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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Response to Amendments
Applicant’s amendments filed 02 APRIL 2026 have been entered.
Claims 1, 8, and 10-15 have been amended. Claims 15-20 were previously withdrawn. Claims 1-20 are pending.
Regarding the Claim Objections of Claims 11 and 14, Applicant’s amendments are sufficient; these objections have been withdrawn.
Regarding the rejections of Claims 8, 10, and 12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, Applicant’s amendments are sufficient; these rejections have been withdrawn.
Response to Arguments
Applicant’s arguments filed 02 APRIL 2026 have been fully considered.
Regarding the rejection of independent Claim 1 under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by GRADIANT (US 2016/0229705 A1), Applicant argues (pg. 7-8) that the prior art GRADIANT fails to disclose a method for enhancing water chemistry at a surface for improved subsurface well performance, and more specifically an enhanced water comprising “a first level of sodium that exceeds a second level of sodium in the water” wherein “the enhanced water is usable for a subsurface field operation to cause the improved subsurface well performance” (par. spanning pg. 7-8). Applicant further argues the prior art teaches a desalination system to reduce or eliminate the amount of sodium in water, not increase it; i.e., Applicant argues GRADIANT fails to disclose the claimed method of enhancing water chemistry (pg. 8, par. 1).
The Examiner respectfully disagrees. Regardless of the intended purpose of the prior art’s disclosure, GRADIANT discloses the ion-removal apparatus is configured to remove any scale-forming ion desired to be removed and further explicitly provides examples of scale-forming cations Mg2+, Ca2+, Sr2+, and Ba2+. GRADIANT does not disclose removing sodium; in fact, to the contrary, GRADIANT explicitly discloses adding or allowing a monovalent salt, e.g., NaCl, to remain in the output stream of the ion-removal apparatus (p0071). Thus, if arguendo GRADIANT does disclose a method for desalinating a water stream, GRADIANT discloses the removal of other salts, not sodium-based salts.
Further, while Applicant’s invention is considered for use to improve subsurface well performance, such limitations are recited as optional or are recited only as having the capability to perform such intended uses, i.e., “wherein the enhanced water is usable for a subsurface field operation…”. There is no explicit requirement that the claimed method’s enhanced water is used in a process for subsurface field operation. To this end, because no active practiced method step is claimed regarding the use of the enhanced water, the recitation “for enhancing water chemistry at a surface for improved subsurface well performance” is directed toward a preamble merely stating the intended use or purpose of the invention. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (MPEP 2111.02 II). Thus, after careful reconsideration of the prior art in light of the amended claims, the pending rejection stands.
Regarding the rejections of dependent Claims 2-14, Applicant argues that because independent Claim 1 is patentable over the cited art, Claims 2-14 are therefore patentable for at least the same reasons (pg. 8, par. 3).
The Examiner respectfully disagrees. Independent Claim 1 is not patentable over the cited art; Claims 2-14 are therefore not patentable over the cited art.
Claim Interpretation
The claims recite the term “surface”; as commonly understood in the art, “surface” is interpreted as a location external to a wellbore, i.e., in contrast with “subsurface” and “subterranean”, and not necessarily a specific layer on a body of water, i.e., not to be confused with the surface layer of produced water at the top of a well.
In Claim 1, Applicants have distinctly claimed “a type of solid-generating component” and “the solid-generating component” with respect to the water and “solid-generating components” with respect to the enhanced water. These terms are interpreted to not be the same. However, it is noted that in Claim 13, Applicants have referenced both “a solid-generating component in the enhanced water” and “the solid-generating components of the enhanced water”. While not amounting to an indefiniteness issue, it is not clear whether Applicant is intending to associate the singular and plural forms of “solid-generating component” with the enhanced water. The Examiner will interpret the claim as explicitly constructed.
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.
(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(s) 1-7, 11, and 14 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by GRADIANT (US 2016/0229705 A1).
Regarding Claim 1, GRADIANT discloses a water treatment system and method for treating water comprising suspended solids and scale-forming ions (abstract) from sources of contaminated saline water, including an oil or gas well that yields produced water (p0031, p0035). GRADIANT recognizes that contaminated saline water comprises produced water that often comprises relatively high concentrations of dissolved salts and minerals, scale-forming ions, and suspended solids (i.e., testing water at the surface to identify… a type of solid-generating component in the water, and an amount of the solid-generating component in the water; p0035). Scale-forming ions include multivalent cations, e.g., Ca2+ (p0071), and sparingly soluble salts, including calcium carbonate CaCO3 (p0072).
