DETAILED CORRESPONDENCE
Status of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 2, 4-10, 14-22 & 25 have been examined in this application. This communication is a Final Rejection in response to the Amendment filed on October 24, 2025. Claims 3, 11-13, 23, 24 & 26-87 stand canceled.
Claim Objections
Claim 25 is objected to because of the following informalities:
Claim 25 recites “A method of hydraulic fracturing a hydrocarbon-bearing formation to generate a slow exergonic gas generation reaction”. There appears to be a typographical error in reciting “to generate”. The specification appears to describe hydraulic fracturing by using the claimed reaction, and not hydraulic fracturing “to generate” the claimed reaction.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4-10, 14-22 & 25 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 pre-AIA the applicant regards as the invention.
Claims 1, 17 & 25 each recite the term “slow”, a relative term which renders the claim indefinite. The term “slow” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “slow” renders the scope of the claim indefinite as it is unclear as to the reaction rate required to be considered “slow”. It is further unclear if a “slow” reaction refers to the rate or duration of reaction.
Claim 1 recites a system and Claim 17 respects a composition, respectively, “to generate a slow exergonic gas generation reaction” in the preamble. However, the claims do not set forth any features related to the reaction; which is unclear.
Appropriate correction and/or clarification is required. Claims 2, 4-10, 14-16 & 18-22 are also rejected for being dependent on Claim 1. The claims have been examined as best understood.
Claim 2 recites the limitation “wherein one of the first component or the second component is suspended in a non-aqueous solvent” in combination with “wherein one of the first component or the second component is suspended in an aqueous solvent” (in parent Claim 1). As recited, the limitations encompass embodiments where one of the first or second component is suspended in both an aqueous solvent and a non-aqueous solvent; which is unclear. Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim 4 recites the limitation “wherein one of the first component or the second component are in a dry form” in combination with “wherein one of the first component or the second component is suspended in an aqueous solvent” (in parent Claim 1). As recited, the limitations encompass embodiments where one of the first or second component is both suspended in an aqueous solvent and in a dry form; which is unclear. Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4-9, 14-21 & 25 are rejected under 35 U.S.C. 103 as being unpatentable over Stark et al. (US 2021/0148209).
With respect to Claim 1, Stark discloses a water-based hydraulic fracturing treatment fluid system to generate an exergonic gas generation reaction comprising: a) a first component comprising metal proppants; and b) a second component comprising an exergonic gas generating promoter; wherein one of the first component or the second component is suspended in an aqueous solvent (Stark: Sections [0013], [0017], [0019] & [0027]-[0037]); wherein Stark discloses one or more materials presented as an “exergonic gas generating promoter” in the instant disclosure and, as such, this material(s) is considered an “exergonic gas generating promoter” as instantly claimed. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the exergonic gas generating promoter as disclosed by Stark and the exergonic gas generating promoter as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Stark further teaches tailoring the amount of the components to generate a desired rate of reaction (Stark: Sections [0027], [0029] & [0030]). As such, although the reference fails to explicitly limit the reaction to a “slow” exergonic gas generation reaction as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ an amount tailored to the desired rate of reaction, such as instantly claimed, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal reaction rate to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for increasing oil recovery by hydraulic fracturing, and a finite number of identified, predictable solutions including the use of reactive components with amounts tailored to the desired rate of reaction as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Stark, one of ordinary skill in the art could have pursued a desired rate of reaction, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Stark further teaches wherein the proppant size is selected based on fracture characteristics and estimates for modeling and proppant placement (Stark: Section [0027]). As such, although the reference fails to explicitly limit the proppant size to the range as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a desired proppant size, such as instantly claimed, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal proppant size to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for increasing oil recovery by hydraulic fracturing, and a finite number of identified, predictable solutions including the use of suitably sized metal proppants as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Stark, one of ordinary skill in the art could have pursued a desired proppant size, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 2, Stark teaches the system as provided above with respect to Claim 1, and further discloses “…wherein one of the first component or the second component is suspended in a non-aqueous solvent” (Stark: Sections [0027]-[0037]).
