DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
As previously set forth: Applicant’s election of Group I, combination of perlite and pumice, reagent of a mixture of inhibitors and surfactants in the reply filed on 8/25/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 25 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/species, there being no allowable generic or linking claim.
It is noted that the combination of perlite and pumice, nor, the mixture of inhibitors and surfactants is currently claimed, so the claims will be examined based on just perlite OR pumice, and, inhibitor OR surfactant as the elected species.
It is also noted that Applicant does not seem to have support to claim “a combination of perlite and pumice”
Priority
As previously set forth: Multiple elements of claim 1 do not have support in the parent application (e.g. “multiple-loaded”, “non-ceramic carrier”, “small and granular”, “repeating iterations until…”. Thus the claims have an effective date of the filing of the instant application: 4/7/22.
Applicant has submitted a new ADS to claim benefit to prov 62/458629, and it is noted that the above limitations (amongst others) are also not supported by the provisional.
Response to amendment/arguments
Applicant argues the sequential loading cycles are not disclosed in Kaufman. Applicant argues Kaufman only discloses a single step infusion. Applicant argues the instant examples show that progressive loadings give increased accumulation in the particle. Applicant argues Kaufman thusly cannot render the claimed product obvious or anticipated.
The Examiner disagrees. The claim is written in product by process language. The process of sequential loading not being pertinent unless Applicant shows a distinct product is produced. Kaufman discloses the weight ratio of treatment agent to absorbent particle to be 90:10 to 10:90, thus embracing 90% by mass of the particle being the treatment agent. This seems to embrace the same product claimed. Though a different process is used, Applicant has not shown a distinct product is produced. Arguments herein are thusly not persuasive.
Applicant argues claim 9 is drawn to the internal structure that is selected to facilitate penetration of the reagent into the pores. Applicant argues infusion is different than soaking or applying because it allows penetration into internal pores. Applicant argues Webb does not teach internal pore structure as a functional parameter nor does it teach cumulative accumulation or structural saturation. Applicant argues the claims do not recite a spherical shape nor is Pisklak concerned with the internal pore structure. Applicant argues Huang is not concerned with making a product that has a porous carrier infused with reagents and the aspect ratios therein do not relate to the structural infusion of reagents.
The Examiner disagrees. Applicant does not treat or modify the pumice or perlite in anyway. The internal pore structure seems to be implicit in the elected compounds, e.g. if you have pumice or perlite they will have internal pores therein. That none of the prior art references disclose any particular internal structure and/or considerations thereof is thusly moot. Perlite and pumice are known absorbents which are used to absorb compounds therein for later release in a well (as shown in Kaufman). It unclear to the Examiner what the difference between infusion vs. soaking/applying. Is there a different pressure applied? Heat? Applicant’s arguments/specification offers no evidence to the contrary. That Webb does not teach internal pore structure, cumulative accumulation or structural saturation is moot since Webb is not used to teach such. Regarding the spherical shape, the claimed aspect ratio values in claim 25 is a measure of sphericity. A 1:1 aspect ratio is an exact sphere whereas any deviation is more of an oblong type shape. Thus, the teachings of using a spherical shape, and, known aspect ratios for said spherical shapes are pertinent to the instant claims. That these are not taught in relation to the infusion of reagents is moot, they are known sphericities in the art and thus there is motivation to use such for the particles of Kaufman. Arguments herein are thusly not persuasive and the rejections stand as set forth below.
Specification
The correction to the specification dated 3/16/26 to fix the provisional application number has been entered.
Claim Objections
Claim 25, and its dependents, is objected to because of the following informalities: the “i” of infusing should not be underlined. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1, and its dependents, is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has the limitation “semi-liquid” that does not have support in the originally filed written specification.
Claim 9, and its dependents, is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 has the limitation “have an internal structure with an aspect ratio between…” this new recitation changes the scope of the aspect ratio to one not found in the originally filed written description. Prior to amendment it was “carrier material…with aspect ratios in the range”, which is materially different than the above claimed “internal structure with an aspect ratio” that infers the aspect ratio has to do with the internal structure.
