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 .
DETAILED ACTION
Claims 1-20, 22, and 23 are pending. Claim 21 has been canceled. Note that, Applicant’s amendment and arguments filed January 23, 2026, has been entered.
Claims 16 and 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 3, 2025.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 12/5/25 have been withdrawn:
The rejection of claims 10 and 11 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, has been withdrawn.
The rejection of claims 1 and 3-13 under 35 U.S.C. 103 as being unpatentable over Hart et al (US 11,787,996), has been withdrawn, due to the filing of a statement of common ownership.
The rejection of claims 17-21 under 35 U.S.C. 102(a)(1) as being anticipated by WO2014/108350 or Abad et al (US2019/0177603), has been withdrawn.
The rejection of claims 1-15 under 35 U.S.C. 103 as being unpatentable over WO2019/152470 as applied to claims 17-21 above, and further in view of Hart et al (US 11,787,996, has been withdrawn due to the filing of a statement of common ownership.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-11, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Santos et al (US2020/0157402).
With respect to independent, instant claim 1, Santos et al teach a direct emulsion drilling fluid comprising an aqueous fluid, an oil, and a polysorbate emulsifier. See Abstract. The aqueous-based fluid may be freshwater, brine, etc. The aqueous-based fluid may be present in the direct emulsion drilling fluid at a volume ration of about 10 vol % aqueous-based fluid up to 80 vol % aqueous-based fluid. Alternatively, the aqueous-based fluid may be present in the direct emulsion drilling fluid at a volume ratio of from about 10 vol % aqueous-based fluid up to about 30 vol % aqueous-based fluid, from about 30 vol % aqueous-based fluid up to about 40 vol % aqueous-based fluid, from about 40 vol % aqueous-based fluid up to about 50 vol% aqueous-based fluid, from about 50 vol % aqueous-based fluid up to about 60 vol % aqueous-based fluid, from about 60 vol % aqueous-based fluid up to about 70 vol % aqueous-based fluid, or from about 70 vol % aqueous-based fluid up to about 80 vol % aqueous-based fluid. Suitable oils include at least one oil selected from the group consisting of an a-olefin, internal olefin, alkane, aromatic hydrocarbon, cycloalkane, liquefied petroleum gas, kerosene, diesel oil, crude oil, gas oil, fuel oil, paraffin oil, mineral oil, light cycle oil, tall oil, refined oil, low-toxicity mineral oil, olefin, ester, amide, synthetic oil (e.g., polyolefin), polydiorganosiloxane, siloxane, organosiloxane, ether, dialkylcarbonate, vegetable oil, and combinations thereof. See paras. 12-16. The oil may be present in the direct emulsion drilling fluid at a volume ratio of about 20 vol % oil up to 90 vol % oil. Alternatively, the oil may be present in the direct emulsion drilling fluid at a volume ratio of from about 20 vol % oil up to about 30 vol % oil, from about 30 vol % oil up to about 40 vol % oil, etc. See para. 17. Some specific examples of polysorbates may include, but are not limited to, polyoxyethylene (20) sorbitan monolaurate, polyoxyethylene (20) sorbitan monopalmitate, polyoxyethylene (20) sorbitan monostearate, and polyoxyethylene (20) sorbitan monooleate. See para. 19.
The direct emulsion drilling fluid may further include any drilling fluid additives such as, without limitations, pH buffers or control agents, shale inhibitors, corrosion inhibitors, scale inhibitors, degreasers, wetting agents, emulsifiers, filtrate control agents, lost circulation materials, lubricants, rate of penetration enhancers, spotting fluids, sweeping agents, thinners, deflocculants, suspending agents, and combinations thereof. The direct emulsion drilling fluid may include fluid loss additives such as, for example, lignin, lignite, lignin sulfonate, carbon-based fluid loss additives such as asphalt and asphaltenes, and combinations thereof. See para. 26. Santos et al disclose the claimed invention with sufficient specificity to constitute anticipation.
Accordingly, the teachings of Santos anticipate the material limitations of independent, instant claim 1 and the respective dependent claims.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Santos et al (US2020/0157402).
