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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/31/26 has been entered.
Election/Restrictions
As previously set forth: Applicant’s election of Group I, surface coating, fluid coke, epoxy, amine, aqueous carrier fluid in the reply filed on 5/22/23 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Claim 36 is newly withdrawn due to amendment since flexicoke was not elected
Claims 7, 19, 21, 23-24, 36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species/group.
Priority
As previously set forth: The claims have a priority date of the filing of the provisional application: 11/2/21
Response to Amendment/Arguments
Applicant argues the Examiner has not established a motivation to combine Willberg and Wawrzos because Wawrzos is drawn to lubricant particles for increasing drilling rates and the lubricant particles therein are fluid coke. Applicant argues Wawrzos discloses the fluid coke is a smooth non-porous surface and an onion internal structure with a density that helps to ensure that it remains suspended in the fluid. Applicant argues this particle is selected for optimized lubrication in drilling fluids and the use of Sinclair and Carroll, and, MPEP 2143B is inappropriate for these reasons. Applicant argues the Examiner’s reasonable expectation of success is conclusionary and the mere fact that Wawrzos’s fluid coke particle is stable does not establish that they would predictably function as a proppant core or that it would have worked for the intended purpose.
The Examiner disagrees. Wawrzos uses the coke lubricant particle in high pressure, high temperature wellbore environments [0002]. Further, the coke particle is tested under high crush strength [0024]. Therein the particles are compressed at 10,000 psi to determine resiliency [0024]. These particles thusly are expected to be useful in any wellbore operation which uses particles under high pressure, high temperatures that crush strengths up to 10,000 psi. Wilberg discloses his proppants to be tested at closure stress of 4000 psi [0122]. Since Wilbergs tested closure strength is much less than the crush strength of which the particles of Wawrzos is tested at, there is found to be a reasonable expectation of success herein. Further, coke is coke. The particle of Wawrzos is a known coke particle known to be suitably used in high pressure environments. Arguments drawn to the surface smoothness and the density are not persuasive because it is desired for a proppant to stay suspended in a fluid (due to low density), and, the surface smoothness is moot since it is coated with a resin. Applicant has not shown or argued any unexpected results stemming from its use. Arguments herein are thusly not found persuasive.
Applicant argues Willberg discloses only generic coke and nowhere ascribes this to the smooth surface of fluid coke. Applicant argues fluid coke is structurally and property distinct products of thermal processes and not mere labels for generic crushed coke.
The Examiner disagrees. Willberg discloses that coke may be used. Applicant has not shown any unexpected results stemming from use of one type of coke vs. another type of coke. The combination of references is found proper, thus the arguments drawn to the differences the surfaces or structures are not found persuasive.
Applicant argues the new amendment to claim 1 excludes those particles of Willberg because the cured resin coating depends on the requirements of the polymeric microspheres attached to the core, thus the proppant of Willberg is not formed by a resin coated coke particle alone. One would have to omit the microspheres to achieve the claimed particle.
The Examiner disagrees. Claim 1 has comprising language and the resin coated particle of Willberg and Wawrzos meets the claimed proppant particulate. Arguments herein are not found persuasive.
Applicant argues the subsequent rejections do not make up for the deficiencies of Willberg and Wawrzos.
The Examiner disagrees. Willberg and Wawrzos are not deficient for reasons set forth above, as such arguments herein are not found persuasive.
Claim Rejections - 35 USC § 112
Rejection over Claim 36 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 is overcome by amendment.
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.
Rejection over Claim(s) 36 under 35 U.S.C. 103 as being unpatentable over Turakhia (US 2010/0179077) in view of Willberg (US 20100263865) and Wawrzos (US 2009/0075847) is overcome by amendment.
Claim(s) 1, 3, 6, 8, 13-15, 29, 31-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willberg (US 2010/0263865) in view of Wawrzos (US 2009/0075847) as evidenced by US 2014/0353042, US 2019/0048146, US 20120241168.
Elements of Willberg and Wawrzos are as previously set forth, reiterated below in italics. The rejection is amended below to include the crush strength positions mentioned in the remarks above.
