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
The present application claims priority to several applications, as noted in on the first page of the as-originally filed specification. It is noted that there is a typographical error regarding “U.S. Provisional Application No. 63/838,195, filed April 24, 2019”, which should be “U.S. Provisional Application No. 62/838,195, filed April 24, 2019”.
The earliest priority for the claimed limitation “a carbon dioxide nanobubble injection system, configured to inject carbon dioxide in nanobubble form into the fluid stream prior to the fluid reaching the fluid injection or disposal well” is “U.S. Pat. Application No. 17/181,867, filed Feb. 22, 2021, which claims benefit of and priority to U.S. Provisional Application No. 20 62/978,893, filed Feb. 20, 2020”.
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 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 1 recites “an ozone injection system comprising a source of ozone or ozone-oxygen mixture … wherein the ozone gas or ozone-oxygen mixture gas is injected as nano-bubbles or micro-bubbles sized ….” Claim 1 is deemed indefinite because it is unclear what structural element and/or device of the claimed ozone injection system achieves nano-bubbles or micro-bubbles. The claimed “carbon dioxide nanobubble injection system” limitation is deemed indefinite for similar reasoning.
Claim 1 recites “one or more fluid treatment tanks”. Claim 1 is deemed indefinite because it is unclear how there can be a plurality of “tanks” when there is only “one” tank. The claimed “one or more downstream pipes”, and “one or more upstream pipes” are deemed indefinite for similar reasoning. Claims 4-6 are is deemed indefinite for similar reasoning.
Claims 2-11 are also rejected by virtue of the claim dependency.
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 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.
Rejections based on US 122 in view of WO 492
Claims 1-7 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over US PUB 2019/0218122 A1 (hereinafter US 122) in view of WO 2019/112492 A1 (hereinafter WO 492).
Regarding claim 1, US 122 discloses a fluid treatment system configured to treat a fluid stream (see US 122, claim 1, figures 1-3 & 11-18 and paragraphs 0004-007 & 0016-0021).
Statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
US 122 discloses a fluid injection or disposal well (see US 122 claims 1& 14; figures 1-3, 16, 17 and paragraph 0006).
US 122 discloses one or more fluid treatment tanks, wherein the one or more fluid treatment tanks comprise at least one separator (see US 122 claims 1 & 14; figures 1-3 & 11-18 and paragraphs 0005, 0016-0020).
US 122 discloses one or more downstream pipes connecting the one or more fluid treatment tanks with the fluid injection or disposal well (see US 122 abstract; claim 1; figures 1-3 & 11-18 and paragraphs 0004, 0016, 0018).
US 122 discloses one or more upstream pipes in fluid connection with the one or more fluid treatment tanks and configured to deliver the fluid stream to the one or more fluid treatment tanks(see US 122 abstract; claim 1; figures 1-3 & 11-18; and paragraphs 0004, 0016, 0018).
US 122 discloses an ozone injection system comprising a source of ozone or ozone-oxygen mixture introduced into drawn-off fluid from the upstream pipes and configured to introduce the ozone or ozone-oxygen mixture gas into the into the fluid stream prior to the fluid reaching the fluid injection or disposal well (see US 122 abstract; claims 1-4; figures 1-3 & 11-13,15-17 and paragraphs 0004, 0018, 0024).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 122 is substantially identical to the claimed ozone injection system of the present application, and therefore, the structure of US 122 is presumed inherently capable of introducing the ozone or ozone-oxygen mixture gas into the into the fluid stream prior to the fluid reaching the fluid injection or disposal well.
US 122 discloses the ozone gas or ozone-oxygen mixture gas is injected as nano-bubbles or micro-bubbles sized so as to reduce friction in the fluid stream in the upstream and/or downstream pipes and/or fluid injection or disposal well (see US 122 claim 6 and figures 1-3 & 11-13,15-17).
The claimed invention is an apparatus, i.e. a fluid treatment system. “it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App & Inter. 1987) that states a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.”
