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 .
Election/Restrictions
Applicant’s election without traverse of Group I, species of claims 1-3, 5, and 8-19, in the reply filed on 07/17/2026 is acknowledged.
Claim Objections
Claims 8, 12-14, are 18 are objected to because of the following informalities:
The term “about” does not provide an exactitude, but rather a contemplated variation.
Appropriate correction is required.
Claim 11 is objected to because of the following informalities: The claim recites “..wherein the first salt comprises sodium nitrite …”in order to avoid 35 USC 112 2nd indefiniteness rejection. Appropriate correction is required.
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.
Claim 8 is 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 8 recites “.. 60°C or greater.” This is a range with unbounded upper limit, and, as such, it is unclear as to the extent of temperature Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claim 14 is 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 14 recites “.. to form the gelled fluid increases the viscosity of the gelled fluid by about 100% or more.” This is a range with unbounded upper limit, and, as such, it is unclear as to the extent of viscosity increase Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
The term “a high permeability zone”” in claim 16 is a relative term which renders the claim indefinite. The term “high permeability zone” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The 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 1-3, 5, 5-13, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over May et al. (US 2021/0095189 A1) (“May” herein) and further in view of Al-Nakhli et al (US 2021/0284899) (“”Al-Nakhli” herein)
(Claims contain only selected species)
Claims 1 and 3
May discloses a method comprising:
introducing a gellable fluid to a subterranean reservoir, the gellable fluid comprising a gellable starch dispersed in an aqueous fluid; [0028-0029, 0047, 0091]
a first salt and a second salt into the subterranean reservoir, the first salt being capable of undergoing an exothermic reaction with the second salt; [0037]
contacting the first salt with the second salt in the subterranean reservoir under conditions where the first salt and the second salt undergo the exothermic reaction [0037] and
heating the gellable fluid with heat produced from the exothermic reaction to form a gelled fluid comprising a gelled starch and having an increased viscosity. [0055-0056]
May however does not explicitly disclose the first salt is introduced to the subterranean reservoir in a first salt solution and the second salt is introduced to the subterranean reservoir in a second salt solution.
Al-Nakhli teaches the above limitation (See paragraphs 0065-0066 → Al-Nakhli teaches this limitation in that Aa exothermic reaction component, for example, optionally containing a nitrite ion and an ammonium ion, is applied either separately or together to wellbores or reservoirs, for example, in laterals. With concentric coiled tubing, two fluids of a thermochemical exothermic reaction component, for example, an ammonium ion containing fluid and a nitrite ion containing fluid, can be injected separately into a target wellbore or lateral and then combined to provide control over the placement of and reaction of exothermic chemicals.) for the purpose of providing control over the placement of and reaction of exothermic chemicals. [0066]
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 May, with the above limitation, as taught by Al-Nakhli, in order to provide control over the placement of and reaction of exothermic chemicals.
Claim 2.
May discloses the method of claim 1, wherein the gellable fluid is introduced to at least one blocking zone of the subterranean reservoir. [0056, 0088]
Claim 5.
May discloses the method of claim 1, wherein the subterranean reservoir has a temperature sufficient to initiate the exothermic reaction. [0058]
Claim 8.
May discloses the method of claim 1, wherein the exothermic reaction occurs at a temperature of about 60°C or greater. [0058]
Claim 9.
May discloses the method of claim 1, wherein the first salt comprises a nitrite anion and the second salt comprises an ammonium cation, the nitrite anion and the ammonium cation undergoing the exothermic reaction once the first salt and the second salt are contacted with one another in the subterranean reservoir. [0037]
Claim 10.
May discloses the method of claim 1, wherein the first salt comprises an alkali metal nitrite and the second salt comprises an ammonium halide.[0037]
Claim 11.
May discloses the method of claim 1, wherein first salt comprises sodium nitrite and the second salt comprises ammonium chloride. [0037]
Claims 12-13.
Since May teaches the same composition comprising a starch and an exothermic reaction from the contact of ammonium chloride and sodium nitrite that would form a gel fluid, it would form be a gelled fluid with a viscosity of about 10 cP to about 25 cP after heating, increasing the viscosity of the gelled fluid by about 100% or more relative to the gellable fluid.
"Products of identical chemical composition cannot have mutually exclusive properties”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 16.
May discloses the method of claim 15, wherein the at least one blocking zone comprises a high permeability zone within the subterranean reservoir. [0056, 0088]
Claim 17.
May discloses the method of claim 1, further comprising: producing hydrocarbons from the subterranean reservoir. [002, 0004, 0060]
Claim 18.
May discloses the method of claim 1, wherein the gellable starch has a concentration of about 0.1 wt.% to about 2.5 wt.% in the gellable fluid. [0028-0029]
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over May, Al-Nakhli, as applied to claim 1 above, and further in view of Chung et al. (US 4653585) (“Chung” herein)
Claim 15.
