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 .
Specification
The abstract of the disclosure is objected to because it begins with the phrase “The disclosure relates to,” i.e., a phrase that is implied. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claim 6 is objected to because of the following informalities: In line 3, a comma should be added between “dihydrogen phosphate” and “sodium iodide.” Appropriate correction is 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 1-12 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 provides for the use of a model, but since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active positive steps delimiting how this use is actually practiced.
The Examiner notes, Applicant defines such a use in dependent claim 13; Applicant is advised to replace the step of “using the model” in claim 1 with the steps of claim 13 in order to overcome this rejection.
Claims 2-12 are rejected by virtue of their dependency upon a rejected base claim.
Claim 15 is 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 15 recites “wherein the one or more salt additives comprise a phosphate salt and the surface complexation reactions comprise:” followed by a table.
The inclusion of the Table within the claim is improper. Where possible, claims are to be complete in themselves. Incorporation by reference to a table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words. See MPEP 2173.05 (S). In the instant case, the information presented within the table could be defined in words. Applicant’s assistance in re-writing the table in such a format is requested.
The provision of the Table within claim 15 is unclear; is Applicant intending all the surface complexation reactions recited in the table to occur? Or are the listed reactions intended to be a Markush group of reactions that may occur from which one is selected? Clarification is required.
Claim 15 requires “a phosphate salt” within the text of the claim, and, then, within the reactions listed in the Table, recites a dihydrogen phosphate salt; is Applicant further defining the phosphate salt as a dihydrogen phosphate salt and thereby requiring such? Clarification is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. V Brenner, 255 F.Supp 131, 149 USPQ 475 (D.D.C. 1966).
The Examiner notes, Applicant defines such a use in dependent claim 13; Applicant is advised to replace the step of “using the model” in claim 1 with the steps of claim 13 in order to overcome this rejection.
Claims 2-12 are rejected by virtue of their dependency upon a rejected base claim
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 9, 10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chawathe et al. (US 2019/0233713).
With respect to independent claim 1, Chawathe et al. discloses a method for selecting a brine recipe for a waterflooding process in a target formation ([0068]), the method comprising:
measuring zeta-potentials for a first set of brine recipes ([0068], wherein the screened brines are used are studied and zeta potential tests are conducted);
forming a second set of brine recipes comprising a subset of the first set of brine recipes based on the measured zeta-potentials ([0068], wherein brine additives are screened using contact angle and zeta potential methods; the Examiner notes, as instantly claimed, the second set of brine recipes comprises a subset of the first set of brine recipes, and, therefore, can indeed be the same as the first set of brine recipes insofar as because a second set of brine recipes that includes the first set of brine recipes indeed comprises a subset of the first recipes, i.e. the entire set of the first set of brine recipes is not excluded from being the second set of brine recipes; [0076], wherein the data collected includes zeta potential data and further contains contact angle data);
measuring contact angles of the second set of brine recipes ([0068], wherein contact angle tests are conducted on the screened brines);
using a model to rationalize results of at least one experimental result selected from the measured zeta-potentials and the measured contact angles ([0075]-[0076], wherein correlations are used to rationalize the results and select a brine recipe); and
based on the measured zeta-potentials, the measured contact angles, and the model, selecting a brine recipe for the target formation ([0063], wherein the design of experiments is used to screen out various reducing agents/brine compositions by testing their efficacy in changing contact angles and/or zeta potential; [0068]; [0076]-[0077], wherein the correlations based on the above enable selection of a brine recipe).
With respect to dependent claim 2, Chawathe et al. discloses prior to measuring the zeta-potentials, preparing a first set of brine recipes ([0068], wherein a plurality of brine compositions are provided and the design of experiments, i.e., zeta-potential measurements, are conducted thereon).
With respect to dependent claim 3, Chawathe et al. discloses wherein the first set of brine recipes comprises two or more brine recipes and each brine recipe comprises a distinct formulation ([0068], wherein a plurality of brine compositions are provided and various combinations of substrates, brine compositions and reducing agents are tested, i.e., distinct formulations).
With respect to dependent claim 4, Chawathe et al. discloses wherein each brine recipe in the first set of brine recipes comprises one or more baseline solutions and one or more experimental formulations comprising a baseline solution and one or more salt additives ([0065], wherein tests are conducted using brine with and without reducing agents; [0068], wherein a plurality of brine solutions are provided and reducing agents yielding oxyanions, i.e., salt additives, are added thereto).
With respect to dependent claims 5 and 6, Chawathe et al. discloses wherein the one or more salt additives comprise at least one salt member selected from the group as claimed ([0061]; [0068]), and, further, wherein the at least one member is selected from the group as claimed ([0096], wherein at least sodium sulfate is disclosed).
With respect to dependent claim 9, Chadwathe et al. discloses wherein measuring the zeta-potentials for the first set of brine recipes comprises measuring the zeta-potential of each brine recipe in the first set of brine recipes with a ground mineral representative of the target formation ([0060]-[0061]; [0063]; [0068]; [0076]; [0090]).
