DETAILED CORRESPONDENCE
Status of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 13-17 have been examined in this application. This communication is a Non-Final Rejection in response to the Application filed on November 18, 2024 and the Response to Restriction Requirement filed April 30, 2026. Claims 1-12 stand canceled.
Election/Restrictions
Applicants’ election without traverse of Species II, Claims 13-17 in the reply filed on April 30, 2026 is acknowledged. Species I stands withdrawn from further consideration for being nonelected.
Claim Objections
Claims 13-17 are objected to because of the following informalities:
Claim 13 recites “the permeability”. To improve clarity, replacement of this limitation with “permeability” is required.
Claim 13 recites “a fracture network in geothermal reservoirs”. To improve clarity, replacement of this limitation with language such as “a fracture network in a geothermal reservoir” is suggested.
Claim 13 recites “the steps” in line 2, “(Aluminum oxide)” in line 6 and “(Silicon oxide)” in line 6. Deletion of these phrases is required to improve clarity.
Appropriate correction is required. Claims 14-17 are also objected to for being dependent on Claim 13.
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 13-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for treating geothermal reservoirs with a nano-modified polymer injectate, does not reasonably provide enablement for a nano-modified multiphene polymer injectate comprising structured multi-phenolic mix blended with COOH-Silane functionalized multi-walled carbon nanotubes (MWCNTs), graphene nanoparticles (GNPs), alumina (Aluminum oxide) nanoparticles and silica (Silicon oxide) nanoparticles using aprotic solvents, with properties and fabrication as respectively claimed. The specification in [00014] states “the nano-modified multiphene polymer references to specifically structured multi-phenolic mix blended with COOH-Silane functionalized multi-walled carbon nanotubes (MWCNTs), graphene nanoparticles (GNPs), alumina (Aluminum oxide) nanoparticles and silica (Silicon oxide) nanoparticles using aprotic high-temperature solvents” and repeats the claimed properties/fabrication in [00015]-[00021], but does not further describe the “specifically structured multi-phenolic mix” or the “aprotic solvent”. As such, it is unclear how this multiphene polymer is structured and what aprotic solvents are employed in the blend to provide an injectate that treats geothermal reservoirs, modifies the permeability of fractures in a fracture network in geothermal reservoirs to improve energy sweep, yields the claimed properties and is fabricated, as respectively claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Per In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), the following undue experimentation factors support a determination that the disclosure satisfies the enablement requirement for the full scope of the respective claim:
(B) The nature of the invention – the current invention contemplates a nano-modified polymer injectate for geothermal reservoirs.
(C) The state of the prior art – nano-modified polymer injectates for reservoir treatment appear to be known in the art.
(D) The level of one of ordinary skill – one of ordinary skill in the art would be capable of selecting a nano-modified polymer injectate for geothermal reservoirs.
However, the following undue experimentation factors do not support a determination that the disclosure satisfies the enablement requirement for the full scope of the respective claim:
(A) The breadth of the claim – the current claims present a nano-modified multiphene polymer injectate comprising structured multi-phenolic mix blended with COOH-Silane functionalized multi-walled carbon nanotubes (MWCNTs), graphene nanoparticles (GNPs), alumina (Aluminum oxide) nanoparticles and silica (Silicon oxide) nanoparticles using aprotic solvents, with properties and fabrication as respectively claimed, but it is not clear how this multiphene polymer is structured and what aprotic solvents are employed in the blend to provide an injectate that treats geothermal reservoirs, modifies the permeability of fractures in a fracture network in geothermal reservoirs to improve energy sweep, yields the claimed properties and/or is fabricated, as respectively claimed.
(E) The level of predictability in the art - the current claims present a nano-modified multiphene polymer injectate comprising structured multi-phenolic mix blended with COOH-Silane functionalized multi-walled carbon nanotubes (MWCNTs), graphene nanoparticles (GNPs), alumina (Aluminum oxide) nanoparticles and silica (Silicon oxide) nanoparticles using aprotic solvents, with properties and fabrication as respectively claimed, but it is not clear how this multiphene polymer is structured and what aprotic solvents are employed in the blend to provide an injectate that treats geothermal reservoirs, modifies the permeability of fractures in a fracture network in geothermal reservoirs to improve energy sweep, yields the claimed properties and/or is fabricated, as respectively claimed.
