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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 9, 10 and 18-27 are rejected under 35 U.S.C. 103 as being unpatentable over Boul et al. (US 2015/0322328 – cited previously) in view of Al-Ebrahim et al. (SPE-182901-MS – cited and provided previously).
With respect to independent claim 1, Boul et al. discloses a method for controlling water production from a water-producing zone in a subterranean formation ([0014], [0035]; [0036]; [0062]), comprising:
identifying a source of produced water ([0014], [0035]; [0036]; [0062]);
pumping ([0040]-[0043]; [0045]; [0047]-[0049]) an alkaline ([0066], see evidence in Conclusion of non-final office action mailed 08/27/25 as to wherein the colloidal silica products disclosed by Boul et al. are indeed alkaline) suspension (col. 12, l. 37-41, wherein the pH of the silica sol is between about 8 and 12) of nanosilica particles ([0022]-[0026]) into a wellbore and into the water producing zone ([0018]);
pumping a formate salt solution ([0027]-[0028]) into the wellbore such that the formate salt solution contacts the alkaline suspension in the water-producing zone and produces a composition ([0018]), wherein the amount of formate salt is between about 0.001% and 10% ([0028]) and wherein the relative concentration of each component in the wellbore fluid and temperature of the formation affects the setting and hardening time of the sealant ([0034]); and
shutting in the wellbore for a duration of time sufficient for the composition to form a gel ([0038]) that is impermeable to fluid flow ([0036]).
Boul et al. discloses wherein a first fluid comprising the activator/formate salt solution is pumped into the subterranean formation and contacted with a second fluid that comprises the alkaline suspension of nanosilica so as to form a seal therein, wherein such a process may be repeated so that the first wellbore fluid is contacted with the second wellbore fluid in series at least twice ([0018]). The reference, however, is silent to explicitly stating wherein the alkaline suspension is pumped and after such, the formate salt solution is pumped so that the formate salt solution contacts the alkaline suspension as claimed. The Examiner notes, by repeating the pumping of the first wellbore fluid and contacting the latter pumped first wellbore fluid with the second fluid, it would appear formate salt solution of the first formate salt activator solution of Boul et al. that is pumped during the repetition of the series, i.e., second pumping thereof, would indeed contact the second placed alkaline nanosilica dispersion previously placed as part of the first pumped/placed series and thereby provide for contact of the alkaline suspension in the water-producing zone with a subsequently placed formate salt solution. Nevertheless, it would have been obvious to one having ordinary skill in the art to at least try first pumping the alkaline suspension of nanosilica and pumping a formate salt solution after such as instantly claimed, i.e., the reverse order of pumping by Boul et al., in order to yield the predictable result of providing for contact of the separately introduced components within the zone in which the formation of the seal is desired/intended so that the seal is not formed prematurely/within an unintended location. There are only three ways to place separately pumped components of a two component composition, component A followed by component B, component B followed by component A, or simultaneous pumping of component A and component B through separate conduits. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Furthermore, the Examiner notes, it has been held wherein the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) and the selection of any order of mixing ingredients is prima facie obvious In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Additionally, reversing the order of prior art process steps has been held obvious. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.) Since both the Boul et al. and the instant claims seek to form a gel that is impermeable to fluid flow by contact of an alkaline nanosilica suspension with a formate salt activator, it does not appear such would be a new or unexpected result attained by the order of pumping thereof.
Although silent to the specific amount of 25% by weight as instantly claimed, Boul et al. explicitly discloses wherein one of ordinary skill in the art would recognize the interrelatedness of the relative concentrations of each component in the wellbore fluids and temperature of the subterranean formation they are used to treat as having an effect on the setting and hardening time of the sealant ([0034]). Given Boul et al. indeed recognizes an amount of formate salt activator solution to employ that encompasses Applicant’s instantly disclosed range therefor and that no apparent unexpected results appear to be achieved by using the instantly claimed amount of 25% by weight specifically, it is the position of the Office that one having ordinary skill in the art would recognize an optimal amount of formate salt activator solution to employ in order to attain the desired hardening time of the sealant solution therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed 25% by weight of the formate salt solution as critical and it is unclear if any unexpected results are achieved by using such. Since the formate salt solution of Boul et al. is suggested as affecting the hardening time of the sealant within the water producing zone, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent thereof, and, as such, the determination of optimal amount of formate salt solution would be achievable through routine experimentation in the art.
Boul et al. discloses identifying a source of produced water ([0014], [0035]; [0036]; [0062]), as noted above. The reference, however, fails to disclose wherein a source of produced water is identified by measuring water at different locations in the wellbore using coil tubing in an under-balanced condition as claimed.
Al-Ebrahim et al. teaches methods of using coiled tubing in order to determine flow profile and zonal phase contribution so as to overcome production logging challenges in a horizontal/deviated, low pressure and high water cut well (Abstract Objectives/Scope); the coiled tubing is used in under-balanced conditions and measures produced water at different intervals so as to detect water entry point and provide a clear vision for where remedial action is necessary (Abstract Method, Procedures, Process; Conclusions).
