DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments / Amendment
The response, filed 06/22/2026, has been entered. Claims 1-20 are pending. The previous 112b rejections of claims 3 and 14 are withdrawn due to amendment. Applicant’s arguments regarding claims 1-20 have been fully considered but are unpersuasive.
On pages 6-12 of the response, applicant argues that claims 1-20 were improperly rejected under 101 since the claims “are directed to an improvement to the technical field of hydrocarbon reservoir characterization”. Specifically, applicant argues that the claims pass the MPEP recitation of: “A claim reciting a judicial exception is not directed to the judicial exception if it also recites additional elements demonstrating that the claim as a whole integrates the exception into a practical application. One way to demonstrate such integration is when the claimed invention improves the functioning of a computer or improves another technology or technical field.” Applicant further argues that the claims address the identified technical problem through a specific, unconventional approach -- i.e., determining the hydrocarbon properties from solid core sample data rather than from fluid samples. In response, the examiner firstly notes that claim 1 merely recites two “determining” steps. Both are mathematical relationships/calculations that can equally be performed mentally or with pen and paper. Claims that collect data and analyze it by mathematical techniques to reach a result are directed to an abstract idea. Secondly, the examiner notes that the asserted “improvement” is to the abstract idea / the input data, not to the technology. Applicant’s asserted “improvement” changes the data the math operates on. It is not an improvement to any measurement instrument, to the core-testing apparatus, or to the functioning of a computer effected by a recited additional element. Still further, the alleged “unconventional approach” is admitted by applicant in [0023] of the instant specification as merely feeding a number, Boi, into one or more well-known equations. The “determining” of Boi (oil formation volume factor) on a solid core sample is not an improvement as this is explicitly taught by Capsan, as set forth in the previous Office action. Applicant also cites the December 5th, 2025 memorandum that “instructs the Office to ‘not evaluate claims at such a high level of generality that potentially meaningful technical limitations are dismissed without adequate explanation’”. In response, it is held that the examiner did not evaluate the claims “at a high level of generality” but, rather, the claims themselves recite at a high level of generality such that they are directed to the judicial exception. All the above applies equally to claim 12 except that claim 12 recites generic computer components. Claim 12 recites “[a] non-transitory computer-readable medium storing computer-executable instructions, which, when executed by a processor of an electronic device, cause the electronic device to:”…perform the same method steps recited in claim 1. Therefore the examiner finds applicant’s arguments regarding the rejections of claims 1-20 under 101 unpersuasive.
On page 13 of the response, applicant argues that there is no motivation to combine Capsan and AAPA as set forth in the previous Office action. In response, the examiner notes that motivation was explicitly provided in the previous Office action. Specifically, the examiner provided the motivation as “to further characterize the fluid / sample (e.g., for determining the amount of surface gas that can be dissolved in a stock tank oil when brought to a specific pressure and temperature). The GOR provides useful information regarding the changes in the fluid/mixture/phases between where it initially resides in the underground reservoir and at surface or surface-storage conditions.” Capsan explicitly teaches the difference and some effects thereof between surface / storage conditions and the conditions downhole (e.g., first paragraph of page 4, first paragraph and equation of page 5). It is also noted that Capsan explicitly states that the FVF can be obtained from PVT experiments or correlations based on produced fluid properties such as GOR to FVF. As such, Capsan explicitly suggests the FVF ↔ GOR bridge. Therefore the examiner finds the aforementioned argument unpersuasive.
