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 .
Response to Arguments
Applicant’s arguments, filed on 08/07/2026, with respect to Claims 1-3 and 5-10 rejected under 35 U.S.C. 103 as being unpatentable over Baran, JR. et al. (US 2003/0220204 A1) and further in view of Saini et al. (US 2020/0231864 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below with the same reference based on the new amended claims.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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, 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.
Claims 1, 3, 5-8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Baran, JR. et al. (US 2003/0220204 A1) (“Baran” herein – cited previously) and further in view of Saini et al. (US 2020/0231864 A1) (“Saini” herein – cited previously).
(Claims contain only selected species)
Claim 1.
Baran discloses a foamed formation treatment fluid comprising: [0005-0007]
a wettability alteration agent; [0039-0043]
an aqueous solvent comprising water and alcohol; (Claim 44)
an injection gas; [0052-0059] and
a foaming agent, [0052-0059]
wherein the formation treatment fluid is in the form of a foam, [0005,-0007] wherein the wettability alteration agent is nanoparticles [0039-0049] in a particle suspension. [0039-0049] and wherein the formation treatment fluid has a flash point of at least 50 °C.
Baran however does not explicitly disclose wherein the wettability alteration agent, charged nanoparticles modified with fluorine containing groups; and combinations thereof, wherein the charged nanoparticles are present in a particle suspension comprising particles functionalized with a first moiety and a second moiety, wherein the first moiety is an epoxide and the second moiety is an amine.
Saini teaches the above limitation (See paragraphs 0013, 0005, 0010, 0012, 0006, & 0015 → Saini teaches this limitation in the particles include fluorinated silica particles.., have a mean diameter in a range of about 1 nm to about 1000 nm. The methods include particles functionalized with a chemical moiety (R) that can react with a chemical moiety (R′). The first chemical moiety (R) is an epoxide group and the second chemical moiety (R′) is an amine group. The first reactive moiety (R) can be an epoxide that reacts with the amine group provided by the amino-alkyl silane to form a covalent bond. The particle suspension includes a solvent selected from the group consisting of water, brine, methanol, ethanol,… ) for the purpose of having the particles a lower surface free energy than an untreated rock formation may provide reduced wettability of the rock formation to water or oil. [0070]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Baran, with the above limitation, as taught by Saini, in order to have having a lower surface free energy than an untreated rock formation may provide reduced wettability of the rock formation to water or oil.
Since Baran teaches the same composition comprising of water and alcohol solvent, charged nanoparticles modified with fluorine containing groups; wherein the charged nanoparticles are present in a particle suspension comprising particles functionalized with a first moiety and a second moiety, wherein the first moiety is an epoxide and the second moiety is an amine, an injection gas, and foaming agent, it would be a formation treatment fluid would have a flash point of at least 50 °C.
"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 disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), 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 Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 3.
Baran discloses the foamed formation treatment fluid of claim 1, wherein the wettability alteration agent is present in the treatment fluid in an amount of about 0.01 wt% to about 10.0 wt% based on the total weight of the treatment fluid. [0039-0047]
Claim 5.
Baran discloses the foamed formation treatment fluid of claim 1, wherein the wettability alteration agent comprises the charged nanoparticles having a mean diameter in a range of from about 1 nm to about 1000 nm. [0039-0047]
Claim 6.
Baran discloses the foamed formation treatment fluid of claim 1, wherein the aqueous solvent further comprises hydrocarbons. (Claim 44)
Claim 7.
Baran discloses the foamed formation treatment fluid of claim 1, wherein the injection gas comprises air, nitrogen (N₂), carbon monoxide (CO), carbon dioxide (CO₂), natural gas, or mixtures thereof. [0052-0059] .
Claim 8.
Baran discloses the foamed formation treatment fluid of claim 1, wherein nanoparticles are present in a particle suspension. [0039-0049]. Baran however does not explicitly discloses the nanoparticles as the charged nanoparticles. (Same as claim 1)
Claim 9.
Baran discloses the foamed formation treatment fluid of claim 1, wherein the nanoparticles are present in a particle suspension in an amount ranging from about 0.001 wt% to about 10 wt% based on the total weight of the particle suspension. [0039- 0049] Baran however does not explicitly discloses the nanoparticles as the charged nanoparticles. (Same as claim 1)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 1616 09/22/2023
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