(F) The amount of direction provided by the inventor – the current claims present a nano-modified multiphene polymer injectate comprising structured multi-phenolic mix blended with COOH-Silane functionalized multi-walled carbon nanotubes (MWCNTs), graphene nanoparticles (GNPs), alumina (Aluminum oxide) nanoparticles and silica (Silicon oxide) nanoparticles using aprotic solvents, with properties and fabrication as respectively claimed, but it is not clear how this multiphene polymer is structured and what aprotic solvents are employed in the blend to provide an injectate that treats geothermal reservoirs, modifies the permeability of fractures in a fracture network in geothermal reservoirs to improve energy sweep, yields the claimed properties and/or is fabricated, as respectively claimed.
(G) The existence of working examples – the current claims present a nano-modified multiphene polymer injectate comprising structured multi-phenolic mix blended with COOH-Silane functionalized multi-walled carbon nanotubes (MWCNTs), graphene nanoparticles (GNPs), alumina (Aluminum oxide) nanoparticles and silica (Silicon oxide) nanoparticles using aprotic solvents, with properties and fabrication as respectively claimed, but it is not clear how this multiphene polymer is structured and what aprotic solvents are employed in the blend to provide an injectate that treats geothermal reservoirs, modifies the permeability of fractures in a fracture network in geothermal reservoirs to improve energy sweep, yields the claimed properties and/or is fabricated, as respectively claimed.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure - the current claims present a nano-modified multiphene polymer injectate comprising structured multi-phenolic mix blended with COOH-Silane functionalized multi-walled carbon nanotubes (MWCNTs), graphene nanoparticles (GNPs), alumina (Aluminum oxide) nanoparticles and silica (Silicon oxide) nanoparticles using aprotic solvents, with properties and fabrication as respectively claimed, but it is not clear how this multiphene polymer is structured and what aprotic solvents are employed in the blend to provide an injectate that treats geothermal reservoirs, modifies the permeability of fractures in a fracture network in geothermal reservoirs to improve energy sweep, yields the claimed properties and/or is fabricated, as respectively claimed. As such, the quantity of experimentation is infinite.
That is, 3 of the Wands factors support enablement, while 5 factors do not support enablement. Therefore, there exists a scope of enablement deficiency for the current claims. See MPEP 2164.08.
Appropriate correction and/or clarification is required. Claims 14-17 are also rejected for being dependent on Claim 1. The claims have been examined as best understood.
Claims 13-17 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 pre-AIA the applicant regards as the invention.
Claim 13 recites “A method to modify the permeability of fractures in a fracture network in geothermal reservoirs to improve energy sweep” in the preamble. However, the method does not appear to present steps of modifying permeability and/or improving energy sweep; which is unclear. It is unclear whether or not the method necessarily requires modifying the permeability of fractures in a fracture network in geothermal reservoirs to improve energy sweep as recited in the preamble.
Claim 13 recites a “multiphene polymer” and “a structured multi-phenolic mix blended with COOH-Silane functionalized multi-walled carbon nanotubes (MWCNTs), graphene nanoparticles (GNPs), alumina (Aluminum oxide) nanoparticles and silica (Silicon oxide) nanoparticles using aprotic solvents”. It is unclear what these limitations refer to, and what is encompassed/included/excluded. As such, the scope, metes and bounds of the claim are unclear.
Claim 13 recites “said resin and hardener” and “the resulting polymer”, which lack sufficient antecedent basis.
Appropriate correction and/or clarification is required. Claims 14-17 are also rejected for being dependent on Claim 13. The claims have been examined as best understood.
