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 .
Response to Amendment
The amendments filed on July 22, 2026 have been entered. Claims 1-3, 5-8, 16-18 and 20-29 are now pending. The amendments entered to the specification and presented claims have overcome the prior 102 and 103 rejections in the Non-Final Office Action dated May 7, 2026.
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.
Claims 1, 2, 7, 8, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al (NPL: "Highly fluorescent cotton fiber based...") in view of Katterbauer et al (US PGPub 20220120168).
Regarding claim 1, Yu details a composition of cotton fibers loaded with fluorescent carbon nanoparticles (or quantum dots) derived from citric acid (plant component) as illustrated in Fig. 1. Yu does not teach the composition further comprising rock chips nor the fibers attached to the rock chips. Katterbauer teaches a method of tagging cuttings from a well using a fluorescent based tag (paragraphs [0004-7]) which represents an implementation of the fluorescent fibers of Yu. In Fig. 1 and paragraphs [0018-20], Katterbauer details the operation whereby drilled rock cuttings are tagged in order to detect depth of the drill bit to where the rocks were collected to identify drilling areas of interest. In paragraph [0029], Katterbauer teaches pumping a tag downhole with the drilling fluid and circulated through the well to tag cuttings as they are formed from drilling. Katterbauer teaches a wide range of quantum dots, dyes and meshes to fabricate the tags which include composites interwoven polymeric fibers (containing QDs or fluorescent particles, nanotags etc which is the embodiment taught by Yu). The rock cuttings attach to the tag, thus when implementing the fibers of Yu to the method of Katterbauer, the fibers will attach to the rock cuttings. Rock cuttings are considered to be synonymous with rock chips in this context. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to implement the fluorescent fibers of Yu into the tagging method of Katterbauer as a way of fluorescently tracking and determining depth of drilled rock cuttings and improve quality in geosteering, well placement, and petrophysical analysis through real-time formation evaluation (paragraph [0038] of Katterbauer) and arrive at the invention as claimed. Thus, Yu and Katterbauer teach the claimed “A composition, comprising: rock chips; and a plurality of fibers attached to each of the rock chips, each fiber comprising a plurality of fluorescent carbon dots, wherein the fluorescent carbon dots are derived from a component of a plant, an egg, or a milk.”.
Regarding claim 2, Yu and Katterbauer teach the composition of claim 1. Yu further discloses use of a cotton fiber as the substrate for carbon dots, thus the plurality of fibers are cotton fibers. Thus, Yu and Katterbauer teach the claimed “The composition of claim 1, wherein the fibers comprise a member selected from the group consisting of cotton fibers and wood fibers”.
Regarding claim 7, Yu and Katterbauer teach the composition of claim 1. In Fig. 7, Yu discloses that the carbon dots emit light at 450nm and 570nm under different excitation lights. Therefore, Yu and Katterbauer teach the claimed “The composition of claim 1, wherein the fluorescent carbon dots emit at a wavelength of from 300 nm to 700 nm”.
Regarding claim 8, Yu and Katterbauer teach the composition of claim 1. Yu discloses in second paragraph under surface morphology of fluorescent cotton fiber section, that the dots have a diameter of 3-10nm (Fig. 6a, c). Yu thus teaches an overlapping range of carbon dot diameters. Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to select from the overlapping portion of the range as a known suitable size for carbon dots in preparing fluorescent fiber compositions to arrive at the invention as claimed. Thus, Yu and Katterbauer teach the claimed “The composition of claim 1, wherein the fluorescent carbon dots have a diameter of from 5 nm to 30 nm”.
Regarding claim 21, Yu and Katterbauer teach the composition of claim 1. Katterbauer does not specify that the tags “are in pores” of the rock cuttings or chips but through the drilling and tagging process the fluorescent tags embed into the cuttings or chips. As shown in Figs 4 and 6, the rock chips have the fluorescent tags (420, 620, and 630) embedded within their volume which can be considered in their “pores”. Thus, when implementing the fluorescent fibers of Yu into the process of Katterbauer, the plurality of fibers would fill into and tag the pores of the rock chips during drilling in order to track cuttings produced during the drilling process (paragraph [0018]). It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to ensure the fibers are in the pores of the rock cuttings or chips during drilling and after recovery process such that the process of accurately geosteering, well placement, and petrophysical analysis through real-time formation evaluation is performed and arrive at the invention as claimed. Thus, Yu and Katterbauer teach the claimed “The composition of claim 1, wherein the plurality of fibers are in pores of the rock chips”.
