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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of the Species of “an encapsulated crosslinking agent” state; “presence” of a crosslinking delay agent; “metal or ammonium lactates” crosslinking delay agent; “geothermal” formation; and “stimulation” treatment, drawn to claims 44-63, in the reply filed on 3 August 2026 is acknowledged. The traversal is on the ground(s) that “MPEP 1893.03(d) requires the Examiner, when making a lack-of-unity requirement, to explain why each group lacks unity with each other group by specifically describing the unique special technical feature in each group. Simply noting that one claim requires the presence of and another requires the absence of a crosslinking delay agent only identifies a difference between the claims - it does not identify or analyze the special technical feature of either group, and it says nothing about whether the groups otherwise share an inventive concept” and “Further, the mere conclusion made by the Examiner that "the chemical compounds of the Species are not regarded as being of similar nature because all of the alternatives do not share a common property or activity" does not justify the requirement for election” (p.2-3).
This is not found persuasive because the different combinations of electable Species lack unity because the different combinations do not share a common property or activity. For example, just on its face, the combination of an encapsulated liquid crosslinking agent used on a geothermal formation for a stimulation operation does not share a common property or activity with the combination of no crosslinking agent used on a hydrocarbon formation for a cementing operation. There are no common structures, and the effects of such chemicals on such locations for such operations do not share common goals or properties. Thus, these combinations of Species lack Unity of Invention a priori.
Moreover, even under a posteriori analysis, the Species lack Unity of Invention. For example, independent claim 44, from which the Species diverge, is obvious in view of the Prior Art as below. Applicant is reminded that, as in the PCT International Search and Preliminary Examination Guidelines:
“An international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (Rule 13.1). With respect to a group of inventions claimed in an international application, unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features” (10.01), and
“Whether or not any particular technical feature makes a “contribution” over the prior art, and therefore constitutes a “special technical feature,” is considered with respect to novelty and inventive step. For example, a document discovered in the international search shows that there is a presumption of lack of novelty or inventive step in a main claim, so that there may be no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept” (10.02).
Accordingly, even if the Species are considered under a posteriori analysis, the Shared Technical Feature is not a Special Technical Feature because there is a lack of inventive step (i.e., obviousness), and thus the Species also would also lack Unity of Invention a posteriori.
The requirement is still deemed proper and is therefore made FINAL.
Claims 64-66 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Species, there being no allowable generic or linking claim.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) and 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/112,895, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, 18/112,895 fails to describe “wherein the liquid crosslinking agent is encapsulated and/or the aqueous fluid further comprises a crosslinking delay agent selected from the group consisting of metal or ammonium lactates, hydroxylated glycines and an alkoxylated sugar alcohol.”
The disclosure of the prior-filed application, Application No. 63/616,173, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, 63/616,173 only discloses “We tested five different polymers labeled as Polymer (A) through Polymer (E), all derived from acrylamide and received in a powdered form. The molecular weight of these polymers varied, ranging from 6 to 22 million Daltons” (p.9) and thus fails to describe “(ii) a polyacrylamide having a weight average molecular weight from about 1.5 million to 22 million Dalton.”
Accordingly, all claims are being treated under the PCT priority date of 21 February 2024 (corresponding to PCT application PCT/US2024/016613).
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Allowable Subject Matter
Claims 60-63 only face 112 Rejections and Double Patenting rejections as below. Accordingly, claims 60-63 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112 set forth in this Office action and to include all of the limitations of the base claim and any intervening claims and if an e-Terminal Disclaimer is filed over U.S. Patent No. 11,981,864.
Claim Objections
Claims 52, 55, and 57-59 are objected to because of the following informalities:
Claim 52 should recite “number average particle size less than 1000 nm in diameter” (correcting the typo).
Claim 55 is identical to claim 52. Accordingly, claim 52 should either be canceled or Amended to no longer be identical to claim 52.
Claim 57 should recite “wherein the aqueous fluid further comprises the crosslinking delay agent, wherein the crosslinking delay agent is a metal or ammonium lactate” (correcting the typo; because independent claim 44 does not actually require the presence of the crosslinking delay agent based on the “and/or” language). Claims 58 and 59 are objected to by dependency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
Claims 44-63 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 44-63 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 44 recites “forming a plug in a targeted zone within the formation wherein the plug constitutes a fluid impermeable barrier over a period of one hour to two weeks at a downhole temperature of 85 °C or higher.”