Claim 14 recites “an adjustable initial viscosity ranging from 50 to 1000 cps”; which is unclear. It is unclear whether the initial viscosity is within the claimed range but is adjustable, or if the adjusted initial viscosity is within the claimed range. Further, it is unclear what point in time “initial” refers to – is this when the polymer injectate is made/injected/other?
Claim 14 further recites “50 to 1000 cps at C at ambient temperature (e.g., 22 OC)”. It is unclear what “at C” refers to. Does this refer to the ambient temperature in Celsius? Further, what is “ambient” – is this in the well, at the surface, other? Further, the example limitation in parentheses “(e.g., 22 OC)” renders the claim indefinite because it is unclear whether the limitation(s) are necessarily part of the claimed invention. For purposes of examination, the Office considers the claim without the example limitation(s) in parentheses.
Claim 14 further recites “up to 200-1000 cPs after 2 hours of mixing”. The recitation of “up to” in combination with a range is unclear. Further, it is unclear what “mixing” refers to, and it is unclear whether or not this refers to the “blended” of Claim 13.
Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim 15 recites “a gelation time of 120-480 minutes based on the injectate volume”. It is unclear what the limitation “based on the injectate volume” encompasses and includes/excludes. How is the gelation time “based on” the injectate volume.
Claim 15 recites “excellent thermal stability”, where the term “excellent” is a relative term which renders the claim indefinite. The term “excellent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “excellent” renders the scope of the claim indefinite as it is unclear as to the thermal stability required to be considered “excellent”.
Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim 16 recites “other rock formations”. It is unclear what this limitation encompasses and includes/excludes. As such, the scope, metes and bounds of the claim are unclear.
Claim 16 recites “limited volume shrinkage”, where the term “limited” is a relative term which renders the claim indefinite. The term “limited” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “limited” renders the scope of the claim indefinite as it is unclear as to the volume shrinkage considered “limited”.
Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim 17 recites “wherein said nano-modified multiphene polymer injectate is fabricated using dimethacrylate derived composite microcapsules”; which is unclear in its entirety. It is unclear how the polymer injectate is fabricated using dimethacrylate derived composite microcapsules. How is a polymer injectate fabricated using microcapsules? Is the polymer multi-phenolic or a dimethacrylate derived composite? Further, it is unclear what “dimethacrylate derived composite” encompasses and includes/excludes. Appropriate correction and/or clarification is required. The claim has been examined as best understood.
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 of this title, 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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Szutiak et al. (WO 2023/056002), in view of Chatterji et al. (US 9,550,933), further in view of Chakraborty et al. (US 2016/0060503).
With respect to Claim 13, Szutiak discloses a method to modify permeability in geothermal reservoirs comprising the steps: introducing a nano-modified multiphene polymer injectate into the reservoir; said injectate comprising structured multi-phenolic mix blended with carbon nanotubes, graphene nanoparticles (GNPs), alumina nanoparticles and silica nanoparticles using aprotic solvents; once said resin and hardener react, the resulting polymer displaces water and bonds to surfaces to modify permeability (Szutiak: Sections [0009]-[0042], [0056]-[0060], [0063], [0072] & [0075]; where Szutiak additionally teaches the method as suitable in cementing applications and water shut-off applications).
Further, Szutiak discloses the method as employing an improved well fluid for geothermal reservoir conditions, and discloses extracting energy from geothermal reservoirs (Szutiak: Sections [0002]-[0007]). As such, it would appear that such an improved fluid would “improve energy sweep” as instantly claimed. To the extent there is any difference between the improved energy sweep as disclosed by Szutiak and the improved energy sweep as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Szutiak further incorporates by reference the teachings of Chatterji (Szutiak: Section [0008]), wherein Chatterji further teaches cementing applications to include the treatment of portions such as fractures with resin compositions, where the treatment composition bonds to the fractures and displaces undesired fluid so as to control flow within the wellbore as desired (Chatterji: Col. 1, Ln. 1-50; Col. 12, Ln. 50 through Col. 13, Ln. 8). As such, although Szutiak fails to explicitly disclose the above method steps with respect to fractures in a fracture network where the polymer displaces water and bonds to the fractures as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified Szutiak with the aforementioned teachings of Chatterji to employ the method in fractures in a fracture network where the polymer displaces undesired fluids such as water and bonds to the fractures, as instantly claimed, with a reasonable expectation of success, in order to control flow within the reservoir as desired. (Chatterji: Col. 1, Ln. 1-50; Col. 12, Ln. 50 through Col. 13, Ln. 8).
