DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment / Arguments
The response filed 04/24/2026 has been entered. Claims 1-3 are cancelled. Claim 21 is added. Claims 4-21 are pending. Applicant’s arguments regarding claims 4-21 are either unpersuasive or moot due to a new grounds of rejection, necessitated by amendment. As an initial note, applicant’s citations to the specification (e.g., in section II on page 6 of the response) appear to be to the PGPUB rather than the instant specification (e.g., the instant specification does not have a paragraph number [0296] but the PGPUB does).
On page 7 of the response, applicant argues that neither Loisel nor Huang teaches or suggests determining “the amount of liquid entrained in the foam itself”. Applicant also argues that “Loisel determines the amount of liquid in the foam by measuring the conductivity (or level) of the remaining liquid at the base of the column via electrodes, thereby inferring the amount incorporated into the foam”. In response, the examiner notes that applicant explicitly stated that Loisel “determines the amount of liquid in the foam”. The amount of liquid in the foam of Loisel is interpretable as “the amount of liquid entrained in the foam”. Therefore the examiner finds the aforementioned argument unpersuasive.
On page 7 of the response, applicant argues that that the characterization of Loisel and Huang as art-recognized equivalents for determining an amount of liquid in a foam is “hindsight-driven”. Applicant argues that “the references address different problems and measure different quantities (remaining liquid at base vs. already-unloaded liquid) than the claimed focus of entrained/carried liquid within the foam”. In response, the examiner notes that applicant misleadingly mischaracterizes Loisel’s quantity measured as “remaining liquid at [the] base”. Loisel explicitly recites “enables to measure the volume of liquid present in the foam formed” (Col. 5, Lines 2-3). Huang’s “liquid unloading efficiency” is also a measure of / Huang measures the amount of volume/liquid that is entrained / contained / unloaded by the foam. The previous Office action stated that Loisel and Huang are art-recognized equivalents “for determining an amount of liquid in a foam”. Each reference measures an amount of liquid in a foam that is generated by sparging. As such, the examiner holds it clear that they are equivalents “for determining an amount of liquid in a foam”. Lastly, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Loisel and Huang each generate a foam by sparging and measure characteristics of the generated foam, as set forth above as well in the claim rejections below. Therefore the examiner finds the aforementioned argument(s) unpersuasive.
On page 7 of the response, applicant argues that amended independent claim 4 “recites combining aqueous and hydrocarbon phases in a predetermined proportion simulating well fluids”. In response, the examiner notes that claim 4 lists alternatives. Specifically, claim 4 recites “(a) combining (i) an aqueous phase, a hydrocarbon phase, or both an aqueous phase and a hydrocarbon phase in a predetermined proportion simulating well fluids with (ii) a foamer to obtain a liquid”. Thus, art which teaches an aqueous phase meets the limitation, art which teaches a hydrocarbon phase meets the limitation, and art which teaches both an aqueous phase and a hydrocarbon phase meets the limitation. Loisel teaches an aqueous phase, as set forth in the previous Office action. The words “simulating well fluids” was added by the amendment. A new grounds of rejection is provided which relies on Huang’s explicit teaching of “[w]ater encountered in the oil and gas production could have a wide range of total dissolved solid (TDS) ranging from condensation water with minimum salt content to high salinity brine with greater than 20% TDS. To ensure robust foaming performance of the compositions in these fluids, the composition is formulated to be compatible with typical oil field brines. Thus, the compatibility of various compositions described herein with a brine solution was investigated.” This section of Huang explicitly meets the newly added limitation of “simulating well fluids”. Therefore the examiner finds the aforementioned argument unpersuasive.
On page 7 of the response, applicant argues that Huang fails to teach “the claimed mixed-phase sparging step (see pending claim 6)”. See the immediately preceding bullet point. As a new grounds of rejection for independent claim 4 is necessitated by amendment (e.g., Loisel fails to teach the newly added limitation of “simulating well fluids”), a new grounds of rejection is also provided for claim 6 in the spirit of compact prosecution to address applicant’s mention of the liquid “simulating well fluids” other than just brine.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/24/2026 is being considered by the examiner.
