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 .
Claim Rejections - 35 USC § 102/103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 7 – 9 are rejected under 35 U.S.C. 102(a)(1) as anticipated Guo et al. (CN 116254146 A) by or, in the alternative, under 35 U.S.C. 103 as obvious over Guo et al. (CN 116254146 A)
In regards to claim 1, Guo teaches aqueous fluid comprising 3 to 10 parts by weight of diamond nanoparticle micro-powder (abstract). The micro-powder is surface modified with a silane and has a particle size of 3 to 10 microns (specification). The Guo provides an aqueous fluid having the claimed carbon particles and thus appears to provide the treating fluid of the claim.
In regards to claim 2, Guo teaches the composition having the claimed limitation as previously stated.
In regards to claim 4, Guo teaches the composition having the claimed limitation as previously stated.
In regards to claim 7, Guo teaches the composition having additives such as benzotriazole (i.e., corrosion inhibitor) (specification).
In regards to claims 8, 9, Guo teaches the composition which can comprise conventional additives but does not recite the acids of the claims. Kitamura et al. (WO 2022/210328 A1) similarly teaches aqueous cutting oils which can comprise additives such as acetic acid as pH adjusters, and thus makes it obvious for persons of ordinary skill in the art at the time the claims were filed to have used them in the composition of Guo, as Guo allows for use of conventional additive ingredients in the composition (specification).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 7, 11, 13, 14, 15, 17 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sui et al. (US 2016/0177215) in view of Nguyen et al. (US 2018/0320498)
In regards to claim 1, Sui teaches high temperature lubricant comprising an oil-soluble or water-soluble lubricating base fluid, and carbon nanoparticles such as graphene nanoribbons, carbon nanotubes, carbon nanohorns or combinations (abstract). The fluid is useful for oil drilling, fracturing operation (i.e., hydraulic fracturing treatment fluid) etc., scale inhibiting operation, well bore strengthening operation, etc., and combinations [0011]. The fluid can comprise thickening agents such as clay, silica, phosphate etc. [0021]. The carbon nanotubes are present in the composition in amounts of from about 1% to about 80% [0022]. The nanotubes can be functionalized with functional groups such as OH, carboxyl, phosphate, carbonyl, etc. [0026, 0027]. Sui fails to teach the claimed carbon particles.
Nguyen teaches the use of micro-proppants to create or enhance a microfracture in subterranean formations analogous to Sui (abstract). The composition can comprise micro-proppant and/or proppants such as carbon black, graphite etc., have particle sizes of from 0.1 to 100 mm for micro-proppants or up to 3000mm for proppants, and are present in the fluid at amounts of from about 0.01% to 10% [0043 – 0048]. Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have added the micro-proppants and/or proppants of Nguyen and in the recited amounts, into the composition of Sui, as Nguyen teaches that they are suitable for enhance microfractures for subterranean formations such as those of Sui.
Neither, Sui nor Nguyen teach the presence of the claimed surface modified particles. Fleming (CN 104520405 B) teaches scale inhibiting composition comprising fullerene that is surface modified with silane and/or carboxylic acid and useful in wellbore (abstract, claim 1). The particle sizes for the nanoparticles (i.e., carbon nanotubes or fullerene) are 0.5 to 2000 nm (specification). Thus, persons of ordinary skill in the art at the time the claims were filed would have found it obvious to have used the scale inhibitors of Fleming in the composition of Sui, as Sui is directed to similar scale inhibiting process and because Fleming teaches suitable composition for scale inhibition. Similarly, since Fleming teaches the carbon nanotubes and fullerene are equivalent, it would have been obvious to have used the fullerenes of Fleming in the place of the carbon nanotubes of Sui, as they are known equivalents for use in the similar fluids.
In regards to claim 2, Sui, Nguyen and Fleming teach the composition having the claimed amount of the nanoparticles as previously stated.
In regards to claim 4, Sui, Nguyen and Fleming the composition comprising aqueous base fluid as previously stated.
In regards to claim 7, Sui, Nguyen and Fleming teach the composition comprising thickeners such as clay etc., as previously stated.
In regards to claim 11, Sui, Nguyen and Fleming teach the composition having the fracturing fluid having the claimed ingredients in the claimed amounts and thus when the fluid is used in the fracturing process the method is intrinsically provided.
In regards to claims 13, 15, 17, Sui in view of Nguyen and Fleming provides the method having the claimed limitations as previously discussed. The claim is not drawn to the method of functionalizing the carbon nanotube but to the method of fracturing using the carbon nanotube in a fluid. Since the functionalized carbon nanotubes are taught the limitation of claim 17 is met.
In regards to claim 18, Sui, Nguyen and Fleming provide the method wherein when the fluid is applied during fracturing, the same results would be expected.
In regards to claim 19, Sui in view of Nguyen and Fleming provides for the method of recovering oil (hydrocarbons) by using the fluid for fracturing.
Claims 5, 6, 8, 9, 14 are rejected under 35 U.S.C. 103 as being unpatentable Sui et al. (US 2016/0177215) in view of Nguyen et al. (US 2018/0320498), Fleming (CN 104520405 B) and further in view of Bryant et al. (US 2017/0009129)
In regards to claim 5, 6, 8, 9, 14, Sui in view of Nguyen and Fleming teaches fluids which are useful for fracturing but does not particularly recite the claimed ingredients. Bryant teaches proppant-carrying fracturing fluid which are used in well bore during fracturing operations (title, abstract). The proppants are used to enhance conductive channels (i.e., flow) [0014]. The fracturing fluid is water based similar to Sui [0015]. The proppants are useful in amounts of from about 0.1 to about 8 lbs/gallon of the fluid [0018/]. The composition can comprise other treating agents such as HCL (Table 1). It is well known to use proppants in fracturing fluids, and acidic agents which are generally used to dissolve rocks during fracturing. For instance, see 0027 of Smalls et al. (US 2023/0085175) which recites the conventional use of acids such as HCL for treatment during fracturing. Thus, it would have been obvious for persons of ordinary skill in the art at the time of the claims to have used the proppants and HCL of Bryant in the composition of Sui, in order to provide access to, and the flow of the oil and gas product.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771