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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-22), species C (claim 6), species D (claim 8), and species G (claim 16) in the reply filed on 12/8/2025 is acknowledged.
The examiner withdraws the restriction on species D (claim 8) and E (claims 9 and 10).
Claims 4, 5, 15, 17 and 23-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/8/2025.
During a telephone conversation with Agent Jason Smith on 1/15/2026, Claim 18 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected species.
Claim Objections
Claim 21 is objected to because of the following informalities: Claim 21 recites “120-30wt% of a calcium or magnesium halide” which is misleading. For the purpose of further examination, this limitation is interpreted as 10-30 wt%. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 3, 7 and 22 are rejected 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance,
claim 2 recites the broad recitation “less than 80 wt%” of water, and the claim also recites “less than 70 wt%” of water, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
claim 3 recites the broad recitation “at least 5 wt%” of said quaternary ammonium compound, and the claim also recites “at least 8 wt%” of water, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 22, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 6-14, 16 and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Melbouci et al (US 20220002610 A1).
Regarding claims 1 and 6, Melbouci teaches a method of treating a subterranean formation with a treatment fluid made by mixing a slurry composition with an aqueous fluid [0046, 0174]. The aqueous fluid is fresh water [0175]. Therefore, the treatment fluid is an aqueous formulation; and the water reads on the claimed (ii) water.
The slurry composition comprises an active ingredient (E) which is a polyacrylamide copolymer [0124], containing styrene sulfonate and/or 2-acrylamido-2-methylpropane sulfonic acid (AMPS) monomer units [0125, 0127]. These copolymers read on the claimed (i) polymer (AA) as evidenced by the applicant [P11L16-17 spec.] and specified in claim 6.
The treatment fluid comprises choline chloride [0192], which reads on the claimed (iii), as evidenced by the applicant [P15L14-15 spec.].
The treatment fluid comprises scale inhibitors [0187], which read on the claimed (iv) scale inhibitor.
Regarding claim 7, Melbouci teaches that the polyacrylamides are in the form of dry powders [0131].
Regarding claims 8-10, choline chloride reads on the claimed formula (XI) and the said quaternary ammonium compound.
Regarding claims 11-12, Melbouci teaches that the slurry composition comprises an inorganic material (E2) including calcium carbonate [0029].
Regarding claim 13, the recited “said formulation is not a gel and/or does not gel” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present. In addition, Melbouci teaches that the slurry composition resist gelation [0069].
Regarding claims 14 and 16, Melbouci teaches scale inhibitors including hydroxyethylidene diphosphonic acid, polycarboxylic acid polymers, sulfonated polymers and polyacrylates [0187], which read on the claimed scale inhibitor.
Regarding claim 22, Melbouci teaches corrosion inhibitors [0184], meeting the claimed other additive.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Melbouci et al (US 20220002610 A1).
Regarding claim 2, Melbouci teaches the aqueous formulation in claim 1 as stated above. Melbouci teaches that the active ingredient (E) in the slurry composition is present in an amount of up to 75 wt%, based on a total weight of the slurry composition [0030]. In one example, up to 10 gallons of the slurry composition is formulated with an aqueous fluid to form a barrel (42 gallon) of completion fluid [0199]. Thus, the completion fluid contains up to 17.9 wt% of active ingredient (E) (the polyacrylamide copolymer), overlapping the claimed range of 14-45 wt%. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
In addition, Melbouci teaches that the slurry composition may be added in any quantity needed to form an appropriate treatment fluid—a skilled artisan will be able to determine the appropriate dosage levels for a particular treatment application, and adjust the slurry composition dosage accordingly [0197]. Therefore, the claimed amount of water is prima facie obvious.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Melbouci et al (US 20220002610 A1) as applied to claim 1 above, further in view of Wu (US 20180112118 A1).