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 4-21 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.
Regarding claim 4 (and claims 5-21 by dependency): The recitation of “without high-shear mechanical mixing” renders the metes and bounds of the claims unclear. Specifically, the legal metes and bounds of what constitutes “high-shear” are unclear. In the instant specification and figures, applicant appears to disparage prior art (FIG. 2 and associated discussion) which uses a mechanical blender. Instant claim 4 recites that the foam creation is via sparging. Sparging is bubbling a gas through a liquid. Loisel bubbles a gas through a liquid to generate foam. Compared to the aforementioned blender discussed by applicant, the sparging of Loisel clearly is, by contrast only to the blender, relatively without high-shear mechanical mixing.
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 of this title, 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.
Claims 4-5, 7-10 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Loisel (US 5465610 A, prior art of record) in view of Huang et al. (US 9862882 B2, prior art of record).Regarding claim 4:Loisel teaches a method for evaluating a foamer, the method comprising the steps of:
(a) combining (i) an aqueous phase (liquid - e.g., abstract), a hydrocarbon phase, or both an aqueous phase and a hydrocarbon phase in a predetermined proportion with (ii) a foamer (e.g., abstract) to obtain a liquid (e.g., Col. 1, Lines 7-10), (b) sparging the liquid with a gas under sparging conditions including a predetermined gas flow rate to create a foam from at least some of the liquid and at least some of the gas (Col. 3, Lines 42-61; Col. 5, Line 18; Col. 5, Lines 39-23) without high-shear mechanical mixing; and (c) during or after the step of sparging, determining the amount of the liquid in the foam (e.g., Col. 4, Line 67 through Col. 5, Line 3), wherein the step of determining is performed one or more times (Col. 5, Lines 48-58)Loisel fails to explicitly teach:
wherein the foamer is in a predetermined concentration in the liquid
the phase simulating well fluidsHuang teaches:
wherein the foamer is in a predetermined concentration in the liquid (Col. 11, Lines 10-67)
the phase simulating well fluids (e.g., Col. 11, Lines 26-30; Col. 9, Line 30 through Col. 10, Line 5)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a predetermined concentration in the liquid, as taught by Huang, in the method of Loisel, to allow for precise testing of various types and concentrations of foamers for comparison thereof.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use one or more of the aqueous phases of Huang in the method of Loisel to allow for the evaluating of various foamers in various liquids that are encountered in oil and gas production. Foaming agents and the solutions they are used in span a variety of use cases. As evidenced by Huang, foamer and foamer efficiency is important to evaluate for the field of oil and gas production. Specifically see Huang, Column 1, Lines 46-61.
Regarding claim 5:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel fails to explicitly teach:
wherein the aqueous phase is water, a synthetic water composition simulating water obtained from a well, or a sample of water obtained from a wellHuang teaches:
wherein the aqueous phase is water, a synthetic water composition simulating water obtained from a well, or a sample of water obtained from a well(e.g., Col. 11, Lines 26-30; Col. 9, Line 30 through Col. 10, Line 5)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use one or more of the aqueous phases of Huang in the method of Loisel to allow for the evaluating of various foamers in various liquids that are encountered in oil and gas production. Foaming agents and the solutions they are used in span a variety of use cases. As evidenced by Huang, foamer and foamer efficiency is important to evaluate for the field of oil and gas production. Specifically see Huang, Column 1, Lines 46-61.
Regarding claim 7:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel fails to teach:
wherein the foamer is a hydrophilic foamer or an amphiphile foamerHuang teaches:
wherein the foamer is a hydrophilic foamer or an amphiphile foamer(The alcohol ether sulfonate foaming agents of Huang are amphiphilic surfactants, possessing both a hydrophobic alkyl chain R1 and a hydrophilic sulfonate head group -SO3M with ethylene oxide and propylene oxide units, as described by, for example, Formula I. Also see Formula II. Huang discloses a wide range of foamers meeting the instant claim limitations)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use one or more of the foamers of Huang in the method of Loisel to allow for the evaluating of various foamers in various liquids that are encountered in oil and gas production. Foaming agents and the solutions they are used in span a variety of use cases. As evidenced by Huang, foamer and foamer efficiency is important to evaluate for the field of oil and gas production.