Santos et al are relied upon as set forth above. However, Santos et al do not teach, with sufficient specificity, a composition containing the specific amount of first surfactant which is a sorbitan ester, a base fluid, and the other requisite components of the composition in the specific amounts as recited by the instant claims.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing the specific amount of first surfactant which is a sorbitan ester, a base fluid, and the other requisite components of the composition in the specific amounts as recited by the instant claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Santos et al suggest formulate a composition containing the specific amount of first surfactant which is a sorbitan ester, a base fluid, and the other requisite components of the composition in the specific amounts as recited by the instant claims.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Santos et al (US2020/0157402) as applied to claims 1-11, 14, and 15 above, and further in view of Abad et al (US2019/0177603).
Santos et al are relied upon as set forth above. However, Santos et al do not teach the use of solvent such as methanol and/or ethylene glycol monobutyl ether in addition to the other requisite components of the composition as recited by the instant claims.
Abad et al teach a wellbore, wherein the method includes introducing a treatment fluid comprising at least a surfactant having at least a branched alcohol ethoxylated surfactant to the subterranean formation. See Abstract. In embodiments, Abad et al teach methods of use of treatment fluids comprising branched alcohol ethoxylated nonionic surfactants. In particular the disclosure also relates to methods of use of treatment fluids comprising environmentally acceptable Guerbet branched alcohol ethoxylated nonionic surfactants. See para. 13. A “branched alcohol ethoxylated” refers to an organic surface active molecule or compound comprising a functional hydrocarbon structure having an hydrophilic ethylene oxide portion linked to a hydrophobic branched hydrocarbon alcohol portion, with an overall carbon chain length of about 10 to about 60 carbon atoms, such as for, example, from about 10 to about 42, from about 10 to about 36, from about 12 to about 32, from about 14 to about 30 carbon atoms. Furthermore, the ethylene oxide hydrophilic portion of the organic surface active molecule may have an average EO length (with each mole of ethylene oxide comprising 2 carbon atoms, four hydrogen atoms, and one oxygen atom) from about 1 to about 16 moles of ethylene oxide (EO) per mole of alcohol, from about 1 to about 12 moles of ethylene oxide (EO) per mole of alcohol, from about 2 to about 10 moles of ethylene oxide (EO) per mole of alcohol, from about 3 to about 8 moles of ethylene oxide (EO) per mole of alcohol. Where it is understood that the length of the ethylene oxide chain is a distribution of chains with an average polymerization rate which is defined as the average EO length, and wherein the hydrophobic branched hydrocarbon chain portion is branched comprising at least one alkyl group. The alcohol from which the hydrocarbon chain is derived may be mono-substituted. The hydrophobic branched hydrocarbon chain alcohol portion may be derived from a primary alcohol or a secondary alcohol. The hydrophobic branched hydrocarbon chain alcohol portion may be derived from a naturally occurring alcohol or a synthetically manufactured alcohol. The hydrophobic branched hydrocarbon chain alcohol portion may be derived from a saturated alcohol or an unsaturated alcohol. The alcohol may have an average carbon chain length of about 8 to about 36 carbon atoms, or an average carbon chain length of about 8 to about 24 carbon atoms, or an average carbon chain length of about 10 to about 18 carbon atoms, or an average carbon chain length of about 10 to about 16 carbon atoms. See para. 39. It has been surprisingly found that branched alcohols obtained through a dimerization process yielding monodispersed chain distributions of branched alcohols, the Guerbet reaction, can yield upon ethoxylation, surfactants with improved biodegradation, bioaccumulation, and lower toxicity, but yet provide appropriate compatibility with stimulation fluids. These branched alcohol are sometimes referred to as “Guerbet alcohols”, and the surfactants derived therefrom can be referred to as “Guerbet surfactants”. See paras. 59-65.