With respect to dependent claim 10, Chadwathe et al. discloses wherein measuring the zeta-potentials for the first set of brine recipes comprises measuring the zeta-potential of each brine recipe in the first set of brine recipes with crude oil ([0060]-[0061]; [0063]; [0068]; [0076]; [0090]).
With respect to dependent claim 12, Chadwathe et al. discloses wherein the contact angle measurement comprises measuring the contact angles of crude oil on a rock sample from the target formation with each of the second set of brine recipes ([0064], wherein core flood tests are used; [0086]; [0096]).
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 7, 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chadwathe et al..
With respect to dependent claim 7, Chadwathe et al. discloses the method as set forth above with respect to claim 4 and further suggests wherein for wettability alteration and recovery from carbonate rock systems, appropriate pH is necessary; increases in pH towards more neutral or alkaline is expected to support the wettability alteration process ([0080]). The reference, however, fails to disclose a pH associated therewith. It would have been obvious to one having ordinary skill in the art to provide for a pH within the instantly claimed range of from about 5 to about 10 as such pH values approach more neutral values and/or are alkaline, and, as such, when given the aforenoted teachings of Chadwathe et al., one having ordinary skill in the art would recognize the optimal value therefor in order to effectively alter the wettability of the formation therewith since it has been held "[W]here the general conditions of a claim are disclosed in the 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). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed pH range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the experimental formulations of Chadwathe et al. are suggested as having a pH that is more neutral or alkaline to support the wettability alteration of the formation, it does not appear that such would be considered an unexpected result of providing for a pH within the range as claimed, and, as such, the determination of optimal pH would be achievable through routine experimentation in the art.
With respect to dependent claim 8, Chadwathe et al. discloses wherein the wettability of the formation can be altered with the addition of at least one reducing agent that when added to the brine yields sufficient oxyanions to change the surface charge to a more negative value ([0060]). As such, it would have been obvious to one having ordinary skill in the art to form the second set of brine recipes with two or more brine recipes with the lowest measured zeta-potentials, i.e., most negative values, in order to provide brine recipes capable of most effectively altering the wettability of the formation.
With respect to dependent claim 11, Chadwathe et al. discloses wherein the plurality of brine recipes undergo contact angle tests ([0063]; [0068]; [0086]). The reference further suggests wherein the chosen brine, i.e., engineered brine, has a lower contact angle than the base brine (Fig. 12) and discloses wherein positive test for wettability alteration is indicated by a contact angle shift of >90 to <90 ([0078]), as well as wherein contact angles less than 90 are mildly water-wet to strongly water wet ([0086]). Although silent to explicitly disclosing wherein the selected brine recipe is that with the lowest measured contact angle, it would have been obvious to one having ordinary skill in the art to choose the brine recipe with the lowest measured contact angle in order to provide the brine capable of achieving the most water-wet state and thereby enable the most enhanced oil recovery from the formation during a waterflood conducted therewith .
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chadwathe et al. as applied to claim 4 above, and further in view of Ayirala et al. (US 11,214,730).
With respect to dependent claim 13, Chadwathe et al. discloses the method as set forth above with respect to claim 1, wherein interactions of the different brines are correlated with the zeta potential and contact angle of the formation are to engineer the optimal brine concentration for altering the wettability of the formation ([0075]-[0078]), thereby providing for using a model to rationalize results as claimed by claim 1. The reference, however, fails to disclose wherein surface complexation reactions are determined for the target formation with divalent cations and the one or more salt additives to form a surface complexation model comprising the surface complexation reactions, and varying intrinsic equilibrium constants for the surface complexation reactions to match the measured zeta potentials as claimed. Ayirala et al. teaches the use of surface complexation models (SCM) to determine zeta potential for a target carbonate formation at carbonate/brine and oil/brine interfaces for the purpose of demonstrating the effect that pH has on wettability alteration in carbonates (col. 10, l. 21-43); the SCM describes the equilibrium state of ion adsorption based on specific surface reactions (col. 11, l. 1-12). It would have been obvious to one having ordinary skill in the art to try an SCM as taught by Ayirala et al. as a model to rationalize the results in the method of Chadwathe et al. in order to determine the zeta potential data for the screened brines disclosed therein and thereby choose an optimal brine for achieving the desired wettability alteration on the surfaces of the formation.
With respect to dependent claim 14, Chadwathe et al. discloses wherein the target formation comprises a carbonate formation ([0052]; [0056]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 11,993,746 discloses zeta-potential measurements and contact angle measurements for various brine compositions, wherein a surface complexation model is used to rationalize observed behavior and to validate the model. The reference further discloses the use of a phosphate salt comprising dihydrogen phosphate. This patent, however, shares common inventors and assignees with the instant application and therefore is excluded as prior art by the 35 USC 102(b)(2) exclusions.
US 2016/0272873 discloses a method of brine selection similar to that of Chadwathe et al., cited above.
US 8812271 discloses a method of designing an injectate to be used in waterflooding wherein the injectate is designed and operable to decrease the extent of surface complexation between charged species at interfaces of liquid hydrocarbon and reservoir rock.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
06/09/26
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