fails to discuss the claimed low molecular weight carbon chain compounds that “one can reasonably assume that the produced base oil in Goel ‘substantially lacks’ benzene, toluene, xylene, and/or ethyl benzene.” Ans. 5. The Examiner also notes “that the features upon which Appellant relies (i.e., ‘removing’ the ‘harmful contaminants’ of benzene, toluene, xylene, and/or ethyl benzene from the recovered oil), are not recited in the rejected claim(s).” Ans. 6. The Examiner further acknowledges that “[a]lthough the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.” Id. (citing In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993)). Although the Examiner is generally correct in these findings and conclusions, we disagree that the Examiner has properly read the claims in light of the Specification. Here, the entire point of Appellant’s method is to remove the harmful contaminants. Although it is true that the claims neither explicitly state that the starting drilling waste contains such harmful contaminants nor that such contaminants are removed, we agree with Appellant that, taken as a whole, one of skill in the art would have inferred that the claimed method involved removing such compounds. Furthermore, the claims recite “evaporating at least some portion of the components of the liquids phase to produce a base oil composition substantially lacking” the claimed harmful contaminants. (Emphasis added). Appeal 2021-003133 Application 15/981,587 4 The “production” aspect of these claims also infers that the initial waste was not free of the claimed contaminants. The claims also recite “resulting in reduced exposure” to the claimed contaminants. If the initial drilling waste had no such contaminants, as in Goel, then there would be no reduction in exposure to such contaminants because the exposure would be the same both before and after the process in Goel. We do not agree with the Examiner that starting with drilling waste that has no such contaminants allows for an interpretation whereby a base oil is produced that has no such contaminants nor results in a reduced exposure to such contaminants. More precise drafting explicitly reciting a drilling waste first having the claimed contaminants and/or a specific recitation of removing such contaminants in this instance would probably make for better claims. Given that the entire disclosure, however, is directed at removing such contaminants and the claims specifically refer to producing a base oil free of and resulting in reduced exposure to such contaminants, we conclude that the Examiner has not properly interpreted the claims in light of the Specification with specific regard to the terms “to produce” and “reduced exposure.” Accordingly, we do not sustain the Examiner’s rejection. CONCLUSION The Examiner’s rejection is reversed. Appeal 2021-003133 Application 15/981,587 5 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–7 103 Goel, Morris 1, 3–7 REVERSED