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.
Claim Status
Applicant’s corrected filing of the claims on 18 June 2026 has been entered.
Claims 2-20 and 24 are pending. Claims 1 and 21-23 have been cancelled.
Claim Interpretation
Claim 2 recites the term “particulate matter.” As previously set forth, the broadest reasonable interpretation of this term encompasses both finely divided solids, and finely divided liquids in a biphasic mixture. This is the interpretation that will be used.
Response to Arguments
Applicant's arguments, pages 7-9 of the reply filed 27 March 206, with respect to the rejection of claim 2-4, 6-7 and 15 under 35 USC § 102 have been fully considered but they are not persuasive.
Applicant first argues, pages 7-8, against Examiner’s interpretation of the term “particulate matter” and asserts that “particulate matter” refers only to solids. However, there is no specific mention of solids anywhere within the claim or the specification. Applicant relies on the fact that the particulate matter in some embodiments may be removed by microfiltration and/or ultrafiltration to support that particulate matter must refer to a solid. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, the membrane separation in Bader (US 9,751,777 B1), is a type of filtration itself, and is used to separate oil droplets. Therefore it cannot be concluded that even the embodiment in the specification pointed to in the reply ([0034]) even implicitly requires solid particulates. In further support that this limitation is not implicitly disclosed in [0034], Igunnu specifically teaches that oil droplets can be removed by ultrafiltration (Section 4.1.1). Therefore, the use of ultrafiltration would not lead someone of ordinary skill to the conclusion that “particulate matter” refers only to solids.
Applicant further argues, pages 8-9, that Bader’s method of removing radium-containing precipitates are distinct from a method of recovering radium. However, it is noted that the radium removed which is removed as a precipitate, can also be considered “recovered”. Additionally, there is nothing in the language of the claim the requires the radium to be recovered exclusively and separately from any other contaminants. In fact, the method of the instant invention implicitly and explicitly requires the presence of other components in the recovered radium. For example, the radium-containing precipitate referenced in [0039] and claim 15 will generate radium sulfate and/or radium-barium sulfate, neither of which is pure radium-226. Nowhere in the specification or the claims is a sample of pure radium-226 discussed or implied.
The prior rejections of claims 2-4, 6-7 and 15 are maintained.
Applicant's arguments, pages 9-11 of the reply filed 27 March 206, with respect to the rejection of claims 8, 9, 10-12, 16-20 under 35 USC § 103 have been fully considered but they are not persuasive.
The arguments set forth with respect to these dependent claims rely upon the same arguments as for independent claim 2, which were not found persuasive for the reasons analyzed above. Accordingly, the prior rejections of the dependent claims, as modified to suit the amended claims, are maintained.
Applicant's arguments, page 12 of the reply filed 27 March 206, with respect to the rejection of claims 2, 13, and 14 under 35 USC § 103 over McCosh and Fisher have been fully considered but they are also not persuasive.
Applicant appears to assert that a process that does not mention radium-226 cannot be a process for recovering radium-226 (p. 12, ¶ 3). However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As set forth below and in the prior Office action, because the method of modified McCosh would inherently yield a product containing the radium-226 originally in the produced water, as evidenced by Fisher, it will also meet the limitations of the instant claims even though McCosh did not discuss the presence of radium-226 specifically.
Furthermore, it is again noted that a process of precipitating and removing solid material containing the radium-226 (NORM, as referenced in McCosh [0034]-[0036]), is considered equivalent to a method of recovering the radium-226. Applicant has pointed to no meaningful distinction in the terms or specific features that distinguish removal as a solid material from a “recovery” process that utilizes the same techniques.
Applicant is thanked for citing support for new claim 24 in the reply of 27 March 2026. However, Applicant does not cite any support in the as-filed disclosure for the amendments to claims 8 and 9, nor could the Examiner find support for these amendments. Accordingly, claims 8 and 9 are rejected under 35 USC § 112(a) for the reasons detailed below. See MPEP 2163.04(I)(B).
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.
Claims 8 and 9 are 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 amendments to claims 8 and 9 replace the words “geothermal formation” with the words “geothermal extraction process”, and now require a “geothermal brine that previously was circulated through a geothermal extraction process” (claim 8) and “circulating the geothermal brine through the geothermal extraction process” (claim 9). Applicant’s reply of 27 March 2026 does not point out where the amended claim limitations are supported, and there does not appear to be written description of circulating any geothermal brine through an extraction process in the application as filed. MPEP 2163.04(I)(B). Circulation within in a natural geothermal formation, as in [0030] of the as-filed specification, is substantively different from circulation within an extraction process.