Regarding claim 8:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel also teaches:
wherein the gas is selected from the group consisting of air, nitrogen, carbon dioxide, or any combination thereof in any proportion(e.g., Col. 3, Lines 43-56)
Regarding claim 9:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel fails to explicitly teach:
wherein the step of sparging additionally comprises controlling the temperature of the liquid during the step of sparging(although Loisel does explicitly teach “various factors such as the concentration, the pH-acidity, the temperature and the production methods of the foam affect the foaming properties of the products in solution or in suspension”)Huang teaches:
wherein the step of sparging additionally comprises controlling the temperature of the liquid during the step of sparging (heading in Table 1 “room temperature” in view of Col. 11, Lines 11-25)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the temperature of the liquid, as taught by Huang, in the method of Loisel to increase the accuracy of the results by, at least partially, recreating the environment in which the foamer will be used, such as in the downhole oil and gas operations disclosed by Huang.
Regarding claim 10:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel either teaches or renders obvious:
wherein the step of determining the amount of the liquid in the foam comprises the steps: (a) measuring the volume of the liquid before the step of sparging; (b) during or after the step of sparging, measuring the volume of the liquid remaining that is not in the foam; and (c) subtracting the volume of liquid remaining that is not in the foam from the volume of the liquid before the step of sparging to determine a difference that is the amount of the liquid entrained in the foam(e.g., Col. 4, Line 60 through Col. 5, Line 3; Col. 5, Line 38 through Col. 6, Line 59. The examiner notes that Loisel explicitly teaches that the liquid level is used to measure the volume of liquid present in the form formed. Reading the disclosure of Loisel, one of ordinary skill in the art would recognize that Loisel implicitly discloses or renders prima facie obvious that the amount of liquid in the foam is/may be determined calculating by the difference between the volume of liquid before sparging and the volume of remaining liquid after sparging that is not in the foam.)
Regarding claim 14:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel also teaches:
over time during or after the step of sparging, recording with a camera the visual appearance of the foam as it changes over time(Col. 2, Lines 43-46)
Regarding claim 15:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel fails to teach:
wherein the step of determining the mass or the amount of the liquid in the foam comprises the steps of: (a) collecting the foam to obtain a collected foam and any of the liquid dropped from the collected foam; and (b) measuring the amount of the collected foam and any of the liquid dropped from the collected foamHuang teaches:
wherein the step of determining the mass or the amount of the liquid in the foam comprises the steps of: (a) collecting the foam to obtain a collected foam and any of the liquid dropped from the collected foam; and (b) measuring the amount of the collected foam and any of the liquid dropped from the collected foam(Col. 11, Lines 11-37)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to collect and measure the mass of the foam, as taught by Huang, in the method of Loisel as it is an art-recognized equivalent method for determining an amount of liquid in a foam.
Regarding claim 16:Loisel and Huang teach all the limitations of claim 15, as mentioned above.Loisel fails to teach:
wherein the step of collecting the foam additionally comprises cooling the foam to reduce any evaporation of the liquid in the foam to the atmosphereHuang teaches:
wherein the step of collecting the foam additionally comprises cooling the foam to reduce any evaporation of the liquid in the foam to the atmosphere (Col. 11, Lines 11-37)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the condenser of Huang in the method of Loisel and Huang set forth in the claim 15 rejection above, to prevent evaporation of the liquid. Huang teaches temperatures as high as 190° F. At such elevated temperatures over 15+ minutes, the liquids in the foam may evaporate, leading to inaccurate results.