Regarding claim 22, Yu and Katterbauer teach the composition of claim 1. In paragraph [0029], Katterbauer teaches the rock cuttings are tagged and formed from the drilling process. In paragraph [0018], Katterbauer teaches that the tags are released into drilling fluid during drilling operation to ensure rock cuttings are distinguishable during various stages and generated at different depths for accurate identification. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to ensure the tagged rock chips are drill cuttings to ensure accurate identification of tagged rock cuttings at various stages and depths of drilling and arrive at the invention as claimed. Thus, Yu and Katterbauer teach the claimed “The composition of claim 1, wherein the rock chips are drill cuttings.”.
Regarding claim 23, Yu and Katterbauer teach the composition of claim 22. As described in the rejection of claim 22, Katterbauer drills into different underground depths of the earth (underground formations). Furthermore, in paragraph [0001], Katterbauer teaches drilling fluid to facilitate drilling boreholes into the earth such as drilling oil and natural gas wells which are underground formations. Thus, Yu and Katterbauer teach the claimed “The composition of claim 22, wherein the drill cuttings are formed during drilling of an underground formation.”.
Claim 3 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al (NPL: "Highly fluorescent cotton fiber based...") in view of Katterbauer et al (US PGPub 20220120168) as applied to claims 1 (in reference to claims 3, 26, and 27) and 23 (in reference to claim 25) above, and further in view of Sahu et al (NPL: "Simple one-step synthesis of highly luminescent carbon dots from orange juice...").
Regarding claim 3, Yu and Katterbauer teach the composition of claim 1 but Yu does not specify that the citric acid used comes from a fruit juice. Sahu specifically teaches formation of carbon dots from hydrothermal treatment of orange juice (Scheme 1). It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to substitute carbon dot source (citric acid) with a fruit juice (orange juice) source as known alternative source to produce fluorescent carbon dots, to produce the fluorescent composition of Yu and Katterbauer. Therefore, Yu, Katterbauer, and Sahu teach the claimed “The composition of claim 1, wherein the fluorescent carbon dots are derived from a component of a member selected from the group consisting of fruit juice, vegetable juice, egg whites, egg yolks, cow milk and goat milk”.
Regarding claim 25, Yu and Katterbauer teach the composition of claim 23. Yu teaches emission at wavelengths of 450nm and 570nm (Fig. 7) whereby the emission at 450nm is an emission maximum (highest intensity) but does not teach a wavelength of 460nm. Sahu teaches an analogous embodiment to Yu whereby the carbon dots are sourced from orange juice as opposed to citric acid, which are closely related. Sahu’s orange juice-derived fluorescent particles emit maximum wavelengths from 455 nm to 474nm depending on the size of the fluorescent particle (Fig. 3, fixed excitation). In Col 2 pg 8836, Sahu teaches that size dependent absorption is associated with a red shift in the emission spectrum, thus by varying the size of the fluorescent carbon dots or particles, the emission maximum can be tailored to a desired wavelength such as 460nm (between 455 and 474nm) if need be. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to alter the size of the sourced dots of Yu or substitute the sourced dots of Yu for the dots of Sahu to tailor the emission maximum to a desirable value such as 460nm and arrive at the invention as claimed. Thus, Yu, Katterbauer, and Sahu teach the claimed “The composition of claim 23, wherein the fluorescent carbon dots have an emission maximum of 460 nm”.
