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 .
DETAILED ACTION
Claims 1-17 and 19-20 are pending and under examination herein. Claim 18 is cancelled.
Response to Arguments
Applicant's arguments filed 2/3/2026 have been fully considered but they are not persuasive.
Applicant argues against the rejection of claims 1-17 and 19-20 under 35 U.S.C. 101 on the grounds that per MPEP 2106.04(d)(2), “a process claim is patentable when demonstrating an additional element to apply or use the recited judicial exception to effect a particular treatment or prophylaxis” (Arguments, paragraph 4 on page 6).
In response, the claimed method is not a method of treatment or prophylaxis. Rather, the claimed method is “a method for monitoring total microbial concentration in a water fluid well.” However, even considering the claimed process as a method of treatment (treating the water fluid well), the claimed method does not require a particular treatment since the claim requires only a generic biocide and not a particular biocide.
Applicant argues further against the rejection of claims under 35 U.S.C. 101 on the grounds that, considering the guidance provided in MPEP 2106.05(f), the recitation of introducing 1% by volume to about 20% by volume of a biocide into the water fluid well based on the assigned ATP-based action level in claim 1 constitutes more than mere instructions to implement an abstract idea (Arguments, paragraph 5 on page 6).
In response, MPEP 2106.05(f)(3) urges examiners to consider the particularity or generality of the application of the judicial exception. Here, although the claims require a range of biocide concentrations, the biocide itself is not limited to any particular biocide.
Applicant argues against the rejection of claims under 35 U.S.C. 103 as obvious over Hernandez in view of Stimson on the grounds that the cited references do not teach "a corrective action introducing 1% by volume to about 20% by volume of a biocide into the water fluid well based on the assigned ATP-based action level” (Arguments, page 7, A. Independent Claim 1, paragraph 1).
In response, this argument is unpersuasive. First, this limitation is recited in the alternative. The claim recites “performing a control action, a preventative action, or a corrective action introducing 1% by volume to about 20% by volume of a biocide into the water fluid well based on the assigned ATP-based action level. Thus, in two different embodiments (performing the control action or performing the preventative action), the claim does not require introducing the biocide. Hernandez teaches performing actions based upon the assigned ATP-based action levels that include control actions and preventative actions (Table 5). With respect to the embodiment in which 1% by volume to about 20% by volume of a biocide is introduced into the water fluid well, Stimson teaches that total ATP levels are reduced by adding a biocide to seawater (page 21, lines 31-32, Figure 3.2). The concentration of biocide ranges from 0 to 10 mg/L (Fig. 3.2). 10 mg/L is 10 mg/1000 mL or 1 mg/100 mL or 1 wt%. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to optimize by routine experimentation the amount of biocide added. The person of ordinary skill in the art would have had a reasonable expectation of success in optimizing the amount of biocide based upon how much bacteria are killed and the expense of the biocide. Adding too much biocide would have added expense to the overall process economics, whereas adding too little biocide would have resulted in some bacteria surviving.
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.
(New Rejection Necessitated by the Amendment) Claims 1-17 and 19-20 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 performing a control action, a preventative action, or a corrective action introducing 1% by volume to about 20% by volume of a biocide into the water fluid well based on the assigned ATP-based action level. This limitation renders the claim indefinite because it is unclear whether the act of introducing the biocide applies to the control action, the preventative action, and the corrective action or whether this limitation applies only to the corrective action. It is further unclear whether the correction action comprises or consists of introducing 1% by volume to about 20% by volume of a biocide into the water fluid well based on the assigned ATP-based action level.
Claim 14 is indefinite for the total microbial concentration range of “25 pg of ATP/mL to 200 pg/ATP mL.” The units of the lower and upper bound of the range are not in agreement as to what is being measured (pg of ATP or pg of microorganisms).
