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 10/29/25 have been entered. The drawing objections, although not fully addressed, is withdrawn. The drawings are adequate.
Applicant’s arguments with respect to the prior art rejection of the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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”);
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 a perimeter of the well to form an annular pack (Fig 6, step 610; see also Fig 10, deployed in annulus 1050).
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
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 THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TARA SCHIMPF can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THEODORE N YAO/Primary Examiner, Art Unit 3676