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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
As a note, the Examiner attempted communication with Attorney Andrew Metrailer at Conley Rose, P.C. several times starting on 14 JULY 2026 with multiple messages left regarding the allowable subject matter and the possibility of an examiner’s amendment to advance prosecution, after the receipt of the Appeal Brief filed on 01 JUNE 2026. No answer was received over the previous month of attempted communication.
Applicant’s arguments in the Appeal Brief filed on 01 JUNE 2026 have been fully considered.
Applicant argues that Ayirala in view of Collins does not teach a molar ratio of divalent cations to monovalent cations greater than or equal to about 0.3 as required in instant claim 25. The Examiner has made an error and calculated the ratio of a divalent cation to a monovalent anion rather than a cation and so instant claim 25 is now allowable (Appeal Brief filed 01 JUNE 2026, Page 29, Paragraph 4 to Page 32). The Examiner agrees with the Applicant’s assessment and thanks the Applicant for pointing out the error. After additional searching, it appears that the ratio is allowable over the current prior art.
Applicant argues, regarding instant claim 1, that Ayirala in view of Collins do not teach the closed “consists of” composition of the blended low salinity water stream consisting of a direct combination of the RO permeate stream, the fines stabilizing additive stream, and at least one of a produced water stream comprising produced water, a sea water stream comprising sea water, or a combination thereof, because neither of the references teach the composition in its entirety (Appeal Brief filed 01 JUNE 2026, Page 12 to Page 14, Paragraph 3). Regarding Applicant’s argument, Applicant is essentially stating that a combination of references under 35 U.S.C. 103 is impossible for claim limitations utilizing the phrasing “consisting of”, which is not true. Furthermore, Ayirala teaches the use of an RO permeate stream, a seawater stream, and a produced water stream that has been evaporated, and nanofiltration reject water which is taught for divalent ion adjustment. Collins teaches the use of RO permeate, nanofiltration permeate, seawater, and a fines stabilizing additive stream, and is only used to teach the addition of a fines stabilizing additive stream which is used for addition of divalent ions and can replace the nanofiltration reject stream of Ayirala. As such, the scope of both prior art does not extend outside of the “consisting of” limitation of instant claim 1 as Ayirala only teaches 1 element outside of these limitations (i.e., the nanofiltration reject) and Collins teaches an alternative version of this in the fines stabilizing additive stream. Therefore, instant claim 1 is not allowable.
Applicant argues, regarding instant claim 1, that Ayirala in view of Collins does not teach the use of produced water which is required by instant claim 1 because the produced water of Ayirala is evaporated to form fresh water and so it no longer qualifies as produced water (Appeal Brief filed 01 JUNE 2026, Page 14, Paragraph 4 to Page 17, Paragraph 2). Regarding Applicant’s argument, Applicant does not explicitly require that produced water is present as the claim limitation only requires “at least one of a produced water stream comprising produced water, a sea water stream comprising sea water, or a combination thereof”. Therefore, the sea water of Ayirala and Collins covers this limitation. Furthermore, Applicant opens up the produced water to be “a produced water stream comprising produced water” where the produced water stream is evaporated to produce the water stream added in combination. There is no limitation on what can or cannot be done to the produced water and there will be some components of the original produced water remaining in the evaporated water used for the combination. Therefore, the fresh water stream derived from produced water as taught by Ayirala meets the limitation of instant claim 1 of “a produced water stream comprising produced water” and so instant claim 1 is not allowable.
Applicant argues, regarding instant claim 1, that Ayirala in view of Collins does not teach a system without comprising a nanofiltration unit and so instant claim 1 is allowable (Appeal Brief filed 01 JUNE 2026, Page 17, Paragraph 3 to Page 19, Paragraph 1). Regarding Applicant’s argument, Ayirala teaches a system without nanofiltration in its first example and uses nanofiltration reject water for adding divalent ions to the mixture. Collins teaches a fines stabilizing additive stream for this purpose and also teaches the use of the nanofiltration permeate rather than the reject stream and so Applicant’s assertion that one could not see the use of Ayirala’s fresh water from produced water instead of Collins’ nanofiltration permeate water and that somehow nanofiltration must be used is missing the combination of elements that are taught by Ayirala in view of Collins. There clearly needs to be an RO permeate steam (in both sources), a seawater bypass stream (in both sources), a divalent additive stream (nanofiltration reject in Ayirala and fines stabilizing additive in Collins), and a fresh water stream with a small amount more of ions than RO (Fresh water in Ayirala and nanofiltration permeate in Collins). As one cannot control the seawater divalent ions in the nanofiltration reject stream of Ayirala, it would be obvious to use a fines stabilizing additive stream as taught by Collins to prevent formation damage by optimizing the salinity and particular ions in the injection water. Therefore, instant claim 1 is not allowable.
