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 .
Applicant’s amendment
Applicant’s amendment filed 12/8/2025 has been received and entered. Claim 1 has been cancelled, claims 2, 12, 18-21 have been amended.
Claims 2-21 are pending.
Priority
This application filed 3/9/2021 is a continuation of 15/087497 filed 3/31/2016 now US Patent 10975691, is a continuation of 14/586865 filed 12/30/2014 now US Patent 11047232, which is a CIP of 14/585,078 filed 12/29/2014 which claims benefit to provisional application 61/944,961 filed 2/26/2014 and which claims benefit to provisional application 61/922,734 filed 12/31/2013; and
is related to US applications 15/087552 filed 3/31/2016 (now US Patent 9771795), continuation 15/641965 filed 7/5/2017 now US Patent 10767476 and continuation 16/943631 filed of 4/18/2023 now US Patent 11629593, and 17/332547 filed 5/272021; and
to US application 15/340,419 filed 11/1/2016 now ABN, 17/245822 filed 4/3/2021;
to applications PCT/US14/72880 filed 12/30/2014 and PCT/US14/72607 filed 12/29/2014.
No comment on the summary is provided in the instant response.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
Response to Applicants Remarks
Applicants acknowledge the rejections and state that they will attend to the same when the claims are in condition for allowance.
In response, in view of the acknowledgement and no specific arguments, the rejections are maintained for the reasons of record.
Claims 2-21 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent Nos. 10975691, 11047232, 9771795, 10767476 abd 11629593. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the methods and systems require and encompass the data and information present on a computer or general system to implement. Further, it is noted that each of the patents cited are related as continuations to parent application 14/586865, US Patent 11047232.
Claims 2-21 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-21 of copending Application No. 17/332547 (not docketed). Although the claims at issue are not identical, they are not patentably distinct from each other because the system and method of ‘547 appear to provide for the information of the present system and method and if practiced on a computer would have the information stored on a computer/system as presently claimed. For example, claim 19 directed to the method requires assessing microbiome data then generating instructions for recovery focused on fracturing using chemical additives which are broadly encompassed by the present claims.
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
As noted previously, a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
Response to Applicants Remarks
Applicants acknowledge the rejection and argue that the claims do not invoke 112f in view of the amendments such as ‘recovery operation equipment’, ‘one or more computers’ and control systems configured to adjust one or more operating parameters’. Applicants note that there is no new matter and the limitations are not generic functional placeholders.
In response, in view of the amendments it is acknowledged that a computer is concrete, as well as ‘equipment’ and ‘control systems’ as added to the claims, however in view of the specification these amendments also invoke 112f for generic components with general associated functions. The basis of the analysis is not that these are known, but that there is no specific structure function such that they embody a new or novel structure, and appear to be directed to structures known in the art. With respect to computers, there does not appear to be any special computer necessary, with respect to newly added ‘control systems’ this also appears to be directed to a computer which can control other elements of the system as they adjust parameters and no specific structural requirement is provided, and the ‘operation equipment’ can also broadly encompass a computer as it can be part of the recovery system but possibly more generally it can be other types of equipment which the specification does not provide any specific teaching for any specific interaction with the two other components, but could encompass pumps, drills,.. which could be used for recovery. In all, the generic nature of the components and the general function of each appears to invoke 112f as generic place holders for structures such as computers that are known in the art.
The analysis of record is provided below for completeness of the record.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) are those provided by claims 2-11 directed to a system which comprise one or more computers to assess and provide data to direct an industrial activity. Specifically, it is noted that the claim recites one or more computers, and in light of the guidance of the specification and evidence of record these appear to encompass any generic computer capable of processing information and does not appear to provide any specialized system or computer, nor one that necessarily results in improved recoverability.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2-21 stand rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter because the claimed invention is not directed to patent eligible subject matter
Claim analysis
Independent claims 2 and 12 have been amended and still are generally directed to a system and method of obtaining microbiome information at a hydrocarbon recovery site, such as an oil field and the method encompassed is one of correlating the field data including microbiome information (see limiting claim 8 for example) for instructing use of recovery methods and operational equipment. As amended the computers are connected to recovery equipment with no specific indication how and a control system has been added to provided ‘directing information’ during the recovery operation with no specific indication of what the information is or specific operation or specific time timeline of the operation. The claims provide steps that encompass data from a plurality of wells which are used to provide for the plurality of samples and providing predictive recovery strategies based in part on the microbiome information. Broadly the claims require the use of a computer, but in view of the teachings of the specification, this can be accomplished through machine learning to provide information for production decisions at a location of the wells.