Regarding claim 26, Yu and Katterbauer teach the composition of claim 1. Yu teaches emission at wavelengths of 450nm and 570nm (Fig. 7) whereby the emission at 450nm is an emission maximum (highest intensity) but does not teach a wavelength of 460nm. Sahu teaches an analogous embodiment to Yu whereby the carbon dots are sourced from orange juice as opposed to citric acid, which are closely related. Sahu’s orange juice-derived fluorescent particles emit maximum wavelengths from 455 nm to 474nm depending on the size of the fluorescent particle (Fig. 3, fixed excitation). In Col 2 pg 8836, Sahu teaches that size dependent absorption is associated with a red shift in the emission spectrum, thus by varying the size of the fluorescent carbon dots or particles, the emission maximum can be tailored to a desired wavelength such as 460nm (between 455 and 474nm) if need be. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to alter the size of the sourced dots of Yu or substitute the sourced dots of Yu for the dots of Sahu to tailor the emission maximum to a desirable value such as 460nm and arrive at the invention as claimed. Thus, Yu, Katterbauer, and Sahu teach the claimed “The composition of claim 1, wherein the fluorescent carbon dots have an emission maximum of 460 nm”.
Regarding claim 27, Yu and Katterbauer teach the composition of claim 1 but Yu does not specify that the citric acid used comes from a fruit juice. Sahu specifically teaches formation of carbon dots from hydrothermal treatment of orange juice (Scheme 1). It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to substitute carbon dot source (citric acid) with a fruit juice (orange juice) source as known alternative source to produce fluorescent carbon dots, to produce the fluorescent composition of Yu and Katterbauer. Yu teaches emission at wavelengths of 450nm and 570nm (Fig. 7) whereby the emission at 450nm is an emission maximum (highest intensity). Sahu teaches an analogous embodiment to Yu whereby the carbon dots are sourced from orange juice as opposed to citric acid, which are closely related. Sahu’s orange juice-derived fluorescent particles emit maximum wavelengths from 455 nm to 474nm depending on the size of the fluorescent particle (Fig. 3, fixed excitation). In Col 2 pg 8836, Sahu teaches that size dependent absorption is associated with a red shift in the emission spectrum, thus by varying the size of the fluorescent carbon dots or particles, the emission maximum can be tailored to a desired wavelength such as 450nm as in the embodiment of Yu. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to alter the size of the dots of Sahu to tailor the emission maximum to a desirable value such as 450nm, as informed by Yu, and arrive at the invention as claimed. Thus, Yu, Katterbauer, and Sahu teach the claimed “The composition of claim 1, wherein the fluorescent carbon dots are derived from orange juice and have an emission maximum of 450 nm”.
Claims 16-18, 20, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al (NPL: "Highly fluorescent cotton fiber based...") in view of Katterbauer et al (US PGPub 20220120168) and Sahu et al (NPL: "Simple one-step synthesis of highly luminescent carbon dots from orange juice...").
Regarding claim 16, Yu discloses a preparation of fluorescent carbon dots in cotton fibers in the experimental section. Yu dissolves citric acid into deionized water along with active agents to increase the permeability of the cotton. Cotton fibers pretreated with sodium hydroxide solution were immersed into the citric acid solution and subjected to ultrasonic mixing for 30 minutes. This mixture was transferred to an autoclave and heated at 150°C for the hydrothermal synthesis reaction to proceed. Yu does not disclose that the citric acid originates from a fruit juice, vegetable juice, egg whites and egg yolks, or milk. Sahu specifically teaches formation of carbon dots from hydrothermal treatment of orange juice (Scheme 1). It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to substitute carbon dot source (citric acid) with a fruit juice (orange juice) source as known alternative source to produce fluorescent carbon dots, to produce the fluorescent composition. Neither Yu nor Sahu teach attaching fibers to rock