Applicant argues that there is no motivation to combine Ayirala and Collins because Ayirala teaches specific salinity and ion composition to enhance oil recovery and Collins teaches that the control system reduces formation damage by adjusting the salinity and ion concentration of the injection water. Therefore, instant claim 1 is allowable (Appeal Brief filed 01 JUNE 2026, Page 19, Paragraph 2 to Page 21, Paragraph 1). Regarding Applicant’s argument, Ayirala and Collins teach the use of their compositions for different purposes, which is why one of ordinary skill in the art would look to both to solve their issues. One would look to Ayirala for oil recovery from carbonate reservoirs and then look to Collins to reduce formation damage in these reservoirs. Therefore, instant claim 1 is not allowable.
Applicant argues that the modification of Ayirala with Collins would change the principle of operation of both references because Collins relies on the nanofiltration permeate, which Ayirala eliminates, and Ayirala relies on the fresh water to adjust ion concentrations, which would be replaced with a fines stabilizing additive stream of Collins. Therefore instant claim 1 is allowable (Appeal Brief filed 01 JUNE 2026, Page 21, Paragraph 2 to Page 22, Paragraph 3). Regarding Applicant’s argument, the asserted replacements are not suggested. The Examiner has stated that the nanofiltration reject of Ayirala would be replaced by the fines additive stream of Collins, which serve similar purposes, and the fresh water stream of Ayirala would ensure the adjustments can be performed similarly in place of the nanofiltration permeate of Collins. Therefore, instant claim 1 is not allowable.
Applicant argues, regarding instant claim 2, that the control unit of Collins could not operate on the streams of Ayirala plus the fines stabilizing additive stream because the control unit requires adjusting the ratio of RO permeate to NF permeate and not the RO permeate to the fines stabilizing additive. Therefore, instant claim 2 is allowable (Appeal Brief filed 01 JUNE 2026, Page 21, Paragraph 2 to Page 26, Paragraph 2). Regarding Applicant’s argument, Collins teaches that the control unit blends streams based on operating envelopes of concentrations of ions, ratios of ions, salinity, etc. (Page 13, Lines 16-29) which will combine ratios of all streams. NF permeate is used in Collins, but fresh water from Ayirala can serve a similar purpose for blending as they are both relatively similar, and the control system of Collins uses sensors on these lines to determine composition of them for its calculations anyway (Page 19, Lines 6-22). Therefore, the control system of Collins could easily be adapted to the system of Ayirala through sensors to adapt the calculations of Collins with the streams of Ayirala and so instant claim 2 is not allowable.
Applicant argues, regarding instant claim 6, that Ayirala in view of Collins does not teach a produced water blending line because the fresh water line derived from produced water is no longer produced water. Therefore, instant claim 6 is allowable (Appeal Brief filed 01 JUNE 2026, Page 26, Paragraph 3 to Page 29, Paragraph 3). As above, Applicant argues that “a produced water stream comprising produced water” does not include fresh water derived from a produced water stream, however, the limitation of instant claim 1 is clear that any element of the produced water existing in the stream makes the stream “comprising produced water”, otherwise the limitation would be worded in a more restrictive manner. Furthermore, this interpretation would mean that comprising language is now restrictive and the produced water could only be pure produced water with absolutely no changes made to it. This type of interpretation is not consistent with the standard interpretation of comprising language. As such, Ayirala teaches a produced water blending line that adds the fresh water derived from the produced water into the overall injection water. Therefore, instant claim 6 is not allowable.
