DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 22, 2025, has been entered.
Claims 1-21 and 39 are canceled.
Claims 22-38 are pending and examined on the merits.
Notice Re: Prior Art Available Under Both Pre-AIA and AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 22-25, 29, 31, 32, and 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Crews (US 2002/0076803. Previously cited) in view of Brannon `170 (US 2006/0151170. Previously cited), and in light of James (US 6,450,260. Previously cited), Coatanlem (Construction and Building Materials. 2006. 20: 776-781), Morris (Am. J. Clin. Pathol. 1978. 69(1): 41-47. Previously cited), and Santra (US 2009/0308611. Previously cited).
Crews discloses an aqueous fracturing fluid comprising at least one viscoelastic surfactant (VES) and at least one biochemical agent in an amount effective to reduce the viscosity of the gelled aqueous fluid, wherein the at least one biochemical agent can be bacteria (claim 33 of Crews; paragraph [0038]). The aqueous fracturing fluid meets limitations of the claimed formulation. First, the bacteria meets the elected species of ‘microorganisms.’ The viscoelastic surfactant is in an amount effective to increase the viscosity of the aqueous fluid (claim 33 of Crews). Since the viscoelastic surfactant increases viscosity of the fluid, then it is a viscosifier. Moreover, see column 8, lines 3-5 of James, which recognizes a viscoelastic surfactant as a viscosifier. Thus the at least one viscoelastic surfactant meets the claimed limitation of a ‘viscosifier.’
Additionally, the viscosity of the VES-gelled fluid may be reduced by the use of a biochemical agent (e.g. bacteria) that will directly attack and break down the VES surfactant, such as by digestion, using the viscoelastic surfactant molecule as its carbon source (paragraph [0053]). Suitable bacteria that can lower viscosity by this mechanism are listed (paragraph [0053]). See also claim 35 of Crews. Since the bacteria break down by digestion the viscoelastic surfactant, then the viscoelastic surfactant is a substrate for the bacteria. As such, that embodiment of Crews meets limitations of the claimed invention since their aqueous fracturing fluid comprises microorganisms (the bacteria that break down the viscoelastic surfactant) and a viscosifier (the viscoelastic surfactant) which is a substrate for the microorganisms.
Furthermore, Crews teaches that the amount of viscoelastic surfactant (VES) included in the fracturing fluid depends on creating a viscosity high enough to keep proppant particles suspended therein during the fluid injecting step (paragraph [0039]). Additionally, Crews teaches that propping agents are typically added to the base fluid after the addition of the viscoelastic surfactant (paragraph [0040]). The propping agents include, but are not limited to, various examples such as quartz sand grains, glass and ceramic beads, and walnut shell fragments (paragraph [0040]). Each of the examples of propping agents, i.e. proppant particles, are directed to solid particles. Thus the aqueous fracturing fluid of Crews comprises solid particles (the proppant particles, i.e. propping agents).
In sum, Crews meets limitations of the claimed invention since Crew teaches a formulation (aqueous fracturing fluid) comprising:
microorganisms (bacteria that break down the viscoelastic surfactant) (elected species);
solid particles (proppant particles, i.e. propping agents); and
a viscosifier (viscoelastic surfactant) which is a substrate for the microorganisms (elected species).
Crews differs from the claimed invention in that Crews does not expressly disclose that the aqueous fracturing fluid comprises solid particles that are (i) spherical; (ii) have a core which is not deformable and an outer layer which is deformable, wherein said core and said outer layer are made from wood or a wood derived product; and (iii) are saturated with water.
Brannon `170 discloses a method of hydraulic fracturing using deformable proppants in order to minimize fines generation and proppant pack damage (paragraphs [0001]-[0002]). The deformable proppants include processed wood materials, including woods that have been processed by grinding, chipping, or other form of particalization (paragraph [0029]). The deformable proppants are generally substantially spherical (paragraph [0054]). Figures 2(a) through 2(d) illustrate the effects encountered by use of deformable proppant 80 (paragraph [0059]). The proppant is shown within the fracture 30 of formation 20 (paragraph [0058]). It is evident from Figure 2(a) that the proppant is spherical. Increased pressures placed in the formation are shown in Figures 2(b) and 2(c) (paragraphs [0059]). It is evident from Figures 2(b)-2(d) that the exterior of the deformable proppant 80, directed to an ‘outer layer’ of the particle, is deformed. On the other hand, the center of the deformable proppant 80 does not appear to be deformed. The center of the deformable proppant 80 is directed to a ‘core’ of the particle. Since the ‘core’ does not appear to be deformed, then it renders obvious a core ‘which is not deformable’ as claimed, according to the definition of “deformable” of the instant application (page 7, lines 30-32 of specification: “Thus, ‘deformable’ will be understood in the context of the invention in terms of the ability form a plug down-hole when packed and to withstand the kinds of pressures disclosed herein”). As such, the deformable proppants of processed wood materials that are substantially spherical particles of Brannon `170 render obvious solid particles that are spherical and have a core which is not deformable and an outer layer which is deformable, wherein said core and said outer layer are made from wood or a wood derived product.
