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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/04/2025 has been entered.
Response to Arguments
Applicant’s arguments, filed on 11/04/2025, with respect to the rejection(s) of Claims 1, 13, 14,15, and under 35 U.S.C. 102(a) (1) as being anticipated by Tippit et al. (US 2021/0301651 A1) and Claims 1, 4-5, 9-10, 13-22, and 26, are rejected under 35 U.S.C. as being unpatentable over Solovyeva and in further view of Tippit. 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 Therefore, the rejection has been withdrawn.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 below.
Claim Objections
Claim 1 is objected to because of the following informalities: The term “about” I the claim limitation does not provided an exactitude, but rather a contemplated variation.
Appropriate correction is required.
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.
Claims 1, 4, 10, 13-15, and 17-23 are rejected under 35 U.S.C. 103 as being unpatentable over Gizzatov et al. (US 2024/0035373 A1) (“Gizzatov” herein- provided by applicant)
Claim 1
Gizzatov discloses a method of tracing gas flow in a hydrocarbon reservoir, comprising:
introducing a tracer composition at a first location in the hydrocarbon reservoir, [0044-0047],
wherein the tracer composition comprises of a degradable polymer [0019-0020] and a detectable component; [0021-0023, 0025 ]
contacting the tracer composition with the hydrocarbon reservoir to hydrolyze the degradable polymer to yield a degraded tracer composition that is carried by the gas flow in the hydrocarbon reservoir at a second location; [047-0048]and
detecting the degraded tracer composition in a gas sample flowing through the gas pipeline collected at the second location in the hydrocarbon reservoir [0048], wherein the degraded tracer composition comprises a hydrolyzed polymer and the detectable component; wherein the detectable component comprises a colorant. [0047-0048]
Gizzatov disclose the claimed invention except for from about 98 wt.% to about 99.99 wt.% of a degradable polymer and from about 0.01 wt.% to about 2 wt.% of a detectable component. It would have been obvious to a one having ordinary skill in the art before the effective filling date of the claimed invention was to have the from about 98 wt.% to about 99.99 wt.% of a degradable polymer and from about 0.01 wt.% to about 2 wt.% of a detectable component, since it has been held that [W]here the general conditions of a claim are recited in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPA 233.
Gizzatov however does not explicitly disclose a gas pipeline.
Gizzatov discloses on ¶ [0048] The non-degradable portion may be selected based on size and composition so that it may be carried to the surface of the subterranean formation with a gaseous phase. Therefore, it would have been obvious and it is well-known in the art of producing hydrocarbons from the wellbore reservoir that a pipeline would be used in order to transport the gases produced to be processed.
Claim 4
Gizzatov discloses the method of claim 1, wherein the degradable polymer comprises a
thermoplastic polyester elastomer. [0024]
Claim 10.
Gizzatov discloses the method of claim 4, wherein the thermoplastic polyester elastomer comprises a block copolymer comprising a soft segment; wherein the soft segment comprises a polyether, a polyester, a polycarbonate, or any combination thereof. [0019]
Claim 13-15
Gizzatov discloses the method of claim 1, wherein the colorant is detectable in a visible spectrum, wherein the colorant comprises a pigment., wherein the colorant comprises a green pigment, a red pigment, or a yellow pigment. [0021-0023, 0025 ]
Claims 17-19
Gizzatov discloses the method of claim 1, wherein the tracer composition comprises particles having an average size from 5 mm to 50 mm, wherein the particles of the tracer composition comprise pellets or fibers, wherein the particles comprise fibers having an average length from 4 mm to 10 mm.[0027-0029]
Claims 20-21
Gizzatov discloses the method of claim 17, wherein the degraded tracer composition comprises particles having an average size from 500 nm to 2 mm, wherein the particles of the degraded tracer composition comprise a powder. [0027]
Claims 22-23
Gizzatov discloses the method of claim 1, wherein introducing the tracer composition comprises pumping a stimulation fluid comprising the tracer composition into the reservoir at the first location, wherein the stimulation fluid comprises an acid. [0036-0037, 0044-0047]
Claims 6-8, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Gizzatov, as applied to claim 1 above, and further in view of Ghebremeskel et
al. (US 2021/0380864 A1) (‘864 herein- cited previously).
