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.
Election/Restrictions
Applicant’s election without traverse of Invention I, Claims 1-14, in the reply filed on 05 SEPTEMBER 2025 is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 05 SEPTEMBER 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 “a 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 Objections
Claim 11 is objected to because of the following informalities:
“wherein the mixing of the water and the additive reduces…”.
Claim 14 is objected to because of the following informalities:
“wherein the mixing of the water and the additive occurs…”; and
“and results in the water having reduced calcium; and the solid comprises .
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.
Claims 8, 10, and 12 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.
Regarding Claim 8, the limitations of “testing the enhanced water at the surface”, “evaluating results of testing the enhanced water against expected results”, and “adjusting at least one model…” are recited. It is unclear as to the nature of the “testing” step, i.e., Claim 1 recited testing water at the surface to identify pH and a type and amount of solid-generating component—however, instant Claim 8 only broadly requires “testing”. While by itself not indefinite, the remainder of the claim further requires “results of testing”, “expected results”, and “at least one model”, which are all purportedly derived from the step of “testing” the enhanced water. Such steps and limitations fail to particularly point out and distinctly claim the subject matter which the inventor considers as the invention—the lack of specificity renders the claim entirely ambiguous as to what properties or measurements are being considered—if at all—of the enhanced water, what “at least one model” is attempting to simulate, and how “expected results” are even determined, and therefore, indefinite.
Regarding Claim 10, there is insufficient antecedent basis for “the subterranean formation”.
Regarding Claim 12, the limitations of “testing the solid at the surface” and “evaluating results of testing the solid against historical data” are recited. It is unclear as to the nature of the “testing” step. While by itself not indefinite, the remainder of the claim further requires “evaluating results of testing” against “historical data”, which are all purportedly derived from the step of “testing” the solid. Such steps and limitations fail to particularly point out and distinctly claim the subject matter which the inventor considers as the invention—the lack of specificity renders the claim entirely ambiguous as to what properties or measurements are being considered of the solid and the nature of the “historical data” being referenced, and therefore, indefinite.
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 water treatment systems and methods 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 the contaminated saline water comprises produced water that often comprises relatively high concentrations of dissolved salts and minerals, scale-forming ions, and suspended solids (p0035). Scale-forming ions include multivalent cations, e.g., Ca2+ (p0071), and sparingly soluble salts, including calcium carbonate CaCO3 (p0072).
Briefly, an exemplary system comprises a saline water input stream 104 comprising the scale-forming ion and suspended solids, is flowed to a separation apparatus 202 to remove water-immiscible phases (e.g., oil); then, 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). As a result of this water treatment, purified product streams may be used for industrial uses and other applications, including as drilling fluid in oil and gas extractions (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 (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 (p0071). The ion-removal apparatus comprises 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 (p0082, p0086; FIG. 4). 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 (p0082).
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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 (p0087); each reaction tank stage includes the addition of an ion removal composition (p0086). It is further noted that the calcite is the most stable form of precipitated calcium carbonate.
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 Claim 8, GRADIANT anticipates the method of Claim 1. GRADIANT is deficient in explicitly disclosing “testing the enhanced water at the surface; 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”.
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 is deficient in explicitly disclosing “testing the enhanced water at the surface to identify the pH level of the enhanced water and the amount of a solid-generating component in the enhanced water; and 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, 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. 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
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