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 .
Claim Objections
Claim 30 is objected to because of the following informalities:
The claim that should be claim 30 in sequence, and is being read as claim 30 for the purposes of this Office Action, is labeled in the claim listing as claim “20”, which is a clear typographical error. Appropriate correction is required.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 10, 11, and 14-17 of U.S. Patent No. 12,002,159. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are broader in every way than the corresponding patent claims.
The claims correspond to each other as follows:
Application
21
22
23
24
25
26
27
28
29
30
Patent
1
1
1
1
1
5
10
4
1
3
Application
31
32
33
34
35
36
37
38
39
40
Patent
6
11
11
11
3
14
15
16
17
16
Claim 21 corresponds to patent claim 1 because it recites a broader version of the patent claim without specific labeling steps and image and porous medium descriptions.
Claim 22 corresponds to a limitation of patent claim 1 because the “solid type” in claim 22 is a broader version of “mineral type” in the patent claim limitation.
Claim 23 corresponds to a limitation of patent claim 1 because it defines the broader category of “solid type” as comprising “minerals” which is what is stated in the patent claim.
Claims 24 and 25 correspond to limitations of patent claim 1 because the “solid type” in claim 24 is a broader version of “mineral type” in the patent claim limitation and the “particles” in claims 24 and 25 are a broader version of “grains” in the patent claim limitations.
Claim 26 corresponds to patent claim 5 because the “particles” in claim 26 are a broader version of “grains” in the patent claim.
Claim 27 corresponds to a limitation of patent claim 10 because the porous rock sample of the patent claim would be inherently made up of the porous rock particles recited in claim 27.
Claim 28 corresponds to patent claim 4 because the “particles” in claim 26 are a broader version of “grains” in the patent claim.
Claim 29 corresponds to limitations of patent claim 1 because it specifies that the image is a 3D image which corresponds to a broader version of the micro-CT 3D image in the patent claim.
Claim 30 corresponds to patent claim 3 because the “3D image” of claim 30 is a broader version of the “micro-CT 3D image” in the patent claim.
Claim 31 corresponds to patent claim 6, but is broader in total scope because the claim it depends on is broader than the claim on which patent claim 6 depends.
Claims 32-40 correspond to the patent claims in a manner similar to that described regarding claims 21-31 above.
Conclusion
Claims 21-40 would be allowable if the Double Patenting rejections set forth in this Office action were overcome.
As to claim 21, Fredrich (US 2015/0043787) discloses a computer implemented method for conducting a simulation of physical properties of a porous medium (fig. 2; fig. 5a; fig. 5c), comprises:
receiving by a computer, an image that captures a representative elemental volume of the porous medium (p. 3, sections 0038-0039; p. 7-8, section 0067; p. 8, section 0070; a representative 3D rock sample volume image is captured with a micro CT scanner),
labeling by the computer the image as individual voxels according to physical properties of the porous medium (p. 5, section 0051; p. 5, section 0056; p. 9, section 0076; each voxel is labeled according to its physical material);
transforming by the computer the labeled voxels into an unstructured conformal mesh representation (fig. 4c; p. 6, sections 0059-p. 7, section 0062; voxels representing grains in the image are converted to an unstructured mesh representation; the contact regions are connected in the refined mesh in the figure, defining a conformal mesh);
and applying the unstructured conformal mesh representation to a parametric cohesive contact engine, with the parametric cohesive contact engine executing a parametric cohesive contact model that has an adjustable parameter, a critical separation that is conditioned according to a consolidation level (fig. 4h; p. 6, section 0061-p. 8, section 0067; a simulation is applied using the deformed mesh to determine various properties/parameters; the simulation models contact between grains, thus reading on a parametric cohesive contact model; an adjustable parameter of contact modulus is used, which can read on a critical separation since it models how much the grains are contacted vs. how much they are separated; this is conditioned upon how consolidated the grains are; for example, in weakly consolidated sands, varying elastic properties are taken into account when modeling the grain contacts; in other scenarios, the contacts do not need to be modeled or can be modeled using constant behavior assumptions).
Fredrich does not disclose that the critical separation is a length. Shan (CN 112313758), cited by applicant on the IDS dated 10/30/24, herein represented by an attached machine translation, discloses a critical separation as a length (p. 16-17; a limit of particle separation is given as a nanometer length). However, this general disclosure of critical separation as a length is related to conduction; there does not appear to be any way to relate the teachings of the reference to a critical separation conditioned according to a consolidation level that is an adjustable parameter in a parametric cohesive contact model. In other words, while the reference teaches a critical separation as a length in a vacuum, one skilled in the art could not arrive at applicant’s claimed invention by using the teachings of Shan combined with the teachings of Fredrich, because it would not be clear how to apply the teachings of Shan in a way that would make sense in the Fredrich reference or the context of the claimed invention
Similar analysis applies to claims 32 and 38.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON M RICHER whose telephone number is (571)272-7790. The examiner can normally be reached 9AM-5PM.
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/AARON M RICHER/Primary Examiner, Art Unit 2617