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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/09/25 has been entered.
Claim Objections
Claim 3 is objected to because of the following informalities: In claim 3, the article -the- should be added prior to the phrase “degradable polymer” in order to reflect that the limitations thereafter refer to the previously recited degradable polymer of claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 6-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claim 1 has been amended to require “wherein the color masterbatch is independently compounded as a blend of a carrier resin and a colorant, and wherein the carrier resin is selected from the group consisting of polyethylene, polystyrene, and combinations thereof.” Applicant notes support for such is found in [0047]. However, [0047] does not clearly describe such; [0047] rather discloses wherein “Each color masterbatch was independently compounded with 21 LS nylon.” The color masterbatches are defined as solid color masterbatches without explicit provision for the inclusion of a carrier resin therewith. The paragraph continues and explains wherein 21 LS Nylon granules were compounded with such color masterbatches. The Examiner notes, 21 LS nylon is disclosed as a polyamide polymer. The polyamide polymer is disclosed and claimed by Applicant (see dependent claim 2) as the degradable polymer. Therefore, it appears [0047] suggests the color masterbatch as independently compounded with the degradable polymer rather than the instantly claimed carrier resin. Furthermore, [0047] does not disclose and/or recite the inclusion of a carrier resin, let alone a carrier resin selected from the group consisting of polyethylene, polystyrene, and combinations thereof, as independently compounded with the color masterbatch. As such, there is insufficient support for Applicant’s amendments requiring the color masterbatch as independently compounded as a blend of carrier resin and a colorant as instantly claimed.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 6-8 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Gizzatov et al. (US 2024/0035373 – cited previously).
With respect to independent claim 1, Gizzatov et al. discloses a method for monitoring gas production in a subterranean formation (abstract) comprising:
introducing a polymer composite particle having a degradable polymer blend into a stimulation fluid ([0034]), wherein the degradable polymer blend comprises a polymer blend of a degradable polymer and a color masterbatch ([0025]),
wherein the color masterbatch is independently compounded as a blend of a carrier resin and a colorant ([0025] and [0031]-[0032], wherein the tracer may be a dye and wherein the tracer is introduced into a non-degradable polymer to form a tracer masterbatch which is then mixed with the degradable polymer), and wherein the carrier resin is selected from the group consisting of polyethylene, polystyrene, and combinations thereof ([0021], wherein both polyethylene and polystyrene, as well as combinations thereof are suggested as non-degradable polymers);
injecting the stimulation fluid comprising the polymer composite particle into the subterranean formation to a treatment stage of a treatment zone comprising at least one opening, wherein the polymer composite particle flows into and remains inside the at least one opening ([0033]-[0041]; [0046]);
maintaining the polymer composite particle inside the at least one opening for an amount of time during which the polymer composite particle is exposed to moisture at a downhole temperature, wherein the moisture degrades the degradable polymer blend in the amount of time ranging from 20 to 60 days, thereby producing a tracer ([0046]-[0048]);
recovering produced gas from the subterranean formation, wherein the produced gas comprises a gaseous phase from the treatment stage of the treatment zone of the subterranean formation and the tracer ([0004]; [0016]; [0048]);
determining a presence of the tracer in the produced gas ([0048]);
and correlating the presence of the tracer to the treatment stage of the treatment zone of the subterranean formation ([0004]; [0049]).
With respect to dependent claim 2, Gizzatov et al. discloses wherein the degradable polymer comprises a polyamide ([0019]; [0023]-[0024]).
With respect to dependent claim 3, Gizzatov et al. discloses wherein degradable polymer has hydrolysable bonds ([0019]).
With respect to dependent claim 6, Gizzatov et al. discloses wherein the color masterbatch is present in the degradable polymer blend in an amount ranging from 0.005 to 50 wt% ([0026]).
With respect to dependent claim 7, Gizzatov et al. discloses wherein the stimulation fluid is selected from the group consisting of an acidizing fluid, an organic acid, a fracturing fluid, a hydraulic fracturing fluid, an emulsified acid, a viscoelastic surfactant, a foamed fluid, a linear gel, a crosslinked gel, and combinations thereof ([0033]-[0041]).
With respect to dependent claim 8, Gizzatov et al. discloses wherein the polymer composite particle is introduced into the stimulation fluid in an amount ranging from 0.2 to 10 lbm/gal of the polymer composite particles relative to a total amount of stimulation fluid ([0039]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ogle et al. (US 2020/0283678 – cited previously).