On page 13 of the response, applicant argues AAPA (McCain) was developed in the context of fluid characterization and that PHOSITA would not expect AAPA (McCain’s) equations to yield meaningful or reliable results when applied to data from solid core sample data. Firstly, the examiner notes that applicant does not refute that Capsan teaches determining the Boi / FVF on a solid core sample (which factors in the effects of solid core sample vs. just the liquids/gases involved). Indeed, Capsan uses the crushed-core (Dean-Stark / GRI) saturations and is algebraically identical to applicant’s own claimed formula (see Capsan equation 5, furthest left iteration, ∅t cancels, yielding the same equation as equation 2 in the instant specification). Once the Boi / FVF is determined (Capsan), the remaining parameters / mathematical formulas (for GOR) are only numbers or properties of the gas / oil themselves. Indeed, in [0023] of applicant’s specification, it is stated that “SGgas and SGoil are the specific gravities of gas (with respect to air) and oil (with respect to water), respectively, produced from the hydrocarbon reservoir in question, and T is the temperature of the hydrocarbon reservoir in degrees Fahrenheit (°F). The specific gravities of gas and oil may each be obtained from the samples of produced fluids from the candidate well, offset wells of the hydrocarbon reservoir or any suitable source.” In essence, Capsan determines the FVF based on solid core sample data (in the same or similar way as applicant), Capsan suggests the FVF ↔ GOR bridge, and the FVF of Capsan may be merely plugged into the AAPA formula(s) to determine GOR. As the formula requires only the FVF, SGgas, and SGoil, applicant would have a reasonable expectation of success. As mentioned above, applicant’s own specification states that SGgas, and SGoil may be obtained just based on the fluid/gas itself (not specific to the structure of the sample -- e.g., not specific to the gas and oil being in sand, rock, etc.). PHOSITA, seeing the AAPA formula, would recognize that the GOR calculation’s only conditionally dependent term, at least as it relates to a “solid sample”, is the FVF…which Capsan determines for a solid sample. As such, PHOSITA would have a reasonable expectation of success as it relates to plugging the value of FVF of Capsan into the AAPA formula(s). Therefore the examiner finds the aforementioned argument unpersuasive.
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 1-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite mathematical calculations or mental processes. This judicial exception is not integrated into a practical application because data gathering steps required to use a correlation or perform the mental processes / calculations do not add a meaningful limitation to the method as they are insignificant extra-solution activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because data collecting is merely insignificant extra-solution activity. Further, limitations regarding a “non-transitory computer-readable medium…” are merely well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d). Claims 1-9 merely receive data and perform calculations thereon. Claims 10-11 are merely data gathering steps (generically recited as “obtaining a solid core sample” and “generating the solid core sample data”) required to use a correlation or perform the mental processes / calculations do not add a meaningful limitation to the method as they are insignificant extra-solution activity. Claims 12-20, similar to claims 1-9, merely receive data and perform calculations. Claims 12-20 merely change preamble such that the method is stored on a memory and executable by a processor, which are merely well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d).
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 of this title, 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.
Claims 1, 4, 8-12, 15, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Capsan et al. (“Using Core Data, Digital Rocks, and Source Rock Kinetics to Reduce Hydrocarbon Storage Uncertainty in Unconventional Reservoirs: Application to South Texas Organic Rich Mudstones”, prior art of record) in view of AAPA (Applicant Admitted Prior Art, prior art of record).Regarding claim 1:Capsan teaches a method, comprising:
determining an oil formation volume factor based on solid core sample data (page 5, equation 5 -> FVFDS)Capsan fails to teach:
determining a gas/oil ratio based on the oil formation volume factorAAPA teaches:
determining a gas/oil ratio based on the oil formation volume factor ([0023] of the instant specification which cites the exact version or merely a re-arranged version of equations B-47 and B-48 of McCain’s book The Properties of Petroleum Fluids, 2nd Ed., published January 1, 1999, -- where Boi is the FVF)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine a gas/oil ration based on the oil formation volume factor, as taught by AAPA (McCain’s 1999 2nd edition book equations), in the method of Capsan, to further characterize the fluid / sample (e.g., for determining the amount of surface gas that can be dissolved in a stock tank oil when brought to a specific pressure and temperature). The GOR provides useful information regarding the changes in the fluid/mixture/phases between where it initially resides in the underground reservoir and at surface or surface-storage conditions.