The specification provides for specific steps to use machine learning and that a ‘predictive model’ can be generated and then selected ‘based on an expected prediction error associated with the predictive machine-learned model’ where the ‘accuracy of the expected prediction error for the predictive machine-learned model having been improved through a number of repeated tests of the expected predictive accuracy’ using derived microbiome data. A search of the specification provides support for feature selection at [00407] teaching:
‘The goal of feature selection will be to find the combination of the model parameters and the feature subset that provides the lowest expected error on novel input data. Feature selection will be of utmost importance in the realm of microbiome classification due to the generally large number of features(i.e., constituent species-level taxa, or transcripts, or metabol some combination of these): in addition to improving predictive accuracy, reducing the number of features leads to the production of more interpretable models. Approaches to feature selection are typically divided into three categories: filter methods, wrapper methods, and embedded methods.’
and supports generally for feature selection not the model itself. At [00411]-[00412] it is taught that:
‘Wrapper methods are usually the most computationally intensive and perhaps the least elegant of the feature selection methods. A wrapper method, like a filter method, will treat the classifier as a black box, but instead of using a simple univariate or multivariate test to determine which features are important, a wrapper will use the classifier itself to evaluate subsets of features. This leads to a computationally intensive search: an ideal wrapper will retrain the classifier for all feature subsets, and will choose the one with the lowest validation error. Were this search tractable, wrappers would be superior to117 19856.0005 (Biota B2a)filters because they would be able to find the optimal combination of features and classifier parameters. The search will not be tractable for high-dimensional data sets; hence, the wrapper will use heuristics during the search to find the optimal feature subset. The use of a heuristic will limit the wrapper's ability to interact with the classifier for two reasons: the inherent lack of optimality of the search heuristic, and the compounded lack of optimality in cases where the wrapper's optimal feature set differs from that of the classifier. In many cases the main benefit of using wrappers instead of filters, namely that the wrapper can interact with the underlying classifier, is shared by embedded methods, and the additional computational cost incurred by wrappers therefore makes such methods unattractive.
[00412] Embedded approaches to feature selection will perform an integrated search over the joint space of model parameters and feature subsets so that feature selection becomes an integral part of the learning process. Embedded feature selection will have the advantage over filters that it has the opportunity to search for the globally optimal parameter-feature combination. This is because feature selection will be performed with knowledge of the parameter selection process, whereas filter and wrapper methods treat the classifier as a "black box." As discussed above, performing the search over the whole joint parameter-feature space is generally intractable, but embedded methods will use knowledge of the classifier structure to inform the search process, while in the other methods the classifier must be built from scratch for every feature set.’
The system is a computer and the method appears to be practice using a computer, and the pending claims provide for obtaining data where the steps of obtaining materials from an oil field and extracting genetic material for further analysis in the machine learning models that would be chosen as part of the method. More broadly, the claims are directed to analyzing a material from a location of an industrial operation by obtaining microbiome information and evaluating the microbiome information to evaluate on how to proceed at well location.
Response to Applicants arguments
Applicants note the USPTO memo by Charles Kim issued Aug 4, 2025 and provide a summary of the guidance. Applicants note the claim amendments to provide for recovery operation equipment, and argue that it is integrated into a system and that parameters are adjusted in a way humans cannot do.
In response, as analyzed above and in the 112f, the claims encompass instructions that are provided on equipment which broadly can be a general purpose computer. To the extent the operation equipment could be a drill, pump or some other physical type of recovery industrial equipment, there is no specific ‘control system’ which appears to integrate the analysis for the operations of any specific type of equipment and appears to provide instructions to the operator rather that control the equipment directly. Thus to the extent the claims encompass obtaining and analyzing data and using the data to instruct recovery strategies, the claims appear to be directed to abstract ideas and steps that a human can perform.
The specific analysis under the guidelines is provided below for completeness of the record.
For step 1 of the 101 analysis, the claims are found to be directed to a statutory category of a product and process.
Here a system and method to implement a method to analyze field data.
