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
Applicant’s arguments filed 7/10/2025 have been entered. Claims 1-4, 6-15 and 19-24 are pending in the application.
Response to Arguments
Applicant's arguments filed 7/10/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument concerning the limitation of a different ratio, Banks determining mixed phase precipitation kinetics of brine (abstract) for alkali earth metal sulfate precipitation in a range of parameters including temperature, pressure, and composition from a mixed electrolyte brine where the solutions are designed to resemble in situ conditions (introduction), rate coefficients are required to develop transport models (abstract) and rate coefficients are dependent on starting concentrations of reacting species and salinity of the brine, therefor the desired parameters must be determined for each discrete system under investigation (p. 82, col 2).
Srinivasan teaches parallel accelerated solvent extraction including a plurality of cells (abstract), a switching valve for control the flow to individual cells (0012-0027), and parallel extraction provides the benefit of individual cells that can be operated with different extraction conditions (0032, a plurality of mixtures, in different extraction conditions).
While the taught combination does not explicitly teach the taught combination does not explicitly teach a plurality of solutions of different ratio, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize Srinivasan’s plurality of cells which can be operated at different conditions, to determine the desired parameters for each of a plurality of systems as according to Banks desired parameters must be determined for each discrete system under investigation.
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.
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
Claim 1-4, 6-8, 10-15, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Banks (Experimental method for determining mixed-phase precipitation kinetics from synthetic geothermal brine, 2014) in view of Jones (US 2016/0032718) in view Srinivasan (US 2014/0224732), or alternatively Jones in view of Srinivasan in view of Banks.
With respect to claim 1, Banks teaches a method for determining mixed phase precipitation kinetics of brine (abstract) for alkali earth metal sulfate precipitation in a range of parameters including temperature, pressure, and composition from a mixed electrolyte brine (introduction, a method to study ion reaction parameters), preparation of experimental solutions including a first “matrix” brine solution comprising alkali and alkali earth chloride salts and a second sodium sulfate solution, prepared with distilled water, providing first and second ion solutions which would be stored in vessels, the solutions designed to resemble in situ conditions entering a solution mixture comprising a ratio of the first ion solution to the second ion solution; experiments were performed at 75°C and 150°C (entering reaction parameters and reacting the solution mixture at the reaction parameters), fluid an solids were removed from the vessel (collect effluent and collect solids), Experimental procedure); mass of sample fluid and precipitant determined analyze the effluent and the solids to obtain composition results (2.3 Analytical methods); Tables 2 and 3 and Results correlate the composition results for the effluent and the solids to the solution mixture and the reaction parameters.
Banks teaches precipitation of solids from brines and determining reaction parameters, but does not teach using an accelerated solvent extractor, or a plurality of extraction cells. Banks teaches determining precipitation kinetics of geothermal brines and formation fluids which are often characterized by high concentration of mineral components (Introduction), and that accurate predictions of scaling risks in specific systems must be determined by employing the method with fluid concentrations that exactly replicate those in real systems (5. Conclusions).
Jones teaches solvent extraction and analysis of formation fluids including geothermal wells (abstract, 0035) properties of formation fluids are typically monitored during drilling operations (0003), methods for extracting and analyzing formation fluids and determining the composition of the extracted fluids using analytical methods including providing a sample to an extraction unit which may be any system known in the art, generally the extraction units includes a sample cell, one or more solvent containers and equipment to maintain pressures and heat the sample, examples of commercially available systems include, but are not limited accelerated solvent extraction systems (0020-0022), while Jones method teaches a single cell or sample container (0022), Jones teaches accelerated solvent extraction systems and the use of any known system; accelerated solvent extraction systems with a plurality of cells are known as illustrated by Srinivasan, Srinivasan teaches parallel accelerated solvent extraction comprising a plurality of extraction cells (abstract, 0017) collection vessels include vials (0040), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Srinivasan’s parallel accelerated solvent extraction, including collection vials, as Jones teaches the use of any known system and in order to extract multiple samples, and the courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate accelerated solvent extraction as taught by Jones and Srinivasan into Banks taught method as according to Jones the method enables extraction and analysis on site and in real time and facilitates the characterization of fluids (0013-0014, 0032-0039), or alternatively to incorporate Banks method for determining mixed phase precipitation kinetics of brine into the combination of Jones and Srinivasan in order to predict scaling risks (abstract).
Applicant amended to require: entering a plurality of solution mixtures for a plurality of extraction cells wherein each solution mixture comprises a different ratio of the solutions. Banks determining mixed phase precipitation kinetics of brine (abstract) for alkali earth metal sulfate precipitation in a range of parameters including temperature, pressure, and composition from a mixed electrolyte brine where the solutions are designed to resemble in situ conditions (introduction), rate coefficients are required to develop transport models (abstract) and rate coefficients are dependent on starting concentrations of reacting species and salinity of the brine, therefor the desired parameters must be determined for each discrete system under investigation (p. 82, col 2).