Claim 17 is indefinite because the claim recites “the assigned ATP-based action level is a corrective action ATP-based action level.” Claim 17 depends from claim 1, which recites “performing a control action, a preventative action, or a corrective action introducing 1% by volume to about 20% by volume of a biocide into the water fluid well based on the assigned ATP-based action level.” It is unclear whether the claim requires the corrective action of introducing the biocide because claim 1 recites that the action is performed “based on the assigned ATP-based action level” and dependent claim 17 recites that the ATP-based action level is “a corrective action ATP-based action level.” The combination of “based on” and “a corrective action” (rather than the corrective action) leads to ambiguity in the claim scope.
Claims 2-17 and 19-20 are rejected for depending from a rejected base claim and not rectifying the source of indefiniteness discussed above.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
(New Rejection Necessitated by the Amendment) Claims 1-17 and 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the judicial exception of an abstract idea without significantly more.
A flowchart has been established to determine subject matter eligibility under 35 U.S.C. 101. See MPEP 2106 part (III) and 2106.04 part (II)(A). The flowchart comprises answering: Step 1) Is the claim to a process, machine, manufacture or composition of matter? Step 2A Prong One) Does the claim recite an abstract idea, law of nature or natural phenomenon? Step 2A Prong Two) Does the claim recite additional elements that integrate the judicial exception into a practical application? Step 2B) Does the claim recite additional elements that amount to significantly more than the judicial exception? The claims are analyzed for eligibility in accordance with their broadest reasonable interpretation.
The rationale for this determination is explained below.
Claim 1 recites a method for monitoring total microbial concentration in a water fluid well comprising a water-based fluid comprising: collecting a sample from the well, mixing the sample with a liquid reagent comprising luciferase, thereby forming a composition, measuring photon release of the composition, determining total microbial concentration of the water-based fluid, assigning an ATP-based action level based on the total microbial concentration of the water-based fluid, and performing a control action, a preventative action, or a corrective action introducing 1% by volume to about 20% by volume of a biocide into the water fluid well based on the assigned ATP-based action level. Claim 1 is drawn to a method, which is one of the four statutory categories of invention (Step 1: Yes). Claim 1 recites the steps of determining total microbial concentration and assigning an ATP-based action level based on the total microbial concentration, which are mental processes or abstract ideas (Step 2A Prong One: Yes). The step of determining includes the conversion between the measured photon release to total microbial concentration, which can occur mentally. The step of assigning an ATP-based action level based on the total microbial concentration is likewise a mental process. Although the claim recites performing an action based on the assigned ATP-based action level, this step is recited at a high level of generality with respect to the action and the level. The biocide is not limited to any particular biocide and the control action or the preventative action do not require introducing the biocide. Therefore, claim 1 is not integrated into a practical application (Step 2A Prong Two: No). The additional elements of collecting a water-based fluid sample, mixing the sample with luciferase, and measuring photon release are insignificant extra-solution activity (data gathering) (Step 2B: No). Furthermore, mixing a biological sample with luciferase and measuring photon release is well-understood, routine, and conventional: see Hernandez et al. (SPE/IADC Middle East Drilling Technology Conference and Exhibition. SPE, 2018; cited on the IDS filed on 8/24/2023; page 3, bottom paragraph), Sogin et al. (Applied and environmental microbiology 87.5 (2021): e02278-20; cited on the IDS filed on 8/24/2023; page 10, Biochemical and microbiological testing, paragraph 1), and Stimson et al. (WO 2010/086604 A2; cited on the IDS filed on 1/23/2025; bottom paragraph on page 20 through top paragraph on page 21).
The same analysis above applies to claims 2-17 and 19-20 (Step 1: Yes, Step 2A Prong One: Yes, and Step 2A Prong Two: No).
Claims 2-4 limit the water fluid well and claim 5 limits the water-based fluid. However, this merely limits the data gathering step, which is insignificant extra-solution activity (Step 2B: No).
