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 Amendment
The Amendment filed 3/16/26 has been entered. Claims 1-3, 5-17, and 19-49 remain pending in the application, of which claims 1-3, 5-15, and 33-46 are withdrawn. Claims 4 and 18 have been canceled. As such, the claims being examined are claims 16, 17, 19-32, and 47-49.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 30 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 30 recites the limitation “a specific gravity of at most 1.2...” The phrase “at most 1.2” is indefinite in that it includes zero and it is unclear as to how a substance can have a specific gravity of zero. For purposes of examination, the term “at most 1.2” will be considered under Broadest Reasonable Interpretation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 16, 17, 19-30, 32, and 47-49 are rejected under 35 U.S.C. 103 as being unpatentable over Gordon et al. (US 2021/0253944- cited previously).
With respect to independent claim 16, Gordon discloses a method, comprising hydraulically fracturing a subterranean formation via a wellbore by introducing a fracturing fluid comprising a carrier fluid and proppant particles into the subterranean formation via the wellbore ([0010] and [0024]), wherein the proppant particles comprise non-coke proppant particles and coke proppant particles ([0024], [0059], and [0060]), wherein the coke proppant particles have a total concentration of at least about 2 vol % to about 100 vol% based on the total amount of all proppant particulates and comprise at least 5% up to 100% of the total mass of all proppant particulates ([0060], [0062], and [0068]).
Regarding claim 16, Gordon discloses wherein the coke proppant particles have a total concentration of at least about 2 vol % to about 100 vol% based on the total amount of all proppant particulates and comprise at least 5% up to 100% of the total mass (30,000-250,000 pounds) of all proppant particulates ([0060], [0062], and [0068]). Although silent to wherein the coke proppant particles are present at “a concentration of 10 volume percent (vol%) to 67 vol% of the proppant particles within the fracturing fluid, based on a total volume of all proppant particles in the fracturing fluid, on a dry particle basis” or “a total concentration in the fracturing fluid from 14 kilograms per cubic meter to 480 kilograms per cubic meter,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the coke proppant particles amount as claimed insofar as because 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)
With respect to depending claims 17 and 47, Gordon discloses wherein the coke proppant particles have a D50 particle size of about 50 μm to about 500 μm ([0008], [0050], and [0060]). Although silent to wherein the coke proppant particles have particle sizes ranging from “88 µm to 250 µm,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the coke proppant particle sizes as claimed insofar as because 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) With respect to depending claims 19 and 20, dependent upon claim 17, Gordon discloses wherein the coke proppant particles have a total concentration of at least about 2 vol % to about 100 vol% based on the total amount of all proppant particulates and comprise at least 5% up to 100% of the total mass (30,000-250,000 pounds) of all proppant particulates ([0062] and [0068]). Although silent to wherein the coke proppant particles have a total concentration in the fracturing fluid based on the volume of the carrier fluid of “from 18 kilograms per cubic meter to 120 kilograms per cubic meter” or “from 23 kilograms per cubic meter to 96 kilograms per cubic meter,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the coke proppant particle amounts as claimed insofar as because 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)
With respect to depending claim 21, Gordon discloses comprising producing hydrocarbon fluids from the subterranean formation via the wellbore subsequent to the hydraulic fracturing of the subterranean formation ([0003], [0024], [0035], and [0065]).
With respect to depending claim 22, Gordon discloses wherein the coke proppant particles have a total concentration of at least about 2 vol % to about 100 vol% based on the total amount of all proppant particulates and comprise at least 5% up to 100% of the total mass (30,000-250,000 pounds) of all proppant particulates ([0062] and [0068]). Although silent to wherein the coke proppant particles have a concentration of “10 vol% to 50 vol% of the proppant particles within the fracturing fluid,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the coke proppant particles amount as claimed insofar as because 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)
With respect to depending claim 23, Gordon discloses wherein the coke proppant particles are blended with the non-coke proppant particles within the fracturing fluid ([0024], [0059], and [0060]).
With respect to depending claim 24, Gordon discloses wherein the coke proppant particles are introduced into the subterranean formation sequentially with the non-coke proppant particles ([0060]).
With respect to depending claim 25, Gordon discloses comprising introducing the fracturing fluid into the subterranean formation via the wellbore for each of at least a portion of a plurality of stages of the hydrocarbon well ([0061] and [0069]).
