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 .
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.
Claims 66-77, and 80-83 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Nguyen et al. (US 2014/0144639 A1) ("Nguyen" herein - cited previously)
Claim 66
Nguyen discloses a method of consolidating loose particles in a formation, (i.e. proppant aggregates are formed for use in the embodiments described herein, they may be formed by any means known to adhere individual proppant particulates together such that they form a coherent body) [0026, 0075- 0076] the method comprising injecting a composition comprising
a metal particle,[0070]
an oxidization promoter,[0071-0072] and
water into the formation. [0027, 0073], wherein the loose particles are uncoated proppants or unconsolidated formation sand, or a combination thereof. (i.e. sand, bauxite, ceramic materials, nut shell pieces) [0035]
Since Nguyen discloses the same composition comprising a metal particle, an oxidizer, water, and proppant, it would be an oxidizer promoter, an uncoated proppant or unconsolidated loose sand, that would consolidate or aggregate the loose particles.
"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 2112.07 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (FedCir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 67
Nguyen discloses the method of claim 66, wherein the metal particle is an aluminum particle, a silicon particle, or an iron particle, or any combination thereof. [0026, 0035, 0070]
Claim 68.
Nguyen discloses the method of claim 66, wherein the metal particle has a size no larger than 20 mesh. [0033]
Claim 69
Nguyen discloses the method of claim 66, wherein the metal particle has a size no larger than 100 mesh. [0033]
Claim 70
Nguyen disclosed the method of claim 66, wherein the metal particle is an aluminum particle. [(0033, 0071]
Claim 71-72
Nguyen disclosed the method of claim 70, wherein the aluminum particle having an average particle size of no larger than 20 mesh or no larger than 100 mesh. [0033, 0071]
Since Nguyen discloses the aluminum particle, it would be an atomized aluminum powder.
"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 disc loses 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 Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 73
Nguyen discloses the method of claim 66, wherein the oxidization promoter is a hydroxide promoter, a metal oxide promoter, an acid, or a salt promoter, or any combination thereof. [0071-0072]
Claim 74
Nguyen disclose the method of claim 66, wherein the oxidization promoter is a hydroxide promoter. [0071]
Claim 75
Nguyen discloses the method of claim 74, wherein the hydroxide promoter is Ca(OH)2, Mg(OH)2, NaOH, or KOH. [0071]
Claim 76
Nguyen discloses the method of claim 75, wherein the hydroxide promoter is Ca(OH), in an amount from about 0.001% (wt.) to about 50% (wt.) of the metal particle. [0074]
Claim 77
Nguyen discloses the method of claim 75, wherein the hydroxide promoter is Ca(OH): in an amount from about 0.1% (wt.) to about 10% (wt.) of the metal particle. [0074]
Claim 80
Nguyen discloses the method of claim 66, wherein the uncoated proppants are sand, a ceramic, or sintered bauxite, or any combination thereof. [0026, 0035]
Claim 81
Nguyen discloses the method of claim 66, wherein the uncoated proppants are sand. [0012, 0035]
Claim 82
Nguyen discloses the method of claim 80, wherein the sand is fracturing sand. [0012, 0035]
Claim 83
Nguyen discloses the method of claim 66, wherein the injected composition comprises comprising-water, sand, aluminum powder, and Ca(OH)2. [0012, 0035, 0070-0075].
Claims 66-77, and 80-83 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Nguyen et al. (US 2020/0048530 A1) ("530 herein- cited previously).
Claim 66
'530 discloses a method of consolidating loose particles in a formation the method comprising injecting [0022-0027] a composition comprising
a metal particle,[011, 0014-0015, 0019-0020]
an oxidization promoter, [0017] and water into the formation, [0016] wherein the loose particles are uncoated proppants or unconsolidated formation sand, or a combination thereof. [011, 0022-0027]
Since Nguyen discloses the same composition comprising a metal particle, an oxidizer, water, and proppant, it would be an oxidizer promoter, an uncoated proppant or unconsolidated loose sand, that would consolidate or aggregate the loose particles.
"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 2112.07 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (FedCir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 67
'530 discloses the method of claim 66, wherein the metal particle is an aluminum particle, a silicon particle, or an iron particle, or any combination thereof. [0019-0020]
Claim 68.