Claim 6 requires that the luminometer is portable, which again limits the data gathering step only (Step 2B: No). Furthermore, portable luminometers are well-understood, routine, and conventional. For example, the Luminultra QGO-M is portable as evidenced by QGO-MTM Test Kit Instructions (cited on the IDS filed on 8/24/2023; page 2, right column, Getting Started bullet points 1 and 2 both include a carrying case, so the luminometer is portable).
Claims 7-9 limit the constituents of the total microbial concentration, which are part of the judicial exception of the abstract idea of determining the total microbial concentration (Step 2B: No).
Claim 10 limits the repeatability of the measurement by requiring a relative standard deviation in the range of 7.4% to 12.4%. However, the measurement repeatability is an inherent characteristic of the method steps and does not impose meaningful limitations on the judicial exception of the abstract idea (Step 2A Prong Two: No and Step 2B: No).
Claim 11 requires an additional step of filtering, which is part of the necessary data-gathering and furthermore is well-understood, routine, and conventional activity (Step 2B: No). For example, Hernandez teaches filtering the sample prior to mixing with luciferase (page 3, ATP test method, paragraph 1, through paragraph bridging pages 3-4).
Claim 12 recites wherein the total microbial concentration of the water-based fluid in the water fluid well is less than 25 pg ATP/mL, and the assigned ATP-based action level is a good control ATP-based action level. This limitation does not integrate the judicial exception into a practical application (Step 2A Prong Two: No), nor are the additional elements sufficient to amount to significantly more than the judicial exception (Step 2B: No) because the claim does not actually recite any specific action, merely the name of the action level (“good control”). In addition, the specific ATP-based action level is taught by the prior art of Hernandez (Tables 4-5).
Claim 13 limits the action taken to repeating the method steps. However, this is insufficient to integrate the judicial exception into a practical application (Step 2A Prong Two: No) and the claim does not amount to significantly more than the judicial exception (Step 2B: No) because the action taken is merely repetition of the initial data-gathering steps, which constitutes insignificant extra-solution activity.
Similar to claim 12, claim 14 recites the name of the action level (“preventive action”), but does not recite any meaningful actions taken based upon the level. Thus, the additional elements in claim 12 are insufficient to amount to significantly more than the judicial exception of an abstract idea (Step 2B: No). In addition, the specific ATP-based action level is taught by the prior art of Hernandez (Tables 4-5).
Claim 15 recites that the action comprises increasing a frequency of monitoring the total microbial concentration of the water-based fluid in the water fluid well. This limitation is insufficient to integrate the judicial exception into a practical application (Step 2A Prong Two; No) and the additional elements do not amount to significantly more than the judicial exception of an abstract idea (Step 2B: No) because the action is still recited at a high level of generality. The claim does not recite any specific frequency of monitoring (e.g. increasing from daily to twice daily).
Claim 16 recites introducing a biocide, but this limitation is still recited at a high level of generality. No specific biocide is named (Step 2A Prong Two No: and Step 2B: No).
Claim 17 merely recites the name of the action level (“corrective action”) but does not further limit the action taken based upon the level (introducing a generic biocide). Thus, the additional elements in claim 17 are insufficient to amount to significantly more than the judicial exception of an abstract idea (Step 2B: No). In addition, the specific ATP-based action level is taught by the prior art of Hernandez (Tables 4-5).
Claim 19 recites introducing an oxidizing biocide or a non-oxidizing biocide when the total microbial concentration of the water-based fluid is greater than 200 pg ATP/mL. However, the claim does not recite a particular biocide. Rather, the claim merely divides the term “biocide” into two categories (non-oxidizing and oxidizing), which encompasses all biocides. This additional element is insufficient to integrate the judicial exception into a practical application (Step 2A Prong Two: No) or to amount to significantly more than the judicial exception of an abstract idea (Step 2B: No).