For step 2A of the 101 analysis, the judicial exception of the claims are the steps of analyzing sequence data through modeling. In view of the guidance of the specification, the step of aligning and comparing sequence to arrive at the identification of specific microbiomes that are present and the comparison among wells are instructional steps. As explained in the 2019 PEG Update, "[w]hile a claim limitation to a process that 'can be performed in the human mind, or by a human using a pen and paper' qualifies as a mental process, a claim limitation that 'could not, as a practical matter, be performed entirely in a human's mind' (even if aided with pen and paper) would not qualify as a mental process." The step of correlating microbiome data or information at a well site and use it direct further activity are broad generic instructional steps. When microbiome sequences are used, the claim requires computing similarity scores based on to identify the microbe when receiving data, and the generating step appears broadly instructive based on what is observed, such as providing the information in a table form. The judicial exception is a set of instructions for analysis of data and appears to fall into the category of a Mental Processes, that is concepts performed in the human mind (including an observation, evaluation, judgment, opinion). The breadth of “accessing” and “generating” encompasses non-transformative visual assessment of a known correlation between a microbe and potential process for industrial activity. This breadth does not impose a meaningful limit on the claim scope, such that all others are not precluded from using the natural principle which the correlation of a microbe and recoverability of any natural resource. The courts have also identified limitations that did not integrate a judicial exception into a practical application; for example, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f). The recited accessing data and using it appear to provide previously correlated information present as information on a computer. Computing, constructing datasets and using statistical models was well understood, conventional, and routinely performed in the art at the time the application was filed. See also MPEP § 2106.05(h) for a discussion on generally linking the use of a judicial exception to a particular technological environment or field of use. The claims appear to fall into the category of a mental processes, as concepts performed in the human mind because there is no apparent complexity to or amount of data that is collected and analyzed as presently claimed and broadly can be represented as information in a table.
Recent guidance from the office requires that the judicial exception be evaluated under a second prong to determine whether the judicial exception is practically applied. In the instant case, the claims do not have an additional element except broad instructional steps to ‘directing’. This judicial exception requires steps recited at high level of generality and are only stored on a non-transitory, and is not found to be a practical application of the judicial exception as broadly set forth.
For step 2B of the 101 analysis, each of the independent claims recites additional elements for practicing the method on a computer and are found broadly to be the steps of obtaining data. As such, the claims do not provide for any additional element to consider under step 2B to which the judicial exception is applied, nor in view of the breadth of the claims and evidence of record there does not appear to be a practical application or improvement to the technical field. To the extent the method is performed on a system which is a general purpose computer, it is noted that in explaining the Alice framework, the Court wrote that "[i]n cases involving software innovations, [the step one] inquiry often turns on whether the claims focus on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool." The Court further noted that "[s]ince Alice, we have found software inventions to be patent-eligible where they have made non-abstract improvements to existing technological processes and computer technology." Moreover, these improvements must be specific -- "[a]n improved result, without more stated in the claim, is not enough to confer eligibility to an otherwise abstract idea . . . [t]o be patent-eligible, the claims must recite a specific means or method that solves a problem in an existing technological process." While the instruction are stored on a medium and could be implemented on a computer, together the steps do not appear to result in significantly more than a means to compare sequences. The judicial exception of the method as claimed can be performed by hand and in light of the previous claims to a computer medium and in light of the teaching of the specification on a computer. In review of the instant specification the methods do not appear to require a special type of processor and can be performed on a general purpose computer. Dependent claims set forth additional steps which are more specifically define the considerations and steps of calculating and potential types of industrial activity, and do not add additional elements which result in significantly more to the claimed method for the analysis and suggestion or instruction on how to proceed. Finally, if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is non-statutory. In other words, patenting abstract idea (designing probes to a target sequence) cannot be circumvented by attempting to limit the use to a particular technological environment or purpose and desired result.
One way to overcome a rejection for non-patent-eligible subject matter is to persuasively argue that the claimed subject matter is not directed to a judicial exception. Another way for the applicants to overcome the rejection is to persuasively argue that the claims contain elements in addition to the judicial exception that either individually or as an ordered combination are not well understood, routine, or conventional. Another way for the applicants to overcome the rejection is to persuasively argue that the claims as a whole result in an improvement to a technology. Persuasive evidence for an improvement to a technology could be a comparison of results of the claimed subject matter with results of the prior art, or arguments based on scientific reasoning that the claimed subject matter inherently results an improvement over the prior art. The applicants should show why the claims require the improvement in all embodiments.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2, 4, 8-11, 14, 15, 18-21 rejected under 35 U.S.C. 102a as being anticipated by Zhang et al. (2012) is withdrawn.
