DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Claims 13 and 14 are cancelled. Claims 1, 4, 10, 12, and 18 are amended. Claims 20-23 are new. Claims 1, 3-12, and 15-22 are pending.
In view of the Applicant’s amendments, the rejections under 35 USC 112(b) are withdrawn.
Election/Restrictions
Newly submitted claims 20-23 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The invention of previous claims 1, 3-12, and 15-19 and the invention of new claims 20-23 are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus (claims 1, 3-12, and 15-19) could be used to practice a different method than that of the method claims (claims 20-23), for example a method including re-stirring.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 20-23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 4, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Coody et al. (US PGPub 2004/0008671, hereinafter Coody) in view of Barton et al. (US PGPub 20150016209, hereinafter Barton).
Regarding claim 1, Coody discloses a multiple tank acid mixing and delivery system for receiving and managing a plurality of fluids and mixing a final acid mixture for use in hydraulic fracturing process (paragraphs 0003-0004), wherein:
said multiple tank acid mixing and delivery system comprises a support frame (figure 1, trailer 110), a mix tank (blender 140), an acid tank (tote tanks 114), a plumbing system (pipes seen in figure 1 attaching various component of the system), a control system (paragraph 0028, “programmable logic circuit”), a water manifold (figure 2, intake manifold 144), and a main connection manifold (discharge manifold 148).
Coody discloses the tanks being mounted on the support frame (see figure 1).
Coody also discloses at least one valve (figure 2, valves 190) and at least one bypass line (line 188) arranged to allow partial volumes of the fluids to be directed into said mix tank (via pump 146 and valve 150) for preparing said final acid mixture without requiring re-stirring (paragraph 0041). As stated in paragraph 0041, the cited valves allow for fluid to be recirculated through the system, which would reduce the requirement for re-stirring.
It is noted that Coody discloses acidizing fluids (paragraphs 0003 and 0004) as a possible product of the disclosed system. Thus, it appears that Coody would be fully capable of pre-mixing HCL as recited in claim 1. Further, it is well-settled that the material worked upon by an apparatus does not limit apparatus claims. See MPEP 2115. Thus, the specific mixing of HCL to a certain concentration does not limit the claims, and, because the device of Coody is deemed to be capable of mixing such materials, limitations specifically mentioning HCL are met.
Coody also discloses that the programmable logic circuit is configured to receive a desired mixture composition and produce a mixture having that composition (paragraph 0028). This would indicate a capability of performing the efficient, precise dilution to the desired operational concentration recited in various limitations of claim 1, meeting these limitations.
Further, Barton teaches a mixing system specifically adapted to dilute acids (paragraph 0005) including HCL (paragraph 0044). Barton also states that the bulk containers (figure 1, item 106) are “capable of storing and handling the desired fluids,” including concentrated HCL (paragraph 0044). This would indicate that these containers are acid approved and non-reactive as recited. To one of ordinary skill in the art before the effective filing date of the claimed invention, it would have been obvious to have provided acid approved containers in Coody for the purpose of allowing it to perform the function of diluting acids, which, as noted above, the device of Coody appears to already be capable of performing.
Although Coody does not explicitly disclose acid approved containers that are not reactive to HCL or other acids, Coody does mention the production of acidizing fluids as a possible use of the disclosed apparatus (paragraphs 0003-0004). Additionally, Barton teaches bulk containers (figure 1, item 106) that are “capable of storing and handling the desired fluids,” including concentrated HCL (paragraph 0044). This would indicate that these containers are acid approved and non-reactive as recited. Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to use acid approved containers for the purpose of avoiding damage from acid placed in the acid tank and mix tank of Coody. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Thus, the selection of acid-approved materials for the containers that may store or mix acid would be obvious to one of ordinary skill it the art.
Although Coody does not explicitly mention which tank is smaller or larger, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) In this case, the relative size of the tanks would not lead to any different functionality or performance in the device, and thus it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention.
Finally, any vessel, including those of Coody and Barton, would be capable of containing its maximum capacity or any reduced capacity, meeting the limitations relating to batches that do not completely fill the mix tank.
