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 .
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.
3. Claims 10 has been amended, claims 1-9, 11-20, 22-50, 64 have been cancelled, claim 21 has been withdrawn, and claims 10, 21, 51-63 are pending as amended on 02/18/26.
4. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/23/26 has been entered.
Priority
This application is a 371 of PCT/US2021/014911 01/25/2021; PCT/US2021/ 014911 has PRO 62/965,068 01/23/2020; PCT/US2021/014911 has PRO 62/965,046 01/23/2020.
Response to Amendment
8. Applicant's amendment filed on 02/18/26, has been fully considered and entered.
Response to Arguments
9. Applicant's arguments with respect to rejection of claims 10, 51-63 under 35 U.S.C. 102(a)(2) as being anticipated by Nizamidin (US 2020/0056087) filed on 02/18/26, have been fully considered but are moot in view of amendment. Applicants arguments have been considered but are not persuasive. Nizamidin discloses amended feature anionic surfactants have structures: linear or branched C6-C36 alkyl:PO(0-65):EO(0-100) sulfonate (para [0100]-[0104], [0116]).
Claim Rejections - 35 USC § 102
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)(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.
11. Claims 10, 51-63 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nizamidin (US 2020/0056087).
The applied reference has a common assignee and/or inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
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Regarding claims 10, 51-52, 54, 62-63, Nizamidin discloses an aqueous composition comprising a surfactant package comprising a primary surfactant and a secondary surfactant, wherein primary surfactant comprises first anionic surfactant and secondary surfactant comprises second anionic surfactant, wherein first anionic surfactant has structure
R4 is, individually for each occurrence, a branched or unbranched, saturated or unsaturated, cyclic or non-cyclic, hydrophobic carbon chain having 6-32 carbon atoms; and M represents a counterion (e.g., Na+, K+), wherein the second anionic surfactants have structures: linear or branched C10-C30 or C6-C36 alkyl:PO(0-65):EO(0-100) sulfonate, wherein the primary surfactant comprising from 0.05 to 5 wt% and secondary surfactant comprises from 0.05 to 5 wt% (para [0092], [0094], [0099]-[0104], [0103], [0115], [0116], [0118]; read on instant claim range of from 0.05 to 5 wt%), water, and borate acid buffer, wherein the borate acid buffer exhibit a capacity to buffer at pH from 6.5 to 7.5 (para [0065]), fall into instant claim range of pH from 6 to 8, wherein the aqueous composition comprises at least 30,000 ppm, e.g. at least 100,000 to 300,000 total dissolved solids (TDS) (para [0145]).
Since Nizamidin teaches the same composition as claimed, the properties of the composition such as claimed exhibition of a solubilization parameter and/or stability would inherently be the same as claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claim 53, Nizamidin discloses cationic or zwitterionic surfactant (para [0100]).
Regarding claim 55, Nizamidin discloses 0.08% olefin sulfonate (table 1), fall into instant claim range of 0.05 to 5 wt%.
Regarding claims 56-57, Nizamidin discloses water such as hard brine containing100 ppm to 25,000 ppm of divalent metal ions chosen from C2+, Mg2+, Sr2+, B2+, and combinations thereof (para [0063]).
Regarding claim 58, Nizamidin discloses co-solvent such as C1-C4 alcohol, wherein the co-solvent is present in an amount of 0.05% to 5 wt% (para [0132], [0134]).
Regarding claim 59, Nizamidin discloses the borate acid buffer in an amount of 0.05 to 5 wt%, wherein the borate-acid buffer exhibits a capacity to buffer at a pH below a point of zero charge of a subterranean formation comprising the hydrocarbons (para [0088], [0157]).
Regarding claims 60-61, Nizamidin discloses borate such as sodium tetraborate and conjugated base of acid such as acetate, wherein the borate and conjugated base of the acid are present in weight ratio of from 1:1 to 5:1, wherein the borate-acid buffer comprises a boric acid and an alkali, wherein the alkali comprises an acetate salt, a citrate salt, a tartrate salt, a hydroxide salt, a succinate salt, or any combination thereof (para [0075]-[085]).
Conclusion
References Weerasooriya (US 2011/0281779), Prieto (WO 2017/174770), Walker (WO 2019/028086), Weerasooriya (US 2014/0182851), and Barne (US 2016/ 0177172) were cumulative in nature to the above rejection and thus not set forth.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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