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 “Described herein are,” 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 Rejections - 35 USC § 103
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 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 1-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Harris et al. (US 6,401,819) in view of Sullivan et al. (US 7,431,987).
With respect to independent claim 1, Harris et al. discloses a method for stabilizing a subterranean formation (col. 6, l. 22-28), the method comprising:
introducing urea into a subterranean formation, wherein the subterranean formation comprises sand (col. 6, l. 22-24), and wherein the subterranean formation comprises a calcium salt (col. 3,l. 31-40); and
introducing a hydrolase (EC 3) enzyme into the wellbore (col. 3, l. 3-9), wherein action of the enzyme on the urea leads to the precipitation of material within the wellbore (abstract), particularly action of a urease (EC 3.5.1.5) hydrolyzes the urea to form ammonium carbonate and the calcium in the calcium salt reacts with carbonate in the ammonium carbonate to form a calcium carbonate precipitate (col. 6, l. 45-51).
Harris et al. teaches the method as set forth above wherein a hydrolase such as lipase (EC 3.1.1.3) or a urease (EC 3.5.1.5) is suggested as the EC3 enzyme (col. 3, l. 3-9). The reference, however, fails to specifically disclose wherein the enzyme comprises amylase, and, thus the associated precipitation therewith, wherein amylase hydrolyzes the urea to form ammonium carbonate, and calcium in the calcium salt reacts with carbonate in the ammonium carbonate to form a calcium carbonate precipitate.
Sullivan et al. teaches treatment fluids used in oil and gas wells (col. 1, l. 29-33) wherein enzymes are included therein; the EC numbering system of enzymes is described wherein enzymes suitable for use include EC 1 through EC 6 enzymes. EC 3 is defined as hydrolases such as lipases, amylases, peptidases and glucosidases and it is noted that when different enzymes catalyze the same reaction, then they receive the same EC number (col. 8, l. 58-col. 9, l. 10).
Since Harris et al. discloses EC 3 hydrolases as suitable enzymes for the above method, and Sullivan et al. teaches amylase as an alternative EC 3 hydrolase to the hydrolase enzymes disclosed by Harris, as well as wherein when different enzymes catalyze the same reaction, they receive the same EC 3 number, it would have been obvious to one having ordinary skill in the art to try amylase as the hydrolase enzyme in the method of Harris et al. in order to yield the predictable result of enabling a reaction with urea therewith to produce a calcium carbonate precipitate.
When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, 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 the product not of innovation but of ordinary skill and common sense.
Furthermore, with regard to wherein amylase specifically hydrolyzes the urea to form ammonium carbonate and calcium in the calcium salt reacts with carbonate in the ammonium carbonate to form a calcium carbonate precipitate, the Examiner notes, Harris et al. in view of Sullivan et al. teaches the same substrate, i.e., urea, and enzyme, i.e., amylase, as claimed, and, therefore, the amylase would indeed be expected to act in the same manner as claimed, i.e., hydrolyze the urea to form an ammonium carbonate and calcium in the calcium salt reacts with carbonate in the ammonium carbonate to form a calcium carbonate precipitate. If there is any difference between the amylase function with urea of Harris et al., in view of Sullivan et al., and that of the instant claims, the difference would have been minor and obvious insofar as because “Products of identical chemical composition cannot 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. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
With respect to dependent claim 2, Harris et al. discloses wherein one or both of: the method further comprises introducing the calcium salt into the subterranean formation (col. 2, l. 33-37; col. 3, l. 31-35); and the calcium salt is naturally occurring in the subterranean formation (col. 2, l. 30-32).
With respect to dependent claim 3, Harris et al. discloses introducing the calcium salt into the subterranean formation (col. 2, l. 33-37; col. 3, l. 31-35).
With respect to dependent claim 4, Harris et al. discloses extracting hydrocarbons from the subterranean formation (col. 6, l. 24-28).
With respect to dependent claims 5 and 6, Sullivan et al. further teaches wherein the amylase is alpha amylase (col. 2, l. 13-15; col. 7, l. 66-67; col. 11, l. 57-59).
With respect to dependent claim 7, Harris et al. discloses wherein the calcium salt is calcium chloride (col. 3, l. 31-33; col. 6, l. 48-51).
With respect to dependent claims 8 and 9, Harris et al. discloses wherein the subterranean formation further comprises a magnesium salt, and, further, wherein the magnesium salt is magnesium chloride (col. 3, l. 31-35; col. 8, l. 28-32).
