THE JOHNS HOPKINS UNIVERSITY et al.

Patent Trials and Appeals BoardJan 1, 2021

2020004708 (P.T.A.B. Jan. 1, 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. 14/730,548 06/04/2015 Bruce D. Marsh 0105-0001 5886 127478 7590 01/01/2021 Harrity & Harrity, LLP 11350 Random Hills Road, Suite 600 Fairfax, VA 22030 EXAMINER PATEL, NEEL G ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 01/01/2021 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): docket@harrityllp.com mpick@harrityllp.com ptomail@harrityllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRUCE D. MARSH, MARKUS HILPERT, and PETER ANDERSON GEISER ___________ Appeal 2020-004708 Application 14/730,548 Technology Center 3600 ____________ Before DANIEL S. SONG, STEFAN STAICOVICI, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject (1) claims 10, 17, 21, 22, 25, 27, 31–33, and 36–46 under 35 U.S.C. § 112(a) for lack of written description; (2) claims 10, 17, 21, 22, 25, 27, 31–33, 36–42, and 46 under 35 U.S.C. § 103 as unpatentable over 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “The Johns Hopkins University.” Appeal Brief (“Appeal Br.”) 3, filed Feb. 7, 2020. Appeal 2020-004708 Application 14/730,548 2 Sweatman (WO 2013/169242 A1, published Nov. 14, 2013) and Moos (US 2009/0065252 A1, published Mar. 12, 2009); and (3) claims 43–45 under 35 U.S.C. § 103 as unpatentable over Sweatman, Moos, and Carter (US 2011/0247816 A1, published Oct. 13, 2011). Claims 1–9, 11–16, 18–20, 23, 24, 26, 28–30, 34, and 35 have been canceled. See Appeal Br. 24, 25, 27, 28, 30 (Claims App.). A telephonic oral hearing was held on November 10, 2020.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to “method[s] for harvesting of geothermal energy from non-hydrothermal sources.” Spec. ¶ 2, Fig. 1. Claims 10, 21, and 33 are independent. Claim 10 is illustrative of the claimed subject matter and recites: 10. A method for creating an enhanced geothermal system (EGS) power unit in a non-hydrothermal source, comprising: drilling an injector well at a first depth, the injector well being associated with: a principal stress axis in a vertical direction, and a horizontal stress, the horizontal stress including a maximum horizontal stress and a minimum horizontal stress, the maximum horizontal stress being normal to the minimum horizontal stress, the injector well defining a vertical pilot hole and a lateral, the lateral being drilled to parallel the maximum horizontal stress; drilling a production well at a second depth, the production well being associated with: 2 The record includes a transcript of the oral hearing. Appeal 2020-004708 Application 14/730,548 3 a principal stress axis in a vertical direction, and a horizontal stress, the horizontal stress including a maximum horizontal stress and a minimum horizontal stress, the maximum horizontal stress being normal to the minimum horizontal stress, the production well defining a vertical pilot hole and a lateral, the lateral being drilled to parallel the maximum horizontal stress; and generating a manufactured hydrothermal fracture, the manufactured hydrothermal fracture extending between a plane defined by the injector well and the production well, the manufactured hydrothermal fracture including a plurality of vertical fractures, the plurality of vertical fractures being generated by successively controlled fracs that are generated by a propellant based fracking agent, the propellant based fracking agent being administered in successively higher laterals to directionally form a vertical zone of continuous fractured rock in each of the plurality of vertical fractures, the plurality of vertical fractures extending from the lateral of the injector well to the lateral of the production well with no intermediary injection strings between the lateral of the injector well and the lateral of the production well, the manufactured hydrothermal fracture being formed to emulate a natural transmissive fracture system. Appeal 2020-004708 Application 14/730,548 4 ANALYSIS Written Description Claims 10, 17, 21, 22, 25, 27, 31–33, and 36–46 Independent claim 10 recites the limitation of “[a] plurality of vertical fractures being generated by successively controlled fracs that are generated by a propellant based fracking agent.” Appeal Br. 25 (Claims App.). Independent claims 21 and 33 recite a similar limitation. See id. at 27, 29– 30. The Examiner determines that there is lack of “support within the [S]pecification[] of how the successive fracs are being ‘controlled’.” Final Act. 5.3 According to the Examiner, “[a]side from the fact that fracture(s) can be directed in a certain orientation with respect to the stresses already established in the formation, successively (i.e. one after another) ‘controlling’ fracs would indicate a device or mechanism used to regulate or guide the operation of a machine, apparatus, or system.” Id.; see also Ans. 3–4.4 The Examiner also determines that “the claim language prima facie does not create a nexus of ‘successively controlled fracs’ with ‘successively higher laterals’.” Ans. 4. The Examiner takes the position that “[i]f Appellant wishes to establish that the fractures can only go in higher laterals and not deviate elsewhere, then clear [S]pecification support should be established on how this is being done (i.e. ‘controlled’).” Id. As an initial matter, we agree with Appellant that the Examiner “provides no support for th[e] allegation” that there is no nexus between “successively controlled fracs” and “successively higher laterals.” Reply Br. 3 Final Office Action (“Final Act.”), dated Oct. 4, 2019. 