It would have been obvious to one having ordinary skill in the art to try identifying the source of produced water by measuring water at different locations in the wellbore using a coiled tubing in an under-balanced condition as taught by Al-Ebrahim et al. when conducting the method of Boul et al. in a horizontal/deviated, low pressure and high water cut well in order to effectively determine the source of produced water therein so that a clear vision for where remedial action is necessary can be determined.
With respect to dependent claims 2 and 3, Boul et al. discloses wherein the formate sat solution includes salts of various ions, including formate, as well as chlorides and nitrates, and, further, alkali metals, along with any combination thereof; exemplary salts are further given with respect to the chlorides and nitrates to include sodium chloride, potassium chloride, sodium nitrate and potassium nitrate ([0027]). Although silent to the formate salt solution as including sodium formate specifically, as set forth by claim 2, and/or lithium or potassium formate, as set forth by claim 3, since the reference suggests alkali metal salts may be used in combination with formate salts, as well as notes sodium and potassium cations as exemplary alkali metal salts used in combination with anions that are disclosed as alternatives to formate, i.e., chloride and nitrate, it would have been obvious to one having ordinary skill in the art to try a formate anion with a sodium or potassium cation and thereby provide for an activator of sodium formate and/or potassium formate, as the activator when considering the teachings of Boul et al. in order to yield the predictable result of activating and thereby forming a gel in situ therewith. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Boul et al. identifies a finite number of predictable solutions for use as an activator for forming a gel with a nanosilica suspension, and, therefore, a person of ordinary skill has good reason to pursue such options when forming such a gel.
With respect to dependent claim 9, Boul et al. discloses pumping the alkaline suspension of the nanosilica particles into the water-producing zone; and pumping the formate salt solution into the water producing zone ([0018]). With regard to the particular order thereof, it is the position of the Office that such would be obvious for at least the reasons set forth above within the rejection of claim 1 with respect thereto.
With respect to dependent claim 10, Boul et al. discloses shutting in the wellbore for an amount of about 4-76 hours ([0038]), as well as wherein the temperature of the formation may be about 120oC or greater ([0033]). Although silent to shutting in the wellbore for about 16 hours at a temperature of 121oC as claimed, since the reference clearly discloses wherein shut-in is carried out for a sufficient time for the seal to form, wherein such lengths of time encompass the amount of time instantly claimed, as well as wherein the temperature may be a temperature as instantly claimed, since Boul et al. suggests the combination of alkaline suspension of nanosilica particles and formate salt solution activator as claimed, it would have been obvious to one having ordinary skill in the art to provide for a shut-in of the wellbore at a temperature of 121oC for about 16 hours in order to form the gel in situ therewith since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed shut in time and temperature as critical and it is unclear if any unexpected results are achieved by providing for such; since the method of Boul et al. considers a shut-in time based on the design temperature, and, further, provides for the formation of a gel during such a shut-in time using the same materials, it does not appear that such would be considered an unexpected result of providing for a shut in time at the temperature as claimed and therefore, the determination of the shut in time at such a temperature would be achievable through routine experimentation in the art.
With respect to dependent claims 18-20, Boul et al. discloses wherein the nanosilica particles in the alkaline suspension have an average particle diameter as claimed ([0022]).
With respect to dependent claims 21-24, Boul et al. discloses wherein the particles of nanosilica have an average diameter with a lower limit of about 1 nm to an upper limit of about 100 nm ([0022]), as well as wherein an average aspect ratio thereof is from about 1.5-10,000 ([0023]). Various shapes thereof are also disclosed ([0024]). Although silent to the specific surface area thereof, given the average particle diameters of Boul et al. overlap those instantly disclosed and claimed by Applicant as suitable for use in the instant invention (see instant specification [0025]), and lack of criticality for the specific surface area thereof, as exemplified by the extensiveness of the range therefor, it is the position of the Office that one having ordinary skill in the art would recognize the optimal specific surface area to provide for the nanosilica particles in the alkaline suspension in order to form the intended sealant therewith in the water-producing zone since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed specific surface areas of the nanoparticles as critical, as further exemplified by the extensiveness of the range therefor, and it is unclear if any unexpected results are achieved by providing for particles with such a surface area. Since the nanoparticles of Boul et al. are disclosed to have an average particle diameter overlapping that which is instantly disclosed as suitable by Applicant for use in the instant invention, as well as wherein such may have a variety of aspect ratios and/or shapes ([0023]-[0024]), so as to lead to the intended result of formation of a sealant from a gel formed therewith upon activation with a formate salt solution activator within a water-producing zone, as is instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for such nanosilica particles having a specific surface area as claimed, and, as such, the determination of optimal surface area therefor would be achievable through routine experimentation in the art.
With respect to dependent claims 25 and 26, Boul et al. discloses wherein the alkaline suspension of nanosilica particles comprises a weight percent thereof as claimed ([0026]).
With respect to dependent claim 27, Boul et al. discloses wherein the pH of the alkaline suspension is between about 9 and about 11 ([0066], see Table 1, SNOTEX ST-30 and evidence in Conclusion as cited in non-final office action mailed 08/27/25 wherein such has a pH within the range as claimed).