With respect to Claim 4, Stark teaches the system as provided above with respect to Claim 1, and further discloses “…wherein one of the first component or the second component are in a dry form” (Stark: Sections [0027]-[0037]); wherein Stark discloses powder forms, which is considered a dry form as instantly claimed. To the extent there is any difference between this feature as disclosed by Stark and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
With respect to Claim 5, Stark teaches the system as provided above with respect to Claim 1, and further discloses “…wherein the metal proppants are aluminum proppants, silicon proppants, or iron proppants, or any combination thereof” (Stark: Sections [0027]-[0037]).
With respect to Claim 6, Stark teaches the system as provided above with respect to Claim 5, and further wherein the proppant size is considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, for reasons set forth above with respect to Claim 1.
With respect to Claim 7, Stark teaches the system as provided above with respect to Claim 5, and further discloses “…wherein the metal proppants are aluminum proppants” (Stark: Sections [0027]-[0037]).
With respect to Claim 8, Stark teaches the system as provided above with respect to Claim 7, and further teaches employing proppants comprising aluminum powder, and wherein the proppant size is selected based on fracture characteristics and estimates for modeling and proppant placement (Stark: Sections [0027] & [0028]). As such, although the reference fails to explicitly limit the proppant to “atomized aluminum powder having an average particle size of from about 0.1 microns to about 100 microns” as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a desired proppant size, such as instantly claimed, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal proppant size to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for increasing oil recovery by hydraulic fracturing, and a finite number of identified, predictable solutions including the use of suitably sized metal proppants comprising aluminum metal powders as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Stark, one of ordinary skill in the art could have pursued a desired proppant size, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 9, Stark teaches the system as provided above with respect to Claim 1, and further discloses “…wherein the exergonic gas generating promoter is a hydroxide promoter, a metal oxide promoter, an acid, or a salt promoter, or any combination thereof” (Stark: Sections [0027]-[0037]).
With respect to Claims 14 & 15, Stark teaches the system as provided above with respect to Claim 9, and further teaches tailoring the amount of the components to generate a desired reaction (Stark: Sections [0027], [0029] & [0030]). As such, although the reference fails to explicitly limit the amount of the exergonic gas generating promoter to a range as respectively claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ an amount tailored to the desired reaction, such as instantly claimed, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal amount to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for increasing oil recovery by hydraulic fracturing, and a finite number of identified, predictable solutions including the use of reactive components with amounts tailored to the desired reaction as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Stark, one of ordinary skill in the art could have pursued a desired amount of one or more components, such as respectively claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 16, Stark teaches the system as provided above with respect to Claim 1, and further discloses “…further comprising a friction reducer, a gum, a polymer, a proppant, a scale inhibitor, an oxygen scavenger, an iron controller, a crosslinker, a corrosion inhibitor, a breaker, a surfactant, a de-emulsifier, a biocide, an acid, or a clay control agent, or any combination thereof” (Stark: Sections [0027]-[0037]).