Nevertheless, US 122 would necessarily achieve “so as to reduce friction in the fluid stream in the upstream and/or downstream pipes and/or fluid injection or disposal well”. The structural elements and materials of US 122 will necessarily achieve a reduction in the friction in the fluid stream in the upstream and/or downstream pipes and/or fluid injection or disposal well since the structural elements and materials of US 122 appear to be substantially identical to the claimed material and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed.
US 122 does not disclose a carbon dioxide nanobubble injection system, configured to inject carbon dioxide in nanobubble form into the fluid stream prior to the fluid reaching the fluid injection or disposal well.
WO 492 discloses using a micro nano bubble (MNB) system in a water desalination system as a scale build-up prevention method/reduce scale formation (see WO 492 page 1, lines 1-5 and page 4, lines 6-11 and figure 1). Further, the “presence of MNB' s in water changes a solubility of minerals and shifts a saturation point thereof“ (see WO 492 page 4, lines 22-24). The bubbles of the micro nano bubble (MNB) system are oxygen, ozone, carbon dioxide or a mixture thereof, having a diameter of less than 0.1mm (see WO 492, page 4, lines 6-11; page 5, lines 27-33; page 6, line 30 – page 7, line 31).
WO 492 is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. water treatment system and/or interactions between liquid and gas bubbles.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate micro nano bubble (MNB) system of WO 492 with bubbles of carbon dioxide into the system of US 122 in order to reduce scale formation.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate micro nano bubble (MNB) system of WO 492 with bubbles of carbon dioxide into the system of US 122 and reasonably expect the resulting apparatus to work as the prior art intended, i.e. inject carbon dioxide nanobubbles into fluid.
US 122 discloses that “[M]ost produced water is contaminated with inorganic salts, metals, organic compounds, and other materials, such as emulsifiers or other agents that may be injected for various types of enhanced recovery operations” (see US 122 paragraph [0003]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention incorporate micro nano bubble (MNB) system of WO 492 with bubbles of carbon dioxide or a mixture of carbon dioxide with oxygen and/or ozone, in the system of US 122 in order to assist with removing contaminants, including assisting with the removal of various minerals, including carbonate.
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 122 in view of WO 492 is substantially identical to the claimed carbon dioxide nanobubble injection system of the present application, and therefore, the structure of US 122 in view of WO 492 is presumed inherently capable of injecting carbon dioxide in nanobubble form into the fluid stream prior to the fluid reaching the fluid injection or disposal well
Motivation to combine the cited prior art is presented above. The motivation to combine the cited prior art may be different from Applicant’s motivation. 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).
Hence, US 122 in view of WO 492 is deemed to disclose a fluid treatment system configured to treat a fluid stream, comprising a fluid injection or disposal well; one or more fluid treatment tanks, wherein the one or more fluid treatment tanks comprise at least one separator; one or more downstream pipes connecting the one or more fluid treatment tanks with the fluid injection or disposal well; one or more upstream pipes in fluid connection with the one or more fluid treatment tanks and configured to deliver the fluid stream to the one or more fluid treatment tanks; an ozone injection system comprising a source of ozone or ozone-oxygen mixture introduced into drawn-off fluid from the upstream pipes and configured to introduce the ozone or ozone-oxygen mixture gas into the into the fluid stream prior to the fluid reaching the fluid injection or disposal well, wherein the ozone gas or ozone-oxygen mixture gas is injected as nano-bubbles or micro-bubbles sized so as to reduce friction in the fluid stream in the upstream and/or downstream pipes and/or fluid injection or disposal well; and a carbon dioxide nanobubble injection system, configured to inject carbon dioxide in nanobubble form into the fluid stream prior to the fluid reaching the fluid injection or disposal well.
Regarding claim 2, US 122 in view of WO 492 discloses the invention as discussed above in claim 1. Further, US 122 in view of WO 492 discloses a nitrogen nanobubble delivery system, configured to inject nitrogen or nitrogen-rich gas into the fluid stream (see US 122 figures 16-18; claims 13-15; paragraphs 0005-0007, 0021 and 0027-0029).
Regarding claim 3, US 122 in view of WO 492 discloses the invention as discussed above in claim 1. Further, US 122 in view of WO 492 discloses the ozone injection system injects the ozone gas or ozone-oxygen mixture gas upstream of the one or more fluid treatment tanks (see rejection of claim 1; see US 122 figures 1-3 & 11-18).