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 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 2-7 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bader (US 9,751,777 B1), and with respect to claim 5, as evidenced by Igunnu et al. (International Journal of Low-Carbon Technologies 2014, 9, 157–177).
Regarding claim 2, Bader teaches a method of recovering radium-226 (col. 3, line 3; Table 1 indicates radium-226 is present) from produced material generated from a natural resource extraction process (produced water from hydraulic fracturing; col. 1, lines 30-32), the method comprising providing an aqueous material stream that includes dissolved radium-226 and particulate matter and filtering the aqueous produced material stream to generate a retentate, which includes a major fraction of the particulate matter (oil droplets) and an aqueous radium-containing filtrate stream, which includes a major fraction of the dissolved radium-226 (PW is fed to a stage of hydrophobic membranes to separate oil droplets in a near pure form from the de-oiled PW; col 17, lines 29-31) and separating the dissolved radium-226 as recovered radium-226 from a remainder of the aqueous radium-containing filtrate stream (the de-oiled PW is then treated by multi-precipitations stages … the first precipitation stage is aimed at the selective removal of barium and radium in the form of sulfates; col. 17, lines 36-38).
Regarding claims 3-4, Bader discloses the method of claim 2, where the aqueous produced material stream is a produced water stream from the natural resource extraction process (the fluid that flows back during and after fracturing…it is referred to in this invention as PW; col. 1, lines 30-32). Because such water is used in the invention of Bader, it must have also been produced, meeting the limitations of claims 3 and 4.
Regarding claim 5, Bader discloses the method of claim 3, where the produced water from fracturing can be considered a byproduct stream of the natural resource extraction process, as evidenced by Igunnu (p. 158, col. 1, ¶ 3)
Regarding claims 6 and 7, Bader discloses the method of claim 3, where Bader also teaches that the natural resource extraction process includes a hydrocarbon well configured to produce a fluid hydrocarbon stream from a subsurface region (hydrocarbon production from a low-permeability organic-rich shale…vertical well…horizontal well; col 1, lines 7-8 and 28-29) , and that the produced water stream includes water produced from the subsurface region via the hydrocarbon well (mixed with high salinity formation water, and mobilized to the surface with PW; col. 1, lines 39-40). Because such water is used in the invention of Bader, it must have also been produced from the subsurface region, thereby meeting the limitations of claim 6 and 7.
Regarding claim 15, Bader discloses the method of claim 2, where Bader also discloses precipitating the dissolved radium from the aqueous radium-containing filtrate stream to generate a radium precipitate suspended in water (mixing the de-oiled produced water with …sulfate rich mine drainage water to form precipitates comprising radium; col. 3, lines 25-28) and, concentrating the radium-containing precipitate (removing precipitates from the de-oiled produced water; col. 3, line 29).
Claim Rejections - 35 USC § 103
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 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Bader (US 9,751,777 B1), as applied to claim 3, and further in view of Fisher (“Naturally Occurring Radioactive Materials (NORM) in Produced Water and Scale From Texas Oil, Gas, And Geothermal Wells: Geographic, Geologic, And Geochemical Controls,” University of Texas at Austin, Bureau of Economic Geology, Geological Circular 95-3, 1995; DOI: 10.26153/tsw/4986) and EPA (“Geothermal Energy” in Student’s Guide to Global Climate Change, United States Environmental Protection Agency, <URL: https://archive.epa.gov/climatechange/kids/solutions/technologies/geothermal.html>; published 9 May 2017; accessed 13 August 2026).
Regarding claim 8, Bader teaches the method of claim 3, and further alludes to using their invention in conjunction with geothermal power plants (this invention is of particular use in connection with …geothermal power plants; col. 10, lines 37-43), but Bader does not explicitly teach carrying out their method on produced material generated from a natural resource extraction process that includes a geothermal extraction process and where the produced water stream includes a produced water stream that previously was circulated through the geothermal extraction process.
However, Fisher teaches that, like produced water from the oil and gas well taught by Bader, geothermal wells also contain radium (measurements of Ra and other dissolved species in produced water from oil, gas, and geothermal wells, p. 22, col. 2, ¶ 1; and Appendix 1). Furthermore, it would be recognized by one of ordinary skill in the art that geothermal power plants involve a process of circulating geothermal brines extracted from geothermal wells, as taught by EPA (Figure below).