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to substitute the proppant particles of the aqueous fracturing fluid of Crews with deformable proppants of processed wood materials (i.e., wood that has been processed by grinding, chipping, or other form of particalization) that are substantially spherical particles for the predictable result of obtaining a fluid suitable for fracturing. It would have been a matter of simple substitution of one type of proppant particles for another type of proppant particles. Additionally, one of ordinary skill in the art would have been motivated to make this substitution because Brannon `170 teaches that their deformable proppants (including the processed wood materials that undergo particalization and are substantially spherical) minimize proppant pack damage and mitigate the formation of fines and crushed proppants during the fracturing process (paragraph [0022]). There would have been a reasonable expectation of success in obtaining an aqueous fracturing material by the substitution because Brannon `170 teaches the inclusion of their deformable proppants in a carrier fluid for transport into a formation fracture in a subterranean well, wherein suitable carrier fluids include surfactants (paragraph [0056]).
Given that the fracturing fluid rendered obvious by Crews in view of Brannon `170 is aqueous, then the deformable proppants of processed wood materials (i.e., wood that has been processed by grinding, chipping, or other form of particalization) are exposed to water as present in the fracturing fluid. As evidenced by Coatanlem, water migrates into wood particles, and wood chippings become totally saturated with water after 24 hours (page 777, right column, first paragraph). Therefore, wood becomes saturated with water over time when exposed to water. Therefore, it would have been obvious to the skilled artisan that in the preparation and storage of the aqueous fracturing fluid rendering obvious by Crews in view of Brannon `170, the deformable proppants of processed wood materials becomes saturated with water.
As such, Crews in view of Brannon `170 (in light of James and Coatanlem, cited as evidence) renders obvious instant claims 22 and 37 (aqueous fluid meets claimed limitation).
Regarding instant claim 23, Crews teaches adding inorganic and organic nutrients to aid microbe metabolic activity (paragraph [0045]). The aqueous fracturing fluid of Crews comprises water (claim 33 of Crews; paragraph [0038]). The combination of the inorganic and organic nutrients with water of the aqueous fracturing fluid meets the claimed limitation of ‘growth medium.’ Thus instant claim 23 is rendered obvious.
Regarding instant claim 24, Crews teaches that suitable bacteria for use in the embodiment of the invention that directly digest viscoelastic surfactants include Pseudomonas fluorescens, Pseudomonas aeruginosa, and Pseudomonas putida (paragraph [0042]). As evidenced by Morris, these bacteria are saccharolytic (page 41, right column, first paragraph). Thus instant claim 24 (microorganisms that are saccharolytic) is rendered obvious.
Regarding instant claim 25, Crews teaches that suitable bacteria for use in the embodiment of the invention that directly digest viscoelastic surfactants include Clostridium thermocellum (paragraph [0042]). Thus instant claim 25 (microorganisms are C. thermocellum) is rendered obvious.
Regarding instant claim 29, Brannon `170 discloses that in one embodiment, the specific gravity of the deformable proppants (e.g. processed wood materials) may range from about 0.4 to about 4 (paragraph [0029]). In including the substantially spherical deformable proppants of wood materials of Brannon `170 as the proppant particles in the invention of Crews, it also would have been obvious to apply the teachings of the specific gravity of the deformable proppants to the invention of Crews. As evidenced by Santra, specific gravity is defined as the ratio of the density of a given material to the density of water, when both are at the same temperature (paragraph [0024]). Since the fluid rendered obvious by the references is aqueous, then it is obvious that its density is approximately the density of water. The specific gravity range of about 0.4 to about 4 of Brannon `170 includes a specific gravity of 1.0. A specific gravity of 1.0 taught for the deformable proppants of Brannon `170 signifies that the deformable proppants (meeting the claimed limitation of ‘solid particles’) have the same density as the rest of the aqueous fracturing fluid rendered obvious by the references (approximately the density of water). As such, instant claim 29 is rendered obvious.