Regarding claim 4:Capsan and AAPA teach all the limitations of claim 1, as mentioned above.Capsan also teaches (page 5, equation 5):
wherein determining the oil formation volume factor (FVF) based on the solid core sample data comprises: receiving a water saturation value (Swt) based on the solid core sample data; receiving an oil saturation value (Soil) based on the solid core sample data; and determining the oil formation volume factor based on the water saturation value and the oil saturation value (equation 5)
Regarding claim 8:Capsan and AAPA teach all the limitations of claim 1, as mentioned above.As combined in the claim 1 rejection above AAPA teaches:
wherein determining the gas/oil ratio based on the oil formation volume factor comprises: determining a parameter based on the oil formation volume factor; and determining the gas/oil ratio based on the parameter, a temperature, a gas specific gravity, and an oil specific gravity(see [0023] of the instant specification)
Regarding claim 9:Capsan and AAPA teach all the limitations of claim 1, as mentioned above.Capsan also teaches:
wherein the solid core sample data comprises GRI test data, MRP test data, or any combination thereof(e.g., last complete paragraph of page 2)
Regarding claim 10:Capsan and AAPA teach all the limitations of claim 1, as mentioned above.Capsan also teaches:
obtaining a solid core sample from a hydrocarbon reservoir; and generating the solid core sample data based on the core sample(e.g., page 1, FIG. 3, etc.)
Regarding claim 11:Capsan and AAPA teach all the limitations of claim 10, as mentioned above.Capsan also teaches:
wherein the hydrocarbon reservoir comprises an unconventional reservoir(e.g., title)
Regarding claims 12, 15, and 19-20: These claims correspond to claims 1, 4, and 8-9, respectively, with the exception of the recitation of “a non-transitory computer-readable medium storing computer-executable instructions, which, when executed by a processor of an electronic device, cause the electronic device to”, followed by the method steps. The examiner takes Official notice that it is common to store method steps as computer-executable instructions, executable by a processor, on a non-transitory computer-readable medium. Additionally / alternatively, see MPEP 2144.04 III (Automating a Manual Activity) which states that the court held that broadly automating a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. As such, claims 12, 15, and 19-20 are rejected for the reasons above and the same reasons as claims 1, 4, and 8-9.
Claims 2-3 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Capsan et al. (“Using Core Data, Digital Rocks, and Source Rock Kinetics to Reduce Hydrocarbon Storage Uncertainty in Unconventional Reservoirs: Application to South Texas Organic Rich Mudstones”, prior art of record) in view of AAPA (Applicant Admitted Prior Art, prior art of record) and further in view of AAPG Wiki (“Petroleum reservoir fluid properties”, prior art of record).Regarding claim 2:Capsan and AAPA teach all the limitations of claim 1, as mentioned above.Capsan fails to teach:
determining a condensate/gas ratio based on the gas/oil ratioAAPG Wiki teaches:
determining a condensate/gas ratio based on the gas/oil ratio (page 2, GOR vs OGR; page 4, last paragraph)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine a condensate/gas ratio based on the gas oil ratio, as taught by AAPG Wiki, as it is merely a unit conversion to more convenient units when analyzing gas condensate petroleum reservoirs. Although not explicitly relied upon, particular emphasis is given to [0024] of the instant specification. the ratio of the instant claim is CGR whereas the gas/oil ratio determined in claim 1 (and the references cited therein) is GOR. CGR is merely equal to 1 million divided by GOR. This changes the units from SCF/STB to STB/MMSCF.