Regarding claim 4 , US 122 in view of WO 492 discloses the invention as discussed above in claim 1. Further, US 122 in view of WO 492 disclose the ozone injection system injects a dose rate of ozone gas or ozone-oxygen mixture gas that varies dynamically as the quality of the fluid stream changes based upon continuous monitoring of the fluid stream quality based on levels of one or more contaminants see also US 122 paragraphs [0004] &[0018]).
Regarding claim 5 , US 122 in view of WO 492 discloses the invention as discussed above in claim 1. Further, US 122 in view of WO 492 disclose the ozone injection system is contained in whole or in part in one or more moveable containers or trailers (see US 122 abstract, claims second 8-10 and paragraph [0022], [0023], & [0027] and figure 4-10).
Regarding claim 6 , US 122 in view of WO 492 discloses the invention as discussed above in claim 1. Further, US 122 in view of WO 492 disclose the carbon dioxide nanobubble injection system is contained in whole or in part in one or more moveable containers or trailers (see rejection of claim 1; see US 122 abstract; figures 4-10 and paragraphs 0022, 0023, & 0027)
US 122 discloses that the treatment system as a wholly or partially is contained in mobile containers or trailers (see US 122 abstract ) and discloses forming at least one nano-bubble system in a moveable containers or trailers (see US 122 paragraph 0027).
Hence, the combination of US 122 in view of WO 492 renders obvious forming all parts of the system, including a carbon dioxide nanobubble injection system, in a one or more moveable containers or trailers.
Regarding claim 7 , US 122 in view of WO 492 discloses the invention as discussed above in claim 1. Further, US 122 in view of WO 492 disclose the fluid stream is produced water from oil or gas wells, or fracturing fluid for a hydrocarbon fracturing operation (see US 122 claims 11 and 12 and paragraphs [0003], [0016] & [0017]).
Regarding claim 9 , US 122 in view of WO 492 discloses the invention as discussed above in claim 1.
Further, US 122 in view of WO 492 does not disclose the carbon dioxide in nanobubble form is injected separate and downstream from the injected ozone gas or ozone-oxygen mixture gas.
It is noted that “carbon dioxide in nanobubble form” is not an element of the claimed apparatus. Further, the claimed system comprises “a source of ozone gas or ozone-oxygen mixture gas”. The claim is understood as being directed towards the location of the claimed carbon dioxide nanobubble injection system being downstream the claimed ozone injection system in the claimed system.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to locate the carbon dioxide nanobubble injection system being downstream the ozone injection system in the method and system of US 122 in view of WO 492 because the carbon dioxide nanobubble injection system will assist with the removal of scale, as disclosed in WO 492, and then the introduction of ozone/ozone-oxygen, as disclosed in US 122, will assist with removal of other contaminants, i.e. “ozone is consumed rapidly by bacteria, iron, sulfides and other reducers in the produced water stream” (see US 122 paragraph 0004), and/or because the carbon dioxide nanobubble injection system will assist with the removal of scale, as disclosed in WO 492, followed by the introduction of ozone-oxygen, as disclosed in US 122, will assist with “oxygen bubbles adhere to suspended matter” (see US 122 paragraph 0019).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to locate the carbon dioxide nanobubble injection system being downstream the ozone injection system in the method and system of US 122 in view of WO 492 because the combination of known elements was obvious to try. Choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.). Herein, there are only three potential locations, i.e. 1) the carbon dioxide nanobubble injection system is downstream the ozone injection system in the system, 2) the carbon dioxide nanobubble injection system is upstream the ozone injection system in the system or 3) the carbon dioxide nanobubble injection system is simultaneous with the ozone injection system in the system.
Regarding claim 10 , US 122 in view of WO 492 discloses the invention as discussed above in claim 1. Further, US 122 in view of WO 492 discloses the carbon dioxide nanobubble injection system is configured to supersaturate the fluid stream with carbon dioxide in nanobubble form (see rejection of claim 1).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 122 in view of WO 492 is substantially identical to the claimed carbon dioxide nanobubble injection system of the present application, and therefore, the structure of US 122 in view of WO 492 is presumed inherently capable of supersaturating the fluid stream with carbon dioxide in nanobubble form.
