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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Applicant's submission filed on 12/02/2025 has been entered.
Election/Restrictions
Newly submitted claims 22 and 23 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 22 and 23 includes limitations that have been previously restricted and non-elected.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits.
Accordingly, claims 22 and 23 have been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
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 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.
Claims 11, 12, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Gunawan et al. (US 2015/0299556 A1) ('556 herein - previously) and further in view of Roetzel et al. (US 2013/0269735 A1) (“Roetzel” herein)
(Claims contain only selected species)
Claim 11
‘556 discloses a method for enhancing oil recover from an oil-bearing formation, the method comprising introducing an acid and a glycolipid biosurfactant composition into the oil-bearing formation, or into an oil well or wellbore associated with the oil- bearing formation, wherein the acid comprises 1% to 20% v/v of hydrochloric acid; and wherein the glycolipid biosurfactant comprises a sophorolipid, or a mixture of sophorolipid and rhammolipid. [0012-0015, 0036, 0043,0047-0048, Tables VII - XI]
‘556 however does not explicitly disclose a purity of the acid is at least 80 %.
Roetzel teaches the above limitation (See paragraphs 0444 & 0317-0320→ Roetzel teaches this limitation in that he acid A may be a moderate to strong acid such as a mineral acid, for example a strong mineral acid such as sulfuric acid or a mineral acid such as hydrochloric acid, nitric acid, or boric acid. In an example which is not limiting of embodiments, the sulfuric acid A may have the following properties (all numbers are approximate): concentration of 98%, pH -1.5, density of 15.371 pounds per gallon, specific gravity of 1.8437, and viscosity that is similar to honey at cooler temperatures. The acid A storage tank may be a 500 gallon storage tank. 12%.times.3500=420 pounds=1 gal/16 pounds X=26.25 gallons per batch 500/26.25=19 batches [0319] desired 1-batch/10 minutes=190 minutes=3 hours of operation The tank should be protected from water. Acid pumps may need a backup pump or quick change out from the wear of the acid. The acid pump may be a centrifugal pump that is 5 HP 3 phase, mounted on the main mixer skid, has a check valve, ball valve and solenoid, has a flow rate of 60 gallons per minute, and an air pressure transport limit under 40 psi. The acid feed equipment may have 2 inch all Teflon lined piping and mag flow meter. In other embodiments, acid may feed directly from a full transport trailer. Viscosity of the acid may vary dramatically with temperature. With a flow meter, the liquid must be heated in conditions where the acid thickens. Temperature may greatly accelerate the corrosive nature of the acid. The purest acid is desirable for feeding into the mixer to allow the reaction in the mixer to work and prevent corrosion.) for the purpose of having the purest acid is desirable for feeding into the mixer to allow the reaction in the mixer to work and prevent corrosion. [00320]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify ‘556 with the above limitation, as taught by Roetzel, in order to prevent corrosion.
Since ‘556 teaches the same composition comprising an acid such as hydrochloric acid and a sophorolipid or a mixture of sophorolipd and rhammolipid, it would enhance oil recovery by dissolving scale deposits in the oil formation.
"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 disc loses 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 Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 12
'556 discloses the method of claim 11, wherein the oil's flow from the oil- bearing formation is stimulated. [0043]
Claim 20
'556 discloses the method of claim 11, wherein the acid and the glycolipid biosurfactant are applied simultaneously as a pre-mixed formulation. [0040-0041]
Claim 21
'556 discloses the method of claim 11, wherein the acid and the glycolipid biosurfactant are applied separately. [0042]
Claims 11, 12, 20, and 21 /are rejected under 35 U.S.C. 103 as being unpatentable over Gunawan et al. (US 2016/0237334 A1) ("Gunawan' herein- cited previously), Gunawan et al. (US 2015/0299556 A1) ("556 herein - cited previously) and further in view of Roetzel.