With respect to Claim 17, Stark discloses a water-based hydraulic fracturing treatment fluid composition to generate an exergonic gas generation reaction comprising: a) metal proppants; and b) an exergonic gas generating promoter; wherein one or both of the first component and the second component are suspended in an aqueous solvent (Stark: Sections [0013], [0017], [0019] & [0027]-[0037]); wherein Stark discloses one or more materials presented as an “exergonic gas generating promoter” in the instant disclosure and, as such, this material(s) is considered an “exergonic gas generating promoter” as instantly claimed. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the exergonic gas generating promoter as disclosed by Stark and the exergonic gas generating promoter as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Stark further teaches tailoring the amount of the components to generate a desired rate of reaction (Stark: Sections [0027], [0029] & [0030]). As such, although the reference fails to explicitly limit the reaction to a “slow” exergonic gas generation reaction as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ an amount tailored to the desired rate of reaction, such as instantly claimed, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal reaction rate to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for increasing oil recovery by hydraulic fracturing, and a finite number of identified, predictable solutions including the use of reactive components with amounts tailored to the desired rate of reaction as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Stark, one of ordinary skill in the art could have pursued a desired rate of reaction, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Stark further teaches wherein the proppant size is selected based on fracture characteristics and estimates for modeling and proppant placement (Stark: Section [0027]). As such, although the reference fails to explicitly limit the proppant size to the range as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a desired proppant size, such as instantly claimed, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal proppant size to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for increasing oil recovery by hydraulic fracturing, and a finite number of identified, predictable solutions including the use of suitably sized metal proppants as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Stark, one of ordinary skill in the art could have pursued a desired proppant size, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claims 18, 20 & 21 Stark teaches the system as provided above with respect to Claim 1, and further discloses one or more materials presented as a “wettability modifier” in the instant disclosure (Stark: Sections [0027]-[0037]) and, as such, this material(s) is considered a “wettability modifier” as instantly claimed. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the wettability modifier as disclosed by Stark and the wettability modifier as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
With respect to Claim 19, Stark teaches the system as provided above with respect to Claim 18, and further teaches tailoring the amount of the components for the desired treatment (Stark: Sections [0027], [0029] & [0030]). As such, although the reference fails to explicitly limit the amount of the wettability modifier to a range as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ an amount tailored to the desired treatment, such as instantly claimed, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal amount to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for increasing oil recovery by hydraulic fracturing, and a finite number of identified, predictable solutions including the use of components with amounts tailored to the desired treatment as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Stark, one of ordinary skill in the art could have pursued a desired amount of one or more components, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 25, Stark discloses a method of hydraulic fracturing a hydrocarbon-bearing formation by generating an exergonic gas generation reaction, the method comprising: a1) injecting a water-based fluid into the formation; and b1) injecting metal proppants into the formation, and injecting the exergonic gas generating promoter into the formation; thereby generating an exergonic gas generation reaction downhole; or a2) injecting a water-based fluid into the formation; and b2) mixing a first component comprising metal proppants with a second component comprising an exergonic gas generating promoter at the surface of the formation to form a composition, and injecting the composition into the formation; thereby hydraulically fracturing the hydrocarbon-bearing formation and generating the exergonic gas generation reaction downhole (Stark: Sections [0013], [0017], [0019] & [0027]-[0037]); wherein Stark discloses one or more materials presented as an “exergonic gas generating promoter” in the instant disclosure and, as such, this material(s) is considered an “exergonic gas generating promoter” as instantly claimed. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the exergonic gas generating promoter as disclosed by Stark and the exergonic gas generating promoter as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Stark further teaches tailoring the amount of the components to generate a desired rate of reaction; and tailoring release and/or reactions to occur under different conditions and/or at different times (Stark: Sections [0027], [0029], [0030], [0036] & [0037]). As such, although the reference fails to explicitly limit the reaction to “slow” and “over a period of 1-10 days” as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to tailor the rate of reaction, such as instantly claimed, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal reaction rate to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for increasing oil recovery by hydraulic fracturing, and a finite number of identified, predictable solutions including the use of reactive components with amounts, release, reactions and reaction rates tailored as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Stark, one of ordinary skill in the art could have pursued a desired rate of reaction, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Stark et al. (US 2021/0148209), in view of O’Dowd (WO 2011/026192).
With respect to Claim 10, Stark teaches the system as provided above with respect to Claim 9, and further teaches the use of components such as aluminum, nitrates, caustic and reactions that are exothermic and/or triggered by various means such as the use of chemicals (Stark: Sections [0019], [0028], [0030], [0033], [0034] & [0041]). The reference, however, fails to disclose a promoter as instantly claimed.
O’Dowd teaches compositions and methods for the treatment of subterranean formations, including fracturing, therein, wherein one or more materials as instantly claimed are employed with metals such as aluminum, alone or in combination with one or more materials as disclosed by Stark, in order to activate the reaction (O’Dowd: Pages 3-6, 10, 19 & 20). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified Stark with the aforementioned teachings of O’Dowd to employ one or more promoters as instantly claimed, with a reasonable expectation of success, in order to activate the reaction. (O’Dowd: Pages 3-6, 10, 19 & 20).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Stark et al. (US 2021/0148209), in view of Dams et al. (US 2012/0097393).