The Office observes that, in the Specification, Applicant discloses “The downhole temperature in the well at the time of release of the crosslinking agent is at least 85 °C. … The downhole temperature in the well during diversion of the subsequently introduced fluid may be at least 125 °C, in some cases at least 300 °C and in other cases as high as 350 °C” ([00012]). In contrast, these limitations refer to plugging or blocking with a barrier plug at downhole temperatures of 85ºC at minimum without any upper boundary. Thus, these limitations encompass using the barrier plug at downhole temperatures of, e.g., 350ºC, 400ºC, 600ºC, 1000ºC, infinite, etc. However, there is no description or possession demonstrated of successfully plugging or blocking with a barrier plug at these higher temperatures e.g. at 1000ºC. Accordingly, these limitations lack an adequate Written Description for their full scope.
Additionally, because the disclosure is directed only to plugging at 85-350ºC yet the limitations encompass higher temperatures, it is unclear what higher temperature(s) would be required to meet or not meet these limitations. For example, is the claimed invention operable at 400ºC or not? Is it operable at 1000ºC or not? The claim scope is rendered Indefinite by the unbounded range.
Claims 45-63 are rejected by dependency, also failing to provide an upper boundary to the downhole temperature for which the disclosure would successfully operate.
In response, Applicant should Amend claim 1 to include the described 350ºC upper boundary (e.g., forming a plug in a targeted zone within the formation wherein the plug constitutes a fluid impermeable barrier over a period of one hour to two weeks at a downhole temperature of at least 85 °C and as high as 350ºC”).
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 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.
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.
Claims 44 and 46-56 are rejected under 35 U.S.C. 103 as obvious over Johnson (2017/0369766) (cited by Applicant and in parent), as evidenced by Schlumberger HPHT brochure NPL (“High-Pressure, High-Temperature Technologies”; Oilfield Review; Autumn 2008; p.46-60) (cited in parent).
Regarding independent claim 44, Johnson discloses A method of treating a subterranean formation penetrated by a well and enhancing productivity of fluids from the formation (abstract “The so-formed gel can be effective to control water flow through the subterranean reservoir”), the method comprising:
(a) introducing into the well a first aqueous fluid (e.g., [0066] “a gel-forming polymer, such as PAM or HPAM, can be hydrated with water to form a hydrated polymer solution with a sufficiently low viscosity to allow for pumping of the solution into a subterranean reservoir”) comprising:
(i) nanoparticles ([0057] “a core-shell particle can be prepared by mini-emulsion coupled with interfacial polymerization. Mini-emulsion polymerization serves as a robust methodology for preparing core-shell nanocapsules in a robust and scalable manner” and [0055] “In some embodiments, the core may include materials other than crosslinkers. The different materials may be provided in core-shell particles that can be combined with core-shell particles that include a crosslinker in the core”; thus, these “different materials” core-shell particles are different nanoparticles than the “crosslinker” core-shell nanoparticles below);
(ii) a polyacrylamide ([0067] “the gel-forming polymer particularly may include PAM, HPAM”) having a weight average molecular weight “of about 50,000 Da to about 2,000,000 Da” ([0068]); and
(iii) a liquid crosslinking agent (e.g., [0057] “a core-shell particle can be prepared by mini-emulsion coupled with interfacial polymerization. … The mini-emulsion is a dual-phase system wherein droplets (i.e., dispersed phase) form within the surrounding solutions (i.e., the continuous phase) after the application of high shear forces, such as homogenization or sonication. … In particular, inverse mini-emulsion with interfacial polymerization is a useful approach for encapsulating aqueous solutions and has shown utility in biological-based applications. In this approach, a water-soluble monomer that is present as aqueous droplets can combine with a cargo material for placement in the core (e.g., a Cr+3 crosslinker)”; that is, the crosslinker is in an encapsulated aqueous solution = an encapsulated liquid crosslinking agent)
wherein the liquid crosslinking agent is encapsulated and/or the aqueous fluid further comprises a crosslinking delay agent selected from the group consisting of metal or ammonium lactates, hydroxylated glycines and an alkoxylated sugar alcohol (e.g., [0057] “encapsulating aqueous solutions” = an encapsulated liquid crosslinking agent); and
(b) gelling the aqueous fluid and forming a plug in a targeted zone within the formation wherein the plug constitutes a fluid impermeable barrier (e.g., [0004] “The core-shell capsules serve as a transport system for controlled delivery of conformance control agents to block highly permeable channels. … The gel system may thus be delivered to targeted thief zones deep within a reservoir (i.e., formations though which the well pass and into which circulating fluids can be lost)”; i.e., the circulating fluids are blocked from the highly permeable channels) over a period of one hour to two weeks ([0061] “at least 50%, at least 75%, or at least 90% by weight of the core-shell particles will sufficiently open to release the core material within a time of about 24 hours to about 6 weeks, about 24 hours to about 1 week, about 24 hours to about 3 days, about 48 hours to about 2 weeks, about 48 hours to about 1 week, about 1 week to about 6 weeks, or about 1 week to about 3 weeks”) at a downhole temperature of “at a defined temperature range” ([0062]).