PNG
media_image1.png
256
456
media_image1.png
Greyscale
Figure from https://archive.epa.gov/climatechange/kids/solutions/technologies/geothermal.html; published 9 May 2017; accessed 13 August 2026.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recover radium-226 from a natural resource extraction process that includes a geothermal formation by using the method of Bader on a produced water stream that includes a geothermal brine that previously circulated through a geothermal extraction process. One of ordinary skill in the art would have been motivated to do so because Fisher teaches that such waters are similar to those targeted by Bader in that both can contain high levels of radium-226, and because Bader alludes to using their method on waters associated with geothermal power plants (col. 10, lines 37-43), which will have been extracted from a geothermal formation and would have previously circulated through a geothermal formation.
Regarding claim 9, modified Bader teaches the method of claim 8, were Fisher and EPA teach that the produced water brine is circulated in the geothermal extraction process. By using produced water from such a process, the method of claim 8 would also include, prior to the providing circulating the geothermal brine through the geothermal extraction process.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Bader (US 9,751,777 B1) in view of Chalupnik et al. (“Radium leaching from mine deposits and other materials”, International conference on naturally occurring radioactive materials (NORM IV) Szczyrk (Poland), 17-21 May 2004; retrieved from the Internet: <URL: https://inis.iaea.org/records/84nrz-sr897>).
Regarding claims 10-12, Bader discloses the method of claim 3, as analyzed above, where the principal embodiment described uses produced water from hydraulic fracturing processes. However, Bader also teaches that their general method can be applied to various contaminated water sources, including discharges generated from all kinds of mining operations (col. 10, lines 43-47).
Bader does not specifically teach that such discharges contain radium-226. However, Chalupnik teaches that saline waters occurring in underground coal mines contain radium-226 (abstract, line 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recover such produced waters from a coal mine and then to apply the method of Bader to recover the radium-226 from such a produced water stream, thereby meeting the limitations of claims 10-12. One of ordinary skill in the art would have been motivated to do so because Bader teaches that their method is appropriate for treating such streams and because Chalupnik teaches that such streams will contain radium-226.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Bader (US 9,751,777 B1), as applied to claim 15 above, and further in view of Igunnu et al. (International Journal of Low-Carbon Technologies 2014, 9, 157–177).
Regarding claims 16 and 17, Bader discloses the method of claim 15,
and further discloses the precipitating including combining the aqueous radium-containing filtrate stream (de-oiled PW) with a precipitant which includes sulfate (mixing the de-oiled produced water with …sulfate rich mine drainage water to form precipitates comprising radium; col. 3, lines 25-28) to produce radium-barium sulfate as the radium-containing precipitate (the precipitation of radium-barium sulfates; col. 17, lines 66-67), partially dewatering the radium-containing precipitate to form an aqueous slurry of the radium-containing precipitate that includes the recovered radium-226 (the outlet stream from the first precipitator unit is directed to the first filtration unit… to separate the formed [radium-barium] precipitates; col. 18, lines 21-25 and 28-29). Regarding the “aqueous slurry,” because Bader also teaches that for disposal as LLW further dewatering will be necessary (col. 18, lines 33-35), one can conclude that prior to this additional dewatering the radium-containing precipitate would exist as a partially dewatered aqueous slurry.
Furthermore, because Bader teaches that the further dewatering and dehydration would enable the disposal in a NORM disposal facility as LLW (col. 18, lines 32-34), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to dewater the radium-containing precipitate, as required by claim 17. One of ordinary skill in the art would have been motivated to do so in order to dispose of the radium, as taught by Bader, or to reduce the weight for easier transport, as would be apparent to one of ordinary skill in the art.
Regarding the limitation in claim 16(i), Bader teaches a process for removing the particulate matter that is akin to ultrafiltration to de-oil the produced water, but does not use the term “ultrafiltration.”
However, Igunnu further teaches that produced water is typically filtered by ultrafiltration in order to remove oil (Section 4.1.1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to filter the produced water used in the method Bader with ultrafiltration to separate the retentate from the aqueous radium-containing filtrate stream, as taught by Igunnu, thereby arriving at the invention of claims 16 and 17. One of ordinary skill in the art would have been motivated to do so because Igunnu teaches that ultrafiltration is able to accomplish the same function as the de-oiling step used by Bader.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Bader (US 9,751,777 B1) in view of Igunnu et al. (International Journal of Low-Carbon Technologies 2014, 9, 157–177), as applied to claim 16 above, and further in view of Garner et al. (Minerals 2020, 10(3), 278; NPL #1 on the IDS filed 16 February 2023).