With respect to independent claim 1, Ogle et al. discloses a method for monitoring gas production in a subterranean formation comprising:
introducing a polymer composite particle having a degradable polymer blend into a stimulation fluid ([0005]), wherein the degradable polymer blend comprises a polymer blend of a degradable polymer and a color masterbatch ([0022], wherein a soluble dye is admixed and/or otherwise included in a degradable polymer; [0024]-[0027], wherein the various color masterbatches, i.e., dyes/colorants, are disclosed), wherein the color masterbatch is independently compounded as a blend ([0021], wherein the soluble dye may be blended homogeneously with a curable resin and included in a resin coating on the solid particulate and [0022], wherein, additionally, the soluble dye may be admixed with a degradable polymer) of a carrier resin and a colorant ([0024]-[0027], wherein the various color masterbatches, i.e., dyes/colorants, are disclosed) and, further, wherein the carrier resin is selected from the group consisting of polyethylene, polystyrene, and combinations thereof ([0022], wherein the colorant is admixed with a degradable polymer, wherein further, the degradable polymers of Ogle et al. further include Applicant’s instantly claimed carrier resins such as polystyrene as well as various instantly claimed degradable polymers, such as a polyamide, and it is disclosed wherein any combination thereof may be used);
injecting the stimulation fluid comprising the polymer composite particle into the subterranean formation to a treatment stage of a treatment zone comprising at least one opening, wherein the polymer composite particle flows into and remain inside the at least one opening ([0005]-[0006]; [0043]);
maintaining the polymer composite particle inside the at least one opening for an amount of time during which the polymer composite particle is exposed to moisture at a downhole temperature ([0043]), wherein the moisture degrades the degradable polymer blend ([0022], wherein the degradable polymers are described as water degradable) thereby producing a tracer ([0022], wherein degradation of the polymer is disclosed to release the soluble dye into the produced formation fluid; [0024]-[0027], wherein the tracers/dye resulting from the release/degradation are disclosed);
recovering produced gas from the subterranean formation, wherein the produced gas comprises a gaseous phase from the treatment stage of the treatment zone of the subterranean formation and the tracer ([0005]; [0018]; [0052]; [0057]; [0067]);
determining a presence of the tracer in the produced gas ([0044]-[0046]); and
correlating the presence of the tracer to the treatment stage of the treatment zone of the subterranean formation ([0044]-[0046]).
With regard to the independent compounding of the color masterbatch as a blend of a carrier resin and a colorant, to any extent the reference does not explicitly provide for such, it is noted, the selection of any order of mixing ingredients is considered prima facie obvious in the absence of new or unexpected results. See In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). In the instant case, since the polymer composite particle of Ogle et al. releases the tracer therefrom in an amount of time that enables the correlation of the presence of the tracer to a treatment stage of a treatment zone, such does not appear to provide for a new or unexpected result.
Ogle et al. discloses wherein the degradable polymer may be a water degradable polymer, wherein such degrade/dissolve in the presence of water, thereby providing for such as degrading by exposure to moisture at a downhole temperature, as claimed. The reference further suggests some examples thereof, including polyamides, as well as wherein the degradation thereof produces a tracer ([0022]), as well as provides for “any combination thereof” of degradable polymers, including Applicant’s instantly claimed polystyrene and polyamide. Although silent to wherein the moisture degrades the degradable polymer in an amount of time from 20-60 days as claimed, since Ogle et al. discloses the use of water degradable polymers, as well as a species thereof instantly disclosed and claimed by Applicant to degrade in such an amount of time at the downhole temperature, the degradable polyamides of Ogle et al. would be expected to degrade in an amount of time within the range as claimed at a downhole temperature 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 degradation time of the degradable polymer of Ogle et al. and that of the instantly claims, the difference would have been minor and obvious.
Furthermore, since the degradable polymer of Ogle et al. is indeed exposed to moisture at a downhole temperature so as to release a tracer therefrom, one of ordinary skill would recognize the optimal amount of time to provide for when choosing the degradable polymer so that the degradation thereof releases the tracer into the produced fluid at the desired time 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) (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 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 time period for degradation as critical and it is unclear if any unexpected results are achieved by providing for such a degradation time. Since the degradable polymer of Ogle et al. is suggested to degrade/dissolve upon exposure to moisture at a downhole temperature so that a tracer is released therefrom and the presence of the tracer can be correlated to the treatment stage of the treatment zone upon production of gas therefrom, it does not appear that such would be considered an unexpected result of providing for the instantly claimed degradation time, and, as such, the determination of optimal degradation time for the degradable polymer/polyamides of Ogle et al. would be achievable through routine experimentation in the art.
With respect to dependent claim 2, Ogle et al. discloses wherein the degradable polymer comprises a polyamide ([0022]).
With respect to dependent claim 3, Ogle et al. discloses wherein degradable polymer has hydrolysable bonds ([0022]; The Examiner notes, Ogle et al. discloses at least aliphatic polyesters, polylactic acids, poly(E-caprolactones), poly(hydroxybutyrates), poly(anhydrides), poly(amino acids) and polyphosphazenes which are disclosed by Applicant in [0033] of the specification as filed as being hydrolyzed in the presence of water, and, therefore, such degradable polymers indeed have hydrolysable bonds).