Regarding claim 3, Coody discloses said multiple tank acid mixing and delivery system is adapted to keep said high concentration acid in said acid tank (figure 1, tank 114) and utilize said mix tank (blender 140) to individually mix each stage of the frac job for the initial spearhead acid (said final acid mixture) (paragraph 0036); and said final acid mixture is premixed with the proper chemicals and will have the proper mixing of acid and water to bring the concentration to 15% HCL. The concentration of HCL in the final mixture is a method of operation of the apparatus that does not affect its structure. As held in In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), “the manner or method in which such machine is utilized is not germane to the issue of patentability of the machine itself.” Nonetheless, the apparatus disclosed in Coody contains all the necessary structure to produce a mixture with the claimed concentration, and thus the claim is met. Additionally, the dilution of HCL is known in the art, as established above with Barton.
Regarding claim 4, the introduction of chemicals and maintaining the mixture in the mix tank are methods of operation of the apparatus that do not affect its structure. As held in In re Casey, supra, “the manner or method in which such machine is utilized is not germane to the issue of patentability of the machine itself.” Nonetheless, the apparatus disclosed in Coody contains all the necessary structure to receive chemicals and store the mixture in the mix tank, and thus the claim is met.
Regarding claim 18, Coody discloses a bypass line (line 188) installed below the mix tank (see figure 2) arranged to allow partial volumes of the fluids to be directed into said mix tank (via pump 146 and valve 150) for preparing said final acid mixture without requiring re-stirring (paragraph 0041). As stated in paragraph 0041, the cited valves allow for fluid to be recirculated through the system, which would reduce the requirement for re-stirring.
Claims 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Coody et al. (US PGPub 2004/0008671, hereinafter Coody) in view of Barton et al. (US PGPub 20150016209, hereinafter Barton), as applied to claim 1 above, and further in view of Peters (US PGPub 2020/0406809, hereinafter Peters).
Regarding claim 5, Coody is silent to the brackets and bands as recited. Peters teaches a system including a tank attached to a frame (see figure 1) in which the tank is secured to the frame by a plurality of tank bands and a plurality of tank support brackets that are secured to the support frame (figure 1, bands can be seen on top of tank 108; figure 2, brackets can be seen formed by members 224 and 220, which are attached to the frame including skids 202 and 204). To one of ordinary skill in the art before the effective filing date of the claimed invention, it would have been obvious to have provided the apparatus of Coody with the brackets and bands of Peters for the purpose of securely attaching the tanks to the frame.
Regarding claim 6, Coody discloses the support frame (figure 1, trailer 110) having a front end (near item 112), a rear end (near the label for item 110), a first side (facing the viewer in the figure), a second side (facing away from the viewer in the image), and a central portion (near item 138).
Regarding claim 7, Coody discloses a water line (figure 2, line containing valve 150) configured to connect to said water manifold (figure 2, intake manifold 144) at a first end and said plumbing system (pipes surrounding and between mixer 138 and blender 140) at a second end.
Regarding claim 8, Coody discloses a mix tank bypass line (lines including valve 150 and valve 190 and manifold 144) in fluid connection between a mix tank inlet (line including valve 150 is in communication with the inlet) and a mix tank outlet (line including valve 190 is in communication with the blender outlet); said mix tank bypass line is installed below said mix tank and within said support frame (see position of lines in figure 1); and a portion of a fluid from said plumbing system is directed into said mix tank bypass line and said mix tank inlet. Directing the fluid into the bypass line is a method of operation of the device. As established above, the method of operating the device is not germane to the issue of patentability of the device. Nonetheless, the apparatus of Coody would be fully capable of moving fluid through the identified bypass line, meeting the claim.
Regarding claim 9, Coody discloses a controller that monitors and controls the mixing process to achieve the desired composition of a final mixture (paragraph 0028). The regulation of various components of the mixture is controlled by valves and feed systems mentioned in the cited paragraph.
Regarding claim 10, Coody discloses a power supply (figure 1, power assembly 108) connected to one or more components (paragraph 0022).
