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 amendments accompanying the RCE dated 3/18/26 have been entered.
Applicant's arguments filed 3/18/26 have been fully considered but they are not persuasive.
Applicant argues first that a PHOSITA would not combine Lieng and Saini because the “teachings are opposite”. Applicant asserts that one would not combine “the alleged lubricity of Saini’s proppant with the bonded particles of Lieng”. However, applicant misstates the rejection. The examiner does not propose that combination. Rather, the examiner merely proposed to use the proppant of Saini in the well system/location of Lieng for the reason(s) elaborated below. There is no proposed mixing of the proppant types.
Applicant second argues that Saini’s proppant has “increased roughness” and states, that the proppant “will have increase lubricity relative to proppant without the nanoparticle coating”. The examiner disagrees. The examiner notes that applicant’s arguments regarding the “nanoparticle coating” increasing friction relative to an uncoated particle is not commensurate with the scope of the claim. Applicant appears to be arguing that the uncoated proppant has roughness (e.g. Para 0033, “the proppant particles may have a rough surface texture that may increase adhesion of the nanoparticle proppant coating to the proppant particle”). However, the roughness of the uncoated proppant is immaterial to the performance of the coating (which is specifically discussed in Para 0048 as possessing “a lubricating agent to reduce friction”).
Lastly applicant asserts that neither reference teaches “forming an annular pack”. Applicant asserts that the use of the term “proppant” does not teach the claimed gravel pack. However, Lieng specifically teaches the placement of proppant in an annular pack (specifically between a sand screen and a perimeter of the well, as recited). Figure 10, and discussed in Para 0058, specifically discusses the placement of proppant in the recited location.
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.
Claim(s) 1-3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saini (US 20210054263 A1), in view of Lieng (US 20200362233 A1).
Regarding claim 1, Saini teaches a method of placing an annular pack in a well, the method comprising:
apply a lubricity coating to gravel to produce coated gravel (Abstract, “coating the proppant particles”; Para 0048, “proppant coating further includes a lubricating agent to reduce friction on the nanoparticle proppant coating”), the coated gravel having increased lubricity relative to the gravel without the lubricity coating (the examiner notes that this is discussed in the response to arguments, but, Para 0048 as possessing “a lubricating agent to reduce friction”. The presence of a lubricating agent will result in increased lubricity relative to a particle without the lubricating agent);
wherein the lubricity coating inhibits adherence among the coated gravel when the coated gravel is positioned in a well (Abstract, “coating the proppant particles”; Para 0048, “proppant coating further includes a lubricating agent to reduce friction on the nanoparticle proppant coating”).
Saini is silent on the steps for placement and specific use of the coated particle in a well.
Lieng incorporate the coated gravel into a carrier fluid at a surface of the well (Fig 6, steps 602-606, note this does not occur within a well, see step 610);
inject the carrier fluid comprising the coated gravel into the well (Fig 6, step 610); and
place the coated gravel along between a sand screen and a perimeter of the well to form an annular pack (Fig 6, step 610; see also Fig 10, deployed in annulus 1050 between 1030/screen and perimeter of 1040, see also Para 0058).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Saini by having the steps for placement and specific use of the coated particle in a well as disclosed by Lieng because it would be a combination of prior art elements according to known methods to yield predictable results i.e. it would provide the implementing details for the deployment of the particles of Saini in a subsurface environment.
Regarding claim 2, Saini teaches wherein the lubricity coating is a hydrophobic material (Para 0040, “nanoparticles having at least one attached hydrophobic moiety […], organosilane-containing”).
Regarding claim 3, Saini teaches wherein the lubricity coating is a hydrophobic organosilane (Para 0040, “nanoparticles having at least one attached hydrophobic moiety […], organosilane-containing”).
Regarding claim 5, Saini teaches degrading the lubricity coating on the coated gravel after the annular pack is in place in the well (Para 0051, a portion of the coating may be dissolved e.g. 3-10%. The claim does not require e.g. the total removal of all portions of the coating), wherein the lubricity coating is a hydrophobic alkane (Para 0063, “he lubricating agent is […] polyethylene wax”) with a degradable linkage (Para 0051, a portion of the coating may be dissolved e.g. 3-10%. Whatever portion(s) are dissolved may be regarded as the “degradable linkage”).
Regarding claim 6, Saini as modified teaches wherein the annular pack is located between and contacts a screen and a casing in the well (Fig 10, Para 0058 of Lieng, screen 1030 and casing 1040).
Regarding claim 7, Saini as modified teaches wherein the annular pack is located between and contacts a screen and a formation wall in the well (Fig 10, Para 0058 of Lieng, screen 1030 and contact with formation via perforations 1042).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saini (US 20210054263 A1), in view of Lieng (US 20200362233 A1), in view of Van Oort (US 20190145223 A1).
Regarding claim 4, Saini teaches wherein the lubricity coating is applied to the gravel using an agitation process (Para 0064, coating is stirred).
Saini is silent on humidity is minimized.
Van Oort teaches humidity is minimized (Para 0083, “it is preferred to conduct the coating process in a low humidity environment”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Saini by having the humidity minimized during coating as disclosed by Van Oort because it is the preferred environment when coating particles which are to be used in a downhole environment.
Conclusion
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/THEODORE N YAO/Primary Examiner, Art Unit 3676
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