'530 discloses the method of claim 66, wherein the metal particle has a size no larger than 20 mesh. [0019-0020]
Claim 69
'530 discloses the method of claim 66, wherein the metal particle has a size no larger than 100 mesh. [0019-0020]
Claim 70
'530 discloses the method of claim 66, wherein the metal particle is an aluminum particle. [0019-0020]
Claim 71-72
'530 disclosed the method of claim 70, wherein the aluminum particle having an average particle size of no larger than 20 mesh or no larger than 100 mesh. [0019- 0020]
Since Nguyen discloses the aluminum particle, it would be an atomized aluminum powder. "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 disc loses 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 Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 73
'530 discloses the method of claim 66, wherein the oxidization promoter is a hydroxide promoter, a metal oxide promoter, an acid, or a salt promoter, or any combination thereof. [0017]
Claim 74
'530 disclose the method of claim 66, wherein the oxidization promoter is a hydroxide promoter. [0017]
Claim 75
'530 discloses the method of claim 74, wherein the hydroxide promoter is Ca(OH)2, Mg(OH)2, NaOH, or KOH. [0017]
Claim 76
'530 discloses the method of claim 75, wherein the hydroxide promoter is Ca(OH), in an amount from about 0.001% (wt.) to about 50% (wt.) of the metal particle. [0017]
Claim 77
'530 discloses the method of claim 75, wherein the hydroxide promoter is Ca(OH): in an amount from about 0.1% (wt.) to about 10% (wt.) of the metal particle. [0017]
Claim 80
‘530 discloses the discloses the method of claim 66, wherein the uncoated proppants are sand, a ceramic, or sintered bauxite, or any combination thereof. [ 0003, 0019- 0020]
Claim 81
‘530 discloses the discloses the method of claim 66, wherein the uncoated proppants are sand. [011, 0019-0020]
Claim 82
‘ 530 discloses the discloses the method of claim 80, wherein the sand is fracturing sand. [011, 0019-0020]
Claim 83
'530 discloses the method of claim 66, wherein the injected composition comprises comprising-water, sand, aluminum powder, and Ca(OH)2. [0017-0020, 0022-0027]
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 66-77, and 80- 83 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2014/0144639 A1) ("Nguyen" herein - cited previously) and further in view of Drake et al. (US 2016/0333260 A1) ("Drake" herein- cited previously).
Claim 66
Nguyen discloses a method of consolidating loose particles in a formation, (i.e. proppant aggregates are formed for use in the embodiments described herein, they may be formed by any means known to adhere individual proppant particulates together such that they form a coherent body) [0026, 0075- 0076] the method comprising injecting a composition comprising
a metal particle,[0070]
an oxidization promoter,[0071-0072] and
water into the formation. [0027, 0073], wherein the loose particles are proppants or formation sand, or a combination thereof. (i.e. sand, bauxite, ceramic materials, nut shell pieces) [0035]
Since Nguyen discloses the same composition comprising a metal particle, an oxidizer, water, and proppant, it would be an oxidizer promoter, an uncoated proppant or unconsolidated loose sand, that would consolidate or aggregate the loose particles. "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 2112.07 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (FedCir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Nguyen however does not explicitly disclosed wherein the loose particles are uncoated proppants or unconsolidated formation sand, or a combination thereof.
Drake teaches the above limitation (See paragraphs 0061-0052 →Drake teaches this limitation in that processes described herein are suitable for applying coatings or agents to various finely divided proppant solids. Examples include, but are not limited to, uncoated sand, sand with a cured or partially cured coating, bauxite, ceramic, coated bauxite, or ceramic. In some embodiments, the finely divided proppant solids are uncoated sand or resin-coated sand. The process comprises spraying the treatment agent onto the proppant solids while the solids are in free fall, guided free fall, or during pneumatic transport. The solids can also be sprayed substantially simultaneously from more than one direction.) for the purpose using for a dust reduction coating. [0063]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Nguyen, with the above limitation, as taught by Drake, in order to use for a dust reducing coating.
Claim 67
Nguyen discloses the method of claim 66, wherein the metal particle is an aluminum particle, a silicon particle, or an iron particle, or any combination thereof. [0026, 0035, 0070]
Claim 68.
Nguyen discloses the method of claim 66, wherein the metal particle has a size no larger than 20 mesh. [0033]
Claim 69
Nguyen discloses the method of claim 66, wherein the metal particle has a size no larger than 100 mesh. [0033]
Claim 70
Nguyen disclosed the method of claim 66, wherein the metal particle is an aluminum particle. [(0033, 0071]
Claim 71-72
Nguyen disclosed the method of claim 70, wherein the aluminum particle having an average particle size of no larger than 20 mesh or no larger than 100 mesh. [0033, 0071]
Since Nguyen discloses the aluminum particle, it would be an atomized aluminum powder.