A saline water input stream 104 comprising scale-forming ions and suspended solids is flowed to a separation apparatus 202 to remove water-immiscible phases (e.g., oil); the resultant immiscible-phase-diminished stream 214 is flowed to an ion-removal apparatus 204 to remove at least a portion of at least one scale-forming ion to produce an ion-diminished stream 218; subsequently, stream 218 is flowed to a suspended solids removal apparatus 206 to remove at least a portion of the suspended solids to produce another diminished stream 222; finally, stream 222 is flowed to a pH-adjustment apparatus 208 for pH adjustment (p0037; FIG. 2A). Purified product streams may be used for industrial uses and other applications, including as drilling fluid in oil and gas extractions (i.e., wherein the enhanced water is usable for a subsurface field operation to cause the improved subsurface well performance; p0028). Although GRADIANT is deficient in explicitly disclosing “identify[ing] a pH level of the water”, the disclosure of a pH-adjustment apparatus 208 for pH adjustment (p0037) strongly implies that an initial pH level must be determined such that any pH adjustment (if necessary) can be performed to reach a desired pH level (i.e., testing water at the surface to identify a pH level of the water; p0257). It is further noted that although GRADIANT discloses pH adjustment in the pH-adjustment apparatus 208 occurring in sequence after the ion-removal apparatus 204, GRADIANT further discloses that each unit of the water treatment system can be alternatively arranged in any order (p0145).
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The ion-removal apparatus 204 is of particular relevance to the instantly claimed limitations. GRADIANT discloses that the ion-removal apparatus is configured to remove any scale-forming ion that is desired to be removed, e.g., scale-forming cations including Mg2+, Ca2+, Sr2+, and Ba2+ (i.e., wherein the enhanced water comprises a reduced amount of solid-generating components relative to the water; p0071). The ion-removal apparatus comprises a chemical ion-removal apparatus wherein one or more ion removal compositions configured to induce precipitation of at least one scale-forming ion are mixed with the influent immiscible phase-diminished stream 214 in first reaction tank 402 to produce stream 408; subsequent reaction tanks 404 and 406 serve similar functions (i.e., identifying a type and an amount of an additive based on identifying the type and the amount of the solid-generating component, wherein the additive is configured to generate a solid when mixed with the water; mixing, at the surface, the water and the additive to generate the solid and enhanced water, wherein the solid comprises at least some of the solid-generating components of the water; p0082, p0086; FIG. 4).
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It should be noted that GRADIANT further discloses any number of reaction tanks are considered for the chemical ion-removal apparatus (p0087) and that varying amounts of the one or more ion removal compositions are considered for addition to the reaction tanks to produce ion-diminished streams having lower concentrations of scale-forming ions (p0089). As a result of these reactions, at least a portion of the scale-forming ions are precipitated as insoluble solids, e.g., when sodium carbonate Na2CO3 is added to treat the streams containing Ca2+, calcium carbonate precipitates (i.e., wherein the solid is removable from the enhanced water at the surface before being pumped to a subsurface; p0082).
Of specific note, GRADIANT further discloses that while the ion-removal apparatus removes any scale-forming ion, the system “allow[s] a dissolved monovalent salt (e.g., NaCl) to remain dissolved in the aqueous stream transported out of the ion-removal apparatus” (p0071, end). Although not explicitly disclosed, the relative sodium content with respect to other cations in the treated aqueous stream 218 is higher than that in the influent stream 214 due to the removal of other scale-forming species (i.e., wherein the enhanced water has a first level of sodium that exceeds a second level of sodium in the water).
The recited limitation “for enhancing water chemistry at a surface for improved subsurface well performance” is directed toward a preamble stating the intended use or purpose of the invention. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (MPEP 2111.02 II).
Regarding Claim 2, GRADIANT anticipates the method of Claim 1. GRADIANT further discloses the precipitation of the scale-forming ions as insoluble solids in the reaction tanks of the ion-removal apparatus (p0082).
Regarding Claim 3, GRADIANT anticipates the method of Claim 2. GRADIANT further discloses that the ion-removal apparatus is directly connected to a suspended solids removal apparatus, including a filtration apparatus, e.g., a filter (p0094, p0098), such that any suspended solids, including precipitated salts, may be removed (p0096).
Regarding Claim 4, GRADIANT anticipates the method of Claim 1. GRADIANT further discloses the scale-forming ions present in the water include multivalent cations, such as Mg2+, Ca2+, Sr2+, and Ba2+, and multivalent anions, such as carbonates, bicarbonates, sulfates, and bisulfates (p0071).