Regarding claims 2 and 3, Melbouci teaches the aqueous formulation in claim 1 as stated above. Melbouci teaches that the active ingredient (E) in the slurry composition is present in an amount of up to 75 wt%, based on a total weight of the slurry composition [0030]. In one example, up to 10 gallons of the slurry composition is formulated with an aqueous fluid to form a barrel (42 gallon) of completion fluid [0199]. Thus, the completion fluid contains up to 17.9 wt% of active ingredient (E) (the polyacrylamide copolymer), overlapping the claimed range of 14-45 wt%. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
In the same field of endeavor, Wu teaches a 200 kg slick water concentration system comprising 20 kg of choline chloride, and (65.999+49 =115 kg) of water (Example 1, [0023-0027]). Thus, choline chloride is in the amount of 10 wt%; water is in the amount of 57.5 wt%, as calculated by the examiner. The water amount falls within the claimed less than 80 wt%. The choline chloride amount falls within the claimed at least 5 wt% and 55 wt% or less.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a treatment fluid according to Melbouci including the amount of choline chloride and water as taught by Wu, as Wu demonstrates these ranges to be suitable for similar composition. This represents the use of a suitable ranges of choline chloride and water in slick water treatment composition which are compositionally similar and are used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Melbouci et al (US 20220002610 A1) as applied to claim 1 above, further in view of Smith et al (US 20040087448 A1).
Regarding claim 19, Melbouci teaches the aqueous formulation in claim 1 as stated above. Melbouci teaches scale inhibitors including hydroxyethylidene diphosphonic acid, but does not specifically teach the claimed diethylene triamine pentamethylene phosphonic acid or a bis-hexamethylene triamine pentamethylene phosphonic acid.
In the same field of endeavor, Smith teaches a fracturing fluid, comprising scale inhibitors including hydroxyethylidene diphosphonic acid and diethylene triamine pentamethylene phosphonic acid [0045].
It is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. Since Smith recognized hydroxyethylidene diphosphonic acid and diethylene triamine pentamethylene phosphonic acid are equivalent for the same purpose as scale inhibitors, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute hydroxyethylidene diphosphonic acid with diethylene triamine pentamethylene phosphonic acid in Melbouci’s composition.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Melbouci et al (US 20220002610 A1) as applied to claim 1 above, further in view of Wu (US 20180112118 A1) and Smith et al (US 20040087448 A1).
Regarding claims 20 and 21, Melbouci teaches the aqueous formulation in claim 1 as stated above.
Melbouci teaches that the active ingredient (E) in the slurry composition is present in an amount of up to 75 wt%, based on a total weight of the slurry composition [0030]. In one example, up to 10 gallons of the slurry composition is formulated with an aqueous fluid to form a barrel (42 gallon) of completion fluid [0199]. Thus, the completion fluid contains up to 17.9 wt% of active ingredient (E) (the polyacrylamide copolymer).
In the same field of endeavor, Wu teaches a slick water concentration system comprising dispersion A (including A1-A5) and solution B (including B1-B4) [0005]:
water-soluble monomer A1 in the amount of 5.0-20.0%;
water-soluble dispersant A2 in the amount of 0.1-5.0%;
water-soluble radical initiator A3 in the amount of 0.000001-0.100%;
inorganic salt A4 in the amount of 15.0-40.0%;
water A5 remainder;
water-soluble fluorocarbon surfactant B1 in the amount of 0.01-10.0%;
choline chloride as clay stabilizer B2 [0017] in the amount of 0.1-20%;
calcium chloride as inorganic salt B3 [0018] in the amount of 10-50 %;
Water B4 remainder;
The ratio of B to A is 20-80:80-20 [0005].
Based on the above teaching, the examiner calculates the composition in the slick water concentration system as follows:
The water-soluble polymer A1: 1-16 wt%;
The quaternary ammonium compound B2: 0.02-16 wt%;
Calcium chloride B3: 2-40 wt%;
Water A5+B4: up to 94 wt%.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a treatment fluid according to Melbouci including the quaternary ammonium compound, calcium chloride, and water in the above amounts, as Wu demonstrates these ranges to be suitable for similar composition. This represents the use of a suitable ranges of the quaternary ammonium compound, calcium chloride, and water in treatment fluid composition which are compositionally similar and are used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
In the same field of endeavor, Smith teaches a fracturing fluid, comprising scale inhibitors in the amount of 0-5% [0042 and Table C].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a treatment fluid according to Melbouci including a scale inhibitor in the amount of 0-5 wt%, as Smith demonstrates this range to be suitable for similar treatment fluid composition. This represents the use of a suitable ranges of scale inhibitor in treatment fluid composition which are compositionally similar and are used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Therefore, Melbouci in view of Wu and Smith teaches a treatment fluid comprising
up to 17.9 wt% of active ingredient (E) (the polyacrylamide copolymer);
up to 94 wt% of water;
0.02-16 wt% of quaternary ammonium compound;
2-40 wt% of calcium chloride; and
0-5 wt% of scale inhibitor.
These amounts overlap the claimed ranges. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762