chips. Katterbauer teaches a method of tagging cuttings from a well using a fluorescent based tag (paragraphs [0004-7]) which represents an implementation of the fluorescent fibers of Yu. In Fig. 1 and paragraphs [0018-20], Katterbauer details the operation whereby drilled rock cuttings are tagged in order to detect depth of the drill bit to where the rocks were collected to identify drilling areas of interest. In paragraph [0029], Katterbauer teaches pumping a tag downhole with the drilling fluid and circulated through the well to tag cuttings as they are formed from drilling. Katterbauer teaches a wide range of quantum dots, dyes and meshes to fabricate the tags which include composites interwoven polymeric fibers (containing QDs or fluorescent particles, nanotags etc which is the embodiment taught by Yu). The rock cuttings attach to the tag, thus when implementing the fibers of Yu and Sahu to the method of Katterbauer, the fibers will attach to the rock cuttings. Rock cuttings are considered to be synonymous with rock chips in this context. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to implement the fluorescent fibers of Yu and Sahu into the tagging method of Katterbauer as a way of fluorescently tracking and determining depth of drilled rock cuttings and improve quality in geosteering, well placement, and petrophysical analysis through real-time formation evaluation (paragraph [0038] of Katterbauer) and arrive at the invention as claimed. Thus, Yu, Katterbauer, and Sahu teach the claimed “A method, comprising: contacting a plurality of fibers with a member selected from the group consisting of fruit juice, vegetable juice, egg whites and egg yolks, milk, the member comprising fluorescent carbon dot precursors, thereby forming a plurality of fibers comprising the fluorescent carbon dot precursors, each fiber comprising a plurality of fluorescent carbon dot precursors; and heating the plurality of fibers comprising the fluorescent carbon dot precursors, thereby converting the fluorescent carbon dot precursors into fluorescent carbon dots and forming a plurality of fibers comprising fluorescent carbon dots, each fiber comprising a plurality of fluorescent carbon dots; and attaching the plurality of fibers comprising fluorescent carbon dots to rock chips”.
Regarding claim 17, Yu, Katterbauer, and Sahu teach the method of claim 16. Furthermore, Yu teaches use of cotton fibers. Therefore, Yu, Katterbauer, and Sahu teach the claimed “The method of claim 16, wherein the fibers comprise a member selected from the group consisting of cotton fibers and wood fibers”.
Regarding claim 18, Yu, Katterbauer, and Sahu teach the method of claim 16. Yu utilizes a heating step at 150°C. Therefore, Yu, Katterbauer, and Sahu teach the claimed “The method of claim 16, wherein the heating is performed at a temperature of 150 to 190 °C”.
Regarding claim 20, Yu, Katterbauer, and Sahu teach the method of claim 16. In Fig. 7, Yu discloses that the carbon dots emit light at 450nm and 570nm under different excitation lights. Therefore, Yu, Katterbauer, and Sahu teach the claimed “The method of claim 16, wherein the fluorescent carbon dots emit at a wavelength of from 300 nm to 700 nm”.
Regarding claim 29, Yu, Katterbauer, and Sahu teach the method of claim 16. In paragraph [0029], Katterbauer teaches the rock cuttings are tagged and formed from the drilling process. In paragraph [0018], Katterbauer teaches that the tags are released into drilling fluid during drilling operation to ensure rock cuttings are distinguishable during various stages and generated at different depths for accurate identification. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to ensure the tagged rock chips are drill cuttings to ensure accurate identification of tagged rock cuttings at various stages and depths of drilling and arrive at the invention as claimed. Therefore, Yu, Katterbauer, and Sahu teach the claimed “The method of claim 16, wherein the rock chips are drill cuttings”.
Claims 5 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al (NPL: "Highly fluorescent cotton fiber based...") in view of Katterbauer et al (US PGPub 20220120168) as applied to claim 1 above, and further in view of Glover et al (US PGPub 20170341054).