Regarding Claim 5, GRADIANT anticipates the method of Claim 4. GRADIANT further discloses the multivalent cations include Ca2+ (p0071) and that the resultant precipitate as an insoluble solid is calcium carbonate (p0082).
Regarding Claim 6, GRADIANT anticipates the method of Claim 1. GRADIANT further discloses the additives include caustic soda and soda ash, i.e., sodium hydroxide NaOH and sodium carbonate Na2CO3 (p0082).
Regarding Claim 7, GRADIANT anticipates the method of Claim 1. The limitation requiring that “the solid is usable for a separate process, wherein the separate process comprises at least one of a group consisting of construction material, concrete, acid neutralization, soil treatment, color enhancement, and flooring material” is directed toward an optional limitation and only requires that the produced solid precipitate is capable of being used for a different purpose apart from the claimed invention.
Regarding Claim 11, GRADIANT anticipates the method of Claim 1. GRADIANT further discloses the initial feed solution to be treated has a relatively high total dissolved solids concentration (p0128) and the resultant purified/treated water after subjecting to the water treatment system has a relatively low total dissolved salt concentration (p0189).
Regarding Claim 14, GRADIANT anticipates the method of Claim 1. GRADIANT further discloses the chemical ion-removal apparatus comprises any number of reaction tanks, e.g., one, two, three, four, or more reaction tanks (i.e., the mixing of the water and the additive occurs in multiple stages; p0087); each reaction tank stage includes the addition of an ion removal composition (p0086). It is further noted GRADIANT explicitly discloses scale-forming ions include calcium carbonate, i.e., calcite (i.e., results in the water having reduced calcium, and wherein the mixing of the water and the additive further results in the solid comprising calcite; p0072).
Furthermore, the recited limitation “results in the water having reduced calcium, and wherein the mixing of the water and the additive further results in the solid comprising calcite” is directed toward intended results from the practice of the claimed inventive method. Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. A “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003); MPEP §2111.04). Where a reference discloses the terms of the recited method steps, and such steps necessarily result in the desired and recited effect, the fact that the reference does not describe the recited effect in haec verba is of no significance because the reference meets the claim under the doctrine of inherency.
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.
Claim(s) 8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over GRADIANT (US 2016/0229705 A1), as applied to Claim 1 above, and further in view of WEBB et al. (US 2016/0063402 A1).
Regarding Claims 8 and 12, GRADIANT anticipates the method of Claim 1. GRADIANT further discloses the ion-removal apparatus produces at least two ion-diminished streams comprising different concentrations of at least two scale-forming ions (i.e., testing the solid at the surface to identify a chemistry composition of the solid; p0073) and further that the resultant ion-diminished streams have smaller concentrations of scale-forming ions (i.e., testing the enhanced water at the surface to identify… the amount of the solid-generating component in the enhanced water; p0089). GRADIANT also discloses that the ion-removal apparatus is further connected to an optional pH adjustment apparatus (i.e., testing the enhanced water at the surface to identify the pH level of the enhanced water; p0093, p0110). GRADIANT is deficient in explicitly disclosing “evaluating results of testing the enhanced water against expected results; and adjusting at least one model when the results of the testing substantially deviate from the expected results” (Claim 8) or “evaluating the chemistry composition of the solids against expected results” (Claim 12).
WEBB discloses a method for managing oilfield water (abstract) by utilizing a model based on historical oilfield water production data to predict water usage and water production for an oilfield well (p0035). The model is built/trained on details related to water production, water quality, etc. and is referenced by WEBB broadly as “water management data” (p0061). A trained model is fed new water management data such that the model can generate alerts in response to detecting changes (p0079); the model provides users with estimations and predictions related to water management and provides the ability to estimate and monitor water use and production and to alert users when water use and production differs significantly from model estimates (p0080). These models further rely on historical water production values to interpolate and predict expected results to help inform general drilling operations decisions for oilwell operators (p0094). Advantageously, such a trained model can be utilized to develop efficient water management (p0005) to enhance operational efficiency (p0007). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize predictive trained models as taught by WEBB to assay/test enhanced water and determine if any adjustments to wellsite operations would be needed based on any deviations from model predictions for the method of enhancing water chemistry disclosed by GRADIANT.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over GRADIANT (US 2016/0229705 A1), as applied to Claim 1 above, and further in view of WANG et al. (“Scaling Control for High Temperature and Pressure Oil Production”, Chapter 5, Mineral Scales in Biological and Industrial Systems, ed. Z. Amjad, Boca Raton, Florida, CRC Press, 2013; provided by Applicant).
