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 Rejections - 35 USC § 102/ Claim Rejections - 35 USC § 103
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, 2,5-7, 9, 10, 21 and 22 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gizzatov et al. (US 2024/0035373).
With respect to independent claim 1, Gizzatov et al. discloses a method for monitoring gas production in a subterranean formation (abstract) comprising:
introducing at least two polymer composite particles each having a different degradable polymer and a tracer ([0049]) into a stimulation fluid ([0034]), wherein a first polymer composite particle comprises a first degradable polymer selected from the group as claimed ([0019]) and wherein a second polymer composite particle comprises a second degradable polymer consisting of polyamide ([0019]; [0023]-[0024]), and wherein the tracer has an average particle size ranging from 100 nm to 300 microns ([0027]);
injecting the stimulation fluid comprising the at least two 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 at least two polymer composite particles inside the at least one opening for an amount of time during which the at least two polymer composite particles are exposed to moisture at a downhole temperature ranging from 70-150oC ([0047]), wherein the moisture degrades the degradable polymer of the at least two polymer composite particles at different rates ([0046]-[0049]);
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]).
Gizzatov et al. discloses wherein a degradable polymer of a polymer composite particle may consist of polyamide ([0019]; [0023]-[0024]); the reference further suggests wherein the polymer composite particle may degrade and thereby release the tracer in an amount of time having a lower limit of 1-7 days to an upper limit of 2-12 weeks ([0047]). Although silent to wherein the polyamide of the second polymer composite particle specifically provides for the release of the tracer in 8-10 days, since Gizzatov et al. discloses the same polymer as well as the same temperature encountered in the treatment zone as that instantly claimed ([0047]), the tracer of a polymer composite particle consisting of polyamide would inherently act in the manner as claimed, i.e., release the tracer in 8 to 10 days. If there is any difference between the release of the tracer in the polymer composite particle of Gizzatov et al. and that of the instant claims, the difference would have been minor and obvious insofar as because “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).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claim 2, Gizzatov et al. discloses wherein degradable polymer of the at least two polymer composite particles is a polymer comprising hydrolysable bonds ([0019]).
With respect to dependent claim 5, Gizzatov et al. discloses where the tracer is selected from the group as claimed ([0025]).
With respect to dependent claim 6, Gizzatov et al. discloses where the amount of time is 1 to 10 days ([0047]; [0055]).
With respect to dependent claim 7 and new further dependent claim 22, Gizzatov et al. discloses wherein a degradable polymer of a polymer composite particle is selected from the same group of first degradable polymers instantly claimed in independent claim 1 ([0019]). The reference further suggests wherein the polymer composite particle may degrade and thereby release the tracer in an amount of time having a lower limit of 1-7 days to an upper limit of 2-12 weeks ([0047]). Although silent to wherein the first degradable polymer specifically provides for the release of the tracer in 1-2 days/2 days, since Gizzatov et al. discloses the same polymer options used as the first degradable polymer as does Applicant, as well as the same temperature encountered in the treatment zone as that instantly claimed ([0047]), the tracer of a polymer composite particle consisting of a first degradable polymer as instantly claimed would inherently act in the manner as claimed, i.e., be released in 1-2 days/2 days. If there is any difference between the release of the tracer in the polymer composite particle of Gizzatov et al. and that of the instant claims, the difference would have been minor and obvious insofar as because “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).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claim 9, 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 10, Gizzatov et al. discloses wherein the at least one opening is a fracture or a wormhole ([0029]; [0046]-[0047]).
With respect to new dependent claim 21, Gizzatov et al. discloses wherein the first degradable polymer is as claimed ([0019]; [0024]).
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, 2, 5-7, 9, 10 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lafitte et al. (US 9,290,689 – cited previously) in view of Ogle et al. (US 2020/0283678 – cited previously).