The reference(s), however, fail to explicitly disclose the carbon nanotubes as “COOH-Silane functionalized multi-walled carbon nanotubes (MWCNTs)”.
Chakraborty teaches methods employing nanomodified fluids for subterranean applications therein, wherein it is taught that carbon nanotubes can be in the form of multi-walled carbon nanotubes and functionalized to improve compatibility and/or facilitate mixing with treatment fluids, and include groups such as COOH and silane (Chakraborty: Sections [0002], [0025], [0029], [0030], [0035] & [0036]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified the combined references of Szutiak and Chatterji with the aforementioned teachings of Chakraborty to employ multi-walled carbon nanotubes functionalized as desired, such as with COOH-Silane, with a reasonable expectation of success, in order to improve compatibility and/or facilitate mixing with treatment fluids. (Chakraborty: Sections [0002], [0025], [0029], [0030], [0035] & [0036]).
With respect to Claims 14-16, the combined references of Szutiak, Chatterji and Chakraborty teach the method as provided above with respect to Claim 13. The combined teachings set forth above provide for an injectate as instantly claimed. As such, it would appear that properties of the injectate would flow naturally from following the suggestion of the prior art, and the properties would be as respectively claimed. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
To the extent the references fail to teach the properties as respectively claimed, it is also noted that Szutiak further teaches employing additives/diluents etc. to tailor properties as desired (Szutiak: Sections [0062]-[0091]).
As such, before the effective filing date of the claimed invention, it would have been obvious to one or ordinary skill in the art to employ suitably tailored properties, such as respectively claimed, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal properties to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for well treatment with nanomodified polymer compositions, and a finite number of identified, predictable solutions including tailoring the properties of the composition as set forth above. As such, before the effective filing date of the claimed invention, based on the combined teachings of Szutiak, Chatterji and Chakraborty, one of ordinary skill in the art could have pursued desired properties, such as respectively claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "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 that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Szutiak et al. (WO 2023/056002), in view of Chatterji et al. (US 9,550,933), further in view of Chakraborty et al. (US 2016/0060503), further in view of Taha et al. (US 10,370,305).
With respect to Claim 17, the combined references of Szutiak, Chatterji and Chakraborty teach the method as provided above with respect to Claim 13. The reference(s), however, fail to disclose wherein said nano-modified multiphene polymer injectate is fabricated as instantly claimed.
Taha teaches methods of polymer injection in wellbore applications therein, wherein one or more components of the composition are encapsulated in microcapsules adapted to rupture at a specific time, temperature etc., including the use of methacrylate derived components, for controlled delivery capabilities (Taha: Col. 1, Ln. 25-35; Col. 4, Ln. 1 through Col. 5, Ln. 60). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified the combined references of Szutiak, Chatterji and Chakraborty with the aforementioned teachings of Taha to fabricate the injectate as instantly claimed, with a reasonable expectation of success, for controlled delivery capabilities. (Taha: Col. 1, Ln. 25-35; Col. 4, Ln. 1 through Col. 5, Ln. 60).
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for well treatment with nanomodified polymer compositions, and a finite number of identified, predictable solutions including employing microcapsules with a tailored rupture as set forth above. As such, before the effective filing date of the claimed invention, based on the combined teachings of Szutiak, Chatterji, Chakraborty and Taha, one of ordinary skill in the art could have pursued a desired fabrication, such as respectively claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "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 that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Verret (US 2006/0079408) discloses methods employing a polymer and hardener in plugging fractures.
Auzerais et al. (US 2018/0298271) discloses methods employing a polymer and hardener in plugging fractures.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674
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