Claim 20 recites the additional element of identifying a source of microbial contamination, the source selected from the group consisting of a filter, a heat exchanger, a length of flow pipe and any combination thereof. This step encompasses mental processes (Step 2A Prong One: Yes), such as observing the total microbial concentration for several different objects and determining which is the likeliest source based upon the highest total microbial concentration. The claim does not integrate the judicial exception of an abstract idea into a practical application because although the claim recites an action taken in response to the step of determining the total microbial concentration of the water-based fluid, the action taken is recited at a high level of generality. The claim merely recites a list of well-known equipment within the oil and gas industry (filter, heat exchanger, length of pipe) without any connection to the total microbial concentration determined in the water fluid well.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The following rejections are necessitated by the amendment.
Claims 1, 3-5, and 7-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hernandez et al. (2018, Middle East Drilling Technology Conference and Exhibition, cited on the IDS filed on 8/24/2023) in view of Gieg et al. (Applied microbiology and biotechnology 92.2 (2011): 263-282).
Claim 1 is interpreted as requiring performing a control action, a preventative action, or a corrective action comprising introducing 1% by volume to about 20% by volume of a biocide into the water fluid well. In other words, the control action and the preventative action do not require introducing the biocide.
This rejection applies to the embodiment of claim 1 in which a control action or preventative action is performed.
Hernandez teaches collecting make-up water (water based fluid sample) from drilling rig operations (page 3, Materials and Methods, Sample Source). Hernandez teaches extracting total ATP from the sample, mixing the extracted total ATP with 0.1 mL luciferase enzyme (“liquid reagent comprising luciferase enzyme”) in a cuvette, and measuring the bioluminescence (“photon release”) with a luminometer (paragraph bridging pages 3-4 and first full paragraph on page 4). The photon release (relative light units) is proportional to the amount of ATP (formula 2 on page 4). Hernandez teaches determining the total microbial concentration of the sample (colony forming units or CFU) based on the ATP concentration (bottom paragraph on page 5). Hernandez teaches that the total microbial concentration is linearly proportional to ATP concentration (Figure 1). Hernandez teaches assigning ATP-based action levels for microbial control in drilling rig operations (Table 4) and performing actions based upon the assigned ATP-based action levels that include control actions and preventative actions (Table 5). The action level is assigned based on the determined pg ATP/mL (Table 4). Since Hernandez teaches that the ATP level is proportional to the total microbial concentration, then the ATP-based action level is also based upon the total microbial concentration in the sample, which corresponds to the level in the sample origin.
Although Hernandez teaches collecting make-up water from drilling rig operations (page 3, Materials and Methods, Sample Source), Hernandez does not specify that the make-up water is from a water fluid well.
Regarding claim 3, the specification defines water injection well as a well in which water-based fluids are injected (rather than produced), with the primary objective typically being to maintain reservoir pressure ([0025]).
Hernandez does not teach collecting water-based fluid from a water injection well.
Regarding claim 4, the specification defines "water supply well" as a well in which water-based fluids are stored for use in oil and gas operations, such as drilling, fracturing, acidizing, other stimulation operations, enhanced oil recovery, and the like, and any combination thereof ([0026] of the specification).
Hernandez does not teach collecting water-based fluid from a water supply well.
Gieg teaches a water injection well, water storage, and producing well (Figure 1). The producing well acts as a water supply well because it temporarily stores produced fluids, including oil and water, and the water from the producing well is recycled to the reservoir for enhanced oil recovery (Figure 1 and Abstract).