As above, Applicant may note that based on the “and/or” language, the claim only requires the presence of one of “wherein the liquid crosslinking agent is encapsulated” and “the aqueous fluid further comprises a crosslinking delay agent selected from the group consisting of metal or ammonium lactates, hydroxylated glycines and an alkoxylated sugar alcohol,” and Johnson provides “wherein the liquid crosslinking agent is encapsulated” as above.
Regarding the 1.5-22M Da molecular weight, Johnson discloses “The properties of the resultant gel may be controlled through selection of the molecular weight of the gel-forming polymer” ([0067]) and “the gel-forming polymer may have a molecular weight of about 50,000 Da to about 2,000,000 Da … molecular weight can be in the range of about 750,000 Da to about 1,750,000 Da, about 800,000 Da to about 1,600,000 Da, or about 900,000 Da to about 1,500,000 Da” ([0068]).
The claimed range of 1.5-22M overlaps the range of 0.05-2M Da in Johnson at 1.5-2M Da. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to include a molecular weight of, e.g., ~2M Da, with a reasonable expectation of success, in order to provide that “The properties of the resultant gel may be controlled through selection of the molecular weight of the gel-forming polymer” (thereby providing:
“(ii) a polyacrylamide having a weight average molecular weight from about 1.5 million to 22 million Dalton;”).
Applicant may note that, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding the 85-350°C temperature, Johnson discloses “the particle shell systems have shown tolerance to simulated reservoir conditions, including high temperatures” ([0006]) and “The core-shell particles can be configured for release of the core material at a defined temperature range, such as a temperature of at least 30° C, at least 40° C, or at least 50° C. Non-limiting examples of temperature ranges under which release occurs include about 30° C to about 90° C… The particles may be configured so that release occurs upon reaching the noted temperature or so that release occurs within a time period as noted above, said time period beginning upon the particles being subjected to the noted temperature range” ([0062]).
Notably, Johnson describes these as “Non-limiting examples” of the temperature range and thus “high temperatures” above 90° C appear to be contemplated by Johnson. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to include a downhole temperature that is “high temperatures” of, e.g., 150-205ºC, with a reasonable expectation of success, in order to use the core-shell particles that “can be configured for release of the core material at a defined temperature range” at “high temperatures” (thereby providing:
“(b) gelling the aqueous fluid and forming a plug in a targeted zone within the formation wherein the plug constitutes a fluid impermeable barrier over a period of one hour to two weeks at a downhole temperature of at least 85 °C and as high as 350ºC”). See MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
For example, the reference to Schlumberger HPHT brochure NPL provides evidence that “high temperatures” in the art typically refers to on the order of 150-205ºC, depicting this to be the range of “high-pressure, high-temperature (HPHT) wells” (p.46 and Figure).
Regarding claims 46 and 48, Johnson discloses “The gel-forming polymer is selected from the group consisting of polyacrylamides, partially hydrolyzed polyacrylamides” ([0012]) such as “20% hydrolyzed” HPAM ([0079]). A degree of hydrolysis of 20%, or 0.20, corresponds to a molar ratio of acrylamide monomer to acrylate monomer of 80:20.