Regarding claim 11 , US 122 in view of WO 492 discloses the invention as discussed above in claim 10. Further, US 122 in view of WO 492 discloses the fluid stream supersaturated with carbon dioxide in nanobubble form is injected in the fluid injection or disposal well for subsurface carbon sequestration (see rejection of claim 1).
The claimed invention is an apparatus, i.e. a fluid treatment system. “it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App & Inter. 1987) that states a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.”
Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 122 in view of WO 492 as applied to claim 1 above, and further in view of “CLASS II UNDERGROUND INJECTION CONTROL (UIC) PEER REVIEW- SMALL PROGRAM” by Michel Paque, Executive Director GROUND WATER PROTECTION COUNCIL (https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=&cad=rja&uact=8&ved=2ahUKEwj9ieyD0YmTAxUjKFkFHQFYLzIQFnoECBoQAQ&url=https%3A%2F%2Fnebraskalegislature.gov%2Fpdf%2Freports%2Fcommittee%2Fnatural%2FClassIIUICPeerReviewQuestionnaire.pdf&usg=AOvVaw3KZOs81i5ZY2PVYw7G2ywM&opi=89978449 ) (published May 1, 2014) (retrieved on March 5, 2026) (hereinafter GWPC).
Regarding claim 8 , US 122 in view of WO 492 discloses the invention as discussed above in claim 1. Further, US 122 in view of WO 492 does not disclose the fluid injection or disposal well is a Class II well.
GWPC discloses “Class II injection wells are used primarily to inject fluids that are associated with oil and gas exploration and production (E&P) activities including drilling, stimulation (hydraulic fracturing), and production operations” (see GWPC page v). GWPC discloses “Produced water is generated 1) while drilling through saline water zones that naturally occur in the subsurface and overlie the target oil and gas reservoir(s), 2) after stimulation of oil or gas reservoirs by hydraulic fracturing during the flow back and swabbing processes, 3) during work-over operations, and 4) during day-to-day production operations. Long before hydraulic fracturing operations started in the 1940’s, the oil and gas industry generated large volumes of produced water that was capable of harming the environment if not properly managed” (see GWP page v). GWPC discloses Class II underground injection wells are “Wells used to dispose of fluids associated with the production of oil and natural gas” (see GWPC page vi/Table). GWPC discloses that in Oklahoma “Over 170,000 Class II injection wells have been operating over the past three decades” (see GWPC page iii).
GWPC is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. water treatment apparatus/well; production of oil and/or gas; and/or the treatment of produced water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 122 in view of WO 492 by incorporating a Class II injection well, as disclosed in GWPC, because US 122 in view of WO 492 discloses an injection/disposal well and GWPC provides guidance on a specific type of well, i.e. Class II, that is used to dispose of fluids associated with the production of oil and natural gas.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 122 in view of WO 492 by incorporating a Class II injection well, as disclosed in GWPC, because it would assist with the forming of the injection/disposal well of US 122 in view of WO 492.
Rejections based on US 122 in view of US 994
Claims 1-7 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over US PUB 2019/0218122 A1 (hereinafter US 122) in view of US 20130118994 A1 (hereinafter US 994).
Regarding claim 1, US 122 discloses a fluid treatment system configured to treat a fluid stream (see US 122, claim 1, figures 1-3 & 11-18 and paragraphs 0004-007 & 0016-0021).
Statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
US 122 discloses a fluid injection or disposal well (see US 122 claims 1& 14; figures 1-3, 16, 17 and paragraph 0006).
US 122 discloses one or more fluid treatment tanks, wherein the one or more fluid treatment tanks comprise at least one separator (see US 122 claims 1 & 14; figures 1-3 & 11-18 and paragraphs 0005, 0016-0020).
US 122 discloses one or more downstream pipes connecting the one or more fluid treatment tanks with the fluid injection or disposal well (see US 122 abstract; claim 1; figures 1-3 & 11-18 and paragraphs 0004, 0016, 0018).