4 Examiner’s Answer (“Ans.”), dated Apr. 16, 2020. Appeal 2020-004708 Application 14/730,548 5 3.5 As correctly pointed out by Appellant, “the language of [claim 10] reads: [the] plurality of vertical fractures being generated by successively controlled fracs that are generated by a propellant based fracking agent, the propellant based fracking agent being administered in successively higher laterals.” Id.; see also Appeal Br. 25 (Claims App.).6 We agree with Appellant that “[t]he first part of the claim relates to how the successively controlled fractures are administered, i.e., successively and by a propellant based fracking agent” and “[t]he second part of the claim relates to where the fractures are administered, i.e., in successively higher laterals.” Reply Br. 3; see also Appeal Br. 25 (Claims App.). Consequently, we agree with Appellant that “[t]here is a clear relationship [(i.e., a nexus)] between [the claimed] ‘successively controlled fracs’ and ‘successively higher laterals.’” Reply Br. 3; see also Appeal Br. 25 (Claims App.). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id. at 1562–63; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). 5 Reply Brief (“Reply Br.”), filed June 5, 2020. 6 Independent claims 21 and 33 recite similar limitations. See Appeal Br. 27, 29–30. Appeal 2020-004708 Application 14/730,548 6 Appellant’s Specification describes that “[f]racking to ‘manufacture’ the transmissive fracture system will require a highly controllable fracking tool such as energetics which can directionally enhance the rock permeability. For example, propellant based fracking could be used to manufacture the transmissive fracture system.” Spec. ¶ 22 (emphasis added); see also Appeal Br. 9–10.7 Appellant also directs our attention to the Marsh Declaration,8 where Dr. Marsh states “[t]he phrase ‘successively controlled fracs’ refers to fracs that are generated one above the other with a highly controllable fracking tool, such as a propellant based fracking agent” and cites to three references9 to support his position. Marsh Declaration ¶ 5; see also Appeal Br. 10–11. We note that Arrell, one of the references cited in the Marsh Declaration, describes that “[p]ropellant-base stimulation tools . . . may be used to generate relatively high pressures over a relatively short time interval, . . . and in the form of a controlled ballistic trace.” Arrell col. 9, ll. 19–24 (emphases added); see also Marsh Declaration ¶ 5. We also note that Moore ’059, one of the other references cited in the Marsh Declaration, describes that propellant-base stimulation tools “may be used to generate relatively high, yet variable pressures . . . over an extended time interval, . . . [the] desirable pressure depending in part upon configuration of the well, and to prolong and vary such pressures in the form of a controlled ballistic 7 Specification (“Spec.”), filed June 4, 2015. 8 Declaration of Dr. Bruce Marsh (“Marsh Declaration”), filed Aug. 1, 2019. See Appeal Br. 10. 9 Arrell (US 9,447,672 B2, issued Sept. 20, 2016); Moore ’055 (US 2016/0084055 A1, published Mar. 24, 2016); Moore ’059 (US 2016/0084059 A1, published Mar. 24, 2016). Appeal 2020-004708 Application 14/730,548 7 trace for an extended time interval.” Moore ’059 ¶ 33(emphasis added); see also Moore ’055 ¶ 40; Marsh Declaration ¶ 5. Based on the disclosure from Appellant’s Specification and evidence from the references cited in the Marsh Declaration, we agree with Appellant that a skilled artisan “would understand that reference to ‘successively controlled fracs,’ relates to using a highly controllable fracking tool, such a propellant based fracking agent” and “would have understood the inventor to be in possession of the claimed invention at the time of filing.” Appeal Br. 11. Accordingly, we do not sustain the Examiner’s rejection of claims 10, 17, 21, 22, 25, 27, 31–33, and 36–46 for lack of written description. Obviousness over Sweatman and Moos Claims 10, 17, 21, 22, 25, 27, 31–33, 36–42, and 46 Independent claim 10 is directed to “[a] method for creating an enhanced geothermal system (EGS) power unit in a non-hydrothermal source” including “[a] manufactured hydrothermal fracture including a plurality of vertical fractures, the plurality of vertical fractures being generated by successively controlled fracs that are generated by a propellant based fracking agent.” Appeal Br. 24–25 (Claims App.) (emphasis added). Independent claims 21 and 33 recite similar limitations. See id. at 