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 .
This action is in response to the amendment and arguments filed 9/22/2025.
Claim Objections
Claims 3 and 9 are objected to because of the following informalities: The scope of the term “high” with respect to the TDS is not clear. Although totally dissolved solids compositions are known, it is not clear what “high” imparts to the claims. It is suggested that the term “high” be removed from the claims. Appropriate correction is required.
In claim 18, line 12, “to” should be inserted after “sufficient”.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-9 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.
Claim 7 teaches “similar polyethylene glycol polymers”. The scope of the term “similar” cannot be ascertained, since there are many ways in which polymers may be similar, such as viscosity, solubility, molecular weight, melting point, structure etc. Dependent claims fall herewith.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 teaches that the FR amount is at a level of 30% up to the salt saturation concentration, while parent claim 10 teaches that the FR amount is above the salt concentration. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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) 1-5, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2021/0301195).
With regard to claims 1-5 and 18, Li teaches a friction reducing composition comprising an aqueous base fluid, a dry particulate friction reducing polymer (0025 and example 2), and a friction reduction salt, which may be ammonium sulfate, at an effective amount to reduce hydration of the polymer (0024). Claim 18 depends from claim 1. The composition is used in treating a subterranean formation (see whole document and claim 1).
Li differs from the present invention of claim 1, in that it is not specifically indicated that the salt is utilized at a level above saturation (particularly at 20 degrees C for claim 2). Li however indicates that the salt can be present in an amount to inhibit hydration of the one or more friction reducing polymers. Given this teaching of Li, it would be obvious to one of ordinary skill in the art to utilize any concentration of the salt, including those above saturation, in order to inhibit hydration of the friction reducing polymer, with a reasonable expectation of success. Furthermore, Li exemplifies the use of ammonium sulfate at saturation levels (examples 6 and 7). Thus, a slight deviation of using the ammonium sulfate at levels about saturation would clearly be obvious to one of ordinary skill in the art, since utility of such similar amounts would be expected to give similar results (see MPEP 2144.05).
With respect to claim 3, Li teaches the water can be fresh water, salt water, brine or seawater (0022). Li teaches that the FR polymer may include mixtures of acrylamide copolymers, acrylates and other polymers such as AMP or AMPS. Li further teaches that the salt may be ammonium sulfate and other salts claimed (0024).
With respect to claim 4, a slight deviation of using the ammonium sulfate at levels about 0.25% above saturation would clearly be obvious to one of ordinary skill in the art, since utility of such similar amounts would be expected to give similar results (see MPEP 2144.05). Applicant has not demonstrated any unexpected results for a 100% versus 100.25% levels of FR salt. Ammonium sulfate can be used by itself (examples), thus meeting at least about 95%. Furthermore, the polymer may have weights within those claimed (0026).
With respect to claim 5, the composition can contain guar gum (Example 2), which is water soluble.
With respect to claim 19, Li teaches that the composition is present in a treating fluid in an amount of 0.1 to 100 gpt ((0037).
With respect to claim 20, Li teaches that the composition has proppant in an amount of 0.05 to 12 ppg.
Claim(s) 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2021/0301195) as applied to claims 1-5, in view of Reddy (US 2015/0203742).
With respect to claim 6, Li teaches that the composition can contain a clay (0033), a fatty acid, which is an organic mono acid and one or more surfactants within the scope claimed (0039). Li teaches that surfactants may be added to enhance the viscosity of the system (0035). Li differs from the present composition in that it does not teach the use of polyethylene glycol in the composition. In the same field of endeavor, Reddy teaches a friction reducing composition for wells which contain friction reducing polymers (whole document). Reddy teaches that polyethylene glycol may be used as a viscosifier in the FR composition. It would thus be obvious to one of ordinary skill in the art to utilize the polyethylene glycol of Reddy in the composition of Li, given the teaching of Reddy that polyethylene glycol may be used to enhance the viscosity of FR polymer containing compositions. One of ordinary skill in the art would have a reasonable expectation of success of achieving enhanced viscosity in the composition of Li.
With respect to claim 7, Li teaches fatty acids, which generally have between 4 and 28 carbon atoms, thus rendering the 1 to 8 obvious to one of ordinary skill, since they overlap in scope.
Li teaches that the clays may include bentonite and phyllosilicate, wherein the clays may have a nano or microstructure (0033). Li in view of Reddy differs in that the use of PEG 200, 300, 400, 500 and “similar” PEG polymers are not specifically disclosed. Reddy teaches that polyethylene glycol may be used to viscosify the FR compositions. One of ordinary skill in the art would vary the size of the PEG polymers, in order to achieve the specific viscosity desired. Furthermore, the PEG 200-500 series of PEG polymers are the most common, and their utility would be obvious given the general teaching of polyethylene glycol by Reddy. Furthermore, the use of the term “similar” would render any polyethylene glycol obvious to use.
With respect to claim 8, the requirement for the acid, additive and surfactant are listed in the alternative. For the surfactant, this may be present in an amount of 0.01 to 10%, overlapping the 0.1 to 5% claimed, thus rendering the claimed range obvious (0036).