With respect to depending claims 26 and 27, Gordon discloses wherein the coke proppant particles may be flexicoke (Abstract and [0024]). With regard to the remaining materials, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the type of coke.
With respect to depending claim 28, Gordon discloses wherein the coke proppant particles comprise microproppant coke particles ([0050]). With respect to depending claim 29, Gordon discloses wherein the non-coke proppant particles may be sand or ceramic ([0059]). With regard to the remaining materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the type of non-coke proppant particles. With respect to depending claim 30, Gordon discloses wherein the carrier fluid may be water, such as freshwater, saltwater, and treated water ([0055]). Although silent to wherein the water has “a specific gravity of at most 1.2 at 25 °C,” as instantly claimed, pure water naturally has a specific gravity of 1 at 4 °C (and approximately 0.997 at 25 °C) and seawater naturally has a specific gravity of approximately 1.022 at 25 °C; as such, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a water having the specific gravity as claimed insofar as because 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)
With respect to depending claim 32, Gordon discloses further comprising an acid, a biocide, a breaker, a corrosion inhibitor, a crosslinker, a friction reducer, a gel, an oxygen scavenger, a pH control additive, a scale inhibitor, a surfactant, a weighting agent, and inert solid, a fluid loss control agent, an emulsifier, an emulsion thinner, an emulsion thickener, a viscosifying agent, a foaming agent, a stabilizer, a chelating agent, a mutual solvent, an oxidizer, a reducer, and a clay stabilizing agent ([0058]).
With respect to depending claims 48 and 49, Gordon discloses wherein the coke proppant particles have a total concentration of at least about 2 vol % to about 100 vol% based on the total amount of all proppant particulates and comprise at least 5% up to 100% of the total mass (30,000-250,000 pounds) of all proppant particulates ([0060], [0062], and [0068]). Although silent to wherein the coke proppant particles are present at a concentration of “33 vol% to 67 vol% of the proppant particles within the fracturing fluid” or “33 vol% to 50 vol% of the proppant particles within the fracturing fluid,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the coke proppant particles amount as claimed insofar as because 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)
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Gordon et al. (US 2021/0253944- cited above) in view of King et al. (US 2007/0135313- cited previously).
With respect to depending claim 31, Gordon discloses a fracturing fluid comprising proppant, wherein the fracturing fluid further comprises a friction reducer ([0058]). However, Gordon fails to expressly disclose the composition of the friction reducer and its amount. King teaches a fracturing fluid comprising proppant and a friction reducer, wherein the friction reducer is present at a concentration of from about 0.01% to about 1% by weight of the fracturing fluid and wherein the friction reducer comprises between about 5% and about 30% active polymer solution ([0014]-[0017], [0021], [0030], and [0031]). Replacing the fracturing fluid friction reducer disclosed by Gordon with the fracturing fluid friction reducer taught by King is but a simple substitution of one known equivalent fracturing fluid friction reducer for another, performing the same function for the same purpose. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make this simple substitution as it has been held “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR at 1395 (citing United States v. Adams, 383 US 39, 50-51 (1966)).
Response to Arguments
Applicant's arguments filed 3/16/26 have been fully considered but they are not persuasive.
Applicant argues that “the absence of an explicit lower limit does not render Claim 30 indefinite [because] one of ordinary skill in the art would understand what is practically required.” The Examiner finds this argument unpersuasive. The exact metes and bounds covered by the phrase “a specific gravity of at most 1.2...” is not clear; the lower bound might be 1, 0.1, 0.001, 0.0001, etc.
Applicant argues that Gordon cannot be relied upon since “Gordon is silent as to using both claimed ‘non-coke proppant particles’ and ‘coke proppant particles’ with ‘coke proppant particles’ having any specified concentration range.” The Examiner finds this argument unpersuasive. As noted above, Gordon discloses proppant particles comprising non-coke proppant particles and coke proppant particles ([0024], [0059], and [0060]), wherein the coke proppant particles have a total concentration of at least about 2 vol % to about 100 vol% based on the total amount of all proppant particulates and comprise at least 5% up to 100% of the total mass of all proppant particulates ([0060], [0062], and [0068]). As such, Gordon does indeed disclose both coke proppant particles and non-coke proppant particles as well as the criticality of the amount of said particles.
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 AVI T. SKAIST whose telephone number is (571)272-9348. The examiner can normally be reached M-F 9:30-6.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674