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 .
Election/Restrictions
Applicant’s election of claims 1-13 in the reply filed on 10/17/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
Claims 6 and 11 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 6 recites the limitation "the outlet tank." There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the outlet tank." There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US 2012/0080185) in view of Miller et al. (US 2012/0279925).
Regarding claim 1, Jackson teaches a method of recycling contaminated water from a drilling rig, the method comprising: from the drilling rig, receiving the contaminated water (2), the
PNG
media_image1.png
4
4
media_image1.png
Greyscale
contaminated water including sediments in suspension; dispensing agglomerating additives/dewatering chemicals (45) and mixing the agglomerating additives with the contaminated water, the agglomerating additives promoting agglomeration of the sediments into larger particles; separating via separation means (3 4) at least a portion of the sediments from the tapped portion to produce treated water (6 9) and a sludge (11 12) including the at least a portion of the sediments; and providing the treated water to the drilling rig for use in a drilling operation (30); wherein the treated water contains less sediments in suspension than the contaminated water (Fig. 3 and [0020]-[0037]).
Jackson teaches that the agglomerating additives are adding in the flow upstream of the separating means/centrifuges but fails to teach the contaminated water is added to an inlet tank, the agglomerating additives are added and mixed in the inlet tank, and the inlet tank has a tapped portion/outlet leading to the separating means. Miller teaches a method for treating contaminated water from a drilling rig wherein the contaminated water is mixed with agglomerating additives/flocculants/coagulants either in a tank or in-line ([0040]-[0041]), then the mixed contaminated water is passed to a separation means in order to produce a treated water and a sludge (Fig. 1 and [0034]-[0046]). As Miller teaches that agglomerating additives can be added in line, as taught in Jackson, or in an inlet tank with the method steps claimed, one skilled in the art would have found it obvious to use the inlet tank arrangement as taught in Miller in order to mix the agglomerating additives with the contaminated water as such a design is known in the art and one skilled in the art would have a reasonable expectation of success in doing so.
Regarding claim 2, Jackson teaches that the treated water is moved to an outlet tank (8) before being provided to the drilling rig (Fig. 3).
Regarding claim 3, Jackson teaches that the sludge is dispensed to a sludge accumulating location (10) (Fig. 3).
Regarding claims 4-5 and 10, Jackson does not teach that the steps in the process are being performed in either a batch or continuous manner. However, it is noted that the process steps would have to be performed in either a batch or continuous manner. This is supported by Miller teaching that steps are performed in a batch or continuous manner ([0040]). Further, MPEP 2144.04 (V) (E) states that it is an obvious matter to make a batch process continuous or vice versa. Therefore, one skilled in the art would have found it obvious to have the various method steps of Jackson be batch or continuous consistent with claims as it is merely performing the same method but in an obvious, different manner.
Regarding claims 6 and 8-9, it is submitted that the addition of the agglomerating additives and centrifugal separation would result in the removal of solids, which include suspended solids, and the inherent result would be the decrease in the total suspended solids and maintaining the turbidity/TSS as specific levels due to the addition of the agglomerating additives. It is submitted that the desired effect/TSS concentrations is merely optimizing the dosage amount and the degree of separation/centrifuging the contaminated water, both of which would be considered merely finding workable amounts when all process conditions are known. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
Regarding claim 7, Jackson teaches that fresh water can also be added ([0035]-[0036]).
Regarding claim 12, Jackson teaches that the separating means is a centrifugal separator ([0024]).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US 2012/0080185) in view of Miller et al. (US 2012/0279925) as applied to claim 1 above, and further in view of Hart et al. (US 2004/0134860).
Regarding claim 11, Jackson teaches that the treated water is reused as drilling fluid but fails to teach the pH is maintained in an outlet tank to desired levels. Hart teaches that environmental requirements state that the pH of treated fluid to be reused as drilling fluid should be maintained at specific pH levels ([0022]). As such, one skilled in the art would have found it obvious to maintain the pH levels in the outlet tank at specific levels as required.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US 2012/0080185) in view of Miller et al. (US 2012/0279925) as applied to claim 1 above, and further in view of King (US 2012/0211281).
Regarding claim 13, Jackson teaches that the treated water is reused as drilling fluid but fails to teach the recycled drilling fluid has drilling additives added before use. King teaches that it is known to add desired drilling additives to fluid being recycled as drilling fluid in order to optimize the recycled drilling fluid for certain types of drilling techniques or drill rigs ([0043]). As such, one skilled in the art would have found it obvious to add drilling additives as needed in order to optimize the recycled drilling fluid for certain types of drilling techniques or drill rigs.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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, Vickie Kim can be reached at 571 272-0579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER KEYWORTH/Primary Examiner, Art Unit 1777