With respect to dependent claim 6, Ogle et al. discloses wherein the soluble dye may be admixed and/or included in with a degradable polymer ([0022]), thereby providing for a degradable polymer blend as claimed. The reference, however, fails to disclose the percentage and thus presence of the color masterbatch in the degradable polymer blend. Since Ogle et al. clearly suggests the presence thereof, and, thus, a percentage of such would be present in the degradable polymer blend, as well as wherein such is included so as to slowly release into the produced fluids from the subterranean formation for purposes of correlation of the presence of the tracer to the treatment stage of the treatment zone of the subterranean formation, it would have been obvious to one having ordinary skill in the art to include the color masterbatch in an amount in the degradable polymer blend 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 color masterbatch presence as critical, as further exemplified by the extensiveness of the range claimed therefor, and it is unclear if any unexpected results are achieved by providing for such. Since the stimulation fluid of Ogle et al. is suggested as provided so as to deliver the polymer composite particle to a particular treatment stage of a treatment zone of the subterranean formation so that a tracer is released therefrom and the presence of the tracer can be correlated to the treatment stage of the treatment zone upon production of gas therefrom, it does not appear that such would be considered an unexpected result of providing for the instantly claimed color masterbatch presence in the degradable polymer blend, and, as such, the determination of an optimal concentration thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 7, Ogle et al. discloses wherein the stimulation fluid is selected from the group as claimed ([0006]-[0007]).
With respect to dependent claim 8, Ogle et al. discloses wherein the traceable solid particulates are carried by the carrier fluid and may be present therein an amount of 0.1-10% of the amount of proppant in the carrier fluid ([0031]). The proppant is further suggested as present in an amount of 0.1-10 ppg ([0032]). As such, Ogle et al. at least suggests an amount of polymer composite particle in the stimulation fluid in an amount as claimed since, for example, should the polymer composite particle of Ogle et al. be present in an amount of 10% of the amount of proppant, and there is 10 ppg of proppant in the carrier fluid, then the polymer composite particle of Ogle et al. would be present in an amount of 1 ppg, i.e., an amount falling within the range instantly claimed. For any amounts of polymer composite particle not explicitly disclosed by Ogle et al., it would have been obvious to one having ordinary skill in the art to provide for such amounts within the stimulation fluid of Ogle et al. 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 polymer composite particle presence as critical and it is unclear if any unexpected results are achieved by providing for such. Since the stimulation fluid of Ogle et al. is suggested as provided so as to deliver the polymer composite particle to a particular treatment stage of a treatment zone of the subterranean formation so that a tracer is released therefrom and the presence of the tracer can be correlated to the treatment stage of the treatment zone upon production of gas therefrom, it does not appear that such would be considered an unexpected result of providing for a concentration within the range that is instantly claimed, and, as such, the determination of an optimal concentration thereof would be achievable through routine experimentation in the art. in
Response to Arguments
Applicant's arguments filed 09/05/25 have been fully considered but they are not persuasive.
Applicant notes the amendments made to independent claim 1 and asserts Ogle fails to disclose wherein the color masterbatch is independently compounded as a blend of a carrier resin and a colorant.
Applicant notes Ogle coats a solid particle with soluble dyes included in a resin coating and asserts the instantly claimed independent compounding of the color masterbatch in addition to the blend of the degradable polymer with the color masterbatch is critical for controlling the degradation time. Applicant asserts Ogle does not teach a blend of two polymers where the dye is mixed with one independently.
The Examiner respectfully disagrees. Ogle discloses in [0021] wherein the one or more soluble dyes may be blended with a curable resin and then coated on a solid particulate; Ogle further discloses in [0022] wherein, additionally, the soluble dye, i.e., colorant, may be admixed in a degradable polymer.
Furthermore, to any extent the reference does not explicitly provide for such, it is noted, the selection of any order of mixing ingredients is considered prima facie obvious in the absence of new or unexpected results. See In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). In the instant case, since the polymer composite particle of Ogle et al. releases the tracer therefrom in an amount of time that enables the correlation of the presence of the tracer to a treatment stage of a treatment zone, such does not appear to provide for a new or unexpected result.
As such, it is the position of the Office that Ogle provides for the method as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2022/0276217 discloses tracer particles that may contain at least one component, including the core or shell, that is biodegradable, wherein the tracer particles maintain their mechanical and physical properties for at least one day and up to 10 years, wherein the tracer may be a dye which may be embedded in a core and wherein the core may include polystyrene; the hull for encapsulating such a core may be formed form various materials selected from the group consisting of paraffins, lipids, metals, metal alloys, absorbed polymers and grafted polymer brushes, which melts, softens, dissolves or changes structure at a certain temperature or in a certain temperature range.
US 2013/0017610 discloses microcapsules carrying tracer particles wherein the tracer may be encapsulated by a dual shell.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached on 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
10/22/25