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 is the first action on the merits of the application.
Status of the Application
This action is the first action on the merits in response to the application filed on 01/22/2024.
Election/Restrictions
Applicant's election of invention group I, claims 1-12 without traverse in the reply filed on 07/22/2026 is acknowledged. Claims 13-19 are withdrawn from further consideration.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/22/2024 and 05/06/2025 have been considered by the examiner.
Claim Rejections - 35 USC § 112
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 9 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 9, which depends on claim 1, recites adding produced water to the EICP solution in the precipitation unit before precipitation occurs. Claim 1 already requires produced water and the EICP solution to be combined in the precipitation unit to react and form the precipitate. Claim 9 merely restates that same combination step without adding any new ratio, order, rate, or condition, so it doesn't narrow the scope of claim 1.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 (a)(2) 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 1-3 and 11-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by AlAhmari et al. hereinafter AlAhmari (US 11535791 B2).
As for claim 1, AlAhmari discloses a method comprising introducing an EICP solution into a wellbore penetrating a subterranean formation. AlAhmari teaches that the EICP solution reacts with calcium cations forming a calcium carbonate precipitate in the formation/precipitation unit (see abstract and column 2; lines 29-40).
Applicant’s own specification, at paragraph [0013], defines the term “produced water” as follows: “Any aqueous fluid that is produced from a well in oil and gas operations, such as water that occurs naturally within a rock (such as formation water) or water trapped in a rock during its formation (such as connate water), which may be produced from a well. The produced water may also include any brine, brackish water, and combinations thereof”. Under this definition, formation water is expressly encompassed within the scope of “produced water”. Accordingly, AlAhmari’s formation water constitutes produced water under the broadest reasonable interpretation of that term consistent with the applicant’s own specification. See MPEP § 2111.01.
AlAhmari thus discloses a treatment composition comprising produced water and an EICP solution reacting in a precipitation unit (sand formation) to form a treated mixture, wherein metal cations (calcium cations) dissolved in the produced water react with one or more components of the EICP solution to form the carbonate precipitate (see column 2; lines 29-40), as required by the body of claim 1.
In addition, removing dissolved metal cations from an aqueous solution via carbonate precipitation as a solid precipitate, as disclosed by AlAhmari, inherently reduces the ionic content of that solution as an unavoidable consequence of the disclosed chemistry. Therefore, AlAhmari discloses each and every limitation of claim 1.
As for claim 2, AlAhmari teaches an EICP treatment formulation 2 comprising:
Urea (1.0 M Urea),
One or more polysaccharides (xanthan gum and guar gum),
A casein protein (micellar casein protein),
A protease (AMINOGEN),
An ionic compound (sodium chloride),
A urease enzyme (3 g/L Urease enzyme).
AlAhmari discloses every component of the EICP solution recited in claim 2 (see paragraph 8; lines 3-7).
As for claim 3, AlAhmari discloses that the urease catalyzed reaction of urea forms an ammonia byproduct (column 3; lines 18-21).
As for claim 11, AlAhmari discloses: “a first solution was prepared by dissolving calcium chloride dihydrate, urea, and a chemical composition containing micellar casein protein, xanthan gum, guar gum, sodium chloride, sucralose, and protease AMINOGEN…a second solution was prepared by dissolving urease enzyme in deionized water. The two solutions were combined and mixed together to provide the EICP solution.” (column 7; line 61-67 and column 8; lines 1-2). AlAhmari thus discloses introducing a first solution (comprising urea, one or more polysaccharides, casein protein, protease and an ionic compound) and a second solution (comprising urease) separately to the precipitation unit, and combining them to form the EICP solution, as required by claim 11.
As for claim 12, AlAhmari discloses: “the first and second solutions maybe mixed together and introduced into the wellbore to form the treatment solution in the wellbore”. AlAhmari thus discloses that the first solution (containing urea, calcium ion source, polysaccharides, casein protein, a protease, ionic compound and a sugar) and a second solution (containing urease) are combined prior to introduction into the wellbore or the precipitation unit, such that the EICP solution is introduced into the precipitation unit as one (combined) solution (column 6; lines 17-22).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over AlAhmari in view of Constantz et al hereinafter Constantz (WO2009006295A2).
