DETAILED ACTION
The present application is related to international application no. PCT/US25/12398.
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 (Claims 1-8 and 17) in the reply filed on June 19, 2026 is acknowledged.
Claims 9-16 have been withdrawn by the Applicant.
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 1-8 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 1 recites the limitation “a concentrated brine” in line 4. It is unclear what concentration or degree of salinity is required to meet the claimed invention. The term “concentrated” in Claim 1 is a relative term which renders the claim indefinite. The term “concentrated” 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.
For purposes of examination, the Examiner interprets “a concentrated brine” to encompass any brine for the remainder of the Office action
Claim 17 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 17 recites the limitation “a concentrated brine” in line 6. It is unclear what concentration or degree of salinity is required to meet the claimed invention. The term “concentrated” in Claim 17 is a relative term which renders the claim indefinite. The term “concentrated” 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.
For purposes of examination, the Examiner interprets “a concentrated brine” to encompass any brine for the remainder of the Office action
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Al-Yami et al. (US 2018/0223164).
Claim 1. Al-Yami discloses A drilling fluid (Abstract; [0012] “emulsified drilling fluids”) comprising:
a base fluid, wherein the base fluid is an emulsion comprising an oil and an aqueous fluid ([0012] “producing an emulsion fluid by mixing an aqueous phase, an oleaginous phase, and at least one surfactant”; [0019] “The oleaginous phase may be oil, such as natural or synthetic liquid oil.”);
wherein the aqueous fluid comprises a concentrated brine obtained from desalinating a produced water (See rejection under 35 U.S.C. § 112(b); [0017] “The aqueous phase may contain brine, including natural and synthetic brine, such as saturated brine or formate brine”); and
one or more additives ([0034] “the drilling fluid may contain at least one additive other than the surfactant”).
Claim 3. Al-Yami discloses The drilling fluid of claim 1, wherein the concentrated brine comprises ions of sulfate, chloride, bicarbonate, sodium, potassium, calcium, magnesium, or any combination thereof ([0017]).
Claim 4. Al-Yami discloses The drilling fluid of claim 1, wherein the oil comprises diesel, Safra oil, kerosene, fuel oil, crude oil, mineral oil, or any combination thereof ([0019]).
Claim 5. Al-Yami discloses The drilling fluid of claim 1, wherein the one or more additives comprise a viscosifier, an emulsifier, a weighting material, a fluid-loss additive, an alkaline compound, or any combination thereof ([0017]; [0034]).
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.
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 2, 6-8, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Al-Yami et al. (US 2018/0223164).
Claim 2. Al-Yami discloses The drilling fluid of claim 1. Regarding the limitation: wherein the aqueous fluid has a concentration of the concentrated brine of about 25 vol% to about 75 vol%, Al-Yami discloses that the drilling fluid may contain from 10 wt % to 70 wt % of the aqueous phase (e.g., brine, including natural and synthetic brine, such as saturated brine or formate brine) based on the total weight of the drilling fluid ([0017]; [0018]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the concentration range of brine in the aqueous phase of the emulsified drilling fluid in Al-Yami to the range as claimed, because it has been held that “where 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).
Claim 6. Al-Yami discloses The drilling fluid of claim 1, wherein a plastic viscosity (PV) of the drilling fluid is about 10 cp to about 25 cp ([0048]; [0049]). Where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ 2d 1934 (MPEP § 2144.05 I).
Claim 7. Al-Yami discloses The drilling fluid of claim 1, wherein a yield point (YP) of the drilling fluid is about 1 lbf/100 ft2 to about 15 lbf/100 ft2 ([0048]; [0050]; [0051]). Where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ 2d 1934 (MPEP § 2144.05 I).
Claim 8. Al-Yami discloses The drilling fluid of claim 1. Regarding the limitation: wherein a spurt loss of the drilling fluid is about 1 mL to about 10 mL, Al-Yami discloses preventing fluid loss ([0003]; [0034]), but Al-Yami does not expressly disclose a value for an initial instantaneous loss of fluid (i.e. spurt loss / spurt volume).
However, since Al-Yami discloses the same composition as claimed, the drilling fluid would inherently act in the same manner as claimed (i.e., it would be capable of a spurt loss of the drilling fluid from about 1 mL to about 10 mL). If there is any difference between the composition of Al-Yami and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “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 discloses 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 Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
In the alternative, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the spurt loss of the emulsified drilling fluid in Al-Yami to the range as claimed, because it has been held that “where 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).
Claim 17. Al-Yami discloses A drilling fluid (Abstract; [0012] “emulsified drilling fluids”) comprising:
a base fluid, wherein the base fluid is an emulsion comprising an oil and an aqueous fluid ([0012] “producing an emulsion fluid by mixing an aqueous phase, an oleaginous phase, and at least one surfactant”; [0019] “The oleaginous phase may be oil, such as natural or synthetic liquid oil.”); wherein the oil comprises diesel, Safra oil, or a combination thereof ([0019] “the oleaginous phase may contain or may be oils derived from petroleum, such as mineral oils, diesel oils, linear olefins, paraffin, other petroleum-based oils, and combinations of these oils or oils derived from plants, such as safra oil, for example”);
wherein the aqueous fluid comprises … a concentrated brine obtained from desalinating a produced water (See rejection under 35 U.S.C. § 112(b); [0017] “The aqueous phase may contain brine, including natural and synthetic brine, such as saturated brine or formate brine”);
a viscosifier ([0034] “suitable additives may include … viscosity adjusters”; [0035] “the one or more additives may include a viscosifier, also referred to as a rheology modifier, which may be added to the drilling fluid to impart non-Newtonian fluid rheology to the drilling fluid”);
an emulsifier ([0034] “suitable additives may include … supplemental emulsifiers”);
a weighting material ([0034] “suitable additives may include weighting agents…”; [0037] “the one or more additives may include solids, sometimes referred to as weighting material, which may be dispersed in the drilling fluid”);
a fluid-loss additive ([0034] “suitable additives may include … fluid loss control agents, lost circulation control agents…”); and
an alkaline compound ([0017] “… salt or other organic compounds may be incorporated into the aqueous phase to control the density of the emulsified drilling fluid. Increasing the saturation of the aqueous phase by increasing the salt concentration or the level of other organic compounds in the aqueous phase may increase the density of the drilling fluid. … In some embodiments, suitable salts may include sodium, calcium, cesium, zinc, aluminum, magnesium, potassium, strontium, silicon, lithium, chlorides, bromides, carbonates, iodides, chlorates, bromates, formates, nitrates, sulfates, phosphates, oxides, fluorides and combinations of these.”).
Regarding the limitation: wherein the aqueous fluid comprises about 25 vol% to about 75 vol% of a concentrated brine, Al-Yami discloses that the drilling fluid may contain from 10 wt % to 70 wt % of the aqueous phase (e.g., brine, including natural and synthetic brine, such as saturated brine or formate brine) based on the total weight of the drilling fluid ([0017]; [0018]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the concentration range of brine in the aqueous phase of the emulsified drilling fluid in Al-Yami to the range as claimed, because it has been held that “where 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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Wagle et al. (US 2013/0303410).
Wagle discloses oil-based, invert emulsion drilling fluids with substantially flat or relatively controlled and/or improved rheology.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Crystal J. Lee whose telephone number is (571)272-6242. The examiner can normally be reached M-F from 8:00am - 5:00pm.
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/CRYSTAL J LEE/Primary Examiner, Art Unit 3674
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