Willberg discloses proppants and uses thereof (title). Said proppants have a core particle and an outer surface coating that includes microspheres (abstract). The proppant may have a cured resin surface coating thereon [0037]. The core proppant particle may be coke [0033]. The core particle has a size from 100-3500 microns [0035], and may be spherical [0035]. The cured resin coating may be an epoxy resin [0038]. Wilberg discloses his proppants to be tested at closure stress of 4000 psi [0122].
Willberg includes elements as set forth above. Willberg discloses a list of possible core particles, [0033], including coke. Willberg does not disclose the use of fluid coke or the density thereof. Wawrzos discloses spherical carbon based particles for drilling fluids (abstract). The spherical beads may be fluid coke or shot coke particles [0009]. The particle size ranges from -10 mesh to 325 mesh, which converts to 44-2000 microns. Thus, the coke particles of Wawrzos overlap in size and species with that of Willberg. Wawrzos uses the coke lubricant particle in high pressure, high temperature wellbore environments [0002]. Further, the coke particle is tested under high crush strength [0024]. Therein the particles are compressed at 10,000 psi to determine resiliency [0024]. These particles thusly are expected to be useful in any wellbore operation which uses high pressure, high temperatures that crush strengths up to 10,000 psi. Though used in a drilling fluid, one of ordinary skill can see that these particles are stable and capable of use in any wellbore and for any wellbore use requiring high crush strength. One would thusly have a reasonable expectation of success that one could use these are core particles of a proppant, given that coke is disclosed by Willberg as an appropriate core genus and because Wilberg tested closure strength is much less than the crush strength of which the particles of Wawrzos is tested at.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Willberg the use of fluid coke particles, as taught by Wawrzos, since these are recognized suitably known coke particles for used in wellbore fluids. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See also MPEP 2143B, E, since it would be prima facie obvious to use the fluid coke of Wawrzos as a simple substitution of a known element (coke particle) for another and/or obvious to try from a identified predictable solution, with a reasonable expectation of success.
The coke particles of Wawrzos have a true density of 1.45 g/cc-2.2 g/cc [0009]. See US 2014/0353042 [0093], US 20190048146 [0054], US 20120241168 [0039], ‘042 and ‘168 both being in the oil art, as evidence that true density and particle density are the same thing. Thus, the fluid coke particles of Wawrzos meet the core particle and particle density requirements of claim 1. In the event there is a slight difference between true density and particle density, it still seems like the claimed range would be overlapped/embraced rendering the limitation prima facie obvious.
Elements above meet all the requirements of claim 1, wherein the fluid coke particle is a product of heavy hydrocarbons (petroleum) [0014], and/or, ‘petroleum’ coke product is a product by process limitation, the process of making not being pertinent unless Applicant shows a distinct product is made.
The resin coating would be at least partially on the surface, as required by claims 3. Elements above meet claim 6, 8. The particles of Wawrzos are spherical (abstract). Willberg discloses the particles to have a sphericity of at least 0.6 and roundness of at least 0.6 [0034]. Although Krumbein sphericity/roundness is not disclosed it would seem that the above sphericity/roundness would embrace such, as required by claims 13-14. The particle may comprise fines (table 1 Willberg) and one would expect some agglomeration of coke core particles when coating, e.g. it would be impossible to only coat single particles without some aggregates/clumping, as required by claim 15. Elements above meet claims 29, 31-34. The “consisting of” language of claim 35 is met since the language of the proppants does not exclude those additional elements used by Willberg.
Claim(s) 4, 12, 25-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willberg (US 2010/0263865) in view of Wawrzos (US 2009/0075847) as evidenced by US 2014/0353042, US 2019/0048146, US 20120241168 and Knoer (US 2019/0112520).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Willberg includes elements as set forth above. Willberg discloses proppants coated with a coating that may be an epoxy. The epoxy coating of Willberg must have a thickness, but Willberg does not disclose the thickness thereof.
Knoer discloses proppants coated with a curable resin (abstract), thusly similar to Willberg. Knoer discloses the resin may be an epoxy resin [0028], the same type of resin as Willberg. Knoer discloses the resin coating may be 0.1-100 microns thick [0068]. Knoer thusly teaches 0.1-100 microns to be a suitably known thickness for epoxy coatings on proppants.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include in Willberg the use of a coating thickness from 0.1-100 microns, as taught by Knoer since it is recognized in the art as a suitably known thickness for epoxy coatings on proppants. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See also MPEP 2143A, E wherein combining prior art elements (thickness of a coating) according to known methods (a known useful coating thickness) to yield a predictable result of a coated resin, or, obvious to try an identified predictable solution (known coating thickness) with a reasonable expectation of success.