Regarding instant claim 31, the references do not expressly disclose that the formulation (the aqueous fracturing fluid) is made up of 25-70% by volume of the solid particles (the deformable proppants). However, it would have been a matter of routine optimization to adjust the amount of the substantially spherical deformable proppants (of wood materials) in the aqueous fracturing fluid rendered obvious by Crews in view of Brannon `170 since Crews teaches a wide range of concentrations (120-1700 kg/m3) of the proppant particles (i.e. propping agents; substituted with the deformable proppants of Brannon `170), as well as higher or lower concentrations being useful depending on the fracture design (paragraph [0040]). Because a wide range of concentrations of the proppant particles is permitted in Crews, then it necessarily encompasses an aqueous fracturing fluid comprising 25-70% by volume of the proppant particles (substituted with the deformable proppants of Brannon `170). It is noted that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus instant claim 31 is rendered obvious.
Regarding instant claim 32, it recites “wherein said first population is at least five times larger than said second population.” This claimed limitation is referring to the size of the first population relative to the size of the second population, not the size of the solid particles within the two populations. The substantially spherical deformable proppants in the fluid rendered obvious by Crews in view of Brannon `170 is inherently divisible into two populations of deformable proppants (claimed ‘solid particles’), the two populations being of any percent of the total deformable proppants, e.g. 1%-99%, such that their sum is 100%. This necessarily encompasses a first population that is at least five times larger than the second population. For instance, a first population that is 90% of the total number of deformable proppants and a second population that is 10% of the total number of deformable proppants meets the claimed limitation (the first population is 9 time larger than the second population, falling in the claimed range of ‘at least five times larger’). Thus instant claim 32 is rendered obvious.
Regarding instant claim 36, Crews teaches that the proppant particles are suspended within the fracturing fluid (paragraph [0039]), wherein the viscoelastic surfactant causes formation of a gelled or viscosified solution (paragraph [0038]). Thus the aqueous fracturing fluid rendered obvious by Crews in view of Brannon `170 comprises a colloid comprising a continuous phase (the gelled base fluid) and a dispersed phase in which the solid particles (the substantially spherical deformable proppants serving as the proppant particles) are the dispersed phase. As such, instant claim 36 is rendered obvious.
Regarding instant claim 38, Figure 1 of Crews shows that Enterobacter cloacae reduces the viscosity to as low as about 5 cps (i.e. 5 cP). Figure 2 of Crews shows that Pseudomonas fluorescens reduces the viscosity to as low as 10 cps (i.e. 10 cP). See also paragraphs [0062]-[0064] of Crews for the explanation of the experiments to obtain the results of Figures 1 and 2. These viscosities fall within the range of instant claim 38. In the fluid rendered obvious by Crews in view of Brannon `170, it would have been obvious that viscosities of the resulting fluid are similar to those taught in the examples of Crews (Figures 1 and 2). Therefore, instant claim 38 is rendered obvious.
Claims 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Crews, Brannon `170, James, Coatanlem, Morris, and Santra as applied to claims 22-25, 29, 31, 32, and 36-38 above, and further in view of Ravnas (US 2014/0083679. Listed on IDS filed 11/18/20) and in light of Laukkanen (US 2013/0035263. Previously cited) and Calias (US 6,521,223. Previously cited).
As discussed above, Crews in view of Brannon `170 (in light of James, Coatanlem, Morris, and Santra cited as evidence) renders obvious claims 22-25, 29, 31, 32, and 36-38. The references differ from claim 26 in that they do not expressly disclose that the viscosifier comprises cellulose, hemicellulose or a derivative thereof or a polysaccharide gum. The references further differ from claim 27 in that they do not expressly disclose that the viscosifier comprises a polyanionic cellulose or a microfibrillated cellulose. The references further differ from claim 28 in that they do not expressly disclose that the viscosifier comprises carboxymethyl cellulose.
