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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/11/25 has been entered.
Election/Restrictions
As previously set forth: Applicant’s election without traverse of:
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in the reply filed on 4/14/25 is acknowledged.
Priority
As previously set forth: The provisional application does not have embodiments of the use of nonionic surfactants alone so the claims have an effective date of the filing of the instant application: 7/31/18
Claim Interpretation
As previously set forth: In the pending claims, “low particle size injection fluid” is seemingly drawn to the micellular structure of the surfactant compositions. Herein, there are seemingly no solid particles added to any of the fluids (other than proppants, which are excluded from the maximum particle size values, see claim 2). Thus, as long as the elected species of nonionic surfactant (the claimed primary surfactant) are met, the particle size requirements will be deemed to be embraced by the rejection. Likewise, for the aqueous fluid and diameter of such in claim 47, the Examiner is using [0153] for the slickwater examples, and, as long as the reference has a friction reducing polymer (it is noted that therein emulsion based friction reducing polymers are inverted in the slickwater and thus are no longer emulsified) and surfactants therein it will be deemed to inherently embrace the particle size requirements of claim 47. If Applicant wishes different compositions or elements to “control” the particle size requirements of the claims such should be amended into the claims.
Response to Arguments/Affidavit
Applicant argues the unconventional formation and the use of the composition therein are not suggested or disclosed.
The Examiner disagrees. The unconventional formation is described in the specification to be a formation that requires intervention to recover hydrocarbons at economic flowrates [0041]. While there are other embodiments of pore sizes and/or permeabilites described these are merely examples and not clear definitions of the term. Solastiouk’s compositions are used to enhance oil recovery of formations, and thusly meet this requirement.
Applicant argues the affidavit shows that C9-11-6EO, which is embraced by Solastiouk, does not meet the aqueous stable requirements of the claim.
The Examiner agrees. In Solastiouk [0041, 0043] embraces the use of the C9-11-6EO surfactant of the declaration, [0067, 0071] embraces the use of the Dowfax 2A1 surfactant of the declaration, and [0063] embraces the alkylarylsulfonate of the declaration. Thus, those surfactants shown in the declaration to not give an aqueous stable composition are all embraced by Solastiouk. There is no suggestion or motivation to pick surfactants of Solastiouk to form the claimed ‘aqueous stable’ composition. Herein “aqueous stable” is interpreted as defined by [0049] of the specification to mean the components remain dissolved in a single phase and are clear and transparent statically and when agitated. The positions over Solastiouk are thusly removed.
Applicant argues the double patenting rejections should be held in abeyance until allowable subject matter is determined.
The Examiner disagrees. The filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 10, 12, 13, 28, 29, 39-40, 42, 46, 53, 64, 67, 80 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 17 of U.S. Patent No. 11760921. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3 of ‘921 meet instant claims 1, 67, 80, 94. Since the composition/surfactant requirements are met the aqueous stable and particle size requirements are deemed to be embraced by the reference. Claims 2, 4, 5, 6, 7, 8, 9-13 of ‘921 meet instant claims 2, 10, 12, 13, 28, 29, 39, 40, 42, 46, respectively, claim 12 of ‘921 meets instant claim 46, claim 17 of ‘921 meets instant claims 53, 64.
Claims 1, 10, 12-13, 15, 21, 28, 29, 39, 42, 53, 64, 67, 80, 94 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, 11, 9, 16 of U.S. Patent No. 11834609. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 6 of ‘609 meet instant claims 1, 12, 13, 15, 21, 28, 39, 67, 80, 84. Since the composition/surfactant requirements are met the aqueous stable and particle size requirements are deemed to be embraced by the reference. Claim 7 of ‘609 meets instant claim 10, claim 11 of ‘609 meets instant claim 29, claim 9 of ‘609 meets instant claim 42 and claim 16 of ‘609 meets instant claims 53, 64.
Claims 1, 10, 12-13, 15, 21, 28, 29, 39, 42, 53, 64, 67, 80, 94 areprovisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13, 14, 23, 53, 54, 49 and 72 of copending Application No. 18496558 (reference application-allowed by not issued). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 13, 14 of ‘558 meet instant claims 1, 12-13, 15, 21, 28, 39, 67, 80, 94. Since the composition/surfactant requirements are met the aqueous stable and particle size requirements are deemed to be embraced by the reference. Claims 23, 53 of ‘558 further meet instant claim 10, claim 54 of ‘558 meets instant claim 29, claim 49 of ‘558 meets instant claim 42 and claim 72 of ‘558 meets instant claims 53, 64.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 10, 12-13, 15, 21, 28, 39, 40, 42, 48, 53, 64, 67, 80, 94 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, 18, 19, 25, 2, 40, 42, 47, 48 of copending Application No. 18464691 (reference application-now US Pat 12435262). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 15, 18, 19 of ‘691 meet instant claims 1, 12-13, 15, 21, 28, 39, 67, 80, 94. Since the composition/surfactant requirements are met the aqueous stable and particle size requirements are deemed to be embraced by the reference. Claim 25 of ‘691 meets instant claim 10, claim 2 of ‘691 meets instant claim 2, claims 40, 42, 47, 47 of ‘691 meet instant claims 40, 42, 48, respectively and claim 53 of ‘691 meets instant claims 53, 64.
Allowable Subject Matter
Claim 95 is 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.
The following is a statement of reasons for the indication of allowable subject matter: If the above double patents rejections are remedied, the claims would be allowed. Applicant’s arguments are persuasive, see above. Solastiouk stands as an example of the closest prior. Solastiouk discloses many different surfactants therein, embracing those of the affidavit dated 8/13/25 (see Remarks above). Therein, the affidavit is persuasive to show that the “aqueous stable” (as defined by [0049] to mean the components remain dissolved in a single phase and are clear and transparent statically and when agitated) requirement of the claims is not necessarily inherent, there being no suggestion or motivation to achieve it in the closest prior art of record.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759