Regarding claim 18, modified Bader teaches the method of claim 16 but does not explicitly teach utilizing any of the methods recited in the instant claim to at least partially separate the radium-containing precipitate from water.
However, Garner also teaches the recovery of radium-226 from produced waters generated during oil and gas extraction (title) and further teaches that ultrafiltration or centrifugation could be used to separate the radium-containing precipitate, the same radium-barium sulfate formed in the method of Bader, from the remaining fluids (sentence spanning pages 2-3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize in the method of modified Bader either centrifugation or ultrafiltration to separate the radium-containing precipitate from water in the aqueous slurry of the radium-containing precipitate, as taught by Garner. One of ordinary skill in the art would have been motivated to do so because Garner teaches that these methods are effective at separating a very similar mixture, and that centrifugation in particular would be appropriate in an industrial setting (p. 3, line 1).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bader (US 9,751,777 B1) in view of Igunnu et al. (International Journal of Low-Carbon Technologies 2014, 9, 157–177), as applied to claim 16, and further in view of DiTommaso et al. (US 2011/0104038 A1).
Regarding claims 19 and 20, modified Bader teaches the method of claim 16, but Bader does not teach concentrating the aqueous radium-containing filtrate stream subsequent to the filtering and prior to the precipitating.
However, like Bader, DiTommaso also teaches a method of treating produced water from hydraulic fracturing that includes a chemical precipitation step to precipitate out barium sulfate (abstract, Fig. 1, and [0042]). DiTommaso further teaches a concentrating step subsequent to a filtering step and prior to the precipitating, where that concentrating step may include evaporating water from the filtrate stream (Fig. 1 and 2, [0041]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a concentrating step that includes evaporating water from the aqueous radium-containing filtrate subsequent to filtering and prior to precipitation in the method of modified Bader, as taught by DiTommaso. One of ordinary skill in the art would have been motivated to do so in order to reduce the volumes of brine being handled, and to enable transport of the brines for off-site treatment at lower cost and with less pollution, as taught by DiTommaso ([0016] and [0064]).
Claims 2, 13 and 14 are rejected under 35 U.S.C. 103 as being obvious over McCosh et al. (WO 2011/098765 A1) as evidenced by Fisher (“Naturally Occurring Radioactive Materials (NORM) in Produced Water and Scale From Texas Oil, Gas, And Geothermal Wells: Geographic, Geologic, And Geochemical Controls,” University of Texas at Austin, Bureau of Economic Geology, Geological Circular 95-3, 1995; DOI: 10.26153/tsw/4986).
Regarding claim 2, McCosh discloses a method of recovering naturally occurring radioactive material, which will include radium-226 as evidenced by Fisher (NORM in oil and gas operations is caused mainly by radium-226; abstract, ¶ 2), from produced material (sludge pit sand) generated from a natural resource recovery process (oil and hydrocarbon extraction; [0001]-[0005]) the method comprising providing a product material stream that includes dissolved radium and particulate matter and separating the aqueous produced material stream to generate a retentate, which includes a major fraction of the particulate matter, and a radium-containing filtrate stream, which includes a major fraction of the dissolved radium (NORM dissolution step utilizes a chemical chelant to solubilize the NORM which can then be separated from the sand particles); and, separating the dissolved radium-226 (dissolved NORM) from a remainder of the aqueous containing filtrate stream (Acid 142 is dosed into the dissolver regeneration vessel 126 to precipitate the NORM, the chelant, and other solids leaving a liquid brine phase…The solution containing NORM solid particles is pumped through a two stage filtration system 134, the first filtration stage removing coarse NORM particles, and the second filtration stage removing finer NORM particles; [0032] and [0034]).
Regarding the aqueous nature of the stream, while McCosh does not explicitly identify the dissolver solution used in the dissolution step as “aqueous,” they do teach that water is used in the treatment process (NORM solids are subjected to a NORM dissolver process 16, and the water used in the treatment is subjected to a water treatment process 18; [0018]), that the dissolver can be washed with water ([0030]) and that the converting agent also used in the process can be potassium carbonate ([0027]), which is also soluble in water.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an aqueous solution of the dissolver in the method of McCosh. One of ordinary skill in the art would have been motivated to do so because McCosh teaches that water is compatible with the system, because it utilizes water soluble reagents, and because McCosh suggests no other solvent.