(Claims contain only selected species)
Claim 11
Gunawan discloses a method for enhancing oil recover from an oil-bearing formation, the method comprising introducing an acid and a glycolipid biosurfactant composition into the oil-bearing formation, or into an oil well or wellbore associated with the oil- bearing formation, wherein the acid comprises 1% to 20% v/v of hydrochloric acid; and wherein the glycolipid biosurfactant [0019-0022, 0037-0038, 0040, 0048, Tables IV - V]
Gunawan however does not explicitly disclose the glycolipid biosurfactant comprises a sophorolipid, or a mixture of sophorolipid and rhammolipid.. '556 teaches the above limitation (See paragraph 011 '556 teaches this limitation in that a method of inhibiting corrosion during a well treatment operation is provided wherein a corrosive inhibiting effective amount of a sophorolipid or mannosylerythritol lipid or a combination thereof is introduced into a well.) for the purpose of being effective in the treatment of wells for enhancement of production of the well such as well stimulation processes like matrix acid stimulation and acid fracturing, acid tunneling, scale treatment, coiled tubing application, or damage removal. [0043]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Gunawan, as taught by '556, in order to be effective in the treatment of wells for enhancement of production of the well such as well stimulation processes like matrixacid stimulation and acid fracturing, acid tunneling, scale treatment, coiled tubing application, or damage removal. [0043]
Gunawan however does not explicitly disclose a purity of the acid is at least
80 %.
Roetzel teaches the above limitation (See paragraphs 0444 & 0317-0320→ Roetzel teaches this limitation in that he acid A may be a moderate to strong acid such as a mineral acid, for example a strong mineral acid such as sulfuric acid or a mineral acid such as hydrochloric acid, nitric acid, or boric acid. In an example which is not limiting of embodiments, the sulfuric acid A may have the following properties (all numbers are approximate): concentration of 98%, pH -1.5, density of 15.371 pounds per gallon, specific gravity of 1.8437, and viscosity that is similar to honey at cooler temperatures. The acid A storage tank may be a 500 gallon storage tank. 12%.times.3500=420 pounds=1 gal/16 pounds X=26.25 gallons per batch 500/26.25=19 batches [0319] desired 1-batch/10 minutes=190 minutes=3 hours of operation The tank should be protected from water. Acid pumps may need a backup pump or quick change out from the wear of the acid. The acid pump may be a centrifugal pump that is 5 HP 3 phase, mounted on the main mixer skid, has a check valve, ball valve and solenoid, has a flow rate of 60 gallons per minute, and an air pressure transport limit under 40 psi. The acid feed equipment may have 2 inch all Teflon lined piping and mag flow meter. In other embodiments, acid may feed directly from a full transport trailer. Viscosity of the acid may vary dramatically with temperature. With a flow meter, the liquid must be heated in conditions where the acid thickens. Temperature may greatly accelerate the corrosive nature of the acid. The purest acid is desirable for feeding into the mixer to allow the reaction in the mixer to work and prevent corrosion.) for the purpose of having the purest acid is desirable for feeding into the mixer to allow the reaction in the mixer to work and prevent corrosion. [00320]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Gunawan with the above limitation, as taught by Roetzel, in order to prevent corrosion.
Since Gunawan discloses the same composition comprising an acid such
as hydrochloric acid and a sophorolipid or a mixture of sophorolipd and rhammolipid, it
would enhance oil recovery by dissolving scale deposits in the oil formation.
"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 disc loses
and /or claims are necessarily present. See MPEP 2112.01 (1), 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
Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 12
Gunawan discloses the method of claim 11, wherein the oil's flow from the oil-
bearing formation is stimulated. [0040]
Claim 20
Gunawan discloses the method of claim 11, wherein the acid and the
glycolipid biosurfactant are applied simultaneously as a pre-mixed formulation. [0037-
0038]
Claim 21
Gunawan discloses the method of claim 11, wherein the acid and the
glycolipid biosurfactant are applied separately. [0039]
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over
Gunawan,' 556, Roetzel, as applied to claim 11, and in further view of Applicant's Admitted Prior Art (Admission herein- cited previously).
Claim 13
Gunawan discloses the method of claim 11. Gunawan however does not
explicitly disclose wherein paraffin deposits that have plugged rock pore throats
in the oil-bearing formation are dissolved or dispersed.