May discloses the method of claim . May however does not explicitly disclose, further comprising:
introducing an aqueous flooding fluid into the subterranean reservoir after heating the gellable fluid to form the gelled fluid, wherein the gelled fluid diverts the aqueous flooding fluid away from at least one blocking zone within the subterranean reservoir.
Chung teaches the above limitation (See col. 5 l. 45-48 → Chung teaches this limitation in that once in place in the more highly permeable regions, the gel controls subsequent flooding operations by diverting the flood liquid, usually water, to the less permeable or "tight" zones, increasing recovery from these zone) for the purpose of having a flooding operation for enhancing the production of oil from a subterranean, oil-bearing formation. (Col. 2 l. 54-55)
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 May, with the above limitation, as taught by Chung, in order to enhance the production of oil from a subterranean oil-bearing formation.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over May, Al-Nakhli, as applied to claim 1 above, and further in view of Kaidar (US 2021/0380866 A1) ("Kaidar" herein).
Claim 19.
May discloses the method of claim 1. May however does not explicitly disclose, wherein the gellable starch comprises Cycas revoluta starch. (Sago Palm).
Kaidar teaches the above limitation (See paragraphs 0021-0023→ Kaidar teaches this limitation in that Sago starch may be derived from the stem of palms and the resulting gel that may be formed in accordance with one or more embodiments of the present disclosure may be prepared via mixing sago starch biopolymer materials with an aqueous brine and subjecting the mixture to elevated temperatures above 25° C. (above ambient conditions). Sago is a biochemical (biopolymer) extracted from the stems of various tropical palm trees. In terms of its composition, it is a mixture of compounds including, for example, water, protein, fat, and fibre contents. The sago product can be very rich in sago starch (a polysaccharide). Beneficially, sago is abundant in nature, and as such, it represents an agricultural commodity that is produced in mass for large-scale use, primarily within agricultural industries. Sago products, in accordance with one or more embodiments of the present disclosure, contain both components of a conventional gel formula, including both a cross-linker and a biopolymer. Additionally, without being limited to any particular theory, the presence of fiber in the sago product may contribute to the improvement in the resulting gelant properties. The sago-based gelant, of one or more embodiments disclosed here, may be utilized for near-wellbore isolation jobs in oil and gas wells, such as water shut-off and profile modification. Sago fiber materials can be mixed with an aqueous solution including one or more salts, or a brine, at varying concentrations depending on the specific use of treatment fluid. ) for the purpose of having the sago bio-polymer material that may be utilized in near-wellbore isolation applications, such as to improve profile modification, conformance control, water shut-off treatments, and also in enhanced oil recovery, or to abandon a particular zone, shut-off natural or propped fractures or otherwise alter the permeability of the subterranean formation. [0009]
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 method of May, with the above limitation, as taught by Kaidar, in order to have sago bio-polymer material that may be utilized in near-wellbore isolation applications, such as to improve profile modification, conformance control, water shut-off treatments, and also in enhanced oil recovery, or to abandon a particular zone, shut-off natural or propped fractures or otherwise alter the permeability of the subterranean formation. [0009]
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, 3, and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12247161 B2 (‘161 herein) in view of May.
.Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim limitations including its dependent claims are included in the patent ‘161 with exception of “form a gelled fluid comprising a gelled starch and having an increased viscosity”.
May teaches on ¶ [0054] the polyvalent cation reactive polymer in the treatment fluid may crosslink upon interaction with the one or more polyvalent cations 372, which may increase the viscosity of the treatment fluid. The treatment fluid may at least partially set in response to the crosslinking of the polymer 382. The set treatment fluid may be in the form of a solid plug.
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 have the method of the instant application, with the above limitation, as taught by May, in order to form a solid plug.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Al-Dahlan et al. (US 2013/0180720 A1) Non-Acidic Exothermic Sandstone Stimulation Fluids teaches Provided is a method and composition for the in-situ generation of synthetic sweet spots in tight-gas formations. The composition can include nitrogen generating compounds, which upon activation, react to generate heat and nitrogen gas, Sandiford (US 4069869) Plugging High Permeability Zones Of Reservoirs Having Heterogeneous Permeability teaches A method of forming a mixed plug in the more permeable zones of a subterranean reservoir of nonuniform permeability in which there is injected into the reservoir aqueous solutions of: a polymer, a material that reacts with the polymer to form a time-delayed polymer-containing plug, an alkali metal silicate and a material that reacts with the silicate to form a time-delayed silicate-containing plug, and Paul (US 4773483) Method For Selectively Plugging Subterranean Formations With Polysulfides teaches The relatively highly permeable zones of a subterranean oil containing formation having a neutral to alkaline pH are selectively plugged by initially injecting an aqueous acid solution into the relatively highly permeable zones that lowers the pH of these zones to about 6 or less.
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 1616 08/13/2026
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