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Coody et al. (US PGPub 2004/0008671, hereinafter Coody) in view of Barton et al. (US PGPub 20150016209, hereinafter Barton) and Peters (US PGPub 2020/0406809, hereinafter Peters), as applied to claim 10 above, and further in view of Stegemoeller et al. (US PGPub 2019/0009230, hereinafter Stegemoeller.
Regarding claim 11, Coody does not explicitly disclose an acid tank inlet and acid inlet line, although it is noted that the tanks of Coody must be filled somehow, and would likely include inlets and inlet lines to do so. Stegemoeller discloses a mixing and delivery system (figure 1) including an additive container (container 16) that has an inlet and an inlet line (seen in figure 1, from containers 24). To one of ordinary skill in the art before the effective filing date of the claimed invention, it would have been obvious to have provided the acid tank of Coody with an inlet and inlet line, as in Stegemoeller, for the purpose of filling the acid tank before using the system.
Regarding claim 12, Coody discloses an additives input line (figure 1, metering auger 124), this is configured to further be divided up into a chem tote fluid input from a chem tote fluid line, and an acid inlet line (as seen in the figure, the metering auger spits into multiple inlets, any of which could be a chem tote fluid input or acid inlet).
Coody further discloses a controller that monitors and controls the mixing process to achieve the desired composition of a final mixture (paragraph 0028). The regulation of various components of the mixture is controlled by valves and feed systems mentioned in the cited paragraph. The cited paragraph also mentions tracking operational characteristics, and at least one meter system is present in the apparatus (metering auger 124). This would appear to meet the monitoring and control requirements of claim 13.
Coody also discloses a first pump (figure 2, pump 146) controlled by the control system (paragraph 0028).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Coody et al. (US PGPub 2004/0008671, hereinafter Coody) in view of Barton et al. (US PGPub 20150016209, hereinafter Barton), as applied to claim 1 above, and further in view of Peters (US PGPub 2020/0406809, hereinafter Peters).
Regarding claim 15, Coody discloses tanks secured to a support frame by a plurality of tank support brackets (see figure 1, vertical brackets can be seen securing each tank), but is silent to tank bands. Peters teaches a tank secured to a support frame (figure 1) by a plurality of tank bands and brackets (see figure 1). To one of ordinary skill in the art before the effective filing date of the claimed invention, it would have been obvious to have substituted the known securing structures of Peters for that of Coody because such a substitution would have provided only the predictable result of securing the tanks to the support frame, as evidenced by the references. See KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007).
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Coody et al. (US PGPub 2004/0008671, hereinafter Coody) in view of Barton et al. (US PGPub 20150016209, hereinafter Barton), as applied to claim 1 above, and further in view of Field (US 3743598, hereinafter Field).
Regarding claims 16 and 17, Coody discloses a programmable logic circuit is configured to receive a desired mixture composition and produce a mixture having that composition (paragraph 0028), but is silent to a sensor as recited. Field teaches a mixing system (figure 1) including a mixing tank (tank 13) that includes a sensor that measures a concentration level of an acid in the tank (pH sensor 71). Field further teaches the use of the sensor in conjunction with a control system and motor control station to monitor and maintain or adjust the level of acid in the mix container (column 7, lines 5-15). It is noted that both references disclose the adjustment of valves to control the level of various components of a mixture in order to achieve a desired composition. While the references may not explicitly mention a concentration of about 15% HCL, the concentration of HCL in the final mixture is a method of operation of the apparatus that does not affect its structure. As held in In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), “the manner or method in which such machine is utilized is not germane to the issue of patentability of the machine itself.” Nonetheless, the apparatus disclosed in Coody contains all the necessary structure to produce a mixture with the claimed concentration, and thus the claim is met. Additionally, the dilution of HCL is known in the art, as established above with Barton. Finally, it is well-settled that the material worked upon by an apparatus does not limit its structure. The cited references would be fully capable of working upon HCL, and thus the claim is met. To one of ordinary skill in the art before the effective filing date of the claimed invention, it would have been obvious to have provided the apparatus of Coody with the sensors and control of Field for the purpose of using feedback control to produce a mixture having a desired composition.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Coody et al. (US PGPub 2004/0008671, hereinafter Coody) in view of Barton et al. (US PGPub 20150016209, hereinafter Barton), as applied to claim 1 above, and further in view of Bishop (US PGPub 2019/0217258, hereinafter Bishop).