With respect to Claim 22, Stark teaches the system as provided above with respect to Claim 18 and further discloses the system comprising surfactant (Stark: Section [0035]), which is considered a wettability modifier for reasons as set forth above with respect to Claim 18. The reference, however, fails to explicitly disclose the surfactant as “an anionic, nano-ionic, or cationic siloxane surfactant or fluorosurfactant” as instantly claimed.
Dams teaches compositions and methods for the treatment of subterranean formations therein, wherein it is taught to be known in the art to employ a surfactant/wettability modifier as instantly claimed to prevent or remedy water blocking, prevent or remedy liquid hydrocarbon accumulation and/or increase well productivity (Dams: Sections [0002] & [0003]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified Stark with the aforementioned teachings of Dams to employ one or more surfactants/wettability modifiers as instantly claimed, with a reasonable expectation of success, in order to prevent or remedy water blocking, prevent or remedy liquid hydrocarbon accumulation and/or increase well productivity. (Dams: Sections [0002] & [0003]).
Response to Arguments
Applicant's amendments regarding the claim objections are persuasive in-part. As such, these rejections are withdrawn in-part, and maintained in-part as set forth above.
Applicant's amendments regarding the 35 USC § 112(a) rejections are persuasive. As such, these rejections are withdrawn.
Applicant's arguments and amendments regarding the 35 USC § 112(b) rejections have been fully considered.
With respect to Claims 2 & 4, the amendments raise new issues and/or fail to persuasively address the issues under 35 USC § 112. As such, the rejections are maintained with updates to address amendments, if any, as set forth above.
With respect to the recitation of “slow” in Claims 1, 17 & 25, Applicant asserts that specification clearly provides a standard for ascertaining the requisite degree that one of ordinary skill in the art would be reasonably apprised of the scope of the subject matter; Applicant reports the gas was slowly generated over a long period of time (i.e., days) in Examples 1-5; and thus, the term “slow” should be construed to mean over a period of days (as opposed to immediately).
The Examiner respectfully disagrees.
It is noted that the specification does not set forth a clear and concise definition of the term “slow”. In response to Applicant's argument, it is noted that the features upon which Applicant relies (i.e., meaning of “slow” as asserted) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As such, the rejections are maintained with updates to address amendments, if any, as set forth above.
Applicant's arguments with respect to the rejection(s) of Claims 1, 2, 4-10, 14-22 & 25 under 103 as being unpatentable over Stark et al., alone or in combination with O’Dowd and/or Dams et al., have been fully considered but they are not persuasive. Applicants assert that (1) Stark does not disclose a slow exergonic gas generation reaction utilizing a metal proppant as is recited in the pending claims; (2) Stark does not connect any of its parameters to any particular result, and merely identifies that its parameters may be changed; thus, Stark fails to identify its parameters as result-effective variables, and also fails to provide sufficient motivation for a person having ordinary skill in the art to arrive at the present claims; and Stark does not disclose or suggest its particle sizes as a result-effective variable; and (3) Stark does not disclose wherein one of the first or the second component is suspended in an aqueous solvent; and the teachings of [0029] & [0035] are clearly distinct from the claimed configuration.
The Examiner respectfully disagrees.
Stark teaches the system, composition and method as respectively claimed, as set forth above. Stark discloses wherein one or both of the first and the second component are suspended in an aqueous solvent [0027]-[0037], where Stark discloses the use of aqueous, non-aqueous and emulsion fluids in at least [0035]; which reads on the feature as broadly claimed. In response to Applicant's argument that the references fail to show certain features of Applicant’s invention, it is noted that the features upon which Applicant relies (i.e., any specifics of metal proppants reacting in the exergonic gas generation reaction; any result associated with particle size or other parameters; any distinct configuration of the first or second component) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As such, the claims remain rejected under 35 USC 103 in view of Stark et al., alone or in combination with O’Dowd and/or Dams et al.et al., as set forth above, with updates to address any amendments.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674
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