Accordingly, Johnson discloses:
(claim 46) wherein the polyacrylamide is of the structural formula (as claimed) wherein the molar ratio of m:n is from about 5:95 to about 95:5; and/or
(claim 48) wherein the weight average molecular weight of the polyacrylamide is from about 5 to about 20 million Dalton and/or the degree of hydrolysis of the acrylamide units of the polyacrylamide polymer is from about 0.15 to about 0.40.
Regarding claim 47, Johnson discloses “a gel-forming polymer, such as PAM or HPAM, can be hydrated with water to form a hydrated polymer solution” ([0066]). Although Johnson does not specify the gel-forming polymer is provided as a powder, the Office hereby takes Official Notice that powder is the most-common way in the oilfield art to provide polyacrylamide. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to include “wherein the polyacrylamide is a powder, in an emulsion or oil slurry, or microbeads having a diameter between from about 0.5 to 2.0 microns,” with a reasonable expectation of success, in order to provide the polyacrylamide in its most-common form in oilfield applications.
Regarding claims 49 and 50, Johnson discloses “Non-limiting examples of polyvalent metal ions within the core of the particle include Cr(III), Cr(IV), Ti(IV), Al(III), and Zr(IV)” ([0054]) and “In other embodiments, a polyvalent metal ion source can be chromium acetate. In yet other embodiments, the polyvalent metal ion source can be chromium chloride” ([0054]). Accordingly, Johnson discloses:
(claim 49) wherein the liquid crosslinking agent is a metal or a metal complex and wherein the metal is chromium, titanium, aluminum, zirconium, calcium, magnesium or zinc; and further
(claim 50) wherein the crosslinking agent is chromium acetate or chromium chloride.
Regarding claim 51, Johnson discloses “HPAM from concentrations of 50,000 ppm to 5,000 ppm” such as wherein “At 20,000 ppm, the sample with a stoichiometric amount of chromium formed a ringing gel, while the one with one-tenth the stoichiometric formed a moderately flowing “tonguing gel”” ([0080]). Accordingly, Johnson anticipates the range of “wherein aqueous fluid prior to being gelled comprises between from about 2,000 to about 20,000 ppm of the polyacrylamide.”
Regarding claims 52 and 55, Johnson discloses wherein the nanoparticles have a number average particle size less than 1,000 nm in diameter ([0053] “Core-shell particles according to embodiments of the present disclosure can be submicron in size, such as having an average particle size of about 50 nm to about 900 nm, about 100 nm to about 800 nm, or about 150 nm to about 750 nm”).
Regarding claim 53, Johnson discloses wherein the nanoparticles are selected from the group consisting of silica, alumina, titania, silicic acid, aluminum oxides, aluminum hydroxides, zirconium oxides, zirconium hydroxides, zirconium hydroxyoxides, tungsten oxide, iron oxide, tungsten carbide, silicon carbide, boron carbide, titanium nitride, boron nitride, silicon nitride, fullerenes, nanographites, carbon nanotubes, antimony oxide, vanadium oxide, magnesium oxide, clays, nonoclays, alkali metals, alkaline earth metals, a lanthanide, an actinide, a transition metal, fullerenes, graphenes, nanodots, nanorods, nanodiamonds, polysilsesquioxanes, nanoclays and combinations thereof (e.g., [0055] “The different materials may be provided in core-shell particles that can be combined with core-shell particles that include a crosslinker in the core. The different materials alternatively may be provided with the crosslinker in the cores of the same particles (i.e., a core including a crosslinker and one or more further materials). Non-limiting examples of further materials include wettability modifiers, anti-scale agents, surfactants, catalysts, and blocking agents. Quantum dots are a non-limiting example of a sensor that may be used”; quantum dots = nanodots).