Regarding claim 3, as best understood (see 112b rejection above):Capsan, AAPA, and AAPG Wiki teach all the limitations of claim 2, as mentioned above.As combined in the claim 2 rejection above, AAPG Wiki teaches:
wherein determining the condensate/gas ratio comprises multiplying the reciprocal of the gas/oil ratio by 1,000,000
E.g., see the last paragraph of page 4 of AAPG Wiki and explanation provided in the rejection of claim 2. AAPG Wiki recites a gas-oil ratio (GOR) of 2500 SCF/STB which is (converted to “CGR”) 400 STB/MMSCF. The reciprocal of 2500 is 0.0004. 0.0004 multiplied by 1,000,000 is 400. As such, once again, this is merely a unit conversion.
Regarding claims 13-14: These claims correspond to claims 2-3, respectively, with the exception of the recitation of “a non-transitory computer-readable medium storing computer-executable instructions, which, when executed by a processor of an electronic device, cause the electronic device to”, followed by the method steps. The examiner takes Official notice that it is common to store method steps as computer-executable instructions, executable by a processor, on a non-transitory computer-readable medium. Additionally / alternatively, see MPEP 2144.04 III (Automating a Manual Activity) which states that the court held that broadly automating a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. As such, claims 13-14 are rejected for the reasons above and the same reasons as claims 2-3.
Claims 5-7 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Capsan et al. (“Using Core Data, Digital Rocks, and Source Rock Kinetics to Reduce Hydrocarbon Storage Uncertainty in Unconventional Reservoirs: Application to South Texas Organic Rich Mudstones”, prior art of record) in view of AAPA (Applicant Admitted Prior Art, prior art of record) and further in view of Petrowiki (“Oil fluid characteristics”, prior art of record).Regarding claim 5:Capsan and AAPA teach all the limitations of claim 1, as mentioned above.Sapsan fails to teach:
selecting a fluid type based on the oil formation volume factorPetrowiki teaches:
selecting a fluid type based on the oil formation volume factor (first paragraph of page 3)
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a fluid type based on the oil formation volume factor, as taught by Petrowiki, to better prepare for extraction and/or better predict yields. A black oil reservoir might not need as much consideration for phase changes due to the pressure change between the original reservoir depth and surface conditions as compared to a volatile-oil reservoir. In contrast extracting and storing fluids from a volatile-oil or condensate reservoir may need significant consideration / planning regarding management of phase transitions.
Regarding claim 6:Capsan, AAPA, and Petrowiki teach all the limitations of claim 5, as mentioned above.As combined in the claim 5 rejection above, Petrowiki teaches:
wherein the fluid type comprises black oil, volatile oil, or gas condensate(first paragraph of page 3)
Regarding claim 7:Capsan, AAPA, and Petrowiki teach all the limitations of claim 5, as mentioned above.As combined in the claim 5 rejection above, Petrowiki teaches:
wherein: a) the oil formation volume factor is less than 1.5 and the fluid type is black oil; b) the oil formation volume factor is from 1.5 to 3.0 and the fluid type is volatile oil; or c) the oil formation volume factor is greater than 3.0 and the fluid type is gas condensate(See first paragraph of page 3. It is noted that the instant claim uses “or”. Petrowiki explicitly teaches the FVF values for black oil and volatile oil. Further, FIG. 3 and the associated discussion thereof of Capsan shows that even higher values of FVF will are indicative of gas condensate type reservoirs.)
Regarding claims 16-18: These claims correspond to claims 5-7, respectively, with the exception of the recitation of “a non-transitory computer-readable medium storing computer-executable instructions, which, when executed by a processor of an electronic device, cause the electronic device to”, followed by the method steps. The examiner takes Official notice that it is common to store method steps as computer-executable instructions, executable by a processor, on a non-transitory computer-readable medium. Additionally / alternatively, see MPEP 2144.04 III (Automating a Manual Activity) which states that the court held that broadly automating a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. As such, claims 16-18 are rejected for the reasons above and the same reasons as claims 5-7.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Herbert Keith Roberts whose telephone number is (571)270-0428. The examiner can normally be reached 10a - 6p MT.
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, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HERBERT K ROBERTS/Primary Examiner, Art Unit 2855
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