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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on 8/4/2026 is acknowledged.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims1-19 of U.S. Patent No. 12,600,899 in view of . Pabley (US 4,428,432).
Regarding claim 1, 3 and 4 the claims of US ‘899 teaches a method of treating a carbonate formation using a gel which can comprise diammonium phosphate, carboxymethyl hydroxypropyl guar and a crosslinker (see claims 1, 2 and 10). The claims of US ‘899 differ in not teaching the specified viscosity or specifically an acid. Claim 11 of US ‘899 tteaches that the method can be a stimulation operation of matrix acidizing. Pabley teaches a method of matrix acidizing a carbonate formation wherein a fluid comprising carboxymethyl hydroxypropyl guar (column 3, lines62-63) with a viscosity of less than 100 cP is used (column 4, lines 34-35). Less than 100 cP overlaps and would render obvious the 25 to 40 cP claimed. It would be obvious to utilize the fluid of US ‘899 with a viscosity claimed, since Pabley teaches that such is suitable for matrix acidizing.
Regarding claim 2, Pabley teaches the use of HCl (column 4).
Regarding claims 5 and 6, US ‘899 teaches the use of a zirconium crosslinker (claim 3).
Regarding claim 7, although not specifically teaching the claimed percentage, one of ordinary skill in the art would vary the amount of DAP used to convert a sufficient amount of the carbonate formation.
Regarding claim 8, Pabley teaches an acid concentration of 1-15% of HCl and 0.2 to 6% HF, thus overlapping and rendering obvious the claimed range.
Regarding claim 9, Pabley teaches polymer concentration overlapping, and thus rendering obvious the claimed range (column 3 to column 4).
Regarding claim 10, Pabley teaches the crosslink agent in amounts within the scope of the current claims (column 5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
