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 05/14/2026, with respect to objection to the drawing and specification have been fully considered and are persuasive. The objection to the drawing and specification have been withdrawn.
Applicant’s arguments, filed 05/14/2026, with respect to objection to the claim 10 has been fully considered and are persuasive. The objection to the claim has been withdrawn.
Applicant’s arguments, filed 05/14/2026, with respect to rejection of claims 1 and 9 under 35 USC 112 (b) / 2nd have been fully considered and are persuasive. The rejection of the claims, 9, 11, and 12 have been withdrawn.
Applicant’s arguments, filed on 05/14/2026, with respect to Claim 1 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Nevison (US 2018/0265769 A1) and Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Nevison and further in view of Srinivas et al. (US 2003/0194366 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 Therefore, the rejection has been withdrawn.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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Mango (US 2008/0115935 A1) (“Mango” herein) and further in view of Madison et al. (US 2012/0085533 A1) (“Madison” herein).
Claim 1.
Mango discloses a method for the in-situ production of one or more chemical products in a well that extends into a subterranean formation that produces natural gas, the method comprising: [0018, 0024, 0028]
admitting the natural gas into the well from the subterranean formation; directing the natural gas into a downhole reactor in the well; [0018, 0028]
reacting the natural gas in the presence of a catalyst within the downhole reactor to produce an intermediate product stream that includes the one or more chemical products, [0023-0025] and
withdrawing the intermediate product stream and the one or more chemical products from the downhole reactor. [0018, 0028]
Mango does not explicitly disclose wherein the catalyst is selected from the group consisting of molybdenum disulfide (MoS₂), sulfided cobalt molybdenum (CoMo), CoMo supported on Zeolite Socony Mobil-5 (ZSM-5) (CoMo- ZSM-5), cobalt supported on ZSM-5 (Co-ZSM-5), gallium supported on ZSM-5 (Ga-ZSM-5), nickel tungsten alloy (NiW), chromium sulfide, and combinations thereof;
Madison teaches the above limitation (See paragraphs 0041→ Madison teaches this limitation in that a catalyst can be used in the method and can be present either as particles within the reservoir or as a liner on the wall of the well. The addition of catalysts can decrease the viscosity and increase the API gravity of the oil produced as compared to traditional cyclic steam stimulation. Types of catalyst that can be utilized include metal sulfides, metal carbides and other refractory type metal compounds. Examples of metal sulfides include MoS.sub.2, WS.sub.2, CoMoS, NiMoS and other commonly known by one skilled in the art. Examples of metal carbides include MoC, WS and others commonly known by one skilled in the art.) for the purpose of decreasing the viscosity and increasing the API gravity of the oil produced. [0041]
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 the catalyst of Mango, with the above limitation, s taught by Madison, in order to decrease the viscosity and increase the API gravity of the oil produced.
Allowable Subject Matter
Claims 9-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 07/23/2026
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