Applicant argues, regarding claim 23, that Mason teaches a displacement fluid that is used for flushing the concentrated chemical additive of Mason from the wellbore into the surrounding formation and not the chemical additive. As such, Mason teaches a mixture used for a different purpose and does not teach a concentrated aqueous solution comprising calcium chloride at 25 weight percent as an injection fluid for a reservoir. Furthermore, Mason is nonanalogous art because mason is directed entirely to one-time or periodic bulk treatments for introduction into a hydrocarbon bearing formation and the removal of formation damage using chlorine dioxide chemistry rather than continuous injection of blended low salinity water for enhanced oil recovery. Therefore, instant claim 23 is allowable (Appeal Brief filed 01 JUNE 2026, Page 33 to Page 37). Regarding Applicant’s arguments, Mason is analogous because Mason teaches that the mixtures taught in the disclosure are useful for pumping into the wellbore of a well and drawing out hydrocarbons from a hydrocarbon bearing formation (Paragraph 0067), with additional compositions being useful for bulk treatments as Applicant has pointed out. The teaching by Mason demonstrates that the fluid can be used to enhance oil recovery shows that these mixtures can be used for similar purposes as the instant claims and so the teaching of the mixture comprising 25 weight percent calcium is known to be used in enhanced oil recovery applications. Therefore, instant claim 23 is not allowable.
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.
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 1-7 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Ayirala et al, US Patent Application No. US 20180148633 A1 (hereinafter Ayirala), in view of Collins et al, International Patent Application No. WO 2019053092 A1 (hereinafter Collins).
Regarding Claim 1, Ayirala teaches a water treatment apparatus (i.e., an integrated system; Fig. 1A, #100) including a reverse osmosis unit (i.e., a desalination plant comprising a reverse osmosis (RO) array; Fig. 1A, #106) which produces an RO permeate (i.e., configured to produce an RO permeate blending stream; and wherein the blended low salinity water stream consists essentially of the RO permeate blending stream; Fig. 1A, #114; Paragraph 0020) that is mixed with fresh water created from produced water (Fig. 1A, #122) and seawater (i.e., and at least one of a sea water stream comprising seawater; Fig. 1A, #124) to produce injection water (i.e., a blending system configured to blend the RO permeate blending stream; Fig. 1A, #112) that has a mass ratio of monovalent ions to divalent ions of 5 to 10, which may include sodium, chloride, magnesium, and/or calcium ions (i.e., wherein the stream comprises a chemical for reducing production of fines and/or swelling of clays, wherein the chemical comprises one or more salts selected from salts of divalent cations and wherein the fines stabilizing additive blending stream comprises a concentrated aqueous solution of the one or more salts; Paragraph 0024). Assuming magnesium with a molecular weight of 24 g/mol and sodium with a molecular weight of 22.9 g/mol, and a basis of 24 g of magnesium (or 1 mol) and 5 times the amount of sodium or 120 g of sodium, or 5.24 mol, the ratio of divalent to monovalent (1 divided by 5.24) in this case would be 0.19 (i.e., a molar ratio of divalent cations to monovalent cations of greater than about 0.2). While not within the range 0.19 and greater than about 0.2 are extremely close and the ratio is known to be optimizable based on the formation being injected into, and so where 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))(See MPEP 2144.05(II)(A)). Ayirala further teaches the use of real-time water composition monitoring for determining salinity and ion concentrations of different inlet and outlet streams to adjust the concentration of divalent ions in the injection water (i.e., controlling operation of the blending system; Paragraphs 0039-0040) and also teaches two water treatment apparatuses that include carrier gas extraction (Fig. 1A, #110) or dynamic vapor recompression (Fig. 1B, #128) and no use of nanofiltration to make up more fresh water as needed (i.e., the integrated system does not comprise a nanofiltration (NF) unit; Paragraph 0020). Ayirala teaches the addition of concentrated divalent ion-containing water to improve injection water (Paragraphs 0004-0005).
Ayirala does not teach to produce a blended low salinity water stream having a salinity of less than or equal to 4,000 ppm and does not explicitly teach a flow line for a fines stabilizing additive blending stream, configured to blend the RO permeate blending stream with the fines stabilizing additive blending stream, wherein the fines stabilizing additive blending stream comprises a chemical, and a control unit configured to control operation of the blending system and does not teach an injection system for one or more injection wells, wherein the one or more injection wells penetrate an oil-bearing layer of a reservoir, wherein the injection system comprises at least one injection line fluidly connected with the blending system and wherein the blended low salinity water stream consists of a direct combination of the fines stabilizing additive blending stream.