Elements above meet claims 4, 12, 30, since these compositional elements are met the properties of claim 29 must be embraced by the references.
Claim(s) 9, 29, 30, 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willberg in view of Wawros and Knoer in further view of Pisklak (US 2011/0118155).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. New claim 37 is added and is met by elements set forth below.
Willberg, Wawros and Knoer include elements as set forth above. Willberg discloses coating the particles with epoxy resin, but does not disclose the density of the resin. The epoxy resin must implicitly have a density.
Pisklak discloses lightweight proppants for use in subterranean formations (title, abstract), the same use (proppants) as Willberg. Pisklak discloses coating the proppant, one type of coating being epoxy coatings [0022], thus the same type of coating as Willberg. The epoxy coating is disclosed to have a density of 1.2 g/cc [0028]. Pisklak thusly teaches this epoxy coating to have a known density of 1.2 g/cc.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Willberg, Wawros and Knoer the use of epoxy coatings having a density of 1.2 g/cc, as taught by Pisklak, since these are recognized in the art as suitable for the intended use thereof. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
Claim(s) 10, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willberg in view of Wawros in further view of Turakhia (US 2010/0179077).
Elements of this rejection are as previously set forth, amended to remove Knoer due to amendment and reiterated below in its entirety in italics.
Willberg and Wawros include elements as set forth above. Willberg discloses coating the particles with cured resin coating [0037] wherein the cured resin coating may be an epoxy resin. Willberg does not disclose how the resin is cured.
Turakhia discloses proppants for use in hydraulic fracturing (title, abstract), the same use as the particles of Willberg. Turakhia discloses various epoxy resins that may be used for coating the proppant [0025]. Curing agents for the epoxy resins include amines [0026]. Turakhia thusly teaches that these curing agents would be appropriate to use to cure the epoxy resin coatings of Willberg.
It would have been obvious to one of ordinary skill in the art before effective filing date of the invention to include in Willberg and Wawros the use of amine curing agents, as taught by Turakhia in order cure epoxy resin, an outcome desired by Willberg. See MPEP 2143A, E, wherein it is prima facie obvious to try a known identified, predictable solution (known curing agent) to yield the predictable result of curing the epoxy resin of Willberg.
Claim(s) 16, 18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willberg (US 2010/0263865) in view of Wawrzos (US 2009/0075847) as evidenced by US 2014/0353042, US 2019/0048146, US 20120241168 in further view of Semenov (US 2016/0319185).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Willberg and Wawrzos include elements as set forth above. Willberg discloses proppants and the use thereof (title). Proppants are used to increase hydrocarbon production in oil wells (abstract) by being injected therein and propping open fractures [0001]. The fracturing fluids are water based [0088]. Willberg does not disclose how much proppant is used in a fracturing fluid.
Semenov discloses fluids used to deliver materials downhole (title). The fluid is used for fracturing wells by adding a proppant agent therein [0003, 0019]. The fluid is aqueous based [0012]. Semenov discloses using proppant laden fluids (akin to Willberg), and, proppant lean fluids, to create pillars and channels in the formation [0027]. The proppant laden fluids comprise from about 0.01-5 vol% particles which embraces the volume ratio of claim 16 (5 vol% = 5vol/100vol = a ratio of 0.05). Semenov thusly teaches this to be a suitably known amount of proppant to use to fracture formations.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Willberg and Wawros the use of 0.01-5 vol% particles in the fracturing fluid, as taught by Semenov, since this is recognized in the art to be a suitably known amount of proppant to add to fluids for the purpose of fracturing a well. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See also MPEP 2143A, E.
Elements above meet claims 16, 18. Additional microspheres are used on the Willberg proppant (abstract), as required by claim 20 and alternatively, mixing together two different proppants having different core centers (one center being coke) is prima facie obvious. See In re Kerkhoven wherein mixing together two elements known for the same purpose has been held prima facie obvious.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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