With respect to independent claim 1, Lafitte et al. discloses a method for monitoring gas production in a subterranean formation (col. 1, l. 25-28) comprising:
introducing at least two polymer composite particles (col. 11, l. 56-col. 12, l. 2) each having a different (col. 10, l. 53-58, wherein the particles of the two subsets are disclosed to have different release profiles; see further explanation below) degradable polymer (col. 7, l. 55-col. 8, l. 30) and a tracer (col. 5, l. 47-col. 6, l. 60) into a stimulation fluid (col. 3, l. 59-61; col. 3, l. 66-col. 4, l. 3; col. 4, l. 4-5), wherein a first polymer composite particle comprises a first degradable polymer selected from the group as claimed (col. 8, l. 41-col. 9, l. 28) and wherein a second polymer composite particle comprises a second degradable polymer (col. 10, l. 53-58, wherein the particles of the two subsets are disclosed to have different release profiles; see further explanation below) that is an organic polymer which undergoes hydrolysis under reservoir conditions and includes block copolymers of polyamides (col. 9, l. 13-15), wherein the tracer has an average particle size (col. 6, l. 66-col. 7, l. 3; col. 11, l. 25-26);
injecting the stimulation fluid comprising the at least two polymer composite particles into the subterranean formation to a treatment stage of a treatment zone comprising at least one opening, wherein the at least two polymer composite particles flow into and remain inside the at least one opening (col. 3, l. 47-58; col. 3, l. 64-col. 4, l. 6; col. 10, l. 55-58);
maintaining the at least two polymer composite particles inside the at least one opening for an amount of time during which the at least two polymer composite particles are exposed to moisture at a downhole temperature ranging from 70-150oC (col. 13, l. 30-40 and 45-50; col. 14, . 10-25 and 50-58; col. 16, l. 15-2, wherein in each example, the composite particles are exposed to a temperature within the range as claimed), wherein the moisture degrades the degradable polymer (col. 8, l. 34- col. 9, l. 28; col. 20, l. 33-36) of the at least two polymer composite particles at different rates, thereby releasing the tracer at different times (col. 6, l. 66-col. 7, l. 3; col. 10, l. 55-58; col. 13, l. 60-col. 14, l. 25);
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 (col. 19, l. 52-55; col. 20, l. 55-56);
determining a presence of the tracer in the produced gas (col. 19, l. 54-55; col. 20, l. 57-58); and
correlating the presence of the tracer to the treatment stage of the treatment zone of the subterranean formation (col. 19, l. 56-58; col. 20, l. 58-61).
Lafitte et al. discloses wherein the tracer may be of small particle size, possibly even of nanoparticle size (col. 7, l. 1-3). The reference further suggests wherein the overall polymer composite particles have first, second and third size ranges, including less than or equal to 10 microns for the first size which enters pores, followed by a size of between 10 and 150 microns for the particles that are retained by a filter cake and greater than 200 microns for the third particles which are retained by proppant (col. 5, l. 1-40). Although silent to the specific size of the tracer particles included within the overall composite particle, given the suggestion by Lafitte et al. to provide for such particles as having a small particle size with the possibility thereof as nanoparticle size, it would have been obvious to one having ordinary skill in the art to provide a tracer with a small particle size that is sized at a size less than the disclosed polymer composite sizes in Lafitte, i.e., less than 10 microns, between 10-150 microns and/or less than 200 microns, so as to allow for the encapsulation thereof within each of the first, second and third particle sets and thereby provide for a particle size within the range as claimed. One of ordinary skill in the art would recognize the optimal tracer particle size to provide for based on the suggestion of a small particle size used therefor by Lafitte, as well as the sizes suggested for the overall polymer composite particle so that the tracer particle can be effectively carried therewithin 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). 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 tracer particle size range as critical and it is unclear if any unexpected results are achieved by providing for such. Since Lafitte et al. teaches wherein the tracer particles are solids and of a small particle size, potentially even nanoparticle size, as well as wherein the overall particles within which they are enclosed are less than 10 microns, between 10-150 microns and greater than 200 microns, it would appear sizes of the tracer particle less than and/or within such ranges would be apparent to one of ordinary skill so that the tracer particle is effectively encapsulated by the overall polymer composite particle for the delayed release thereof. Since such a delayed release of the tracer from the polymer composite is the intent of Applicant, it does not appear that such would be considered an unexpected result of providing for a tracer particle size as claimed, and, as such, the determination of optimal size therefor would be achievable through routine experimentation in the art.