Regarding Claim 9, GRADIANT anticipates the method of Claim 1. GRADIANT is deficient in explicitly disclosing “wherein the enhanced water is tested at the surface under subsurface conditions”.
WANG discloses the importance of scale prediction for extremely high temperature and pressure (HTHP) conditions associated with deepwater oilwell environments (§5.1, par. 1). Methods are disclosed for measuring/testing scale formation and inhibition under HTHP conditions for various scale-inhibiting solutions (§5.2.2.2) as well as for when scale-inhibiting solutions are in contact with core material (§5.2.2.3.2). Such measurements advantageously aid in determining the behavior/thermal stability of scale-inhibiting solutions under subterranean conditions expected in subsurface wellbores and thus addresses a long-standing unmet need in the field of oil and gas production (§5.1, par. 2-3). Thus, as taught by WANG, the testing of produced water treated by scale-inhibitors under subsurface conditions would have rendered the limitation “wherein the enhanced water is tested at the surface under subsurface conditions” obvious because a particular known technique was recognized as part of the capabilities of one of ordinary skill in the art for the method disclosed by GRADIANT (MPEP §2143).
Regarding Claim 10, GRADIANT anticipates the method of Claim 1. GRADIANT is deficient in explicitly disclosing “wherein the enhanced water is tested at the surface by interacting the enhanced water with formation water and rock found in the subterranean formation”.
WANG discloses the importance of scale prediction for extremely high temperature and pressure (HTHP) conditions associated with deepwater oilwell environments (§5.1, par. 1). Methods are disclosed for measuring/testing scale formation and inhibition under HTHP conditions for various scale-inhibiting solutions (§5.2.2.2) as well as for when scale-inhibiting solutions are in contact with core material and fluids simulating subterranean water (§5.2.2.3.2). Such measurements advantageously aid in determining the behavior/thermal stability of scale-inhibiting solutions under subterranean conditions expected in subsurface wellbores and thus addresses a long-standing unmet need in the field of oil and gas production (§5.1, par. 2-3). Thus, as taught by WANG, the testing of produced water treated by scale-inhibitors with core material would have rendered the limitation “wherein the enhanced water is tested at the surface by interacting the enhanced water with formation water and rock found in the subterranean formation” obvious because a particular known technique was recognized as part of the capabilities of one of ordinary skill in the art for the method disclosed by GRADIANT (MPEP §2143).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over GRADIANT (US 2016/0229705 A1).
Regarding Claim 13, GRADIANT anticipates the method of Claim 1. GRADIANT further discloses that the ion-removal apparatus produces at least two ion-diminished streams comprising different concentrations of at least two scale-forming ions (p0073) and further that the resultant ion-diminished streams have smaller concentrations of scale-forming ions (i.e., testing the enhanced water at the surface to identify… the amount of the solid-generating component in the enhanced water; p0089). GRADIANT also discloses that the ion-removal apparatus is further connected to an optional pH adjustment apparatus (i.e., testing the enhanced water at the surface to identify the pH level of the enhanced water; p0093, p0110). GRADIANT is deficient in explicitly disclosing “identifying a type and an amount of an additional additive based on identifying the pH level and the amount of the solid-generating component in the enhanced water; and mixing, at the surface, the enhanced water and the additional additive to generate a second solid and a second enhanced water, wherein the second solid comprises at least some of the solid-generating components of the enhanced water”.
Although GRADIANT is deficient in explicitly disclosing treating enhanced water with an additional additive to generate a second solid and a second enhanced water, GRADIANT does also indicate their water treatment systems and methods can be duplicated, i.e., multiple ion-removal apparatuses can be used (p0158) and different ion removal compositions can be used to precipitate at least one scale-forming ion (p0082). As such, the instantly claimed steps are interpreted as duplicating the same steps as those listed in Claim 1 but for enhanced water as the influent water. One of ordinary skill in the art upon initially treating produced water from a wellsite with solid-generating components and finding that the resultant enhanced water requires further treatment with additional solid-generating components would find it obvious to do so using GRADIANT’s system and method with the expected result of reducing the amount of solids in the resultant water. The mere duplication of parts or process steps has no patentable significance unless a new and unexpected result is produced (In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); MPEP §2144.04).
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 RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm 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, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1777
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