Regarding claim 54, Johnson discloses wherein the nanoparticles are derivatized with a functional group selected from the group consisting of carboxy, epoxy, ether, ketone, amine, hydroxy, alkoxy, alkyl, aryl, aralkyl, alkaryl, lactone, organosilicon materials, fluorinated organic acids or a reactive derivative; linear or branched alkyl organic acids or a reactive derivative, substituted alkyl organic acids or a reactive derivative, aryl or substituted aryl organic acids or a reactive derivative and mixtures thereof ([0065] “Inclusion of chemical functionalities within the shell material allow for controlled degradation of the particle to release a core material in the designated timescale. … Non-limiting examples of monomers used to prepare shells with degradable hydrolytically degradable groups includes glycerol, pentaerythritol tetrakis(3-mercaptopropionate), ethylene glycol bisthioglycolate, glycolic acid, lactic acid, and combinations thereof”; pentaerythritol tetrakis(3-mercaptopropionate), ethylene glycol bisthioglycolate, glycolic acid, lactic acid = carboxy functional group; pentaerythritol tetrakis(3-mercaptopropionate), ethylene glycol bisthioglycolate = ether functional group).
Regarding claim 56, Johnson discloses wherein the crosslinking agent is encapsulated (e.g., [0057] “encapsulating aqueous solutions” = an encapsulated liquid crosslinking agent).
Claim 45 is rejected under 35 U.S.C. 103 as obvious over Johnson as in claim 44 (as evidenced by Schlumberger HPHT brochure NPL), and further in view of Karadkar (2013/0306317) (cited by Applicant).
Regarding claim 45, Johnson discloses “Embodiments of the present disclosure provide systems and methods whereby materials may be provided to a subterranean reservoir for controlled release of elements that initiate formation of gels that can be effective to control water flow in areas of the reservoir” ([0002]) and “The core-shell capsules serve as a transport system for controlled delivery of conformance control agents to block highly permeable channels” ([0004]).
However, Johnson fails to specify application to geothermal wells.
Nevertheless, conformance control also appears to be applicable to geothermal wells. For example, Karadkar teaches “introducing the treatment fluid into the treatment zone of the well” for “leak-off control or fluid diversion purposes” (abstract) wherein “Generally, well services include a wide variety of operations that may be performed in oil, gas, geothermal, or water wells, such as drilling, cementing, completion, and intervention” ([0008]) and “A viscosity-increasing agent can be used to increase the ability of a fluid to suspend and carry a particulate material in a well fluid. A viscosity-increasing agent can be used for other purposes, such as matrix diversion, conformance control, or friction reduction” ([0026]).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to include “wherein the well is a geothermal well,” with a reasonable expectation of success, in order to allow “controlled delivery of conformance control agents to block highly permeable channels” (as in Johnson) in well types for which such a treatment is useful, similarly to “oil, gas” wells (as in Karadkar).
Finally, the modification is obvious as no more than the use of familiar elements (known systems to deliver conformance control agents comprising viscosity-increasing agent; known geothermal wells) according to known techniques (introducing a treatment fluid into a treatment zone in a well) in a manner that achieves predictable results (blocking highly permeable channels). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness.
Claims 57-59 are rejected under 35 U.S.C. 103 as obvious over Johnson as in claim 44 (as evidenced by Schlumberger HPHT brochure NPL), and further in view of Alshehri (2019/0071596) (cited by Applicant).
Regarding claims 57-59, Johnson discloses “The polymer or composite shell can be configured to remain intact for an extended time period at conditions of the subterranean reservoir where the particles may be placed and then subsequently release the cargo after the time period. The delayed release provided by the core-shell particles can provide for release of the core material at a further distance from the wellbore through which it is injected” ([0061]).
However, Johnson fails to disclose including a crosslinking delay agent such as a sodium lactate to further control and delay the crosslinking.