Suitable solvents for use with the unviscosified fluid, viscosified fluid, and/or the environmental surfactant may be aqueous or organic based and mixtures thereof. In embodiments, the surfactant may be introduced into the subterranean formation in a fluid (aqueous or organic) that is separate from the unviscosified fluid or viscosified fluid. In embodiments, the surfactant may be introduced into the subterranean formation after being mixed into either an unviscosified fluid or a viscosified fluid. Aqueous solvents may include at least one of fresh water, sea water, brine, heavy brine, mixtures of water and water-soluble organic compounds and mixtures thereof. Organic solvents may include methanol, isopropanol, ethylene glycol, ethylene glycol monomethyl ether, ethylene glycol dimethyl ether, ethylene glycol monoethyl ether, ethylene glycol monopropyl ether, ethylene glycol monobutyl ether, diethylene glycol monomethyl ether, diethylene glycol dimethyl ether, diethylene glycol monoethyl ether, diethylene glycol monopropyl ether, diethylene glycol monobutyl ether, any organic solvent which is able to dissolve or suspend the various components of the crosslinkable fluid.
In embodiments, the solvent, such as an aqueous solvent, may represent up to about 99.9 weight percent of the unviscosified or viscosified fluid, such as in the range of from about 85 to about 99.9 weight percent of the viscosified fluid, or from about 98 to about 99.7 weight percent of the viscosified fluid. See paras. 78-80.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use methanol and/or ethylene glycol monobutyl ether in the composition taught by Santos et al, with a reasonable expectation of success, because Abad et al teach that methanol and/or ethylene glycol monobutyl ether are suitable solvents in a similar compositions and further, Santos et al teach the use of a wide variety of additional ingredients which would encompass solvents that could assist in the performance of the drilling fluid.
Claims 17-20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over WO2019/152470.
With respect to independent, instant claim 17, ‘470 teaches liquid surfactant compositions. The liquid surfactant compositions can comprise a surfactant package, a co-solvent, and a liquid polymer (LP) composition. The surfactant package can be present in the surfactant composition in an amount of from 0.2% to 98% by weight, based on the total weight of the surfactant composition. The co-solvent can be present in the surfactant composition an amount of from greater than 0% to 95% by weight, based on the total weight of the surfactant composition. The LP composition can be present in the surfactant composition in an amount of from 0.1% to 60% by weight, based on the total weight of the surfactant composition. The surfactant composition can have a total water content (including the water present in all components of the surfactant composition, of from 0.5% to 20% by weight, based on the total weight of the surfactant composition). See pages 8 and 9. The concentrated surfactant composition can be directly diluted with an aqueous fluid (e.g., brine) to produce an aqueous surfactant-polymer solution having the desired concentration of components (e.g., the desired polymer concentration, the desired surfactant concentration, the desired co-solvent concentration, or any combination thereof for a particular oil and gas operation) in a single step. See page 9. In some embodiments, the surfactant package can comprise one or more anionic surfactants, one or more non-ionic surfactants, or any combination thereof. See page 11. In some embodiments, the nonionic surfactant is a Guerbet PO(0-65) and EO (0-100) (Guerbet can be C6-C36); or alkyl PO(0-65) and EO (0-100): where the alkyl group is linear or branched C1-C36. See pages 14 and 15.