However, Collins teaches boundary values for the total dissolved solids of a blended low salinity injection water should be in the range of 500 to 3,000 mg/L (i.e., a blended low salinity water stream having a salinity of less than or equal to 4,000 ppm; Page 22, Lines 24-31) and a control unit (Fig. 1, #52) for controlling the operation of a desalination plant and for controlling blending of a low salinity injection water stream with a fines stabilizing concentrate (i.e., a flow line for a fines stabilizing additive blending stream and configured to blend the RO permeate blending stream with the fines stabilizing additive blending stream; wherein the blended low salinity water stream consists of a direct combination of the fines stabilizing additive blending stream; Fig. 1, #26) in the blending system (i.e., a control unit configured to control operation of the blending system) that also includes an injection system with injection pumps (i.e., wherein the injection system comprises at least one injection line fluidly connected with the blending system; Fig. 1, #24) and injection lines (Fig. 1, #58) and injection wells (i.e., an injection system for one or more injection wells; Fig. 1, #20) that are in fluid connection with the production facility (Fig. 1, #54) that injects the low salinity injection water stream into an oil-bearing layer with a first region (Fig. 1, #56; Page 26, Lines 10-22). Collins further teaches that the control system for the enhanced oil recovery reduces formation damage due to the ability to adjust the salinity and ion concentrations of the injection water (Abstract).
Collins is analogous to the claimed invention because it pertains to a method for producing a blended low salinity injection water for enhanced oil recovery (Abstract). It would have been obvious to one of ordinary skill in the art to modify the water treatment apparatus taught by Ayirala with the control system and the well injection system taught by Collins because the systems would reduce formation damage from enhanced oil recovery operations.
Regarding Claim 2, Collins further teaches that the control unit may therefore control the blending ratios and hence the compositions of the blended low salinity injection water with boundaries for TDS in the range of 500 to 3000 mg/L (i.e., wherein the control unit is configured to: dynamically alter operation of the blending system to adjust amounts of at least one of the RO permeate blending stream or the fines stabilizing additive blending stream to maintain a composition of the blended low salinity water stream within a predetermined operating envelope that includes the salinity of less than or equal to 4,000 ppm; Page 22, Lines 6-31) and that the concentration of multivalent cations in the low salinity injection water is also important (Page 1, Lines 15-17). Ayirala previously taught the molar ratio in the form of a mass ratio of monovalent ions to divalent ions of 5 to 10, which may include sodium, chloride, magnesium, and/or calcium ions (Paragraph 0024). Assuming magnesium with a molecular weight of 24 g/mol and sodium with a molecular weight of 22.9 g/mol, and a basis of 24 g of magnesium (or 1 mol) and 5 times the amount of sodium or 120 g of sodium, or 5.24 mol, the ratio of divalent to monovalent (1 divided by 5.24) in this case would be 0.19 (i.e., the molar ratio of divalent cations to monovalent cations of greater than about 0.2). While not within the range 0.19 and greater than about 0.2 are extremely close and the ratio is known to be optimizable based on the formation being injected into, and so where 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))(See MPEP 2144.05(II)(A)).
Regarding Claim 3, Collins further teaches inputting operating envelopes into a computer at a remote location which are then output to the control unit (i.e., wherein the control unit is configured to receive the operating envelope from a source external to the control unit; Page 13, Lines 16-29).
Regarding Claim 4, Collins further teaches that the operating envelopes may be defined by boundary values (Upper and lower limits) for parameters including one or more of: the TDS content (salinity), ionic strength, the concentrations of individual ions, the concentrations of types of individual ions, ratios of types of individual ions, ratios of individual ions or any combination thereof (i.e., wherein the operating envelope specifies upper and lower limits for at least one parameter selected from the group consisting of: total dissolved solids (TDS) content; ionic strength; concentrations of individual ions; concentration of types of individual ions; ratios of types of individual ions; and ratios of individual ions; Page 13, Lines 16-29).
Regarding Claim 5, Collins further teaches that the parameters may include concentrations of types of individual ions which may include monovalent cations and divalent cations, and ratios of the types of individual ions (i.e., wherein the at least one parameter comprises the molar ratio of divalent cations to monovalent cations; Page 13, Lines 16-29).
