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 .
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)).
Claims 7, 19, 21, 23-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species/group.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 basic and novel characteristics of the low density proppant particles are clearly set forth in the specification, e.g., that can be suspended in low viscosity carrier fluids and delivered at high flow rates in wellbores as well as the high crush strength thereof. Applicant argues the microspheres of Willberg materially affect these characteristics because they alter the density of the particle and change the crush strength. Applicant argues there is no motivation to remove the microparticles from the coating.
The Examiner disagrees. While “consisting essentially of” does limit the claims to those materials that do not affect the basic and novel characteristics of the invention, Applicant has not disclosed what materials affect such. Applicant argues the suspension (due to density) and high crush strength would be materially affected, however Applicant gives no evidence. The particles lower the density which would in turn aid in suspending the particles in a fluid (heavier particles would sink more readily). Further, adding microspheres are generally thought to improve impact/crush properties. Applicant’s specification needs to explicitly disclose what elements affect the basic and novel properties, and, it does not. See [0058] of the instant specification wherein inert solids, crosslinkers and particles may be used. Though it doesn’t specify these particles or inert solids would be added to the resin coating, like Willberg, they can exist somewhere in the composition without affecting the basic and novel characteristics of the invention. It is unclear how added particles would be detrimental therein when Applicant’s own specification adds inert solids in the proppant. Applicant’s specification does not clearly spell out what elements would affect the basic and novel characteristics, thus, arguments herein are not found persuasive and “consisting essentially of” is treated as “comprising”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 36 is rejected 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation “is free of microspheres” is not supported by the originally filed written description and is deemed new matter.
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.
Claim(s) 36 is/are rejected 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).
Turakhia discloses coated proppant particles (abstract) comprising a particle substrate and a coating (abstract). The coating may be an epoxy coating [0025]. The particle substrate may be sand, ceramic and/or metallic particles [0024]. The particles have a size from 20-200 mesh [0024]
Turakhia includes elements as set forth above but does not disclose the use of fluid coke particles. Willberg discloses proppant compositions (title, abstract), wherein the proppants have a coating comprising a resin and microspheres (abstract). The proppants are used for the same thing (e.g. fracturing/holding cracks open in the wellbore). The core particle substrate may be sand, aluminum (a metal), sintered bauxite/alumina (ceramic), thus akin to Turakhia. The core particle may also be coke [0033]. Willberg thusly teaches sand, aluminum (metal) and sintered bauxite or alumina (ceramic) core particles to function equivalently as coke particles for core particulates of proppants.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Turakhia the use of coke particles, as taught by Willberg, since these are recognized in the art to function equivalently to sand, aluminum and sintered bauxite or sintered alumina core proppant particles.
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. 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 (embracing Turakhia), which converts to 44-2000 microns. Thus, the coke particles of Wawrzos overlap in size and species with that of Willberg and Turakhia). Though used in a drilling fluid, one of ordinary skill can see that these particles are stable and capable of use in a wellbore. One would thusly have a reasonable expectation of success that one could use these are core particles of a proppant, give that coke is disclosed by Willberg as an appropriate core genus.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Turakhia and 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.
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.
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].
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. Though used in a drilling fluid, one of ordinary skill can see that these particles are stable and capable of use in a wellbore. One would thusly have a reasonable expectation of success that one could use these are core particles of a proppant, give that coke is disclosed by Willberg as an appropriate core genus.
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.
“consisting essentially of” is treated as “comprising” since Applicant has not disclosed what materially affects the basic and novel characteristics of the invention. Elements above meet all the requirements of claim 1, wherein the fluid coke particle is a product of heavy hydrocarbons (petroleum) [0014], and/or, such 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 25-29, 31-34. The “consisting of” language of claim 35 is similarly 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 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.
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, amended to remove Knoer due to amendment and 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
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.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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