The co-solvent can comprise any co-solvent(s) suitable for use in oil and gas operations. Suitable co-solvents include, for example, alcohols, such as lower carbon chain alcohols such as isopropyl alcohol, ethanol, n-propyl alcohol, n-butyl alcohol, sec-butyl alcohol, n-amyl alcohol, sec-amyl alcohol, n-hexyl alcohol, sec-hexyl alcohol and the like; alcohol ethers, polyalkylene alcohol ethers, polyalkylene glycols, poly(oxyalkylene)glycols, poly(oxyalkylene)glycol ethers, etc. See page 17. In some embodiments, the LP composition can include one or more hydrophobic liquids. In some cases, the one or more hydrophobic liquids can be organic hydrophobic liquids. In some embodiments, the one or more hydrophobic liquids each have a boiling point at least 100°C (e.g., at least 135°C, or at least 180°C). If the organic liquid has a boiling range, the term "boiling point" refers to the lower limit of the boiling range. In some embodiments, the one or more hydrophobic liquids can be aliphatic hydrocarbons, aromatic hydrocarbons, or mixtures thereof. Examples of hydrophobic liquids include but are not limited to water-immiscible solvents, such as paraffin hydrocarbons, naphthene hydrocarbons, aromatic hydrocarbons, olefins, oils, stabilizing surfactants, and mixtures thereof. The paraffin hydrocarbons can be saturated, linear, or branched paraffin hydrocarbons. Examples of suitable aromatic hydrocarbons include, but are not limited to, toluene and xylene. In certain embodiments, the hydrophobic liquid can comprise an oil, for example, a vegetable oil, such as soybean oil, rapeseed oil, canola oil, or a combination thereof, and any other oil produced from the seed of any of several varieties of the rape plant. In some embodiments, the amount of the one or more hydrophobic liquids in the inverse emulsion or LP composition is from 20% to 60%, from 25% to 54%, or from 35% to 54% by weight, based on the total amount of all components of the LP composition. See page 23. These aqueous surfactant-polymer solutions are used in a variety of oil and gas operations, including enhanced oil recovery operations and/or wellbore remediation. See page 2, lines 20-30.
‘470 does not teach, with sufficient specificity, a composition containing a first surfactant which is an alkoxylated branched alcohol, a base fluid, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 17 and the respective dependent claims.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing a first surfactant which is an alkoxylated branched alcohol, a base fluid, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Hart et al suggest a composition containing a first surfactant which is an alkoxylated branched alcohol, a base fluid, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 17 and the respective dependent claims.
Response to Arguments
Note that, a new ground(s) of rejection has been made, as set forth above, which was necessitated by Applicant’s statement of common ownership.
With respect to the rejection of instant claims 17-20 and 23 under USC 103 using WO2019/152470, Applicant states that '470 fails to teach or suggest each and every limitation of independent claim 17, as amended, and independent claim 17 is patentable over '470. In response, note that, the Examiner asserts that the teachings of a reference are not limited to the preferred embodiments and that the broad teachings of ‘470 suggest compositions containing the same components in the same amounts as recited by the instant claims. Note that, the fact that a specific embodiment is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). "[a] reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment." CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1349 (Fed. Cir. 2017) (quoting In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012)); see also In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions". Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); See MPEP 2123(II). The fact that a reference discloses a multitude of effective combinations does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, 874 R.2d 804, 808 (Fed. Cir. 1989). See also, In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations even though “the inventors selected the zeolites of the claims from amount thousands of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was huge, but it undeniably included at least some of the compounds recited in appellant’s generic claims and was a class of chemicals to be used for the same purpose as appellant’s additives).
For example, ‘470 clearly teaches that the surfactant package can comprise one or more anionic surfactants, one or more non-ionic surfactants, or any combination thereof (See page 11 of ‘470). Further, ‘470 teaches that in some embodiments, the nonionic surfactant is a Guerbet PO(0-65) and EO (0-100) (Guerbet can be C6-C36); or alkyl PO(0-65) and EO (0-100): where the alkyl group is linear or branched C1-C36 (see pages 14 and 15 of ‘470). Additionally, ‘470 clearly teaches the use of an aqueous brine and cosolvents such as isopropyl alcohol, ethanol, etc. (See page 17 of ‘470). Also, ‘470 teaches the use of hydrophobic liquids which include but are not limited to water-immiscible solvents, such as paraffin hydrocarbons, naphthene hydrocarbons, aromatic hydrocarbons, olefins, oils, stabilizing surfactants, and mixtures thereof (See page 23 of ‘470), which would clearly fall within the scope of an “oleaginous fluid” as recited by the instant claims. Thus, the Examiner asserts that the teachings of ‘470 are sufficient to render the claimed invention obvious under 35 USC 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Remaining references cited but not relied upon are considered to be cumulative to or less pertinent than those relied upon or discussed above.
Applicant is reminded that any evidence to be presented in accordance with 37 CFR 1.131 or 1.132 should be submitted before final rejection in order to be considered timely.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/February 9, 2026