Srinivasan teaches parallel accelerated solvent extraction including a plurality of cells (abstract), a switching valve for control the flow to individual cells (0012-0027), and parallel extraction provides the benefit of individual cells that can be operated with different extraction conditions (0032, a plurality of mixtures, in different extraction conditions).
While the taught combination does not explicitly teach the taught combination does not explicitly teach a plurality of solutions of different ratio, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize Srinivasan’s plurality of cells which can be operated at different conditions, to determine the desired parameters for each of a plurality of systems as according to Banks desired parameters must be determined for each discrete system under investigation.
With respect to claim 2, the method of claim 1 is taught above. Banks and Jones each teach methods related to formation and drilling fluids as discussed above, Banks teaches brine, the first ion solution comprises seawater.
With respect to claim 3, the method of claim 1 is taught above. Banks teaches precipitation of brine comprising barium and chlorine (introduction, experimental procedure, Table 1, a solution comprises barium chloride).
With respect to claims 4, the method of claim 1 is taught above. Banks teaches a first brine solution, a second sulfate additive solution, and distilled water (2.2 experimental procedure, Jones teaches one or more solvent containers (0022), absent clarification of what is required by loading a third solvent vessel with a rinse solution, the art meets the claim language.
With respect to claim 6, the method of claim 5 is taught above. Banks teaches preparation of experimental solutions, and that water was used in all solutions (2.2 experimental procedure, the first ion solution, or the second ion solution, or both, is diluted before forming the solution mixture).
With respect to claim 7, the method of claim 1 is taught above. Banks teaches temperature as discussed above (the reaction parameters comprise a reaction temperature for an extraction cell).
With respect to claim 8, the method of claim 7 is taught above. Banks teaches a temperature of 150°C as discussed above (the reaction temperature is between 100 ºC and 200 ºC).
With respect to claims 10-11, the method of claim 1 is taught above. Banks teaches parameters including temperature, pressure, and composition as discussed above, and the experiments were performed at 1.5 MPa (14.8 atm, 2.1, 4., the reaction parameters comprise a reaction pressure for an extraction cell, and the reaction pressure is between 1 atm (101 kPa) and 110 atm (11100 kPa).
With respect to claims 12-14, examiner notes "Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. A “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003); MPEP §2111.04). Where a reference discloses the terms of the recited method steps, and such steps necessarily result in the desired and recited effect, the fact that the reference does not describe the recited effect in haec verba is of no significance because the reference meets the claim under the doctrine of inherency."
With respect to claims 15, the method of claim 1 is taught above. Banks teaches a first brine solution, a second sulfate additive solution, and distilled water (2.2 experimental procedure), Jones teaches one or more solvent containers (0022), absent clarification of what is required by loading a third solvent vessel or a modifier solution, the art meets the claim language.
With respect to claim 19, the method of claim 1 is taught above. Banks teaches mass balances in the fluid phase (2.3.2, analyzing the effluent comprises determining the concentration of ions).
With respect to claim 20, the method of claim 1, is taught above. Banks teaches determining the chemistry of the precipitate via x-ray fluorescence spectrometry (Introduction, 2.3.1 XRF data processing, analyzing the solids comprises measuring properties of the solids with x-ray fluorescence spectrometry).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Banks (Experimental method for determining mixed-phase precipitation kinetics from synthetic geothermal brine, 2014) in view of Jones (US 2016/0032718) in veiw Srinivasan (US 2014/0224732), or alternatively Jones in view of Srinivasan in view of Banks, with evidence from Harvey (US 2018/0021697) and Sarp (US 2018/0250651).
With respect to claim 2, the method of claim 1 is taught above. Banks and Jones each teach methods related to formation and drilling fluids as discussed above, Banks teaches brine, the first ion solution comprises seawater, alternatively drilling fluids commonly comprise seawater as evidenced by Harvey and Sarp, Harvey teaches drilling fluid comprising seawater (0021), Sarp teaches treatment of oilfield liquid (abstract) and mixing of seawater with produced water to reduce salinity (0003).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Banks (Experimental method for determining mixed-phase precipitation kinetics from synthetic geothermal brine, 2014) in view of Jones (US 2016/0032718) in view Srinivasan (US 2014/0224732), or alternatively Jones in view of Srinivasan in view of Banks, in view of Harvey (US 2018/0021697).
With respect to claim 9, the method of claim 7 is taught above. Banks teaches precipitation of formation fluid, solutions designed to resemble in situ conditions and experiments performed at 75°C and 150°C as discussed above; the taught combination does not teach a reaction temperature between -100 ºC and 20 ºC. Harvey teaches solvent extraction of drilling fluids (abstract), where the process can be performed at temperature and pressure conditions requiring a low and the solvent may be recycled and reused. Additionally, because the process requires relatively low temperature and pressure, there may be no destruction or modification of drilling fluid additives, such as emulsifiers, wetting agents, rheology modifiers, and filtration control additives, among others. Further, the process may operate below the temperatures at which certain oleaginous fluids commonly used in drilling fluids may degrade. Furthermore, due to temperature and pressure needs, the process and methods offer safer conditions for humans and environment, the separation feed may be at temperatures of less than 20 degrees F to about 200 F (-6C – 90C, 0025), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the taught method to include reaction temperatures less than 20 degrees F to about 200 F, or between -100 ºC and 20 ºC as described by Harvey in order to prevent degradation of additives and provide safer conditions.
Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over Banks (Experimental method for determining mixed-phase precipitation kinetics from synthetic geothermal brine, 2014) in view of Jones (US 2016/0032718) in view Srinivasan (US 2014/0224732), or alternatively Jones in view of Srinivasan in view of Banks, in view of Jamison (US 2014/0209290).
With respect to claims 15, Banks teaches the precipitation of barite crystals (2.2, 3.4) that the specific reactive surface areas As of precipitants is one of the parameters required for predicting scaling risks (Introduction) and determination of the surface area from populations generated at each time and temperature (2.4), nucleation is faster at higher temperatures and that not enough filter residue was generated to form a full analysis as an artifact of the degree of supersaturation, such that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a nucleating agent, or crystallite size control agent, to increase crystallization and generate sufficient residue to perform a full analysis at varied temperatures. Additionally, Jamison teaches wellbore fluids with tailorable properties (abstract), embodiments may involve precipitating particles from salts in solutions, including barium salts and precipitation may involve adding morphology modifiers, organic liquids, or other agents to interact with the crystal being formed to stop, slow, and/or direct the growth of the crystal which may be useful in regulating the average diameter, diameter distribution, and shape of the mineral particles (0028-0029). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the taught method to include morphology modifiers as described by Jamison, as according to Jamison, they are useful in regulating the average diameter, diameter distribution, and shape of the mineral particles.
Claims 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Banks (Experimental method for determining mixed-phase precipitation kinetics from synthetic geothermal brine, 2014) in view of Jones (US 2016/0032718) in view Srinivasan (US 2014/0224732), or alternatively Jones in view of Srinivasan in view of Banks, in view of Srinivasan (US PG Pub 2009/0221079).
With respect to claim 21, the method of claim 1 is taught above. Banks teaches precipitant is collected on a filter (2.1-2.3), a filter, and filtering solids resulting from reacting the solution mixture. Srinivasan and Jones teach accelerated solvent extraction and cells as discussed above. The taught combination does not explicitly teach placing a filter at a bottom of each of the plurality of extraction cells. However the use of filters in accelerated solvent extraction cells is known in the art as shown by Srinivasan ‘079, Srinivasan ‘079 teaches an accelerated solvent extraction method (0003, where a filter is inserted in the bottom of a cell (0039), such that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention provide Banks taught filter in the bottom of cell of the accelerated solvent extraction systems of Jones and Srinivasan, as the use of a filter in the bottom of an accelerated solvent extraction apparatus to collect the Banks’ residue, and as filters in accelerated solvent extraction apparatus are known in the art as shown by Srinivasan ‘079 and the courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143.
With respect to claim 22, the method of claim 21 is taught above. Banks teaches a cellulose acetate (CA) filter which collects residue, cellulose acetate is an adsorbent, providing the filter is an adsorbent configured to capture reactants and to provide a separation of soluble reactants (2.1-2.3). Additionally, Srinivasan ‘079 teaches reaction with ions forming a salt and forming a precipitate and the use of an adsorbent (0013), and cells containing cellulose filters (0039, 0054, 0071). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the taught combination to include a sorbent as described by Srinivasan ‘079 for a similar purpose, to remove residual unwanted components.
With respect to claim 23, the method of claim 21 is taught above. Banks teaches a cellulose acetate filter, but does not explicitly teach adsorption media over the filter. Srinivasan ‘079 teaches an embodiment with resin used as a sorbent and loaded over the cellulose filter to sorb residual salt and water (0039, the filter is a first filter, wherein the method further comprising adding an adsorption media over the filter). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the taught combination to include a sorbent over the filter as described by Srinivasan ‘079 for a similar purpose, to remove residual unwanted components.
With respect to claim 24, the method of claim 23 is taught above. The taught combination provides a filter and sorbent, but does not teach adding a second filter over the adsorption media. Srinivasan teaches sorbent in combination with resin and filtration material as discussed above, and teaches a support surface and the material an “entrapped sorbent” (0019), and an embodiment with sorbent mixed with mortar, layered in the cell with the filter (0039), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the taught combination with the addition of another layer, such as an additional filter, depending on the desired degree of filtration and in order to entrap or contain the sorbent.
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 JEANNIE MCDERMOTT whose telephone number is (571)272-4479. The examiner can normally be reached Monday - Friday 8:30 - 5:00 EST.
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/JEANNIE MCDERMOTT/Examiner, Art Unit 1777
/BRADLEY R SPIES/ Primary Examiner, Art Unit 1777