US 122 discloses one or more upstream pipes in fluid connection with the one or more fluid treatment tanks and configured to deliver the fluid stream to the one or more fluid treatment tanks(see US 122 abstract; claim 1; figures 1-3 & 11-18; and paragraphs 0004, 0016, 0018).
US 122 discloses an ozone injection system comprising a source of ozone or ozone-oxygen mixture introduced into drawn-off fluid from the upstream pipes and configured to introduce the ozone or ozone-oxygen mixture gas into the into the fluid stream prior to the fluid reaching the fluid injection or disposal well (see US 122 abstract; claims 1-4; figures 1-3 & 11-13,15-17 and paragraphs 0004, 0018, 0024).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 122 is substantially identical to the claimed ozone injection system of the present application, and therefore, the structure of US 122 is presumed inherently capable of introducing the ozone or ozone-oxygen mixture gas into the into the fluid stream prior to the fluid reaching the fluid injection or disposal well.
US 122 discloses the ozone gas or ozone-oxygen mixture gas is injected as nano-bubbles or micro-bubbles sized so as to reduce friction in the fluid stream in the upstream and/or downstream pipes and/or fluid injection or disposal well (see US 122 claim 6 and figures 1-3 & 11-13,15-17).
The claimed invention is an apparatus, i.e. a fluid treatment system. “it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App & Inter. 1987) that states a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.”
Nevertheless, US 122 would necessarily achieve “so as to reduce friction in the fluid stream in the upstream and/or downstream pipes and/or fluid injection or disposal well”. The structural elements and materials of US 122 will necessarily achieve a reduction in the friction in the fluid stream in the upstream and/or downstream pipes and/or fluid injection or disposal well since the structural elements and materials of US 122 appear to be substantially identical to the claimed material and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed.
US 122 does not disclose a carbon dioxide nanobubble injection system, configured to inject carbon dioxide in nanobubble form into the fluid stream prior to the fluid reaching the fluid injection or disposal well.
US 994 discloses a system and method for treating waste water and produced water associated with oil and gas wells, fracturing flow-back water and water or brine-based drilling fluids (see US 994 abstract; figures 1-3; claims 1, 9, 10 and 12 and paragraph 0034). US 994 discloses injecting micron bubbles of carbon dioxide and/or nitrogen into the contaminated water, which “Advantageously, the small bubble sizes prepared will enhance the oil recovery of the produced water, and remove the bulk of the hydrocarbons from the water stream” (see US 994 paragraph 0036). US 994 discloses “choice of gas used in the aeration process can vary depending on the characteristics of the contaminated produced water and the specific implementation of the purification system or method. For instance, where the contaminated produced water to be treated is found to have a higher than circumneutral pH, varying amounts of carbon dioxide may be used in the aeration process, resulting in a lowering of the pH of the contaminated produced water to be treated” (see US 994 paragraph 0037; see also US 994 paragraphs 0059 and 0068 and figures 2 & 3). In example 1, US 994 discloses
oxidation system comprises at least an initial oxidation tank (30) into which an appropriate gas (32) oxidation agent is diffused or injected by use of an aeration system (16). This gas (32) may be ozone, ambient air, enriched oxygen, carbon dioxide, or any other suitable oxidation agent as dictated to a person of skill in light of the composition of the fluid stream. In addition to the removal of hydrocarbons, this oxidation step will serve to oxidize any metals within the fluid stream that will react with ozone, including but not limited to iron (Fe), barium (Ba), strontium (Sr), and a number of other heavy metals. Optionally, the fluid stream is re-circulated (34) continuously through the initial oxidation tank (30) to increase the efficiency and effectiveness of the oxidation process.
(see US 994 paragraph 0061).
US 994 is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. method and system of treating produced water from oil and gas production operations, an oxidation system for treating water, and/or bubble & aeration system to treat produced water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 122 to incorporate a carbon dioxide injection system (diffused or injected by use of an aeration system) along with nitrogen or along with ozone and/or oxygen, as disclosed in US 994, because it would assist with the treatment of produced water and/or because it would assist with oil recovery and/or because it would assist with treating produced water having a higher than circumneutral pH.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 122 to substitute a carbon dioxide injection system (diffused or injected by use of an aeration system) with nitrogen, as disclosed in US 994, because the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). This substitution would yield the predictable result of treating produced water.