As for claim 4, AlAhmari teaches introducing an EICP solution into a wellbore formation, where urease-catalyzed hydrolysis of urea reacts with dissolved calcium cations to form a calcium carbonate precipitate.
AlAhmari does not disclose feeding the treated mixture to a separation unit or separating the carbonate precipitate from the treated mixture to form a treated water.
Constantz teaches separating a formed carbonate precipitate from a treated water in a desalination process. Constantz discloses that the separation of the precipitate from the product water can be achieved using any convenient approach, including a mechanical approach, e.g., where bulk excess water is drained from the precipitate, e.g., either by gravity alone or with the addition of vacuum, mechanical pressing, by filtering the precipitate from the mother liquor to produce a filtrate, etc. (see page 12; lines 21-25).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to feed AlAhmari treated mixture into a separation unit and to separate the precipitate to form a treated water as taught by Constantz, motivated by the need to obtain a usable treated water product having a reduced ionic content, since leaving the precipitated solids suspended in the water would negate the purpose of the precipitation reaction and render the treated water unsuitable for further use in downstream oil and gas operations.
As for claim 10, AlAhmari discloses conducting the EICP reaction at temperatures in the range of 70°C to 100°C, which overlaps with claim 10 recited range of 15°C to 75°C. Where the claimed range overlaps the range disclosed in the prior art, a prima facie case of obviousness exists. In addition, reaction time (here, at least 24 hours) is a routine result-effective variable that a person of ordinary skill would optimize through routine experimentation absent a showing of criticality or unexpected results.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over AlAhmari in view of Constantz and further in view of Mukherjee et al hereinafter Mukherjee (US10245560B2).
As for claim 5, AlAhmari /Constantz does not teach injecting the treated water into a formation. Mukherjee discloses treating produced water and injecting the resulting treated water (permeate stream) back into the oil-bearing formation as part of an enhanced oil recovery operation (abstract; lines 9-10). Therefore, it would have been obvious to inject the treated water resulting from AlAhmari/Constantz into a formation, as taught by Mukherjee, motivated by the established practice of reusing treated produced water for enhanced oil recovery rather than disposing of it, thereby recycling the produced water.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over AlAhmari in view of Constantz and further in view of Heimel et al hereinafter Heimel (US 20190169057 A1).
As for claim 6, AlAhmari /Constantz does not teach reducing an ammonia byproduct concentration of the treated water by feeding the treated water through a reverse osmosis unit to form a deaminated water. Heimel discloses treating produced water from a well using reverse osmosis membrane modules to remove ammonia, achieving greater than 95% ammonia removal (see [0009]; lines 17-21). As established for claim 3, AlAhmari’s EICP reaction inherently produces a dissolved ammonia byproduct. Therefore, it would have been obvious to feed the treated water of the AlAhmari/ Constantz through a reverse osmosis unit, as thought by Heimel to reduce the ammonia byproduct and form a deaminated water.
As for claim 7, AlAhmari /Constantz does not teach a reverse osmosis filter adapted to selectively remove ammonia from the treated water. Heimel teaches treating produced water using reverse osmosis membrane to remove ammonia, disclosing that the membrane purification system is operated with pH adjustments to allow boron and ammonia to be effectively removed and that greater than 95% of the ammonia content is removed (abstract; lines 8-14). This discloses an RO filter/membrane system whose operating conditions (e.g. pH adjustment) are specifically adapted and configured to selectively target and remove ammonia from produced water.
Therefore, it would have been obvious to a person of ordinary skill in the art to choose and configure the RO filter of the combined method of AlAhmari/ Constantz with the same adaptation taught by Heimel to selectively remove ammonia from the treated water.
As for claim 8, AlAhmari /Constantz teaches precipitating and separating the carbonate precipitate from its mother liquor to produce a filtrate. AlAhmari /Constantz does not teach recovering and storing the ammonia and the deaminated water in storage tanks. Heimel discloses recovering purified water following RO-based removal of ammonia from produced water. Therefore, it would have been obvious to recover and store the ammonia byproduct in an ammonia storage unit and the deaminated water in a water storage unit, as routine, predictable stream handling steps applied to the known outputs of the RO process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bachar El Haj Hassan whose telephone number is (571)270-0121. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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/BACHAR EL HAJ HASSAN/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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