Lafitte et al. suggests a variety of degradable polymers, including a polyester, polyester copolymer and polylactic acid copolymer (col. 8, l. 33-28), thereby providing for a first degradable polymer as claimed; the reference further suggests wherein when two subsets of particles go to the same location, they differ in the tracer substance contained there within, as well as in the release profile (col. 10, l. 53-58), thereby suggesting at least two polymer composite particles each having a different degradable polymer and tracer as claimed. Several examples are provided wherein it is clear that different polymers indeed have different release profiles over time (col. 13, l. 30-62, wherein the release profiles of PLLA, PLDLA and PLGA are shown, as well as col. 14, l. 50-57, wherein the release profiles of different copolymers at the same temperature are shown) and as such, it would have been obvious to one having ordinary skill in the art to use a different degradable polymer for each of the polymer composite particles in order to provide the intended different release profiles for each subset. Further examples of degradable polymers suggested by Lafitte et al. include those that include block copolymers including poly(amides). The reference, however, fails to explicitly identify a poly(amide) as the second degradable polymer of the at least two polymer composite particles, and, further, wherein such is released in 8 to 10 days as instantly claimed. Ogle et al. teaches traceable solid particulates utilized to track production in a formation (abstract) wherein degradable polymers are used therewith; examples thereof include polymers that break down in the presence of water, including some disclosed by Lafitte et al. such as polyesters and polyesteramides, while further suggesting the use of a polyamide for such purposes ([0022]). As such, it would have been obvious to one having ordinary skill in the art to try a polyamide as the second degradable polymer used for the second polymer composite particle of the second subset of particles of Lafitte et al. in order to yield the predictable result of providing a degradable polymer downhole with a release profile for releasing the tracer at an intended time and location upon production of fluids from the formation, wherein such is different from that of the different first degradable polymer. Ogle et al. identifies a polyamide as a degradable polymer from a finite number of identified, predictable solutions used by a person of ordinary skill in the art to degrade upon contact with water so as to release a tracer for the purpose of tracking production from a formation, and, as such, a polyamide would be an obvious alternative to try as a degradable polymer in the method of Lafitte et al. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
With further regard to the release profile of the second polymer composite particle as in 8 to 10 days, since Lafitte et al. in view of Ogle et al. provides for the same second polymer in the composite particle as instantly claimed, and Lafitte et al. further suggests exposure to a downhole temperature within the range as claimed, the second polymer composite particle comprising a polymer consisting of polyamide of Lafitte et al. in view of Ogle et al. would be expected to have a release profile of 8 to 10 days as claimed 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. If there is any difference between the release profile of the second polymer composite particle of Lafitte et al. in view of Ogle et al. and that of the instant claims, the difference would have been minor and obvious. 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). Lafitte et al. clearly suggests different release profile times for several different polymers, including a polyester, polyester copolymer and polylactic acid copolymer, used to form the polymer composite particles through example, wherein such show release in 1 day, while others in amounts of time greater than one day, including up to 20 days (col. 13, l. 30-50; col. 15, l. 5-22; col. 16, l. 15-25; col. 16, l. 50-55). Although silent wherein the tracer in the second polymer composite particle is released in 8-10 days as claimed, given the suggestion by Lafitte et al. to provide for different release profiles for the first and second polymer composite particles, one having ordinary skill in the art would recognize an optimal release profile to provide for the tracer in the second polymer composite particles of Lafitte et al. in view of Ogle et al. 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). 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 release time for the tracer in the second particle as critical and it is unclear if any unexpected results are achieved by providing for such. Since Lafitte et al. clearly discloses the desire to provide for different release profiles for different tracers within two subsets placed in the same location, it does not appear such would be an unexpected result of providing for a release of the tracer in the second polymer composite particles in an amount of time as claimed, and, as such, the determination for the optimal timing for release thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 2, Lafitte et al. discloses wherein the degradable polymer of the at least two polymer composite particles is a polymer comprising hydrolsable bonds (col. 7, l. 61-65; col. 8, l. 41-45; col. 10, l. 24-35; col. 20, l. 33-36).
With respect to dependent claim 5, Lafitte et al. discloses where the tracer is selected from the group as claimed (col. 5, l. 66-col. 6, l. 65).
With respect to dependent claim 6, Lafitte et al. discloses where the amount of time is 1 to 10 days (col. 13, l. 30-50; col. 15, l. 5-22; col. 16, l. 15-25; col. 16, l. 50-55).
With respect to dependent claim 7 and new dependent claim 22, Lafitte et al. discloses wherein the at least two polymer composite particles includes a first polymer composite particle and a second polymer composite particle (col. 10, l. 53-58, wherein a plurality of subsets that differ in release profiles and in tracer substances are suggested, thereby providing for a first and second as claimed). The reference further suggests different release profile times for several different polymers, including a polyester, polyester copolymer and polylactic acid copolymer, used to form the polymer composite particles through example, wherein such show release in 1 day, while others in amounts of time greater than one day, including up to 20 days (col. 13, l. 30-50; col. 15, l. 5-22; col. 16, l. 15-25; col. 16, l. 50-55). Although silent to wherein the tracer in the first polymer composite is released in one to 2 days/2 days, as instantly claimed by claims 7 and 22, given the suggestion by Lafitte et al. to provide for different release profiles for the first and second polymer composite particles, as well as the disclosure therein of some of the same degradable polymers as Applicant, as well as the ability thereof to degrade over time, it would have been obvious to one having ordinary skill in the art to choose a first polymer for the first polymer composite particle so as to provide a release of tracer therefrom as claimed as based on the desired different release profile to provide for in the fracture. Since Lafitte et al. suggests the intention to provide for different release profiles from the first and second polymer composites, as well as the use of some of the same polymers for forming the first polymer composite as those instantly disclosed and claimed by Applicant, i.e., a polyester, polyester copolymer and polylactic acid copolymer, the polymers used for the first polymer composite particle of Lafitte et al. would be expected to act in the manner as claimed, i.e., be capable of releasing the tracer in an amount of time as claimed. If there is any difference between the release of the tracer from the first polymer composite particle of Lafitte et al. and that of the instant claims, the difference would have been minor and obvious insofar as because “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). Furthermore, one having ordinary skill in the art would recognize an optimal release profile to provide for the tracer in the first polymer composite particles of Lafitte et al. 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). 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 release time for the tracer in the first polymer composite particle as critical and it is unclear if any unexpected results are achieved by providing for such. Since Lafitte et al. clearly discloses the desire to provide for different release profiles for different tracers within two subsets placed in the same location, it does not appear such would be an unexpected result of providing for a release of the tracer in the first polymer composite particles in an amount of time as claimed, and, as such, the determination for the optimal timing for release thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 9, Lafitte et al. discloses wherein the stimulation fluid is selected from the group as claimed (col. 3, l. 59-col. 4, l. 3).
