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 .
The amendment dated 05/12/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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.
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, 6, 7, 11, 13, 14, 15, 17 – 22 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 (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 nanoparticles are present in the composition in amounts of from about 1% to about 80% [0022]. The nanoparticles can comprise an oil-soluble group such as C60 fullerene and which can be functionalized with functional groups such as OH, carboxyl, phosphate, carbonyl, etc. [0026, 0027]. The carbon particles have sizes of from 5 nm to 2mm [0022].
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 treatment fluid at amounts of from about 0.01% to 20% [0043 – 0049]. 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.
In regards to claim 2, Sui and Nguyen teach the composition having the claimed amount of the nanoparticles as previously stated.
In regards to claim 4, Sui and Nguyen teach the composition comprising oil based or water-miscible base fluids as previously stated. Nguyen recites such fluid can be water, oil, alcohols, or water and oil emulsions [0042]. Thus, aqueous (water containing) fluids would have been obvious for use as the water-miscible fluids of Sui, in view of Nguyen.
In regards to claim 6, Sui and Nguyen teach the composition having the proppant is present at up to 20% in the treatment fluid which appears to overlap the claimed range.
In regards to claim 7, Sui and Nguyen teach the composition comprising thickeners such as clay etc., as previously stated.
In regards to claim 11, Sui and Nguyen 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 and Nguyen provide 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 and Nguyen provide the method wherein when the fluid is applied during fracturing, the same results would be expected.
In regards to claim 19, Sui and Nguyen provide for the method of recovering oil (hydrocarbons) by using the fluid for fracturing.
In regards to claims 20 – 22, Sui and Nguyen provide the method and teach the composition. The claim is drawn to a method of fracturing and not to the method of functionalizing the carbon nanoparticle. Since the functionalized nanoparticle itself is taught, the claimed limitation is taught.
Claims 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), and further in view of Bryant et al. (US 2017/0009129)
In regards to claim 6, 8, 9, 14, Sui and Nguyen teach 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 response has been considered but was not found to be persuasive.
The arguments in view of Guo et al. (CN 116254146 A) in view of Kitamura et al. (WO 2022/210328 A1) are moot as they are not currently applied for making the current rejections, as Guo fails to teach composition have proppants as claimed.
Applicant argues that Sui et al. (US 2016/0177215) in view of Nguyen et al. (US 2018/0320498), and Fleming (CN 104520405 B) and alternatively in further in view of Bryant et al. (US 2017/0009129) fail to teach the surface modified carbon particles. In particularly, Fleming is disparaged as not teach the carbon nanoparticle. The argument is not persuasive.
Arguments in view of Fleming are moot because Fleming was not relied upon for making the current rejections as Fleming fails to teach the nanoparticles as currently amended. However, Sui teaches carbon nanoparticles such as fullerene which are surface modified with carbonyl as claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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