With respect to dependent claim 10, Harris et al. discloses wherein the aqueous solution or dispersion may comprise a salt, and, further, suggests such salts as a calcium salt and magnesium salt (col. 3, l. 31-35). The reference further suggests the rate of production of materials, i.e., calcium carbonate precipitate, can be manipulated in a variety of ways, including varying the concentration of the substrate, i.e., urea, or material in the aqueous solution, i.e., calcium chloride/magnesium salt (col. 5, l. 43-57). It is further suggested wherein precipitation of minerals such as calcium carbonate may be from supersaturated solutions (col. 5, l. 8-13). As such, it would have been obvious to one having ordinary skill in the art to try a ratio of calcium salt to magnesium salt as claimed as based on the desired rate of precipitation and precipitate desired to form in the formation therefrom since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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 ratio as critical and it is unclear if any unexpected results are achieved by providing for such. Since the method of Harris et al. is suggested as achieving the formation of a calcium carbonate precipitate upon hydrolysis of urea by a hydrolase enzyme, as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed ratio, and, as such, the determination of optimal ratio would be achievable through routine experimentation in the art as based on the desired precipitate to form within the formation.
With respect to dependent claims 11 and 12, Harris et al. teaches through an example of urea with a hydrolase enzyme of urease wherein the precipitate formation starts at a pH of 8, i.e., a basic pH (col. 6, l. 45-65). The Examiner notes, the claim does not require a specific time for such a pH within the formation, and, thus, the pH in the formation after precipitation provides for a subterranean formation having a pH as claimed. Although silent to the pH as from 11 to 13, since Harris et al. in view of Sullivan et al. provides for the same reaction components as instantly claimed, i.e., wherein amylase hydrolyzes the urea to ultimately lead to the precipitation of calcium carbonate, as instantly claimed and disclosed by Applicant, the hydrolysis and resulting precipitation reaction of Harris et al. in view of Sullivan et al. would be expected to result in the formation having a pH as instantly claimed, i.e., from 11 to 13, since it has been held “Products of identical chemical composition cannot 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. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). If there is any difference between the pH of the formation after the hydrolysis reaction of Harris et al. in view of Sullivan et al., and that of the instant claims, the difference would have been minor and obvious.
With respect to dependent claim 13, Harris et al. discloses wherein the method occurs at a temperature as claimed (col. 5, l. 37-41).
With respect to dependent claim 16, Harris et al. in view of Sullivan et al. provides for wherein the enzyme comprises amylase (see rejection of claim 1, above). Harris et al. further suggests wherein s the rate of production of materials, i.e., calcium carbonate precipitate, can be manipulated in a variety of ways, including varying the concentration of the substrate, i.e., urea, or enzyme, i.e., amylase, in view of Sullivan et al. (col. 5, l. 43-57). Throughout the examples, Harris et al. provides exemplary amounts of enzymes included to produce a calcium carbonate precipitate therewith (Example 1). Although silent to the amount of amylase in weight percent based on the total weight of solution, since Harris et al. clearly suggests one of ordinary skill in the art can control the rate of production of materials, i.e., calcium carbonate, by varying the concentration of the enzyme, it would have been obvious to one having ordinary skill in the art to provide an amount of enzyme within the range as claimed since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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 amount of amylase as critical and it is unclear if any unexpected results are achieved by providing for such. Since the method of Harris et al. is suggested as achieving the formation of a calcium carbonate precipitate upon hydrolysis of urea by a hydrolase enzyme, i.e., amylase in view of Sullivan et al., as is instantly claimed and disclosed by Applicant, wherein such further may be employed to consolidate sand and reduce the risk of sand production and/or formation collapse during hydrocarbon production, it does not appear that such would be considered an unexpected result of using the presently claimed amount thereof, and, as such, the determination of optimal weight percent of amylase would be achievable through routine experimentation in the art.
With respect to dependent claim 17, Harris et al. discloses wherein the calcium salt is selected from the group as claimed (col. 3, l. 31-35; col. 6, l. 46-51).
With respect to dependent claim 18, Harris et al. discloses through an example wherein 20 g of urea is used with 2.8 g of calcium chloride (col. 6, l. 51-53). The Examiner notes, such an example provides for a urea to calcium salt ratio in the range as claimed. It is further notes wherein the reference suggests the rate of production of materials, i.e., calcium carbonate precipitate, can be manipulated in a variety of ways, including varying the concentration of the substrate, i.e., urea, or material in the aqueous solution, i.e., calcium chloride (col. 5, l. 43-57). As such, it would have been obvious to one having ordinary skill in the art to provide for a ratio of urea to calcium salt as claimed since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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 ratio as critical and it is unclear if any unexpected results are achieved by providing for such. Since the method of Harris et al. is suggested as achieving the formation of a calcium carbonate precipitate upon hydrolysis of urea by a hydrolase enzyme, as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed ratio, and, as such, the determination of optimal ratio would be achievable through routine experimentation in the art.