Claims 5, 6, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Boul et al. in view of Al-Ebrahim et al. as applied to claim 1, above, and further in view of Bataweel et al. (US 11,104,838 – cited previously).
Boul et al. in view of Al-Ebrahim et al. teaches the method as set forth above with respect to independent claim 1, wherein Boul et al. provides for placement of each of the activator solution and alkaline nanosilica suspension into the water producing zone ([0018]; [0035]-[0036]; [0062]). The reference further suggests wherein packers, bridge plugs and other wellbore isolation devices may be present ([0051]). Boul et al., however, is silent to explicitly stating wherein a zonal isolation device is placed above and/or below the water-producing zone prior to flowing the alkaline suspension of nanosilica particles, as well as wherein such is removed from above and/or below the zone after the formation of the gel as instantly claimed.
Bataweel et al. teaches methods for controlling unwanted water production from a water-producing zone in a subterranean formation (col. 5, l. 52-54; col. 16, l. 41-43; col. 19, l. 61-63), wherein a gel is formed from an alkaline nanosilica suspension and activator therein (abstract; col. 17, l. 39-53). The reference further suggests wherein in order to ensure that the composition flows into the formation that needs to be plugged, i.e., the water-carrying formation, and not other formations, a straddle packer, i.e., a packer that is above and below the zone, can be placed so as to isolate the zone. After the composition has been appropriately placed, the straddle packer can be removed (col. 20, l. 19-28). As such, it would have been obvious to one having ordinary skill in the art to try placing a zonal isolation device, such as a straddle packer, above/below the water-producing zone prior to pumping of the nanosilica and activator of Boul et al. and to remove such subsequent to the gelling thereof in the zone in order to ensure that the composition flows into the appropriate water-producing zone needing to be plugged and not other formations, such as those producing oil.
Response to Arguments
Applicant’s arguments with respect to the rejections of claims as unpatentable over Boul et al. in view of Al-Ebrahim et al. have been fully considered, but they are not persuasive.
Applicant asserts the present claims recite a method that includes first pumping an alkaline suspension of nanosilica particles into a wellbore and separately pumping a formate salt solution into the wellbore after the alkaline suspension of nanoparticles.
Although the Examiner agrees the claims require pumping of the formate salt solution separate from the alkaline suspension and after the alkaline suspension, the Examiner notes, the claims do not necessarily require the alkaline suspension be pumped first and prior to any and all formate solution. Rather, a formate solution is required to be pumped after the alkaline suspension. Since Boul et al. provides for pumping of a formate solution after the alkaline suspension when the cycle of pumping is repeated as is set forth by [0018], by pumping of the first wellbore fluid, i.e., formate solution, of the second/repeat cycle and contacting such with the second fluid, i.e., alkaline suspension pumped during the first cycle before repetition of the cycle has begun, the formate salt solution of the first formate salt activator solution of Boul et al. that is pumped during the repetition of the series, i.e., second pumping thereof, would indeed contact the second placed alkaline nanosilica dispersion previously placed as part of the first pumped/placed series and thereby provide for contact of the alkaline suspension in the water-producing zone with a subsequently placed formate salt solution in the manner by which Applicant instantly claims.
The Examiner acknowledges Applicant’s arguments pertaining to the activator presence in Boul et al. as 0.001-10% by weight while the instant claims have been amended to require 25% by weight, as well as Applicant’s comments pertaining to the example of the specification wherein the composition containing 25% sodium formate was able to gel at high temperature in 16 hours. Applicant asserts the compositions of Boul were tested at much lower temperatures and Boul was interested at sealants that could be used at low temperatures.
The Examiner notes, as presently written, independent claim 1 does not require gelling within a specific time frame and/or at a specific temperature; moreover, the example to which Applicant points to for providing for such a specific time frame and temperature also requires a specific amount of alkaline suspension which is also not required in independent claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, should Applicant consider the gel time at a particular temperature such as that provided for in the example to be an unexpected result, the Examiner notes, the claims must be commensurate in scope with such unexpected results as it has been held [W]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Furthermore, the Examiner notes, Boul et al. discloses shutting in the wellbore for an amount of about 4-76 hours ([0038]), as well as wherein the temperature of the formation may be about 120oC or greater ([0033]). The reference additionally suggests in [0033] wherein an interrelatedness of the relative concentrations of each component in the wellbore fluid described and the temperature of the formation affects the setting and hardening time of the sealant while further noting the concentration of the activator plays a role in setting time, wherein, for example, a decreased concentration ratio thereof may provide for a longer setting time. As such, Boul et al. appears to suggest a greater amount thereof may decrease setting time. Therefore, it is the position of the Office that Boul et al. indeed would suggest to one having ordinary skill in the art to consider the amount of activator to employ and optimize such so as to affect the setting time of the composition and, as such, the rejection is maintained for at least the reasons set forth in the rejection above.
Since Applicant has presented no further arguments with respect to the remaining limitations recited, the rejections thereof are maintained on the grounds of record.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
12/12/25