Gieg teaches that seawater is injected downhole to re-pressure the reservoir after natural pressure is lost during primary recovery and to sweep the oil towards production wells (page 264, left column, second paragraph). Gieg teaches that souring most commonly occurs during water flooding and that the water source can provide multiple components, such as sulfate and carbon sources, that influence whether oilfield souring occurs (Abstract). Gieg teaches that the organism responsible for souring include sulfate reducing prokaryotes comprising bacteria and archaea (page 264, left column, top paragraph). Gieg teaches that injecting biocides can control souring (Abstract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the Hernandez method to test the water in the producing well (“water supply well” or “water fluid well”) for microbial contamination including sulfur-reducing bacteria or archaea prior to recycling the water to the oil reservoir. It would also have been obvious to test the water in the injection well to confirm the absence of sulfur-reducing prokaryotes. The person of ordinary skill in the art would have been motivated to monitor the water for sulfur-reducing bacteria and archaea in order to detect contaminants that would have resulted in the detrimental phenomenon of souring the oilfield. The person of ordinary skill in the art would have been motivated to test for the presence of these microbes in order to take corrective action, such as by applying a biocide.
Regarding claim 5, Gieg’s producing well contains produced water (Figure 1). Gieg also teaches that seawater is injected downhole to re-pressure the reservoir after natural pressure is lost during primary recovery and to sweep the oil towards production wells (page 264, left column, second paragraph).
Regarding claim 7, Hernandez does not teach whether the bacteria or archaea are free-living, particle-associated, or biofilms.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the method of Hernandez to determine the total microbial concentration comprising free-living bacteria and archaea within the water-based fluid. The person of ordinary skill in the art would have had a reasonable expectation of success in the detection of free-living bacteria or archaea given Gieg’s teaching that injection water contains nutrients required for the growth of these organisms. It would have been further obvious that depending on how the sample is taken from the reservoir, the total microbial concentration would have also included particle-associated bacteria or archaea. For example, samples taken near the bottom of the well would have likely contained more solids and particle-associated bacteria and archaea due to settling.
Regarding claim 8, Hernandez teaches that drilling fluids are susceptible to bacterial contamination from naturally occurring oil field microbes such as sulfate-reducing prokaryotes (page 2, paragraphs 1-2).
Regarding claim 9, Gieg teaches that the organism responsible for souring include sulfate reducing prokaryotes comprising bacteria and archaea (page 264, left column, top paragraph).
Regarding claim 10, Hernandez teaches that the ATP test, which is based on photon release, has a relative standard deviation (RSD) ranging from 2% to 17% (Table 1, Formula 2 on page 4), which overlaps with the claimed range.
Regarding claim 11, Hernandez teaches filtering the sample prior to mixing with luciferase (page 3, ATP test method, paragraph 1, through paragraph bridging pages 3-4).
Regarding claims 12, 14, and 17, the units are interpreted as pg ATP/mL rather than pg/ATP mL.
Regarding claims 12-13, Hernandez teaches that less than 25 pg ATP/mL is good control (Table 4), corresponding to an action of “continue ATP monitoring” (Table 5).
Hernandez does not explicitly teach that “continue ATP monitoring” includes repeating the steps of collecting, mixing, measuring, determining, assigning, and performing based on a subsequent water-based fluid from the water fluid well to determine the total microbial concentration of the water-based fluid in the water fluid well.
However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that in order to continue ATP monitoring, each of the steps of the ATP test, including collecting a sample, would have needed to be repeated. The person of ordinary skill in the art would have had a reasonable expectation of success in the repetition of the ATP test on a subsequent sample.
Regarding claims 14-15, Hernandez teaches assigning a preventative action level for total microbial concentration corresponding to between 25 pg ATP/mL and 200 pg ATP/mL (Table 4). Hernandez teaches that the action taken for this level is re-testing the sample and increasing monitoring frequency and/or take corrective actions (Table 5).
Regarding claim 16, Hernandez does not teach introducing a biocide into the well as a preventative or corrective action.
Gieg teaches that injecting biocides can control souring (Abstract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Hernandez by introducing a biocide into the injection well or the producing well as both a preventative and corrective action. The person of ordinary skill in the art would have been motivated to eliminate the bacteria given that they may cause detrimental souring of the oilfield. The person of ordinary skill in the art would have had a reasonable expectation of success given that Gieg teaches biocides that control souring (Abstract).
