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.
3. Claims 1-10 have been cancelled and claims 11-25 are pending as amended on 03/02/26.
4. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
This application is a CIP of 18/074,149 12/02/2022 ABN.
Response to Amendment
7. Applicant's amendment filed on 03/02/26, has been fully considered and entered.
Response to Arguments
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8. Applicant's arguments with respect to rejection of claims 11-14, 24-25 under 35 U.S.C. 102(a)(1) as being anticipated by Lin (US 2020/0392271), claim 15 under 35 U.S.C. 103 as being unpatentable over Lin in view of Gibbs (US 3965032), claims 16-18, 21-23 under 35 U.S.C. 103 as being unpatentable over Lin, and claims 19-20 under 35 U.S.C. 103 as being unpatentable over Lin as applied to claim 11 above, and further in view of Rey (US 2010/0311618) filed on 03/02/26, have been respectfully considered but are not persuasive. Lin expressly discloses enhance the production of hydrocarbons (read on claimed “increasing oil recovery”), the para [0278] reproduced here:
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; produce oil at economic rates and oil production (read on “increasing oil recovery”), the para [0251] reproduced here:
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; and the slurry is included various polymeric systems that are utilized in connection with subterranean formations. In the present description, the notion of “subterranean formation” is understood in its broadest sense and includes both a rock containing hydrocarbons, in particular oil, and the various rock layers traversed in order to access this oil-bearing rock and to ensure the extraction of the hydrocarbons (read on “increasing oil recovery”), the para [0206] reproduced here:
Accordingly, the previous rejections have been maintained.
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 11-14, 24-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin (US 2020/0392271).
(Elements of this rejection are set forth in the action dated 10/30/25, reiterated below in its entirety)
Regarding claims 11-14, Lin discloses a method of enhanced oil production (para [0278]) from a fracturing fluid comprising mixing water and a polymer comprising at least one surfactant monomer such as ethoxylated behenyl (meth)acrylate (read on poly(ethylene glycol) behenyl ether methacrylate), at least one hydrophilic monomer such as acrylamide, and at least one glycol ether to form the fracturing fluid, reducing friction within the fracturing fluid upon adding the polymer to the fracturing fluid, adding proppant to the fracturing fluid, pumping the fracturing fluid into a wellbore for fracturing operation, wherein adding the polymer to the fracturing fluid allows for increased proppant suspension of the proppant in the fracturing fluid, and increasing oil recovery from wellbore after performing the fracturing operation (para [0218]-[0236], [0278]), meeting the requirements of claims 11-14.
Regarding claim 24, Lin discloses prehydrating the polymer by combining water with a polymer powder prior to adding the polymer to form the fracturing fluid (para [0034]).
Regarding claim 25, Lin discloses the polymer and fracturing fluid is mixed for 3 minutes (para [0301]; read on claimed at least 30 seconds).
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Lin as applied to claim 11 above, and further in view of Gibbs (US 3965032).
(Elements of this rejection are set forth in the action dated 10/30/25, reiterated below in its entirety)
Lin includes the features of claim 11 above.
Regarding claim 15, Lin discloses glycol ether such as diethylene glycol n-butyl ether to make polymer for maintaining particle dispersions for extended periods of time (para [0008], [0005]). Lin does not disclose tripropylene glycol methyl ether.
However, Gibbs discloses a polymeric dispersion containing hydrophobic and hydrophilic moiety and glycol ether such as tripropylene glycol methyl ether and functionally equivalent diethylene glycol n-butyl ether (column 2, lines 14-20, column 3, lines 20-25). Lin and Gibbs are pertinent to a polymeric dispersion comprising hydrophobic and hydrophilic moiety and glycol ether.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the tripropylene glycol methyl ether of the claims in the composition of Lin because Gibbs teaches that the claimed tripropylene glycol methyl ether and the diethylene glycol n-butyl ether of Lin are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Claims 16-18, 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Lin as applied to claim 11 above.
(Elements of this rejection are set forth in the action dated 10/30/25, reiterated below in its entirety)
Lin includes the features of claim 11 above.
Regarding claims 16-17, applicants in specification para [0051] discloses “[0051] As shown in FIG. 5, fracturing fluids with 0.4 weight percent and 0.7 weight percent of polymer increase the amount of oil recovery over the duration of the experiment relative to the control without polymer. The control resulted in 33.1% oil recovery after 10 days, while the 0.4 wt % fluid resulted in approximately 38.5% oil recovery, and the 0.7 wt % fluid resulted in approximately 42.5% oil recovery.” Lin discloses the polymer is present in an amount ranging from about 0.001 wt% to about 10 wt% based upon total weight of the fracturing fluid (para [0215]), encompassing 0.4 weight percent and 0.7 weight percent of polymer discussed by applicants for the increasing a total oil recovery over a period of about 4 days or about 10 days. Since, the oil recovery is dependent on the amount of the polymer and Lin encompasses the amount of the same polymer, the increase in total oil recovery over a period of about 4 days or about 10 days would necessarily be the same as claimed. “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. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claim 18, Lin discloses the polymer is present in an amount ranging from about 0.001 wt% to about 10 wt% based upon total weight of the fracturing fluid (para [0215]), encompassing claimed 0.4-0.7 wt%. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claims 21-23, the reduction of the claimed friction within the fracturing fluid by about 75 % within one minute of adding the polymer (regarding instant claim 21) or by about 65 % within one minute of adding the polymer (regarding instant claim 22) is dependent on the polymer is added to form the fracturing fluid at a concentration of 0.025 wt% or 2.08 ppt (pl See instant dependent claim 23 and/or specification, para [0048]-[0049]). Lin discloses the polymer is present in an amount ranging from about 0.001 wt% to about 10 wt% based upon total weight of the fracturing fluid (para [0215]), encompassing claimed 0.025 wt%. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). Since, the friction reduction is dependent on the amount of the polymer and Lin encompasses the amount of the same polymer, the claimed friction reduction would necessarily be the same as claimed. “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. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lin as applied to claim 11 above, and further in view of Rey (US 2010/0311618).
(Elements of this rejection are set forth in the action dated 10/30/25, reiterated below in its entirety)
Lin includes the features of claim 11 above.
Regarding claims 19-20, Lin discloses breaker such as persulfate in an amount of 0 ppt to about 20 ppt (para [0137], [0237]) in order to removal of the fluid post fracturing. Lin does not disclose the persulfate is ammonium persulfate.
However, Rey discloses a fracturing fluid comprising friction reducing polymer and a breaker such as ammonium persulfate in an amount of about 0.01 wt% (0.1 ppt) to about 2 wt% (20 ppt) (para [0014]-[0015], [0100]), encompassing claimed range of about 0.5 ppt. Lin and Rey are pertinent to a fracturing fluid comprising persulfate breaker.
At the time of invention, it would have been obvious to one of ordinary skill in the art to have modified Lin with the aforementioned teachings of Rey to provide a fracturing composition comprising a breaker such as ammonium persulfate in an amount of about 0.01 wt% to about 2 wt% in order to use such fluid in wellbore fracturing operation. Since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use. See MPEP 2144.06(11) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair& Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc vAg-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988). In the instant case, an ammonium persulfate for the breaking of the polymer. Absent evidence to the contrary, one of ordinary skill would have reasonable basis to expect that the breaker of Rey would be effective in the fluid composition of Lin. Further, it is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Conclusion
THIS ACTION IS MADE FINAL. 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 KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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