Admissions teach the above limitation (See Background -1ˢᵗ - 3ʳᵈ para. →
Admission teaches this limitation in that One of the most common issues leading to
structural failure and production inefficiency within these facilities is the accumulation of deposits in the formation and in and around the wellbore, tubing, flow lines, storage
tanks, separators, and other components of oil and gas production infrastructure. These problematic deposits can be formed by, for example, deposits of precipitated mineral salts, which can arise as a result of, for example, changes in the pressure, composition and/or temperature of the crude oil. Scales can result from precipitates of, for example, barium sulfate, calcium carbonate, strontium sulfate, calcium sulfate, sodium chloride, silicon dioxide, iron sulfide, iron oxides, iron carbonate, silicates, phosphates and oxides, or any of a number of compounds that are insoluble or mildly soluble in water. Once even a thin layer of scale deposits on a surface, such as in a formation pore throat, the rate of further accumulation drastically increases. Furthermore, as an oil well ages, deposits become more prevalent due to
changes in the environment within the formation and the well. (i.e. asphaltene) For
example, as reservoir pressure drops, oil production decreases, which in turn decreases flow rates. The slowing of flow rates can lead to the buildup of organic deposits in the pores of the formation, thus reducing hydrocarbon movement into the wellbore. This can lead to changes in temperature gradients and thus even greater precipitation of deposits, including scale. Thus, the effects are interrelated, cyclical and compounding, unless they are dealt with consistently.) for the purpose of having systematic inhibition or removal of deposits crucial to maintaining properly functioning oil and gas producing facilities. (3rd para.)
Accordingly, it would have been obvious to a person of ordinary skill in the art
before the effective filling date of the claimed invention to modify the method of
Gunawan, with the above limitation, as taught by Admission, in order to have a
systematic inhibition or removal of deposits crucial to maintaining properly functioning
oil and gas producing facilities. (8th para.)
Claim 14
Gunawan discloses the method of claim 11. Gunawan however does not explicitly disclose, wherein asphaltene agglomeration in the oil is prevented or reduced, or deposition of asphaltene on surfaces of equipment associated with the oil- bearing formation is prevented or reduced. (Same as Claim 13)
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over 556’, Roetzel, as applied to claim 11, and in further view of Applicant's Admitted Prior Art (Admission herein- cited previously).
Claim 13
‘556 discloses the method of claim 11. Gunawan however does not
explicitly disclose wherein paraffin deposits that have plugged rock pore throats
in the oil-bearing formation are dissolved or dispersed.
Admissions teach the above limitation (See Background -1ˢᵗ - 3ʳᵈ para. →
Admission teaches this limitation in that One of the most common issues leading to
structural failure and production inefficiency within these facilities is the accumulation of deposits in the formation and in and around the wellbore, tubing, flow lines, storage
tanks, separators, and other components of oil and gas production infrastructure. These problematic deposits can be formed by, for example, deposits of precipitated mineral salts, which can arise as a result of, for example, changes in the pressure, composition and/or temperature of the crude oil. Scales can result from precipitates of, for example, barium sulfate, calcium carbonate, strontium sulfate, calcium sulfate, sodium chloride, silicon dioxide, iron sulfide, iron oxides, iron carbonate, silicates, phosphates and oxides, or any of a number of compounds that are insoluble or mildly soluble in water. Once even a thin layer of scale deposits on a surface, such as in a formation pore throat, the rate of further accumulation drastically increases. Furthermore, as an oil well ages, deposits become more prevalent due to
changes in the environment within the formation and the well. (i.e. asphaltene) For
example, as reservoir pressure drops, oil production decreases, which in turn decreases flow rates. The slowing of flow rates can lead to the buildup of organic deposits in the pores of the formation, thus reducing hydrocarbon movement into the wellbore. This can lead to changes in temperature gradients and thus even greater precipitation of deposits, including scale. Thus, the effects are interrelated, cyclical and compounding, unless they are dealt with consistently.) for the purpose of having systematic inhibition or removal of deposits crucial to maintaining properly functioning oil and gas producing facilities. (3rd para.)
Accordingly, it would have been obvious to a person of ordinary skill in the art
before the effective filling date of the claimed invention to modify the method of
‘556, with the above limitation, as taught by Admission, in order to have a
systematic inhibition or removal of deposits crucial to maintaining properly functioning
oil and gas producing facilities. (8th para.)
Claim 14
‘556 discloses the method of claim 11. ‘556 however does not explicitly disclose, wherein asphaltene agglomeration in the oil is prevented or reduced, or deposition of asphaltene on surfaces of equipment associated with the oil- bearing formation is prevented or reduced. (Same as Claim 13)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 10, and 11 of copending Application No. 18/258,366 ('366 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application '366 claim 1 and independent claims are included into the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, filed on 12/02/2025, with respect to the rejection(s) of Claims 11, 12, 20, and 21 are rejected under 35 U.S.C. 102 as being anticipated by Gunawan et al. (US 2015/0299556 A1) and Claims 11, 12, 20, and 21 rejected under 35 U.S.C. 103 as being unpatentable over Gunawan et al. (US 2016/0237334 A1) and further in view of Gunawan et al. (US 2015/0299556 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth above.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 02/04/2026