As pointed out above, Crews teaches Clostridium thermocellum as bacteria in their aqueous fracturing fluid (paragraph [0042]). Additionally, Crews teaches that the viscosity of the VES-gelled fluid may be reduced by a biochemical agent (e.g. bacteria) that will directly attack and break down another component in the fluid besides the VES surfactant (paragraph [0054]). The other component could be added solely for the purpose of providing a food source, i.e. carbon source or energy source for the biochemical agent (paragraph [0054]). Such compounds include polysaccharides (paragraph [0054]). Furthermore, Crews teaches another embodiment in which inorganic and organic nutrients are added to aide microbe metabolic activity, such as polysaccharides (paragraph [0045]).
Ravnas discloses a microbial plug in a hydrocarbon-containing geological formation (abstract). The plug consists of microorganisms and biopolymers (paragraph [0101]). Preferred microorganisms include Clostridium thermocellum (paragraph [0023]). The microbial plug can be formed by injecting a nutrient solution and a bacterial culture into the formation (paragraph [0105]). The nutrient solution, also referred to as a growth medium, preferably contains a carbon source that can be cellulose, hemicellulose, and carboxymethyl cellulose (paragraph [0025]). As evidenced by Laukkanen, carboxymethyl cellulose is a viscosifier (paragraph [0002]). As evidenced by Calias, carboxymethyl cellulose is a polyanionic polysaccharide (column 3, lines 31-33).
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to include carboxymethyl cellulose in the aqueous fracturing fluid rendered obvious by Crews in view of Brannon `170 (in light of James, Coatanlem, Morris, and Santra, cited as evidence). One of ordinary skill in the art would have been motivated to do this since carboxymethyl cellulose is a polysaccharide that would have served as a carbon source for the bacteria in the aqueous fracturing fluid rendered obvious by the references, wherein polysaccharides as a carbon source for microbes are recognized in Crews for inclusion in their aqueous fracturing fluid (paragraph [0045]). Additionally, one of ordinary skill in the art would have been motivated to include carboxymethyl cellulose since it is a polysaccharide which can be directly attacked and broken down by the bacteria in the aqueous fracturing fluid rendered obvious by the references, wherein polysaccharides as the ‘other component’ that is attacked and broken down are recognized in Crews for inclusion in their aqueous fracturing fluid (paragraph [0054]). Since carboxymethyl cellulose is the carbon source of bacteria, then it is broken down by the bacteria and is a substrate of the bacteria. Carboxymethyl cellulose meets the claimed limitation of a viscosifier which is a substrate for the microorganisms (the bacteria), and meets the claimed limitation of a polyanionic cellulose. Thus instant claims 26 (cellulose), 27 (polyanionic cellulose), and 28 are rendered obvious.
Claims 30 and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Crews, Brannon `170, James, Coatanlem, Morris, and Santra as applied to claims 22-25, 29, 31, 32, and 36-38 above, and further in view of Rickards (US 6,059,034. Listed on IDS filed 11/18/20).
As discussed above, Crews in view of Brannon `170 (in light of James, Coatanlem, Morris, and Santra cited as evidence) renders obvious claims 22-25, 29, 31, 32, and 36-38. The references differ from claim 30 in that they do not expressly disclose that the deformable proppants (directed to the claimed ‘solid particles’) are uniform in size. The references differ from claim 33 in that they do not expressly disclose that the deformable proppants (‘solid particles’) of the formulation comprise a population of solid particles which are 0.05 to 5 mm in diameter. The references differ from claim 34 in that they do not expressly disclose that the deformable proppants (‘solid particles’) of the formulation comprise a population of solid particles which are <0.2 mm but ≥ 1 µm in diameter. The references differ from claim 35 in that they do not expressly disclose that the deformable proppants (‘solid particles’) of the formulation comprise a population of solid particles which are 1 to 100 µm in diameter.
Brannon `170 teaches that the deformable proppants have any particle size suitable for use in the method disclosed therein (paragraph [0029]), wherein the method of Brannon `170 is a method of fracturing a subterranean formation (e.g. claim 1 of Brannon `170). Also, Brannon `170 teaches that the deformable proppants may be any size suitable for forming cushions in situ (paragraph [0054]).