With respect to dependent claim 19, Harris et al. discloses wherein calcium carbonate precipitates from the reaction (col. 5, l. 8-13; col. 5, l. 66- col. 6, l. 3; col. 6, l. 46-62). The reference, however, is silent to what is comprised therein. The Examiner notes, calcite is the most stable and common form of calcium carbonate. Therefore, although silent to wherein the calcium carbonate comprises at least one of calcite, aragonite, sylvite or combinations thereof, since Harris et al. in view of Sullivan et al. provides for the same reaction components of urea, calcium salt and amylase as instantly claimed, the calcium carbonate produced therefrom upon hydrolysis of the urea by the amylase would be expected to comprise at least one of calcite, aragonite or sylvite since it has been held “Products of identical chemical composition cannot 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. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). If there is any difference between the product of the reaction of Harris et al. in view of Sullivan et al., and that of the instant claims, the difference would have been minor and obvious. Harris et al. clearly discloses wherein the production of materials by the enzymes can be accurately controlled and the system manipulated to achieve the desired precipitation (col. 5, l. 43-57), and, as such, one of ordinary skill in the art would recognize suitable amounts of each reaction component to achieve such desired precipitation, particularly with regard to calcite, insofar as because the main product produced by Harris et al. is calcium carbonate and calcite is the most common form thereof.
With respect to further dependent claim 20, Harris et al. discloses wherein additional salts such as magnesium may be included in the aqueous solution (col. 3, l. 31-40). Although silent to explicitly providing for wherein the calcium carbonate comprises dolomite as instantly claimed, since Harris et al. discloses wherein the rate of production of materials by enzymes can be accurately controlled by varying the concentration of substrate, urea, enzyme and/or material present in the aqueous solution, i.e., further inclusion of magnesium chloride, it would have been obvious to one having ordinary skill in the art to further include a magnesium salt in the aqueous dispersion of Harris et al. and thereby provide for a reaction thereof with the urea, calcium chloride and, in view of Sullivan et al., amylase, and, thereby provide for a calcium carbonate comprising dolomite in order to effectively increase the mechanical strength of the formation therewith (col. 6, l. 22-28) since it has been held “Products of identical chemical composition cannot 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. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). If there is any difference between the product of the reaction of Harris et al. in view of Sullivan et al., and that of the instant claims, the difference would have been minor and obvious.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Harris et al. in view of Sullivan et al. as applied to claim 1 above, and further in view of AlAhmari et al. (US 2022/0290035).
With respect to dependent claim 14, Harris et al. in view of Sullivan et al. teaches the method as set forth above with respect to claim 1. In an example, Harris et al. suggests wherein guar gum can be included in a solution with the hydrolase enzyme and urea (Example 3). The reference, however, fails to disclose the inclusion of xanthan therein. AlAhmari et al. teaches methods of consolidating sand ([0015]) in a method that relies on the hydrolysis of urea by a hydrolase enzyme ([0017]) wherein chemical additives may be added to the system for the purpose of improving the strength of the sand consolidation; suitable additives include guar gum and xanthan gum ([0017]; [0020]). Since Harris et al. suggests the compatibility of guar gum with the systems and method disclosed therein and AlAhmari et al. teaches xanthan gum as an alternative thereto and added to a calcium carbonate precipitating system of urea and a hydrolase enzyme for the purpose of improving the strength of the sand consolidation achieved therewith, it would have been obvious to one having ordinary skill in the art to try xanthan gum as a chemical additive in the method and system of Harris et al. in view of Sullivan et al. in order to yield the predictable result of improving the sand consolidation abilities of the system.
With respect to further dependent claim 15, AlAhmari et al. further suggests wherein the xanthan gum may be present in concentrations of 0.5 to about 1.0 M ([0030]). Thus, when including such a chemical additive in the system of Harris et al. in view of Sullivan et al., one having ordinary skill in the art would recognize the optimal amount thereof to include in order to improve the sand consolidation properties of the system therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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 xanthan gum weight percent as critical and it is unclear if any unexpected results are achieved by providing for such in the amount as claimed. Since the amount of xantham gum provided is suggested as included to improve sand consolidation strength, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent thereof, and, as such, the determination of optimal weight percent of xanthan gum in the system of Harris et al. in view of Sullivan et al. would be achievable through routine experimentation in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Calcite provides evidence that calcite is the most common form of calcium carbonate.
WO 2009/008724 discloses reducing permeation of soil particles in a hydrocarbon well by applying urease, urea and a calcium ion to form a carbonate mineral wherein any other enzyme capable of hydrolyzing urea to ammonium and carbonate may be used.
US 2017/0029689 discloses suitable calcium carbonate precipitating enzymes include urease (EC 3.5.1.5), amidase (EC 3.5.1.4), carbonic anhydrase (EC 4.2.1.1), glutamade dehydrogenase such as NAD(P) type (EC 1.4.1.3), glutamate synthase such as NADPH type (EC 1.4.1.13) and FAD type (EC 1.4.7.1)
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
06/16/26
Prosecution Insights