Claims 11-12
Gizzatov discloses the method of claim 10. Gizzatov however does not explicitly
disclose wherein the soft segment comprises a polyether, and the polyether comprises
a polyoxyalkylene glycol, wherein the polyoxyalkylene glycol comprises
polytetramethylene glycol.
‘864 teaches the limitation above (See paragraphs 0157-0158 & 0166 →‘864
teaches this limitation in that The aliphatic polyester used herein can be obtained, for
example, by homopolymerization or copolymerization of an oxycarboxylic acid and/or a
lactone; by an esterification reaction of an aliphatic dicarboxylic acid and an aliphaticdiol; or by copolymerization of an aliphatic dicarboxylic acid, an aliphatic diol, and an oxycarboxylic acid and/or a lactone. Examples of an oxycarboxylic acid suitable for use for such purpose include aliphatic hydroxycarboxylic acids having from 2 to 8 carbons, such as lactic acid, glycolic acid, malic acid, hydroxypropionic acid, hydroxybutyric acid, hydroxypentanoic acid, hydroxycaproic acid, hydroxyheptanoic acid, hydroxyoctanoic acid, and the like. Examples of suitable lactone include lactones having from 3 to 10 carbons, such as propiolactone, butyrolactone, valerolactone, caprolactone, and the like. Examples of suitable aliphatic dicarboxylic acids include aliphatic saturated dicarboxylic acids having from 2 to 8 carbons such as oxalic acid, malonic acid, succinic acid, glutaric acid, and adipic acid; as well as aliphatic unsaturated dicarboxylic acids having from 4 to 8 carbons such as maleic acid, fumaric acid, and the like. Examples of suitable aliphatic diols include alkylene glycols having from 2 to 6 carbons such as ethylene glycol, propylene glycol, butanediol and hexanediol; as well as polyalkylene glycols having from 2 to 4 carbons such as polyethylene glycol, polypropylene glycol, polytetramethylene glycol, and the like. Preferred examples of an aliphatic polyester, suitable for use herein and obtainable as set forth above, include hydroxycarboxylic acid-based aliphatic polyesters such as polylactic acid (“PLA”) and polyglycolic acid (“PGA):; lactone-based aliphatic polyesters such as poly-6-caprolactone; diol- dicarboxylic acid-based aliphatic polyesters such as polyethylene succinate and polybutylene succinate; copolymers thereof, such as glycolic acid-lactic acid copolymers (“PGLA’); copolymers in which either one or both of lactic acid and glycolic acid are polymerized with itself/themselves and other hydroxy -acid-containing moieties; mixtures of any of the foregoing; and the like. Aliphatic polyesters that use combinations of aromatic components such as polyethylene adipate/terephthalate may also be used.) for the purpose of having the compositions have particulate compositions have an appropriate solubility profile for use in a number of fields, including in various subsurface production operations as such as a diverting agents and/or loss circulation materials. [0001]
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 Gizzatov, as taught by ‘864, in order to provide particulate compositions have an appropriate solubility profile for use in a number of fields, including in various subsurface production operations.
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 1,2,3,6,-23, 25 and 26 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-9, and 15-23 of copending Application No. 18/416,286 (‘286 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because limitations of the instant application independent claim including dependent claims are contained in the ‘359 application.
‘286 disclose the claimed invention except for from about 98 wt.% to about 99.99 wt.% of a degradable polymer and from about 0.01 wt.% to about 2 wt.% of a detectable component. It would have been obvious to a one having ordinary skill in the art before the effective filling date of the claimed invention was to have the from about 98 wt.% to about 99.99 wt.% of a degradable polymer and from about 0.01 wt.% to about 2 wt.% of a detectable component, since it has been held that [W]here the general conditions of a claim are recited in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPA 233.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
All the claims dependent of claim 1 are also rejected.
Allowable Subject Matter
Claims 6-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and there is no other rejection pending against the claims.
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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/SILVANA C RUNYAN/ Primary Examiner, Art Unit 3674
01/13/2026