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 § 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 4 and 10-11 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 4 recites the limitation, “wherein the oxidizable metal particles comprise iron, iron oxide, aluminum, or both”. It is unclear which pair or combination of species from the list is meant by “both”. For purposes of examination, any of the listed species or combination of one or more of the listed species will be considered to read on the claim, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Claim 10 recites the limitations “the CO2”, “the carbonic acid”, and “the metal carbonate” in lines 1-2. There is insufficient antecedent basis for these limitations in the claim. For purposes of examination, these limitations will be interpreted to mean “CO2”, “carbonic acid”, and “metal carbonate”, respectively, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Claim 11 is indefinite due to its dependence on the indefinite claim 10 and because it does not cure the indefiniteness of “the CO2”, “the carbonic acid”, and “the metal carbonate” as they are recited therein.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1, 4, 8-9, 12, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Switzer (U.S. 2017/0284180 A1) in view of Gluyas (“Petroleum Geoscience - 4.5 The Trap”, 2004).
Regarding claim 1, Switzer teaches a method of generating hydrogen in a subsurface formation (Switer, Fig. 1, [0031]-[0068]) , the method comprising:
injecting oxidizable metal particles into a subsurface formation comprising subsurface water (Switzer, [0034], [0049]; base metal particles, connate water) and a geologic trap (Switzer, [0004], hydrocarbon-trapping formations), wherein:
the subsurface water has a pressure of from 2,000 psi to 14,000 psi (Switzer, [0059]), which overlaps with the claimed range of 500 psi to 10,000 psi;
the geologic trap substantially prevents vertical migration of the subsurface water out of the subsurface formation (Switzer, [0049], the presence of connate water means that it has been prevented from vertically migrating out of the subsurface formation); and
the oxidizable metal particles react with the subsurface water to form hydrogen and one or more metal oxides or metal hydroxides (Switzer, [0049], [0059], metal oxide product and dihydrogen gas).
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the pressures because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Switzer does not explicitly state that the subsurface water has a temperature of from 18°C to 400°C. However, Switzer assumes a subterranean temperature of 50°C in estimating an equilibrium potential (Switzer, [0039]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected a subsurface water temperature of 50°C in Switzer’s method because Switzer’s assumption of 50°C as a subterranean temperature (Switzer, [0039]) suggests that this would be an appropriate temperature for the process.
Switzer does not explicitly teach that the geologic trap comprises one or both of a structural trap or a stratigraphic trap. However, Gluyas teaches that geologic traps are categorized as structural traps, stratigraphic traps, and hydrodynamic traps, with hydrodynamic traps being uncommon (Gluyas, Page 148, Col. 1, Paragraph 2 - Col. 2, Paragraph 2).
As it was recognized at the time of the invention that the need of selecting a type of geologic trap had a finite number of identified, predictable potential solutions (Gluyas, Page 148, Col. 1, Paragraph 2 - Col. 2, Paragraph 2, structural traps, stratigraphic traps, and hydrodynamic traps, it would have been obvious to a person having ordinary skill in the art to pursue these known potential solutions, including structural traps and stratigraphic traps, with a reasonable expectation of success. See MPEP 2143.I.E.
Regarding claim 4, modified Switzer renders the method of claim 1 obvious, as discussed above, wherein the oxidizable metal particles are selected from a list including iron (Switzer, [0034]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected iron as the oxidizable metal particles in Switzer’s method, as Switzer teaches that iron is a suitable material for the purpose of the method (Switzer, [0034]). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Regarding claim 8, modified Switzer renders the method of claim 1 obvious, as discussed above. While Switzer does not explicitly teach the exact type of structural or stratigraphic trap, each type of structural trap recited (anticline trap and fault trap) and stratigraphic trap recited (pinch-out, unconformity, diapir, and caprock) are taught by Gluyas as known potential solutions for type of trap to select (Gluyas, Figs. 4.36 and 4.37).
As it was recognized at the time of the invention that the need of selecting a type of geologic trap had a finite number of identified, predictable potential solutions (Gluyas, Figs. 4.36 and 4.37, anticline trap, fault trap, pinch-out, unconformity, diapir, and caprock), it would have been obvious to a person having ordinary skill in the art to pursue these known potential solutions with a reasonable expectation of success. See MPEP 2143.I.E.
Regarding claim 9, modified Switzer renders the method of claim 1 obvious, as discussed above, wherein the subsurface water comprises non-potable water containing one or more dissolved, salts, minerals, and organic materials (Switzer, [0049], connate water).
Regarding claim 12, modified Switzer renders the method of claim 1 obvious, as discussed above, wherein the subsurface formation comprises a hydrocarbon formation (Switzer, Fig. 3, [0007]).
Regarding claim 15, modified Switzer render the method of claim 1 obvious, as discussed above, wherein the pressure of the subsurface water is 2,000 psi to 14,000 psi (Switzer, [0059]), which overlaps with the claimed range of 500 psi to 4,000 psi.
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the pressures because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 16, modified Switzer render the method of claim 1 obvious, as discussed above, wherein the temperature of the subsurface water is 50°C (Switzer, [0039], see rejection of claim 1 above regarding the obviousness of selecting 50°C as the temperature).
Allowable Subject Matter
Claims 2, 5-7, and 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 10-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 17-20 are allowed.
The following is an examiner’s statement of reasons for indicating allowable subject matter: Switzer (U.S. 2017/0284180 A1), Barenbaum (WO 2012/118410 A2), Cui (CN 116590351 A) (see the attached machine translation), and Gluyas (“Petroleum Geoscience - 4.5 The Trap”, 2004) are considered to be the closest prior art to the instant claims.
Regarding claim 2 and its dependent claims 5-7 and 13-14, as well as claim 10 and its dependent claim 11 Switzer and Gluyas together render the method of claim 1 obvious, as discussed above, but none of the cited prior art references teach or suggest injection CO2 into the subsurface formation to react with water, forming carbonic acid, which reacts with the oxidizable metal particles to form additional hydrogen and metal carbonate. While the prior art does teach injecting CO2 into subsurface formations to dispose of the CO2 while forming hydrocarbons (e.g., Barenbaum, Abstract), there is no teaching or suggestion of applying CO2 injection to form metal carbonates and additional hydrogen from a subsurface formation (claim 2). As there is no teaching of suggesting of forming metal carbonates, it would not have been obvious for a caprock seal to prevent upward migration of a metal carbonate (claims 10-11).
Regarding claim 3, modified Switzer renders the method of claim 1 obvious, as discussed above, but none of the cited prior art references teach or suggest that the oxidizable metal particles are nanoparticles having a particle size of less than or equal to 100 nm.
Regarding claim 17 and its dependent claims 18-20, Switzer and Gluyas together render the limitations of claim 17 included in claim 1 obvious, as discussed in the rejection of claim 1 under 35 U.S.C. 103 above. However, none of the cited prior art references teach or suggest that the oxidizable metal particles are nanoparticles having a particle size of less than or equal to 100 nm.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cui (CN 116590351 A) (the attached machine translation is referenced below) teaches injecting a metal-containing solution into a subsurface formation and generating hydrogen therefrom (Cui, [0026]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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