Regarding claim 17:Loisel and Huang teach all the limitations of claim 16, as mentioned above.As combined in the claim 16 rejection above, Huang teaches:
wherein cooling the foam is with a condenser (Col. 11, Lines 11-37)
Regarding claim 18:Loisel and Huang teach all the limitations of claim 16, as mentioned above.As combined in the claim 16 rejection above Loisel and Huang teach:
additionally comprising the steps of: (a) over time during or after the step of sparging, recording the mass of the collected foam and any of the liquid dropped from the collected foam; and (b) analyzing the recorded masses using a central processing unit to determine the amounts of the liquid entrained in the collected foam over time(As set forth in the rejections of claims 1 and 16, Huang teaches the mass/amount measurements and Loisel teaches the amount of liquid in the foam is measured over time.)
Regarding claim 19:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel also teaches or renders obvious:
additionally comprising the steps of: (a) during or after the step of sparging, determining the volume of the foam; and (b) based on the step of determining the amount of the liquid in the foam, determining the density of the foam(e.g., Col. 2, Lines 38-42; Col. 6, Lines 5-6)
Regarding claim 20:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel either teaches or strongly suggests:
wherein the steps of combining, sparging, and determining the amount of the liquid in the foam are steps of a discrete and separate test for the liquid and for the sparging conditions from another discrete and separate test for a different liquid or for different sparging conditions(e.g., Col. 6, Line 64 through Col. 7, Line 2)Huang explicitly teaches:
wherein the steps of combining, sparging, and determining the amount of the liquid in the foam are steps of a discrete and separate test for the liquid and for the sparging conditions from another discrete and separate test for a different liquid or for different sparging conditions(Col. 11, Table 2 and Lines 60-67)
One would find it obvious to repeat the method of Loisel and/or Huang on different products or under different conditions to test which product may be best for a specific use or environment.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Loisel (US 5465610 A, prior art of record) in view of Huang et al. (US 9862882 B2, prior art of record) and further in view of Nguyen et al. (US 20120125620 A1).Regarding claim 6:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel fails to teach:
wherein the hydrocarbon phase is kerosene, a hydrocarbon composition simulating a hydrocarbon obtained from a well, or a sample of a hydrocarbon obtained from a wellNguyen teaches:
wherein the hydrocarbon phase is kerosene, a hydrocarbon composition simulating a hydrocarbon obtained from a well, or a sample of a hydrocarbon obtained from a well(e.g., [0045])
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use liquid composition of Nguyen in the method of Loisel to allow for the evaluating of various foamers in liquids that are encountered in oil and gas production. Foaming agents and the solutions they are used in span a variety of use cases. As evidenced by Huang and Nguyen, foamer and foamer efficiency is important to evaluate for the field of oil and gas production.
Claims 11-13 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Loisel (US 5465610 A, prior art of record) in view of Huang et al. (US 9862882 B2, prior art of record) and further in view of Kim et al. (US 20090107234 A1, prior art of record).Regarding claim 11:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel also teaches:
recording the volumes of the liquid entrained and other properties of the foam over time using a camera operatively connected to a central processing unit (Col. 2, Lines 43-46; Col. 4, Line 34 through Col. 5, Line 8)(i.e., Loisel monitors the foam using the camera and monitors the liquid using electrodes - Col. 4, Line 60 through Col. 5, Line 3)
determining foam density (e.g., Col. 2, Lines 38-42; Col. 6, Lines 5-6)Loisel fails to explicitly teach:
wherein the step of determining the amount of the liquid in the foam comprises the steps: (a) recording the volume of the liquid before the step of sparging using a camera operatively connected to a central processing unit; (b) over time during or after the step of sparging, recording the volume of the liquid remaining that is not in the foam using the camera operatively connected to a central processing unit; and (c) analyzing the recorded volumes over time using the central processing unit to determine the differences that are the volumes of the liquid in the foam over timeKim teaches:
determining liquid level using a camera (e.g., [0059]-[0060], FIGS. 5-6)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the camera to make liquid level / volume measurements, as taught by Kim, in the method of Loisel, as it is an art-recognized equivalent means for determining the level of a liquid. The examiner notes that the claim limitations that Loisel fails to explicitly teach are met upon combination with Kim. Specifically, the combination results in the device of Loisel being configured such that the height of the liquid may be seen through transparent column and the camera used to determine liquid levels / amounts instead of the electrodes 24.
