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 .
Status of Claims
Claims 19-21 and 23 are currently pending
Claims 1-18 and 22 are currently withdrawn from consideration
Claims 3, 5 and 9 are currently amended
Claims 19-21 and 23 are currently rejected
Information Disclosure Statement
The Information Disclosure Statements filed on 12/01/2023 and 05/18/2026 are in compliance with the provisions of 37 CFR 1.97 and have been considered. An initialed copy of the Form 1449 is enclosed herewith.
Election/Restrictions
Applicant's election with traverse of Group III claims 19-21 and 23 in the reply filed on 08/14/2026 is acknowledged. The traversal is on the ground(s) that the restricted inventions are not independent inventions and that examination of both claimed invention together would not present a serious burden on the U.S. Patent and Trademark Office. This is not found persuasive because the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41 has been adequately addressed in MPEP §802.01. Therein, it is stated that the legislative intent was to maintain the substantive law on the subject of restriction practice prior to enactment of 35 USC 121. Such practice permitted restriction between distinct, albeit dependent inventions. If the intent had been otherwise, then only the term “independent” would have been used. Thus, restriction between the distinct inventions set forth in this application is proper even though these inventions are clearly related.
With regard to applicants allegation that joinder of these distinct inventions would not present a serious burden to the U. S. Patent and Trademark Office, such allegations relied on the unsupported assumption that the search and the examination of both the invention would be coextensive. However, the issues raised in the examination of apparatus claims are divergent from those raised in the examination of process claims. Further, while there may be some overlap in the searches of the two inventions, there is no reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 19 is objected to because of the following informalities: Line 2 states “for use in hydraulic fracturing” and instead should state “for use in the hydraulic fracturing” for further clarity. FURTHERMORE, lines 5-6 and 10 each state “chelate iron” and instead should each state “chelate the iron” for further clarity. ADDITIONALLY, line 9 states “to polymer fragments” and instead should state “to the polymer fragments” for further clarity. ALSO, lines 11-12 state “said produced oil from produced water;” and instead should state “said produced oil from said produced water;” for further clarity. IN ADDITION, line 14 states “adding more oxidant” and instead should state “adding more of the oxidant” for further clarity. ADDITIONALLY, line 16 states “to oxidize free iron” and instead should state “to oxidize the free iron” for further clarity. Appropriate corrections are required.
Claim 21 is objected to because of the following informalities: Lines 4-5 state “said produced oil from produced water;” and instead should state “said produced oil from said produced water;” for further clarity. ADDITIONALLY, line 6 states “having iron-polymer chelates” and instead should state “having the iron-polymer chelates” for further clarity. FURTHERMORE, line 8 states “to oxidize free iron” and instead should state “to oxidize the free iron” for further clarity. Appropriate corrections are required.
Claim 23 is objected to because of the following informalities: Line 2 states “treating a produced water” and instead should state “treating the produced water” for further clarity. FURTHERMORE, line 6 states “of said oxidized iron to produce cleaned produced water.” and instead should state “of said oxidized free iron to produce the cleaned produced water.” for further clarity. Appropriate corrections are required.
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 19-21 and 23 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 19 recites the limitation "testing an oxidant for said polymer to determine if it will degrade” on line 4. It is unclear and confusing what will degrade, the oxidant or the polymer? Claims 20-21 and 23 are also rejected since these claims depend on claim 19.
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.
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.
Claims 19-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Conway et al. (U.S. 2021/0108496 A1) (hereinafter “Conway”).
Regarding Claim 21:
Conway teaches a method of hydraulic fracturing (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44, 46 and 54-55) (see Examples 1-3), comprising:
a) testing a polymer (metal-polymer complexes) suitable for use in hydraulic fracturing to determine said polymer will chelate a metal (see paragraphs 54-55 regarding testing/sampling/experimenting) (see paragraphs 7-8, 19-20, 27, 44 and 46) (see Examples 1-3);
b) testing an oxidant (peracetic acid including peracetic acid mixtures) for said polymer to determine if it will degrade said polymer at reservoir temperatures to form polymer fragments that will not chelate the metal (Examiner’s note: this claim limitation is in a conditional form; therefore, does not have to occur) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see paragraphs 7-8, 21-24, 27, 30, 32-33, 44 and 46) (see Examples 1-3);
c) fracturing a reservoir (well bore) with a hydraulic fracturing fluid comprising water, said polymer and said oxidant (see paragraphs 20, 28, 30 and 41) (see Examples 1-3);
d) waiting a period of time to degrade said polymer to polymer fragments that no longer chelate the metal (see paragraphs 42, 47 and 50-51) (see Examples 1-3);
e) producing oil and water from said reservoir and separating said produced oil from produced water (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44, 46 and 54-55) (see Examples 1-3);
f) optionally testing said produced water to confirm that the metal is free metal, and if a portion of said metal remains chelated, adding more oxidant to further degrade said polymer (Examiner’s note: this claim limitation is in an optional form; therefore, does not have to occur) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see Examples 1-3);
g) treating said produced water to oxidize free metal by neutral pH oxidation (see paragraphs 50) (see Examples 1-3); and
h) removal of said oxidized free metal (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44 and 46) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see Examples 1-3).