"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 disc loses 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 Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 73
Nguyen discloses the method of claim 66, wherein the oxidization promoter is a hydroxide promoter, a metal oxide promoter, an acid, or a salt promoter, or any combination thereof. [0071-0072]
Claim 74
Nguyen disclose the method of claim 66, wherein the oxidization promoter is a hydroxide promoter. [0071]
Claim 75
Nguyen discloses the method of claim 74, wherein the hydroxide promoter is Ca(OH)2, Mg(OH)2, NaOH, or KOH. [0071]
Claim 76
Nguyen discloses the method of claim 75, wherein the hydroxide promoter is Ca(OH), in an amount from about 0.001% (wt.) to about 50% (wt.) of the metal particle. [0074]
Claim 77
Nguyen discloses the method of claim 75, wherein the hydroxide promoter is Ca(OH): in an amount from about 0.1% (wt.) to about 10% (wt.) of the metal particle. [0074]
Claim 80
Nguyen discloses the method of claim 66, wherein the uncoated proppants are sand, a ceramic, or sintered bauxite, or any combination thereof. [0026, 0035]
Claim 81
Nguyen discloses the method of claim 66, wherein the uncoated proppants are sand. [0012, 0035]
Claim 82
Nguyen discloses the method of claim 80, wherein the sand is fracturing sand. [0012, 0035]
Claim 83
Nguyen discloses the method of claim 66, wherein the injected composition comprises comprising-water, sand, aluminum powder, and Ca(OH)2. [0012, 0035, 0070-0075].
Response to Arguments
Applicant's arguments filed on 12/03/2025 with regards to Claims 66-77, and 80-83 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Nguyen et al. (US 2014/0144639 A1), Claims 66-77, and 80-83 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Nguyen et al. (US 2020/0048530 A1) ("530 herein), and Claims 66-77, and 80- 83 rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2014/0144639 A1) and further in view of Drake et al. (US 2016/0333260 A1) have been fully considered but they are not persuasive.
With regards to claim 1, the applicant argues that “However, paragraph
[0035] does not teach uncoated proppants, as the Office asserts. While paragraph [0035] mentions materials such as uncoated sand, bauxite, ceramic materials, or nut shell pieces, the paragraph teaches that such materials can be used in Nguyen's method after they have been coated, which becomes clear as soon as this paragraph is not read in isolation but in the context of the entire specification.” (See Remarks, page 4, 3rd para.)
The examiner agrees with the applicant.
Nguyen discloses the limitations as written in the claim language, as mentioned in the applicant remarks “. [0035] mentions materials such as uncoated sand, bauxite, ceramic materials, or nut shell pieces,” The limitation reads:
a metal particle,[0070]
an oxidization promoter,[0071-0072] and
water into the formation. [0027, 0073], wherein the loose particles are uncoated proppants or unconsolidated formation sand, or a combination thereof. (i.e. sand, bauxite, ceramic materials, nut shell pieces) [0035]
Since Nguyen discloses the same composition comprising a metal particle, an oxidizer, water, and proppant, it would be an oxidizer promoter, an uncoated proppant or unconsolidated loose sand, that would consolidate or aggregate the loose particles.
"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 2112.07 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (FedCir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Secondly, the applicant further argues that “, Nguyen does not disclose a method of consolidating loose particles in a formation but instead teaches a method of hindering the settling of particulates in a subterranean formation by forming proppant pillars.” (See Remarks, page 5, 2nd paragraph).
The examiner respectfully disagrees.
Nguyen discloses that (i.e. proppant aggregates are formed for use in the embodiments described herein, they may be formed by any means known to adhere individual proppant particulates together such that they form a coherent body) [0026, 0075- 0076]
Nguyen discloses an individual proppant particulates (loose particles) and coherent body (consolidation). Therefore, Nguyen discloses the limitation as written.
Thirdly, the applicant argues that “accordingly, one skilled in the art would not consider the aqueous alkali solution of the `530 application as part of the same composition since the poly-condensation or polymerization of silicon and aluminum hydroxide to form insoluble poly(silicon-oxo-aluminate) networks (geopolymers) occurs after the addition of the aqueous alkali solution. In contrast, Applicant's claimed methods are directed to compositions that encompass a metal particle, an
oxidization promoter, and water.” (See Remarks, page 7, 1st paragraph)
The examiner respectfully disagrees.
The claim recites “injecting a composition comprising
a metal particle,
an oxidization promoter, and
water into the formation.
The claim as written recites an open-ended “comprising”, therefore, the ‘530 discloses the claim limitation as written. (See MPEP 211.03)
2111.03 Transitional Phrases [R-01.2024]
The transitional phrases "comprising", "consisting essentially of" and "consisting of" define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim. The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.
I. COMPRISING
The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) ("[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended."). Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003) ("The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps."); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("Comprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("comprising" leaves "the claim open for the inclusion of unspecified ingredients even in major amounts").
Therefore, ‘530 discloses the limitation as written.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
THIS ACTION IS MADE FINAL. 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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 02/17/2026