Regarding claim 12:Loisel, Huang, and Kim teach all the limitations of claim 11, as mentioned above.Loisel strongly suggests, but fails to explicitly teach:
wherein recording the volume of the liquid is with a graduated cylinder having graduated markings(FIG. 1 of Loisel appears to show the light source 29 have or indicating markings and Loisel teaches “the camera 28 can then be advantageously positioned on calibrated marks which enable to determine various foam heights in relation to the column used”; however, Loisel fails to explicitly a graduated cylinder having graduated markings)Huang and Kim teach:
wherein recording the volume of the liquid is with a graduated cylinder having graduated markings (e.g., Huang - Col. 11, Lines 12-25; Kim - FIGS. 3-5 and [0059]-[0060])
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a graduated cylinder with graduated markings in the method of Loisel to allow the camera and processor to easily calculate the volume of liquid and/or foam, without needing to take into account the diameter of the column (see, e.g., Loisel - Col. 4, Lines 43-51).
Regarding claim 13:Loisel, Huang, and Kim teach all the limitations of claim 11, as mentioned above.Loisel (as combined in the claim 11 rejection above), teaches:
graphically plotting the recorded volumes over time using the central processing unit operatively connected to a user interface(e.g., FIG. 3, element 3; Col. 6, Lines 30-52)
Regarding claim 21:Loisel and Huang teach all the limitations of claim 4, as mentioned above.Loisel fails to explicitly teach:
wherein steps (a)-(c) are performed with the liquid in a graduated cylinder having graduated markings positioned in a temperature-controlled bath; and wherein the step of determining in step (c) comprises:(i) recording, with a camera operatively connected to a central processing unit, over time during or after the step of sparging, (A) a volume of liquid remaining that is not in the foam and (B) a total volume of the liquid and the foam in the graduated cylinder using the graduated markings; and (ii) analyzing the recorded volumes using the central processing unit to determine, one or more times, the amount of the liquid in the foam over time(Loisel teaches a transparent column / cylinder and camera to track volume and also strongly suggests the cylinder has markings indicating level/volume - Col. 4, Line 58 through Col. 5, Line 5. Loisel monitors the foam using the camera and monitors the liquid using electrodes - Col. 4, Line 60 through Col. 5, Line 3. Loisel also teaches that “various factors such as the concentration, the pH-acidity, the temperature and the production methods of the foam affect the foaming properties of the products in solution or in suspension”)Huang teaches:
the liquid in a graduated cylinder positioned in a temperature-controlled bath (heading in Table 1 “room temperature” in view of Col. 11, Lines 11-25)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the temperature of the liquid / use a temperature-controlled bath, as taught by Huang, in the method of Loisel to increase the accuracy of the results by, at least partially, recreating the environment in which the foamer will be used, such as in the downhole oil and gas operations disclosed by Huang.Kim teaches:
an apparatus in which a camera (205) is operatively connected to a main control part (201, central processing unit) via an image grabber (203), and the main control part determines a liquid level from images photographed against a staff gauge bearing graduated markings ([0026]-[0028]; [0059]-[0060]; claim 1. I.e., Kim teaches automatically determining a liquid level using a camera recording images of the liquid level relative to volume / amount markings.)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the camera to make liquid level / volume measurements, as taught by Kim, in the method of Loisel, as it is an art-recognized equivalent means for determining the level of a liquid. The examiner notes that the claim limitations that Loisel fails to explicitly teach are met / rendered obvious upon combination with Kim. Specifically, the combination results in the device of Loisel being configured such that the height of the liquid may be seen through transparent column and the camera used to determine liquid levels / amounts instead of the electrodes 24 (Loisel already teaches monitoring the foam volume using the camera).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Herbert Keith Roberts whose telephone number is (571)270-0428. The examiner can normally be reached 10a - 6p MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HERBERT K ROBERTS/Primary Examiner, Art Unit 2855
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