26–27, 28–30. The Examiner finds that “Sweatman discloses: propellant based fracking agent (fracturing fluid used therein).” Final Act. 21 (emphasis omitted); see also id. at 8 (citing Sweatman Figs. 2, 4, 5). Appellant contends that Sweatman “does not disclose any propellant based fracking” and “makes no mention of ‘controlling’ the fracturing Appeal 2020-004708 Application 14/730,548 8 technique in such a manner so as to create the ‘plurality of vertical fractures,’ as recited in claim 10, i.e., as with a highly controllable fracking tool, such as a propellant based fracking agent.” See Appeal Br. 15–17. In addition, Appellant explains that “[h]ydraulic fracturing is fundamentally different from propellant based fracturing, as it is not highly controllable as described in paragraph 0022 of the Application.” Id. at 17–18; see also Reply Br. 4 (Appellant arguing that fractures resulting from hydraulic fracturing “are not equivalent to ‘successive controlled fracs,’” because hydraulic fracturing is “not controlled formations by way of a propellant based fracking agent.”). Appellant has the better position here. First, the Examiner does not direct us to any discussion in Sweatman regarding the use of “propellant based fracturing” let alone the use of “a propellant based fracking agent.” See Final Act. 8, 21; see also Appeal Br. 24–25 (Claims App.). Indeed, Sweatman explicitly discloses that “the production zone 113 may be hydraulically fractured in one or more locations, . . . [t]he fracture networks may be created by any suitable hydraulic fracturing treatment/method.” Sweatman ¶ 25 (emphases added). Second, Arrell distinguishes between “hydraulic” fracturing and “propellant-based” fracturing. See Arrell col. 9, ll. 12–24. In particular, Arrell points out that “hydraulic fracturing may generate much lower pressures over an excessively long period of time”; whereas, “[p]ropellant-base stimulation tools . . . may be used to generate relatively high pressures over a relatively short time interval, . . . and in the form of a controlled ballistic trace.” Id. (emphases added). Third, Carter, one of the references cited by the Examiner, discloses that “[h]ydraulic fracturing is not always as effective as desired due to the difficulty of Appeal 2020-004708 Application 14/730,548 9 controlling the orientation, thickness, and magnitude of the fractures.” Carter ¶ 5 (emphasis added); see also Final Act. 21; Appeal Br. 10; Reply Br. 2. Based on the above-cited disclosures, we agree with Appellant that “the hydraulic fracking disclosed in [Sweatman] is not the same as the claimed propellant based fracking” (Appeal Br. 17) because “propellant based fracturing allows for [] controlled enhancement . . . , whereas hydraulic fracturing is uncontrolled” (Reply Br. 2). See also Appeal Br. 10 (Appellant arguing that “propellant based fracking agent, by its nature, is highly controllable . . . , unlike hydraulic fracking,” which is difficult to control); Arrell col. 9, ll. 12–24; Carter ¶ 5. As such, we further agree with Appellant that Sweatman “does not disclose . . . propellant based fracking,” as required by the claims. Appeal Br. 17. Accordingly, as the Examiner’s use of the Moos disclosure does not remedy the deficiency of Sweatman discussed above,10 we do not sustain the Examiner’s rejection of claims 10, 17, 21, 22, 25, 27, 31–33, 36–42, and 46 as unpatentable over Sweatman and Moos.11 10 The Examiner relies on the teachings of Moos for claim limitations other than the one discussed above. See Final Act. 9–10. 11 Appellant states that in the Office Action mailed November 14, 2018, the Examiner “concede[d] that ‘Sweatman in view of Moos appear[s] to be silent in regards to: creating the manufactured hydrothermal fracture with propellant based fracking’” and “relied upon U.S. Patent Application Publication No. 2013/0341029 to ROBERTS for showing the feature of ‘propellant based fracking agent.’” Appeal Br. 17. We note that the Examiner has not presented to the Board a rejection of any of the claims of the subject application in further view of the above-cited “Roberts” reference. See Final Act. 2–23; see also Ans. 3–9. Appeal 2020-004708 Application 14/730,548 10 Obviousness over Sweatman, Moos, and Carter Claims 43–45 Claims 43–45 depend directly from claims 10, 21, and 33, respectively. Appeal Br. 31–32 (Claims App.). The Examiner does not rely on the teachings of Carter to remedy the deficiency of Sweatman discussed above. See Final Act. 21–23. Accordingly, for reasons similar to those discussed above for claims 10, 21, and 33, we likewise do not sustain the Examiner’s rejection of claims 43–45 as unpatentable over Sweatman, Moos, and Carter. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10, 17, 21, 22, 25, 27, 31–33, 36–46 112(a) Written Description 10, 17, 21, 22, 25, 27, 31–33, 36– 46 10, 17, 21, 22, 25, 27, 31–33, 36– 42, 46 103 Sweatman, Moos 10, 17, 21, 22, 25, 27, 31–33, 36– 42, 46 43–45 103 Sweatman, Moos, Carter 43–45 Overall Outcome 10, 17, 21, 22, 25, 27, 31–33, 36– 46 REVERSED