Rickards discloses deformable particles mixed with fracturing proppants to reduce fines generations, improve fracture conductivity, and/or minimize proppant flowback (column 1, lines 15-18). Rickards also teaches that their deformable particles (layered deformable particulate materials) may be employed alone as a fracture proppant material (i.e. without another type of fracture proppant material) (column 19, lines 56-61). Rickards discloses that fracture proppant sizes may be any size suitable for use in a fracturing treatment of a subterranean formation (column 13, lines 32-33). Typically, deformable particles having a size substantially equivalent to a selected fracture proppant size are used (column 13, lines 36-39). Additionally, Rickards teaches one embodiment in which substantially spherical fracture proppant material of “substantially uniform size” is used (column 16, lines 13-15). Further still, Rickards teaches that the deformable particles may range in size from about 1 or 2 mm to about 0.1 mm, more typically from about 0.2 mm to about 0.8 mm (column 13, lines 61-64).
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to apply the teachings of deformable particle size and fracture proppant material size of Rickards to the deformable proppants of the aqueous fracturing fluid rendered obvious by Crews in view of Brannon `170. One of ordinary skill in the art would have been motivated to do this since these teachings of Rickards are directed to deformable particles which can be the sole fracture proppant material in a fracturing treatment, thus being relevant to the deformable proppants of the aqueous fracturing fluid rendered obvious by Crews in view of Brannon `170. There would have been a reasonable expectation of obtaining an aqueous fluid suitable for fracturing since Brannon `170 teaches that their deformable proppants may be any size suitable for forming cushions in situ and since Rickards discloses size parameters for deformable particles used as fracture proppant material in a fracturing treatment (which is the purpose of the invention rendered obvious by Crews in view of Brannon `170). In applying the teaching of Rickards of fracture proppant material of “substantially uniform size,” then instant claims 30 is rendered obvious. The size ranges taught in Rickards fall within the diameter range of instant claim 33. The size range of about 0.1 mm to about 1 or 2 mm of Rickards overlaps with the diameter range of instant claim 34. The lower limit of about 0.1 mm, i.e. about 100 µm, of a size range of Rickards falls within the diameter range of instant claim 35. Thus instant claims 33-35 are also rendered obvious.
Response to Arguments
Applicant's arguments filed October 22, 2025, have been fully considered but they are not persuasive. The rejections under 35 U.S.C. 103 are set forth over the same prior art, but the evidence of Coatanlem is cited to support rendering obvious the new limitation that the solid particles are saturated with water.
Applicant asserts that Brannon teaches way from the claimed particles that are “saturated with water.” Specifically, Applicant asserts that both Crews and Brannon make it clear that the wooden particles therein are engineered to be fully hard and the skilled artisan would not be motivated to deviate from the particles taught therein to incorporate the features of the presently amended claims. However, in the discussion regarding propping agents in Crews (e.g., paragraph [0040]), there is no teaching specifying the hardness of the propping agents. Moreover, Brannon teaches “optionally” strengthening or hardening their deformable proppants (paragraph [0030]), thereby not requiring that their deformable proppants, such as processed wood materials, are fully hard; the hardening is optional. Therefore, the Examiner disagrees with Applicant’s characterization of Crews and Brannon.
Additionally, Applicant asserts that modifying the teachings of Crews and/or Brannon to arrive at the presently amended claims would at minimum change/render Crews and/or Brannon inoperable for their intended purpose. Applicant states that both Crews and Brannon use fully hard particles to prop open the fracture while not obstructing the flow of liquid through it, and modifying the particles therein to be saturated with water as presently claimed would result in plugging. However, as discussed in the preceding paragraph, Crews and Brannon do not require fully hard particles. The Examiner notes that Crews teaches that the art recognizes a high permeability proppant keeping a crack open or fracture open (paragraph [0002]) and Brannon recognizes the same (paragraph [0002]). However, Applicant has not provided evidence to support that particles saturated with water would have resulted in plugging that would not prop open the fracture. It is unclear that the skilled artisan would have expected that the saturation of particles with water would have rendered Crews and Brannon inoperable for their intended purpose. Brannon itself teaches wood particles as their deformable proppants (paragraph [0029]), wherein the deformable proppants can be provided in a carrier fluid comprising water (paragraph [0056]). The skilled artisan would have expected that providing wood particles in water (the carrier fluid) as in the invention of Brannon itself would have resulted in saturating the wood particles with water, at least based on the evidence of Coatanlem (see discussion regarding Coatanlem in the rejection).
Conclusion
No claims are allowed.
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/SUSAN E. FERNANDEZ/Examiner, Art Unit 1651