Regarding claims 2-7, 10 and 11, US 122 in view of US 994. discloses the invention as discussed above in claim 1. Further, US 122 in view of US 994 discloses claims 2-7 and 9-11 for at least the same reasons as presented above.
Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 122 in view of US 994as applied to claim 1 above, and further in view of “CLASS II UNDERGROUND INJECTION CONTROL (UIC) PEER REVIEW- SMALL PROGRAM” by Michel Paque, Executive Director GROUND WATER PROTECTION COUNCIL (https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=&cad=rja&uact=8&ved=2ahUKEwj9ieyD0YmTAxUjKFkFHQFYLzIQFnoECBoQAQ&url=https%3A%2F%2Fnebraskalegislature.gov%2Fpdf%2Freports%2Fcommittee%2Fnatural%2FClassIIUICPeerReviewQuestionnaire.pdf&usg=AOvVaw3KZOs81i5ZY2PVYw7G2ywM&opi=89978449 ) (published May 1, 2014) (retrieved on March 5, 2026) (hereinafter GWPC).
Regarding claim 8 , US 122 in view of US 994 discloses the invention as discussed above in claim 1. Further, US 122 in view of US 994 does not disclose the fluid injection or disposal well is a Class II well.
GWPC discloses “Class II injection wells are used primarily to inject fluids that are associated with oil and gas exploration and production (E&P) activities including drilling, stimulation (hydraulic fracturing), and production operations” (see GWPC page v). GWPC discloses “Produced water is generated 1) while drilling through saline water zones that naturally occur in the subsurface and overlie the target oil and gas reservoir(s), 2) after stimulation of oil or gas reservoirs by hydraulic fracturing during the flow back and swabbing processes, 3) during work-over operations, and 4) during day-to-day production operations. Long before hydraulic fracturing operations started in the 1940’s, the oil and gas industry generated large volumes of produced water that was capable of harming the environment if not properly managed” (see GWP page v). GWPC discloses Class II underground injection wells are “Wells used to dispose of fluids associated with the production of oil and natural gas” (see GWPC page vi/Table). GWPC discloses that in Oklahoma “Over 170,000 Class II injection wells have been operating over the past three decades” (see GWPC page iii).
GWPC is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. water treatment apparatus/well; production of oil and/or gas; and/or the treatment of produced water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 122 in view of US 994 by incorporating a Class II injection well, as disclosed in GWPC, because US 122 in view of US 994 discloses an injection/disposal well and GWPC provides guidance on a specific type of well, i.e. Class II, that is used to dispose of fluids associated with the production of oil and natural gas.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 122 in view of US 994 by incorporating a Class II injection well, as disclosed in GWPC, because it would assist with the forming of the injection/disposal well of US 122 in view of WO 492.
Related Prior Art
Prior art made of record and not relied upon is considered pertinent to applicants’ disclosure:
Xue, Z., 2009. Carbon microbubbles sequestration: a novel technology for stable underground emplacement of greenhouse gases into wide variety of saline aquifers, fractured rocks and tight reservoirs. Energy Procedia, 1(1), pp.3655-3662 (hereinafter Xue).
Xue discloses “carbon (CO2) microbubbles sequestration can bring the deep reduction of greenhouse gas emission into reality around the world. The atomized foams of CO2 gas, CO2 supercritical fluid or CO2 liquid are dispersed deep into tiny pores of wide variety of underground rocks for virtually permanent storage” (see Xue abstract). Xue discloses that “carbon microbubbles of diameters less than several 10 micrometers tend to shrink and quickly to solve into water” and that a “mixture of the CO2 microbubbles and water is injected into tiny pore spaces of underground rocks through the wall of deep borehole” (see Xue page 3657/section 3; see also Xue figure 1).
Other Applicable Prior Art
All other art cited not detailed above in a rejection is considered relevant to at least some portion or feature of the current application and is cited for possible future use for reference. Applicant may find it useful to be familiar with all cited art for possible future rejections or discussion.
Conclusion
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/BERNADETTE KAREN MCGANN/Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773