Claim 24, and its dependents, is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 24 has the limitation “greater than 30 wt%”, this range is not explicitly disclosed in the originally filed written description. Applicant can not make up an open ended range, and, doesn’t seem to have support for the endpoint of 30 wt%
Claim 25, and its dependents, is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
“internal structure associated with the aspect ratio” is not supported by the originally filed written description and is deemed new matter
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 4-5, 10, 11, 21-24 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kaufman (US 2007/0173417)
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. The loading produces being a product by process limitation. Since pumice/perlite are embraced by the reference the same end loading is expected to be achievable, e.g. higher concentration of reagent in the solution and/or longer soak times. Further, Kaufman discloses the weight ratio of well treatment agent to water insoluble absorbent ranges from 90:10-10:90 [0056], e.g. 90g well treatment agent to 10g particle = 90% capacity, embracing new claim 24. Elements above/previously meet the new limitations of claim 1 and also new claims 21-24
Kaufman discloses composites using porous particulates (abstract) wherein well treatment agents, such as surfactants [meeting the at least one reagent] are absorbed therein (abstract). The porous particulate may be pumice or perlite [0023], although Kaufman discloses these to be ‘natural ceramic materials’, pumice and perlite are what they are, e.g. they must also meet the claimed ‘non-ceramic’ requirements of claim 1 since they are disclosed to be a type of non-ceramic in claim 2. (Further noted that ceramic typically is thought of as those inorganic ceramics of [0022] of Kaufman, though Kaufman is not limited to such).
Kaufmann discloses that the porous particle is saturated, or, is maximally absorbed with the treatment agent [0049]. “Multiple-loaded” and “repeating iterations until…is substantially completely loaded” are product by process limitations. The process of loading the particle is not pertinent unless Applicant shows a distinct product is produced, thus the claim is anticipated. Alternatively, it’s prima facie obvious because the claimed product may be slightly different than the product of the prior art.
The particles would implicitly be ‘small’ and granular since there is no definition of ‘small’ in the claims and granular merely means they are in discrete particle shape. Elements above meet claims 1 and 2, treatment agents are dissolved in a solvent [0049] [meeting the liquids of claim 4] and surfactants may be added to the said agents [0049] [meeting the surfactant of claim 5], thus meeting claims 4-5 and mixtures of different treatment agents, such as including inhibitors [0043] with the above surfactants, are prima facie obvious, See In re Kerkhoven, rending obvious mixture of agents in claims 5, 10-11.
Claim(s) 9, 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaufman in view of Webb (WO 99/36668-reference of record), Pisklak (US 2011/0118155) and Huang (US 2017/0145297).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. Regarding the new internal structure aspect ratio, there is no disclosure in the specification of any additional steps or considerations that are needed other than picking an appropriate material. E.G. perlite and pumice seem to implicitly have the required internal pores and presumed aspect ratio therein without any type of heat/chemical treatment or any other consideration (e.g. a specific species of pumice or perlite). Thus, the pumice and perlite disclosed by Kaufman is expected to embrace the internal structure/aspect ratio of claim 9. New claim 25 is added and is met by elements previously set forth
Kaufman includes elements as set forth above. Kaufman does not disclose the aspect ratio of the particles.
Webb discloses ceramic type porous particles that are infused with a scale inhibitor (well treatment agent), thus akin to Kaufman. Webb discloses the ceramic particles are generally spherical (Column 2 line 17), thus it is known to use generally spherical particles to absorb well treatment chemicals therein for use in wells.
Pisklak discloses light weight proppant particles (title). It is disclosed in [0034] that it is known to grind pumice (one of the species of Kaufman) into a spherical shape, wherein this spherical shape is retained after sieving. The particles are further treated-however this teaching is merely to show that pumice is known to be capable of grinding to a spherical shape.
Huang discloses substantially spherical shaped particles [0024] used in fracturing/proppant treatment fluids [0002-0003], akin the uses in wellbore of Kaufman. Therein substantially spherical shapes are disclosed to have an aspect ratio from 0.8:1 to 1.2:1, embracing claim 9.
Further, changes in shape are prima facie obvious, see In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), which would include the overall spherical-ness of said shape.
It would have been obvious to one of ordinary skill before the effective filing date to include in Kaufman the use of generally spherical particles, since these are a recognized shape in the art for porous particles used in well (as taught by Webb), and/or grinding pumice to obtain said spherical shape since such is known (as taught by Pisklak) and/or to obtain/use the aspect ratio of Huang since it is a recognized suitable aspect ratio for particles used in wellbores, and/or to change the shape of the particle (as deemed obvious by the courts in Dailey).
Elements above meet claim 9.
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.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759