Regarding claim 17, Hernandez teaches assigning a corrective action level for total microbial concentrations corresponding to greater than 200 pg ATP/mL (Table 4).
Claims 2, 7, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hernandez et al. (cited on the IDS filed on 8/24/2023) in view of Liden et al. (Science of the Total Environment 643 (2018): 107-118).
See discussion of Hernandez above, which is incorporated into this rejection as well.
Regarding claim 2, the specification defines "water disposal well," as a well in which waste water-based fluids from oil and gas operations are injected for safe disposal (e.g., to avoid contamination of freshwater aquifers) ([0024]).
Hernandez does not teach collecting a sample from a water disposal well.
Liden teaches disposal wells for produced water from oil and gas development (Title and Graphical Abstract). Liden teaches that produced water may contain bacteria, including sulfate-reducing bacteria and may originate from the environment or equipment for water handling (page 111, right column, 2.4. Biological, paragraph 1).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the method of Hernandez to Liden’s produced water in a water disposal well. The person of ordinary skill in the art would have been motivated to measure the amount of bacteria released into the environment over time and also to determine increases in the presence of bacteria, which would have been indicative of potential contamination in the equipment for water handling. The person of ordinary skill in the art would have had a reasonable expectation of success given that the method of Hernandez is suitable for diverse water samples including make-up water, cement mix, and drilling fluid (Tables 1-3).
Regarding claim 7, Hernandez does not teach that the total microbial concentration comprises bacterial or archaeal biofilm.
Regarding claim 20, Hernandez does not teach that the corrective action includes identifying a source of microbial contamination in a length of flow pipe.
Liden also teaches that produced water includes sulfate reducing bacteria, which can form biofilms and reduce the flow capacity in pipes (page 112, right column, second to last paragraph).
It would have been further obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to assign an action of identifying the source of contamination, such as a length of pipe, in the method of Hernandez. The person of ordinary skill in the art would have been motivated to avoid a reduction in flow capacity associated with biofouling. The person of ordinary skill in the art would have had a reasonable expectation of success in adding this step to the method of Hernandez.
Claims 1, 3, 5, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hernandez et al. (cited on the IDS filed on 8/24/2023) in view of Stimson (WO 2010/086604 A2; cited on the IDS filed on 1/23/2025).
See discussion of Hernandez above, which is incorporated into this rejection as well.
This rejection applies to the embodiment of claim 1 in which 1% by volume to about 20% by volume of a biocide is introduced into the water fluid well.
Regarding claim 1, Hernandez does not teach introducing 1% by volume to about 20% by volume of a biocide into the well as a corrective action.
Regarding claim 16, Hernandez does not teach introducing a biocide into the well as a preventative action.
Stimson teaches that total ATP levels are reduced by adding a biocide to seawater (page 21, lines 31-32, Figure 3.2). The concentration of biocide ranges from 0 to 10 mg/L (Fig. 3.2). 10 mg/L is approximately 10 mg/1000 mL of 1 mg/100 mL or 1 wt% (approximately equivalent to 1 vol%). Stimson teaches that the viability of organisms in sea water is reduced by adding brilliant green or gentian violet, which are biocides (Figure 4.1, Stimson claim 1).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Hernandez by introducing a biocide into the well as both a preventative and corrective action . The person of ordinary skill in the art would have been motivated to eliminate the bacteria given that they may cause souring of the well and decrease the value of produced hydrocarbons. The person of ordinary skill in the art would have had a reasonable expectation of success given that Stimson teaches biocides that effectively control sulfur bacteria in seawater (Figure 3.4), which is a source of injection water.
It would have been further obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to optimize by routine experimentation the amount of biocide added. The person of ordinary skill in the art would have had a reasonable expectation of success in optimizing the amount of biocide based upon how much bacteria are killed and the expense of the biocide. Adding too much biocide would have added expense to the overall process economics, whereas adding too little biocide would have resulted in some bacteria surviving.