In view of the amendments, it is agreed that Zhang et al. does not provide for the new limitations, and overall provides for a scientific analysis of microbiome parameters in water flooded oil reservoirs.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-21 stand rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al and Davis et al. (2011).
Response to Applicants arguments
Applicants note the amendments to the claims and argue that references combined fail to provide for using a control system in a recovery operation or to instruct operational equipment in the recover process.
In response, in view of the broad and generic nature of limitations each can encompass a computer for analyzing, controlling or providing information to a site, and the equipment at the site can also be a computer which provides instructions. Given the teachings of the specification and general basis of the invention, using microbiome data to analyze a recovery site, such as an oil well appears to be know as analyzed by Zhang et al. Davis et al. is provided as evidence that detailed analysis of the microbiome community can be performed and in view of Zhangs review applied to a variety of types of operations. The use of a computer to analyze and/or control operations is obvious, and given the general nature of the teachings of the specification there does not appear to be secondary considerations or detailed requirements of the claim limitations on how the various computers and equipment are controlled or linked in a functional way that would not be obvious over using a computer to assist in a recovery process.
The complete analysis and basis of the rejection is provided below for completeness of the record.
As analyzed above, Zhang et al summarize the state of the art noting much attention has been paid to ‘the potential applications of microbial enhanced oil recovery (MEOR) techniques, resulting in an increased interest in knowledge of microbial communities in subsurface oil reservoirs. Most studies of microbial communities in oil reservoirs have for practical and economical reasons normally been carried out on samples obtained from the oil well production heads, and most of oil reservoirs under study are subjected to water-flooding.’ More specifically, Zhang et al perform methods and use a system to provide analysis of microbial diversity assessment based on 16S rRNA gene clone library technique has yielded amazing insights into the community composition in a variety of environments. In experiments comparing microbial communities in samples of injection and production wells from different oil reservoirs with different in situ temperatures, microbial communities detected in samples of produced waters were also analyzed. The system and studies provide both the information and knowledge of microbial ecosystem in oil reservoirs subjected to water-flooding and more importantly provide a significant referencing value for the performance of microbial enhanced oil recovery (MEOR) in theses oil fields for directing activities at a well site. Zhang et al. talk about recovery processes, but do specifically investigate or teach large scale CO2 as a recovery process. At the time of filing the use of CO2 as part of the flooding and recovery process were well known. Davis et al is provided as evidence of practices of CO2 flooding used in the recovery process in the Texas Gulf coast oil fields. Given the breadth of the claims to broadly provide systems and methods that use the information about the microbiome to assess and direct recovery, and more specifically the use knowledge of oil fields and use known conventional means of recovery, it would have been prima facie obvious to one having ordinary skill in the art at the time the invention was made to provide any known flooding technology, such as that of CO2 flooding used in the oil fields of Texas. One having ordinary skill in the art would have been motivated to use known and effective recovery techniques based on the available information about the fields which can be in part provided by the microbiome present as demonstrated by Zhang et al. Given the information about microbiome in field assessment was known and recovery methods were known and effective, there would have been a reasonable expectation of success given the results of both Zhang et al and Davis et al. to provide an assessment of an oil field and then apply known recovery techniques.
Thus, the claimed invention as a whole was clearly prima facie obvious.
Conclusion
No claim is allowed.
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.
In addition to Zhang et al and Davis et al, it is noted that methods of recovery were well known as evidenced by Kohr et al. (US 2011/0067856) discloses microbial enhanced oil recovery (MEOR); Gates et al. (US 2011/0250582) which discloses a method and system for production of biogenerated gas from a zone in a reservoir. This is used for microbial conversion of petroleum in the zone to biogenerated gas is stimulated; and Regberg et al. (US 2014/0378319) which discloses a method to determine location, size and in situ conditions in hydrocarbon reservoir with ecology, geochemistry, and biomarkers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph T Woitach whose telephone number is (571)272-0739. The examiner can normally be reached Mon-Fri; 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Karlheinz R Skowronek can be reached at 571 272-9047. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Joseph Woitach/Primary Examiner, Art Unit 1687