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 .
Election/Restrictions
Applicant’s election without traverse of Group 1: Claims 1-8 in the reply filed on 07/07/2026 is acknowledged.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected apparatus with an analyzer for determining the halide concentration, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/07/2026.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 3, 4, and 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, and 11 of U.S. Patent No. 11768190 B2 in view of non-patent literature "Improved Performance for Trace Halide Determination in Hydrocarbons" by Ohlson et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims and the patented claims encompass a similar method of determination of analyte in drilling fluid.
Claim 1 recites the method in claim 1 of patented invention.
However, claim 1 recites “contacting the substantially solids-free fluid with a cation to produce a halide precipitate in a test solution, and determining an amount of halide within the drilling fluid sample by measuring an amount of the halide precipitate in the test solution”. The patented invention does not mention halides. Ohlson teaches a reaction with a cation (“silver”) to precipitate out halides in drilling fluids (pg 149, Section: Experimental Procedure). Thus, it would be obvious to one of ordinary skill in the art to modify the patented invention with cation to produce a halide precipitate in the drilling fluid for the efficient quantification of halides.
Claim 2 recites all the components of claim 2 in the patented invention.
Claim 3 recites “the drilling fluid is an aqueous-based drilling fluid”. The patent invention does not mention “aqueous-based drilling fluid”, however, it would be obvious to one of ordinary skill in the art that drilling fluid comprising water in the patented invention is an aqueous-based drilling fluid which are more environmentally friendly.
Claim 4 recites “the drilling fluid is a non-aqueous-based drilling fluid”. The patent invention does not mention “non-aqueous-based drilling fluid”, however, it would be obvious to one of ordinary skill in the art that drilling fluid comprising hydrocarbon fluid in the patented invention is a non-aqueous-based drilling fluid which are more thermally stable.
Claim 8 recites “adjusting a concentration of the halide”. The patented invention does not mention halides. Ohlson teaches a reaction with a cation (“silver”) to precipitate out halides in drilling fluids (pg 149, Section: Experimental Procedure). Thus, it would be obvious to one of ordinary skill in the art to modify the patented invention with a cation to produce a precipitate with halide in the drilling fluid for efficient quantification of halides which can be further adjusted as mentioned in the patented invention.
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 1-8 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 1 recites “the halide concentration” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Furthermore, claim 1 recites the limitation "contacting the substantially solids-free fluid with a cation to produce a halide precipitate in a test solution". This limitation is indefinite since it is unclear whether halide precipitate is placed in a separate test solution, or the reaction between the solids-free fluid and cation forms the test solution. The limitation will be interpreted as “contacting the substantially solids-free fluid with a cation to form a test solution with a halide precipitate” in light of the specification (Spec. Pg. 9, lines 16-26).
Claims 2-8 are rejected as being dependent on independent claim 1.
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.
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, 2, 3, 4, 5, 6, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over May et al (US 20210405017 A1), and further in view of non-patent literature "Improved Performance for Trace Halide Determination in Hydrocarbons" by Ohlson et al.
Regarding claim 1, May teaches a method for determining the shale inhibitor concentration in a drilling fluid, the method comprises: receiving a sample of a drilling fluid (para 0013), removing solids from the sample of the drilling fluid to produce a substantially solids- free fluid (para 0010), contacting the substantially solids-free fluid with an anion to produce a precipitate in a test solution (para 0010), and determining an amount of amine-based shale inhibitor within the drilling fluid sample by measuring an amount of the precipitate in the test solution (para 0010).
May does not teach contacting the substantially solids-free fluid with a cation to produce a halide precipitate in a test solution, and determining an amount of halide within the drilling fluid sample by measuring an amount of the halide precipitate in the test solution.
However, Ohlson teach a method for halide determination in hydrocarbons such as crude oils (pg 148, Abstract). Ohlson further teaches the reaction of silver cations with halides to form silver halides which are measured by coulometry as the measured current is directly proportional to the halide in the sample (pg 149, Section: Experimental Procedure). Thus, it would be obvious to one of ordinary skill in the art before the effective filing date to modify the method taught by May with a contacting the substantially solids-free fluid with a cation (“silver ions”) to produce a halide precipitate in a test solution, and determining an amount of halide within the drilling fluid sample by measuring an amount of the halide precipitate in the test solution as taught by Ohlson for the benefit of measuring the halide concentration because it is proportional to the silver concentration (pg 149, Section: Experimental Procedure).
Regarding claim 2, May in view of Ohlson teaches the invention of claim 1. May further teaches the amount of precipitate may be measured by turbidity analysis of the test solution, by gravimetric weight analysis of the precipitate, or by volumetric analysis of the precipitate (para 0031).
Regarding claim 3, May in view of Ohlson teaches the invention of claim 1. May further teaches the drilling fluid is an aqueous-based drilling fluid (“water-based”, para 0003).
Regarding claim 4, May in view of Ohlson teaches the invention of claim 1. May further teaches the drilling fluid is a non-aqueous-based drilling fluid (“hydrocarbon fluid”, para 0013).
Regarding claim 5, May in view of Ohlson teaches the invention of claim 1. May further teaches diluting the drilling fluid sample with an organic solvent and/or an aqueous fluid prior to the removing solids from the sample to produce a substantially solids-free fluid thereby producing a diluted drilling fluid sample (para 0016).
Regarding claim 6, May in view of Ohlson teaches the invention of claim 1. May further teaches the removing solids from the sample to produce a substantially solids-free fluid further comprises filtering the sample, centrifuging the sample, allowing the solids to settle and then be removed, or dissolution of the solids (para 0014).
Regarding claim 7, May in view of Ohlson teaches the invention of claim 1. May further teaches adjusting a concentration of the halide in the drilling fluid based on a measured amount of the halide precipitate in the test solution. May teaches that it “may be adjusted” thus it can be interpreted as the concertation does not have to be adjusted (para 0017).
Regarding claim 8, May in view of Ohlson teaches the invention of claim 1. May further teaches adjusting a concentration of the halide in the drilling fluid based on a measured amount of the halide precipitate in the test solution (para 0017).
Conclusion
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/H.R.B./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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