Regarding claim 3, the specification defines water injection well as a well in which water-based fluids are injected (rather than produced), with the primary objective typically being to maintain reservoir pressure ([0025]).
Hernandez does not teach collecting water-based fluid from a water injection well.
Stimson teaches injecting seawater to increase oil recovery when underground pressure becomes insufficient to force the oil to the surface of the oil well (page 5, lines 18-21). The water is often produced water from a well or seawater (page 5, lines 23-24). Stimson further teaches that the presence of bacteria, especially sulphate-reducing bacteria, is undesirable in the injection water because they may cause souring of the reservoir (contamination of the oil with hydrogen sulphide), which reduces the value of the produced hydrocarbons (page 5, lines 25-31). Stimson also teaches detecting the bacteria in a sample via bioluminescence (page 21, lines 7-11). The bioluminescence assay measures levels of microbial ATP (lines 6-7 on page 17).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the method of Hernandez to determine the total microbial concentration of bacteria within the water injection well of Stimson. The person of ordinary skill in the art would have been motivated to determine the presence of undesirable bacteria in order to take corrective action. The person of ordinary skill in the art would have had a reasonable expectation of success given that both Stimson and Hernandez teach the same ATP-based bioluminescence assay for detecting bacteria.
Regarding claim 5, Stimson teaches that both seawater and produced water are injection fluids (page 5, lines 23-24).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hernandez et al. (cited on the IDS filed on 8/24/2023) in view of Gieg et al. (Applied microbiology and biotechnology 92.2 (2011): 263-282), as applied to claims 1, 3-5, and 7-17 above, and as evidenced by QGO-MTM Test Kit Instructions (cited on the IDS filed on 8/24/2023).
Regarding claim 6, Hernandez teaches performing the ATP test method onsite (Title) and in real-time (bottom paragraph of Abstract) by measuring bioluminescence following manufacturer’s instructions for the Luminultra QGO-M (page 3, ATP Testing Method, paragraph 1). The luminometer is portable as evidenced by QGO-MTM Test Kit Instructions (page 2, right column, Getting Started bullet points 1 and 2 both include a carrying case, so the luminometer is portable).
Although Hernandez teaches performing the ATP test method onsite (comprising the steps of collecting the sample, mixing the sample, measuring the photon release, assigning the ATP-based action level, and performing the action), Hernandez does not teach performing the ATP test method at the injection well or the producing well (“water fluid well”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to perform the method of Hernandez at the injection well or the producing well as suggested by Gieg in order to expedite the actions taken in response to the ATP-based action level. The person of ordinary skill in the art would have had a reasonable expectation of success in performing the method at the injection well or the producing well (onsite) given that Hernandez teaches that the method is for onsite monitoring.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hernandez et al. (cited on the IDS filed on 8/24/2023) in view of Stimson (WO 2010/086604 A2; cited on the IDS filed on 1/23/2025) as evidenced by Maley et al. (Experimental dermatology 22.12 (2013): 775-780).
See discussion of Hernandez and Stimson above, which is incorporated into this rejection as well.
Regarding claim 19, Stimson teaches that the viability of organisms in sea water is reduced by adding brilliant green, gentian violet, or erythrosine, which are biocides (Figure 4.1, Stimson claim 1 and Figure 3.3).
Brilliant green is a non-oxidizing biocide because its mechanism of action involves binding to thioredoxin reductase 2, as evidenced by Malay (paragraph 1 on page 3), rather than directly oxidizing the cell walls of bacteria.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CANDICE LEE SWIFT whose telephone number is (571)272-0177. The examiner can normally be reached M-F 8:00 AM-4:30 PM (Eastern).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Louise Humphrey can be reached at (571)272-5543. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CANDICE LEE SWIFT/Examiner, Art Unit 1657
/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657