Regarding claim 19, Coody is silent to a fluid level sensor as recited. Bishop teaches a mixing system (figure 1) including a mixing tank (mixing tub 130) that has a sensor array that measures the fluid level in the tank (paragraph 0087). To one of ordinary skill in the art before the effective filing date of the claimed invention, it would have been obvious to have provided the apparatus of Coody with the level sensors of Bishop for the purpose of precisely controlling the volume in the mixing tub (Bishop: paragraph 0087).
Response to Arguments
Applicant's arguments filed 12/31/2024 have been fully considered but they are not persuasive.
The Applicant argues that the bypass line allowing for smaller, tailored batches is absent from the prior art’s systems (remarks, page 4), indicating that this is a structural distinction. The Examiner respectfully disagrees. As stated in the rejection of claim 1 above, Coody includes a bypass line installed beneath the mix tank (see figure 2 of Coody and rejection above). It is not clear what affect the alleged capabilities of the claimed bypass line have on its structure, and the Applicant has not stated any specific structural difference between the claimed bypass line and that of the prior art. Merely stating that the claimed bypass line is a “purposeful design choice” does not clarify any sort of difference in structure between that and the bypass line of the prior art. Thus, this argument is not persuasive.
The Applicant argues that the control system “ensures precise batch preparation based on real-time fracturing needs,” indicating that the prior art does not have this capability (remarks, page 4). The Examiner respectfully disagrees. There is not clear structure in the claims that allows for this capability of the control system. Given that the control systems of the prior art are explicitly stated to dilute material to a desired concentration, they are deemed to be fully capable of the “precise batch preparation” as claimed. Further, it is not clear what role the “real-time fracturing needs” play in the system or what structure that represents. Presumably, the devices of the prior art could be adjusted by an operator to produce a different concentration of material if desired, and this would fully meet the capability of adjustment to any so-called real time fracturing need. Thus, this argument is not persuasive.
The Applicant argues that the prior art does not disclose the “larger acid tank and smaller mix tank, both non-reactive to HCL” as recited in the claims (remarks, page 4).
First, both cited references disclose containers that are intended to hold acid, and Barton specifically discloses HCL acid. One of ordinary skill in the art, or even likely a layperson, would immediately understand that containers intended to hold acid must be nonreactive to that acid, or else the containers might be damaged during use. The containers in an acid-mixing system being non-reactive to acid is not a patentable advance.
Second, as stated above, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) In this case, the relative size of the tanks would not lead to any different functionality or performance in the device, and thus it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention. The Applicant has alleged that the claimed tanks allow for “on-demand preparation of smaller batches,” but has failed to explain why the devices of the prior art would be structurally incapable of producing smaller batches. Thus, this argument is not persuasive.
The Applicant argues that the “Examiner’s assertion that partial-volume batch production is obvious overlooks the invention's purposeful design and industry context,” stating several alleged benefits of the system. However, the alleged benefits of the system stated by the Applicant are irrelevant when considering the claims. The claims recite a system that “is adapted to produce batches of diluted acid that do no completely fill the mix tank.” The only requirement this recitation places is that the system (as a whole) be capable of producing a batch that does not completely fill the mix tank. In figure 1 of Coody, fluid is depicted in the mix tank 140 that does not completely fill the tank (i.e. a “waterline” can be seen within the tank). Further, it is well-known that any container is fully capable of being filled to a level that is less than its maximum capacity, including the mix tank of Coody. Thus, it is clear that Coody is fully capable of producing a batch as described, and this argument is not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC C HOWELL whose telephone number is (571)272-9834. The examiner can normally be reached Monday-Friday 8-5.
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/MARC C HOWELL/Primary Examiner, Art Unit 1774