Regarding Claim 6, Ayirala further teaches a seawater line (Fig. 1A, #124) that does not run through the reverse osmosis unit (Fig. 1A, #106) and mixes with the RO permeate (Fig. 1A, #114) and the fresh water (i.e., a sea water (SW) bypass line, a produced water (PW) blending line; Fig. 1A, #122) to produce an injection water (Fig. 1A, #112; Paragraph 0024). Ayirala also teaches that the fresh water line comes from produced water (i.e., a produced water (PW) blending line; Fig. 1A, #104) that is run through a carrier gas extraction unit (Fig. 1A, #110; Paragraph 0024). Collins further teaches an RO permeate dump line (i.e., an RO permeate dump line; Fig. 1, #11; Page 6, Lines 19-22) and that the control unit may control the blending ratios and hence the compositions of the blended low salinity injection water (i.e., a control unit configured to dynamically adjust an amount of the RO permeate discharged from the blending system via the RO permeate dump line, an amount of a high salinity water by-pass stream that by-passes the desalination plant via the SW bypass line and feeds SW to the blending system, an amount of a PW stream that feeds PW to the blending system via the PW blending line whereby the PW is combined with the blended low salinity water stream; Page 22, Lines 6-31).
Regarding Claim 7, Collins further teaches that the fines stabilizing additive may be an inorganic salt such as calcium chloride (i.e., wherein the fines stabilizing additive blending stream consists essentially of calcium chloride; Page 17, Lines 13-20) and that the blending system comprises a tank for a concentrated aqueous solution of at least one fines stabilizing additive (consists essentially of an aqueous solution of; Page 7, Lines 10-27).
Regarding Claim 24, Collins further teaches boundary values for the total dissolved solids of a blended low salinity injection water should be in the range of 500 to 3,000 mg/L (i.e., the salinity of the blended low salinity water stream is less than or equal to 3,000 ppm; Page 22, Lines 24-31).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Ayirala in view of Collins as applied to claim 1 above, and further in view of Mason et al, US Patent Application No. US 20190292436 A1 (hereinafter Mason).
Regarding Claim 23, Ayirala in view of Collins makes obvious the integrated system of claim 1. Ayirala in view of Collins does not teach wherein the fines stabilizing additive blending stream comprises the concentrated aqueous solution of the one or more salts, and wherein the concentrated aqueous solution comprises at least 20 weight percent of the chemical.
However, Mason teaches a mixture used for enhancing the recovery of oil or natural gas from a well (i.e., the concentrated aqueous solution; Paragraphs 0067 and 0084) containing a salt such as calcium chloride (i.e., of the one or more salts; Paragraphs 0017-0018) in which the salt is at a concentration of 25% (i.e., wherein the concentrated aqueous solution comprises at least 20 weight percent of the chemical; Paragraph 0198) where the mixture is used to enhance oil recovery by actively drawing out hydrocarbons from solid materials and mitigate declining production of wells (Paragraph 0003-0005).
Mason is analogous to the claimed invention because it pertains to mixtures for bulk treatment of hydrocarbon bearing formations to enhance recovery of oil or gas from a petroleum well (Abstract). It would have been obvious to one of ordinary skill in the art to modify the salt concentration made obvious by Ayirala in view of Collins with the concentration as taught by Mason because the concentration would mitigate the declining crude oil or gas production of an oil well.
Allowable Subject Matter
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The instant claims pertain to a system for blending an RO permeate, a fines stabilizing additive stream, and at least one of a produced water stream and a sea water stream, explicitly excluding a nanofiltration unit, via a control unit in a specific ratio of divalent cations and monovalent cations of greater than or equal to about 0.3 at a salinity of less than 4,000ppm and injecting the resulting mixture into injection wells.
The closest prior art includes Ayirala et al, US Patent Application No. US 20180148633 A1 (hereinafter Ayirala), Collins et al, International Patent Application No. WO 2019053092 A1 (hereinafter Collins), and Mason et al, US Patent Application No. US 20190292436 A1 (hereinafter Mason).
The prior art does not teach the specific ratio of divalent cations to monovalent cations of greater than or equal to about 0.3 without the use of nanofiltration as required in instant claim 25, as Ayirala teaches such ratios but with the explicit use of nanofiltration reject water to achieve them, while Collins does not teach ratios of these ions at all. Therefore, it would not be obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the prior art to arrive at the invention of instant claim 25.
Conclusion
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/A.A.G./ Examiner, Art Unit 1772
/IN SUK C BULLOCK/ Supervisory Patent Examiner, Art Unit 1772
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