McCosh also does not explicitly teach filtering the produced material stream. However, filtration is a well-known technique in the art to separate solid particles from a liquid. McCosh also explicitly uses filtration in a later solid-liquid separation ([0034]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to separate the particulate matter from the dissolved radium-226 in the method of McCosh using filtration. One of ordinary skill in the art would have been motivated to do so because such an operation is a common, well known technique for separating solids from liquids, and because McCosh explicitly uses in a later solid-liquid separation.
Regarding claims 13 and 14, McCosh teaches the method of claim 2, and further teaches incorporating the scales found on sludge pit sand, a byproduct from the natural resource extraction process, into a water stream to generate the aqueous produced material stream (a converting agent may be combined with the chelating agent to assist with dissolving the NORM scale; [0027]). As analyzed for claim 2, the dissolver solution used by McCosh is either aqueous, or it would have been obvious to one of ordinary skill in the art to use an aqueous solution, thereby meeting the limitations of claims 13 and 14.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Bader (US 9,751,777 B1) in view of Igunnu et al. (International Journal of Low-Carbon Technologies 2014, 9, 157–177) and DiTommaso et al. (US 2011/0104038 A1).
Regarding claim 24, Bader teaches a method of recovering radium-226 (col. 3, line 3; Table 1 indicates radium-226 is present) from produced material generated from a natural resource extraction process (produced water from hydraulic fracturing; col. 1, lines 30-32) comprising providing an aqueous material stream that includes dissolved radium-226 and particulate matter and filtering the aqueous produced material stream to generate a retentate, which includes a major fraction of the particulate matter (oil droplets) and an aqueous radium-containing filtrate stream, which includes a major fraction of the dissolved radium-226 (PW is fed to a stage of hydrophobic membranes to separate oil droplets in a near pure form from the de-oiled PW; col 17, lines 29-31)
Bader also teaches precipitating the dissolved radium-226 from the aqueous radium-containing filtrate stream to generate a radium-containing precipitate suspended in water (mixing the de-oiled produced water with …sulfate rich mine drainage water to form precipitates comprising radium; col. 3, lines 25-28) and concentrating the radium-containing precipitate, wherein concentrating includes partially dewatering the radium-containing precipitate to form an aqueous slurry of the radium-containing precipitate that includes the recovered radium-226 (the outlet stream from the first precipitator unit is directed to the first filtration unit… to separate the formed [radium-barium] precipitates; col. 18, lines 21-25 and 28-29). Regarding the “aqueous slurry,” because Bader also teaches that for disposal as LLW further dewatering will be necessary (col. 18, lines 33-35), one can conclude that prior to this further dewatering the radium-containing precipitate would exist as a partially dewatered aqueous slurry.
Bader teaches a filtering process for removing the particulate matter that uses hydrophobic membranes and is akin to ultrafiltration, but does not use the term “ultrafiltration,” which is the specific process required by the instant claim. Bader also does not teach concentrating the aqueous radium-containing filtrate stream subsequent to the filtering and prior to the precipitating as instantly required.
However, Igunnu teaches that produced water is typically filtered by ultrafiltration in order to remove oil (Section 4.1.1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to filter the produced water used in the method Bader with ultrafiltration to separate the retentate from the aqueous radium-containing filtrate stream, as taught by Igunnu. One of ordinary skill in the art would have been motivated to do so because Igunnu teaches that ultrafiltration is able to accomplish the same function as the de-oiling step used by Bader.
Additionally, like Bader, DiTommaso also teaches a method of treating produced water from hydraulic fracturing that includes a chemical precipitation step to precipitate out barium sulfate (abstract, Fig. 1, and [0042]). DiTommaso further teaches a concentrating step subsequent to a filtering step and prior to the precipitating, where that concentrating step may include evaporating water from the filtrate stream (Fig. 1 and 2, [0041]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a concentrating step that includes evaporating water from the aqueous radium-containing filtrate subsequent to filtering and prior to precipitation in the method of modified Bader, as taught by DiTommaso, thereby arriving at the claimed invention. One of ordinary skill in the art would have been motivated to do so in order to reduce the volumes of brine being handled, and to enable transport of the brines for off-site treatment at lower cost and with less pollution, as taught by DiTommaso ([0016] and [0064]).
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 Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
Prosecution Insights