Although Conway teaches a system and method of hydraulic fracturing, Conway does not explicitly teach the claim limitations including iron, free iron, and/or oxidized free iron, as recited in independent claim 19 (a method). However, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify the system and method of hydraulic fracturing of Conway to further include chelating iron/oxidized iron/free iron for optimization purposes (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44 and 46) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see Examples 1-3).
Regarding Claim 20:
Conway teaches the method of claim 19, wherein said removal step h) methodology is selected from one or more of precipitation, flotation, centrifugation, decantation, filtration, or combinations thereof (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44 and 46) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see Examples 1-3).
Regarding Claim 21:
Conway teaches a method of hydraulic fracturing (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44, 46 and 54-55) (see Examples 1-3), comprising:
a) fracturing a reservoir (well bore) with a hydraulic fracturing fluid comprising water and a polymer that can form metal-polymer chelates (see paragraphs 20, 28, 30 and 41) (see Examples 1-3);
b) producing oil and water from said reservoir and separating said produced oil from produced water (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44, 46 and 54-55) (see Examples 1-3);
c) treating said produced water having metal-polymer chelates with an aluminum compound to form free metal (see paragraphs 54-55 regarding testing/sampling/experimenting) (see Examples 1-3);
d) treating said produced water to oxidize free metal by neutral pH oxidation (see paragraphs 50) (see Examples 1-3); and
e) removal of said oxidized free metal (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44 and 46) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see Examples 1-3).
Although Conway teaches a system and method of hydraulic fracturing, Conway does not explicitly teach the claim limitation iron-polymer chelates including iron, free iron, and/or oxidized free iron, as recited in independent claim 21 (a method). However, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify the system and method of hydraulic fracturing of Conway to further include iron-polymer chelates such as iron, free iron, and/or oxidized free iron for optimization purposes (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44 and 46) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see Examples 1-3).
Regarding Claim 23:
Conway teaches a method of cleaning produced water (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44, 46 and 54-55) (see Examples 1-3), comprising:
a) treating a produced water that has been determined to have metal-polymer chelates with either an aluminum compound at surface conditions to free metal (see paragraphs 54-55 regarding testing/sampling/experimenting) (see paragraphs 7-8, 19-20, 27, 44 and 46) (see Examples 1-3) or an oxidant at a temperature of at least 55° C to free metal (Examiner’s note: this claim limitation is in an alternative form; therefore, only one has to occur) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see paragraphs 7-8, 21-24, 27, 30, 32-33, 44 and 46) (see Examples 1-3);
b) oxidizing said free metal by neutral pH oxidation (see paragraphs 50) (see Examples 1-3); and
c) removal of said oxidized metal to produce cleaned produced water (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44 and 46) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see Examples 1-3).
Although Conway teaches a system and method of hydraulic fracturing, Conway does not explicitly teach the claim limitation iron-polymer chelates including iron, free iron, and/or oxidized free iron, as recited in independent claim 23 (a method). However, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify the system and method of hydraulic fracturing of Conway to further include iron-polymer chelates such as iron, free iron, and/or oxidized free iron for optimization purposes (see FIGS. 1 and 5) (see paragraphs 5, 7-9, 18-21, 27-28, 41, 44 and 46) (see paragraphs 54-55 regarding testing/sampling/experimenting) (see Examples 1-3).
Other References Considered
AlQahtani et al. (U.S. 2024/0150203 A1) (hereinafter “Qahtani”) teaches decomposition of gas field chemicals by plasma treatment.
SLATER (U.S. 2019/0300401 A1) (hereinafter “Slater”) teaches decomplexation of chelated hardness at high pH.
GAID et al. (U.S. 2020/0131059 A1) (hereinafter “Gaid”) teaches a water treatment plant having integrated ballasted flocculation and decantation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AKASH K. VARMA whose telephone number is (571)272-9627. The examiner can normally be reached Monday-Friday 9-5 pm.
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/AKASH K VARMA/Primary Examiner, Art Unit 1773
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