With respect to dependent claim 10, Lafitte et al. discloses wherein the at least one opening is a fracture or a wormhole (col. 3, l. 47-52; col. 3, l. 59-col. 4, l. 3).
Response to Arguments
Applicant’s arguments with respect to the rejections of claims as unpatentable over Lafitte et al. in view of Ogle et al. have been fully considered, but they are not persuasive.
Applicant notes claim 1 has been amended to include the subject matter of claim 8, requiring the tracer in the second polymer composite particle be released in 8 to 10 days and asserts Lafitte does not teach nor suggest that the particles include polyamide.
The Examiner acknowledges Lafitte does not disclose polyamide, but maintains Ogle suggests the use of such as a degradable polymer suitable for use in a composite for release of a tracer contained therein downhole.
Applicant asserts that one having ordinary skill in the art would not have a reasonable expectation of success in choosing a second degradable polymer to degrade within the time period of 8 to 10 days based on the lack of teaching of polyamide of Lafitte.
However, the Office maintains, Ogle suggests polyamide, for at least the reasons set forth above, and, Lafitte discloses the provision of the degradable polymer composites in a formation that has a temperature overlapping the range instantly claimed. As such, when employing a polyamide as suggested by Ogle therein, the polyamide would be expected to act in the manner as claimed.
Applicant asserts Ogle broadly provides a large range of possible degradable polymers in [0022]. However, it is the position of the Office that such is not a large range of possible degradable polymers, but rather, a finite list of possibilities of degradable polymers suitable for use in a subterranean environment that includes some of the same degradable polymers disclosed by Lafitte. As such, the Office maintains one having ordinary skill in the art would recognize the alternative polymers suggested by Ogle to those disclosed by Lafitte as a finite number of suitable alternatives to try.
Applicant asserts Ogle does not teach or suggest a degradation time for any of the possible degradable polymers; however, such is considered a property thereof, and thus, when subjected to the temperatures disclosed by Lafitte, the degradable polymers of Ogle would be expected to act in the manner as claimed.
Applicant notes the examples of Lafitte teach that degradable polymers including polylactic acid degrade over a time of 1 to 20 days, with longer times occurring at a lower temperature range and that none of the examples of Lafitte teach a degradable polymer having a degradation time of 8 to 10 days at the instantly claimed temperature.
However, the Examiner notes, Applicant instantly claims such a degradation time as that of polyamide and not the polylactic acid.
Should Applicant intend such a degradation time of 8-10 days to be that of polylactic acid, amendments of such a nature are suggested.
Lafitte clearly suggests wherein a polymer may degrade over a period of time up to 20 days; the reference further clearly suggests wherein different degradation profiles are desirable. As such, one of ordinary skill would recognize to look to polymers having different degradation profiles when subjected to the instantly claimed temperature range and recognize suitable polymers for achieving a longer degradation time.
Should Applicant intend a more specific polymer be used for the first polymer composite particle and a particular degradation time associated therewith, further consideration may be given to the claims. For example, Applicant has added new claims 21 and 22; the Office acknowledges Lafitte does not disclose or suggest a first degradable polymer as claimed by claim 21. Should such a polymer be used as the first degradable polymer, and, further, a particular degradation time associated therewith, further consideration will be required. As instantly claimed, there is no particular release time required for a first degradable polymer in the independent claim and/or a release time for the more specific first degradable polymer as a polyurethane copolymer or a polybutylene terephthalate copolymer claimed.
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 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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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
07/31/26
Prosecution Insights