Regarding claim 5, Yu and Katterbauer teach the composition of claim 1. Yu does not disclose the length of used fibers. Glover teaches modification of cellulose, nylon, and cotton fibers with different nanoparticles. Glover teaches modification with quantum dots, gold, copper or dyes to make the fibers fluorescent. Glover discloses that this modification can be applied to various fibers serving as the substrate including cotton (as taught), cellulose (as taught), or wood (paragraph [0083]). In Fig. 6, Glover shows a selection of samples “dyed” with gold nanoparticles on nylon (a), cotton (b), and cellulose (c). The reference samples (1) for each are untreated and are 0.75 inches (nylon, a) or 1.25 inches (gold or cellulose, b or c) in length. These lengths equate to 1.905 cm and 3.175 cm. The dyed nylon samples (a2, a3) are about equal length to the reference ~0.75 inches (1.905 cm). The dyed cotton and cellulose samples (b2, b3, c2, c3) are about 0.33 or 0.5 times the length of the reference or ~0.417 to 0.625 inches (1.06 to 1.59 cm). Glover performed these techniques to prove that commercially available fabrics can be dyed and is not limited to laboratory grade materials. These smaller fibers can eventually be woven into manufactured textiles or clothing (as described in paragraphs [0090] and [0091]). It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to use cotton or wood fibers of lengths in the range of 1-3.175cm as suggested by Glover and “dye” with carbon dots for eventual use in underground drilling bores as informed by Katterbauer. Thus, Yu, Katterbauer, and Glover teach the claimed “The composition of claim 1, wherein the fibers have a length of from 0.1 mm to 3.5 cm”.
Regarding claim 28, Yu and Katterbauer teach the composition of claim 1. Yu does not disclose the wood fibers. Glover teaches modification of cellulose, nylon, and cotton fibers with different nanoparticles. Glover teaches modification with quantum dots, gold, copper or dyes to make the fibers fluorescent. Glover discloses that this modification can be applied to various fibers serving as the substrate including cotton (as taught), cellulose (as taught), or wood (paragraphs [0083, 0090]). In Fig. 6, Glover shows a selection of samples “dyed” with gold nanoparticles on nylon (a), cotton (b), and cellulose (c). Glover performed these techniques to prove that commercially available fabrics can be dyed and is not limited to laboratory grade materials. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to substitute the cotton fibers of Yu for wood fibers, as informed by Glover, as a known alternative substrate for forming a plurality of fibers labeled or tagged with fluorescent carbon dots and arrive at the invention as claimed. Thus, Yu, Katterbauer, and Glover teach the claimed “The composition of claim 1, wherein the fibers comprise wood fibers.”.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al (NPL: "Highly fluorescent cotton fiber based...") in view of Katterbauer et al (US PGPub 20220120168) as applied to claim 1 above, and further in view of Mao et al. (NPL: “States of Water and Pore Size Distribution...").
Yu and Katterbauer teach the composition of claim 1 but do not disclose the diameter of the fibers used. Yu does note that the cotton fibers used were acquired through a commercial vendor. Mao also provides a cotton fiber supplied by commercial vendor whereby the cotton fiber has average cross-section of 10 µm. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to use the same cotton fiber disclosed by Mao and load with carbon dots with a predictable result of making them fluorescent for use in tagging rock cuttings in drilling formations as informed by Katterbauer. Therefore, Yu, Katterbauer and Mao satisfy the claimed “The composition of claim 1, wherein the fibers have a diameter of from 8 µm to 30 µm”.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al (NPL: "Highly fluorescent cotton fiber based...") in view of Katterbauer et al (US PGPub 20220120168) as applied to claim 1 above, and further in view of Li et al (CN109097034A).
Yu and Katterbauer teach the composition of claim 1 but do not disclose the source of carbon dots from a milk component. Li also teaches a carbon quantum dot composite material using naturally derived carbon dot sources. Li teaches use of organic natural biological quantum dots as the carbon source for synthesis of good biocompatibility, low toxicity and strong fluorescence. Li teaches a variety of organic sources which include milk. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to substitute carbon dot source (citric acid) with a milk source (component of milk) as known alternative source to produce fluorescent carbon dots, to produce the fluorescent composition of Yu and Katterbauer. Thus, Yu, Katterbauer, and Li teach the claimed “The composition of claim 1, wherein the fluorescent carbon dots are derived from a component of a milk”.
Response to Arguments
Applicant’s arguments with respect to independent claims 1 and 16 (and subsequently the dependent claims) 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, that being the new limitations regarding rock chips and the fibers attached to the rock chips.
Applicant’s Remarks request for an interview. However since the previous rejection is not what has been maintained and the amended claims require a substantial new grounds of rejection, request for interview is denied until the new grounds of rejection is of record and Applicant reviews the new grounds of rejection.
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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/NWFG/Examiner, Art Unit 1759
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
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