Nevertheless, crosslinking delay agents such as sodium lactate are known in the art. For example, Alshehri teaches “A method for placing a gel deep inside a subterranean formation includes combining a crosslinkable polymer, a chromium (III) crosslinking agent, and a brine to form a gelation solution” (abstract) wherein “Partially hydrolyzed polyacrylamides… are some of the suitable polymer examples. The crosslinking agent can be multivalent cations, such as Cr(III), Al(III), Ti(III) and Zr(IV)” ([0028]) and “in order to further elongate the gelation time, the gelation solution can include a retarder. As an example, the retarder can be sodium lactate, acetate, malonate and glycolate, or other known retarding agents. With the retarder of sodium lactate, the gelation time can be elongated by more than eleven hours” ([0030]).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to include a gelation retarder such as sodium lactate, with a reasonable expectation of success, in order to “further elongate the gelation time” (as in Alshehri) and thus further control and delay the crosslinking for blocking “highly permeable channels” in “thief zones” (as in Johnson) (thereby including:
(claim 57) wherein the aqueous fluid further comprises the crosslinking delay agent, wherein the crosslinking delay agent is a metal or ammonium lactate; and further
(claim 58) wherein the lactate is a sodium, potassium, calcium or ammonium lactate; and further
(claim 59) wherein the lactate is sodium lactate).
Second, the modification is obvious as no more than the use of familiar elements (known HPAM, encapsulated liquid chromium acetate/chloride crosslinking agent; sodium lactate gelation retarder) according to known techniques (combining in a treatment fluid) in a manner that achieves predictable results (controlling the delay of crosslinking and gelation to block thief zones downhole). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 44-63 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,981,864 (also related Application 18/112,895) in view of Alshehri (2019/0071596) (cited by Applicant).
Regarding independent claim 44, 11,981,864 claims the same in independent claim 1, 11, and 14. For example, as in the Prior Art rejections above, current independent claim 44 only requires the presence of one of “wherein the liquid crosslinking agent is encapsulated” and “the aqueous fluid further comprises a crosslinking delay agent selected from the group consisting of metal or ammonium lactates, hydroxylated glycines and an alkoxylated sugar alcohol,” and 11,981,864 claims “wherein the liquid crosslinking agent is encapsulated” in claims 1/11/14.
Regarding claims 45-56 and 60-63, these correspond to 11,981,864 claims 1-21.
Regarding claims 57-59, 11,981,864 fails to claim wherein the aqueous fluid further comprises the crosslinking delay agent, wherein the crosslinking delay agent is a metal or ammonium lactate such as sodium lactate.
Nevertheless, crosslinking delay agents such as sodium lactate are known in the art. For example, Alshehri teaches “A method for placing a gel deep inside a subterranean formation includes combining a crosslinkable polymer, a chromium (III) crosslinking agent, and a brine to form a gelation solution” (abstract) wherein “Partially hydrolyzed polyacrylamides… are some of the suitable polymer examples. The crosslinking agent can be multivalent cations, such as Cr(III), Al(III), Ti(III) and Zr(IV)” ([0028]) and “in order to further elongate the gelation time, the gelation solution can include a retarder. As an example, the retarder can be sodium lactate, acetate, malonate and glycolate, or other known retarding agents. With the retarder of sodium lactate, the gelation time can be elongated by more than eleven hours” ([0030]).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to include a gelation retarder such as sodium lactate, with a reasonable expectation of success, in order to “further elongate the gelation time” (as in Alshehri) (thereby including:
(claim 57) wherein the aqueous fluid further comprises the crosslinking delay agent, wherein the crosslinking delay agent is a metal or ammonium lactate; and further
(claim 58) wherein the lactate is a sodium, potassium, calcium or ammonium lactate; and further
(claim 59) wherein the lactate is sodium lactate).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The reference to Gomaa (2016/0177693) teaches “Borate crosslinkers can be used with … delay agents including sorbitol, aldehydes, sodium gluconate, and the like” ([0039]). However, this reference does not appear necessary at this time.
The reference to Wang (2022/0082002) (cited by Applicant) teaches “a gelant that contains a crosslinkable polymer, one or more crosslinking agents, and an aqueous fluid” (abstract) wherein “the crosslinkable polymer may be, for example, one or more of the group consisting of a polyacrylamide, copolymers of acrylamide and acrylate” ([0014]) and “The inorganic crosslinking agent of one or more embodiments may be a multivalent cation and may be selected from the group consisting of Cr(III), Al(III), Ti(III), Zr(IV), and the like” ([0021]), wherein “in order to further elongate the gelation time, the gelant may include a retarder. For example, the retarder may be one or more alkali metal salts, such as sodium lactate, sodium acetate, sodium malonate, or sodium glycolate, or other known retarding agents” ([0030]). However, this reference does not appear necessary at this time.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674
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