With respect to claim 9, Li teaches (f) the decrease in hydration rates of the polymer (0024). It is further noted that “under given downhole conditions” does not distinguish from Li, since the downhole conditions are not given.. For other properties listed, since the compositions are obvious over Li in view of Reddy, such compositions would obviously have similar properties.
Claim(s) 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2021/0301195).
With regard to claims 10 and 11, Li teaches a friction reducing composition comprising an aqueous base fluid, a dry particulate friction reducing polymer (0025 and example 2), and a friction reduction salt, which may be ammonium sulfate, at an effective amount to reduce hydration of the polymer (0024). Li exemplifies using ammonium sulfate up to the level of saturation (examples 6 and 7). Li differs from the present invention of claim 1, in that it is not specifically indicated that the salt is utilized at a level above saturation ( or at 20 degrees C, claim 11). Li however indicates that the salt can be present in an amount to inhibit hydration of the one or more friction reducing polymers. Given this teaching of Li, it would be obvious to one of ordinary skill in the art to utilize any concentration of the salt, including those above saturation, in order to inhibit hydration of the friction reducing polymer, with a reasonable expectation of success. Furthermore, Li exemplifies the use of ammonium sulfate at saturation levels (examples 6 and 7). Thus, a slight deviation of using the ammonium sulfate at levels about saturation would clearly be obvious to one of ordinary skill in the art, since utility of such similar amounts would be expected to give similar results (see MPEP 2144.05).
Furthermore, claim 11 teaches “up to a salt saturation concentration”, thus falling clearly within the scope of Li.
Li does not specifically teach using an acid to reduce or eliminate ammonia. Li however teaches that fatty acids may be used in an amount up to 10% by weight as a surfactant (0034 and 0036). It would be obvious to one of ordinary skill in that art to use the fatty acid of Li as a surfactant, and that the presence of fatty acids would react with ammonia, and at least reduce the amount of any ammonia present.
With respect to claim 12, Li teaches the water can be fresh water, salt water, brine or seawater (0022). Li teaches that the FR polymer may include mixtures of acrylamide copolymers, acrylates and other polymers such as AMP or AMPS. Li further teaches that the salt may be ammonium sulfate and other salts claimed (0024). The fatty acids of Li would generally comprise 4 to 28 carbon atoms, overlapping in scope and rendering the currently claimed 1 to 8 carbon atoms obvious to one of ordinary skill.
With respect to claim 13, Li exemplifies ammonium sulfate at saturation levels (examples 6 and 7), a slight deviation of using the ammonium sulfate at levels about 0.25% above saturation would clearly be obvious to one of ordinary skill in the art, since utility of such similar amounts would be expected to give similar results (see MPEP 2144.05). Applicant has not demonstrated any unexpected results for a 100% versus 100.25% levels of FR
Ammonium sulfate can be used by itself (examples), thus meeting at least about 95%. Furthermore, the polymer may have weights within those claimed (0026).
With respect to claim 14, the composition can contain guar gum (Example 2), which is water soluble.
Claim(s) 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2021/0301195) as applied to claims 10-14, in view of Reddy (US 2015/0203742).
With respect to claim 15, Li teaches that the composition can contain a clay (0033), and one or more surfactants within the scope claimed (0039). Li teaches that surfactants may be added to enhance the viscosity of the system (0035). Li differs from the present composition in that it does not teach the use of polyethylene glycol in the composition. In the same field of endeavor, Reddy teaches a friction reducing composition for wells which contain friction reducing polymers (whole document). Reddy teaches that polyethylene glycol may be used as a viscosifier in the FR composition. It would thus be obvious to one of ordinary skill in the art to utilize the polyethylene glycol of Reddy in the composition of Li, given the teaching of Reddy that polyethylene glycol may be used to enhance the viscosity of FR polymer containing compositions. One of ordinary skill in the art would have a reasonable expectation of success of achieving enhanced viscosity in the composition of Li.
With respect to claim 16, the requirement for the additive and surfactant are listed in the alternative. For the surfactant, this may be present in an amount of 0.01 to 10%, overlapping the 0.1 to 5% claimed, thus rendering the claimed range obvious (0036).
With respect to claim 17, Li teaches (f) the decrease in hydration rates of the polymer (0024). It is further noted that “under given downhole conditions” does not distinguish from Li, since the downhole conditions are not given. For other properties listed, since the compositions are obvious over Li in view of Reddy, such compositions would obviously have similar properties.
Response to Amendment
Applicant’s arguments have been considered but are only partially persuasive. Applicants’ argument is persuasive with respect to the rejection under 35 USC 103 over Li, since Li does not anticipate the claims. Applicant has argued that using concentrations above saturated concentrations results improves the stability of water-based slurries during storage and transportation. Applicant has not provided any evidence to show that such was an unexpected result .Furthermore, applicant is claiming any level above saturation, thus 0.0001% above saturation or smaller is within the scope of what is claimed. There are no unexpected results to show that such small levels above saturation would render unexpected results. It is well established that claimed ranges which are close but do not overlap are obvious (see MPEP 2144.05 - Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) Since Li teaches the use of saturated salt compositions, which are thus adjacent in scope with the current claims, such renders the current claims obvious to one of ordinary skill in the art..
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 PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745