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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/11/26 has been entered.
Claim Rejections - 35 USC § 112
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.
Claim 21 is 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. The term “viscous” in claim 21 is a relative term which renders the claim indefinite. The term “viscous” 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 “viscous” renders the scope of the claim indefinite as is it unclear as to how high the viscosity of the oil must be and/or how low the viscosity of the oil can be in order for such to be considered a “viscous” oil within the context of the claim. For example, any fluid will have a viscosity and, therefore, it would seem any fluid is thus “viscous” without any further defining of a particular viscosity associated therewith.
Claim Rejections - 35 USC § 102
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.
Claims 1, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mazyar et al. (US 2015/0144344 – cited previously).
With respect to independent claim 1, Mazyar et al. discloses a nanomaterial composition for reducing viscosity of an oil, the nanomaterial comprising:
reactive metal nanoparticles comprising metallic lithium ([0021]), wherein a majority of the reactive metal nanoparticles have a diameter of less than 200 nm ([0034]); and an organic solvent ([0037]), wherein the reactive metal nanoparticles are dispersed within the organic solvent such that the reactive metal nanoparticles are in contact with the organic solvent ([0037]) and the organic solvent prevents the reactive metal nanoparticles from premature contact with water, oxygen, or a combination thereof ([0017], wherein it is disclosed the reactive particles react with an aqueous material in the downhole environment, and, therefore, the use of an organic solvent carrier prevents premature reaction of the particles from contact with water), and wherein the nanomaterial composition reacts with water and oil to lower a viscosity of the oil and facilitate extraction of the oil from a body ([0017]; [0019]-[0020]; [0048], wherein a decrease in hydrocarbon viscosity is disclosed).
With respect to dependent claim 6, Mazyar et al. discloses wherein a majority of the reactive metal nanoparticles have a diameter as claimed ([0034]).
With respect to dependent claim 7, Mazyar et al. discloses a nonaqueous stabilizing liquid around the reactive metal nanoparticles, wherein the nonaqueous stabilizing liquid comprises one as claimed ([0037]; [0044]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3-4 and 21 rejected under 35 U.S.C. 103 as being unpatentable over Mazyar et al. as applied to claim 1 above and further in view of Bousaid et al. (US 4,085,799 – cited previously)
With respect to dependent claims 3 and 4, Mazyar et al. discloses the composition as set forth above with respect to independent claim 1, wherein the particles are provided as nanoparticles and the shapes thereof may be as desired ([0034]). The reference, however, fails to explicitly disclose wherein the reactive particles comprise size reduced particles reduced in size by high shear blending in a nonaqueous liquid, and, further wherein the size-reduced particles are dispersed in the non-aqueous liquid during size reduction. Bousaid et al. teaches reactive metal particles used for reducing the viscosity of an oil, wherein such are size-reduced by high-shear blending in a nonaqueous liquid in which the particles are dispersed for the purpose of providing the reactive metal particles with a particle size that is sufficiently small so that the particles will pass freely through the injection equipment and flow channels of the subterranean formation (col. 3, l. 12-58). It would have been obvious to one having ordinary skill in the art to try high-shear blending of the reactive metal particles of Mazyar et al., as taught by Bousaid et al., in order to yield the predictable result of reducing the size of the reactive particles of Mazyar et al. to the desired nanoparticle size so that they may pass freely through the injection equipment and flow channels of the subterranean formation since such is a known/conventional method for reducing metal containing particles used in a subterranean environment to a nanoparticle size.
With respect to dependent claim 21, Mazyar et al. discloses the composition as set forth above with respect to independent claim 1, wherein the particles are provided as nanoparticles and the shapes thereof may be as desired ([0034]). The reference, however, fails to explicitly disclose wherein the reactive particles are produced by the steps as claimed. Bousaid et al. teaches reactive metal particles used for reducing the viscosity of an oil, wherein such are size-reduced by blending bulk metal in a nonaqueous liquid in which the particles are dispersed and dispersing the size reduced nanoparticles in an organic solvent for the purpose of providing the reactive metal particles with a particle size that is sufficiently small so that the particles will pass freely through the injection equipment and flow channels of the subterranean formation (col. 3, l. 12-58). It would have been obvious to one having ordinary skill in the art to try producing the reactive metal nanoparticles of Mazyar et al., as taught by Bousaid et al., in order to yield the predictable result of reducing the size of the reactive particles of Mazyar et al. to the desired nanoparticle size so that they may pass freely through the injection equipment and flow channels of the subterranean formation since such is a known/conventional method for reducing metal containing particles used in a subterranean environment to a nanoparticle size.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mazyar et al. as
applied to claim 1 above and further in view of Oghena et al. (US 2017/0058186).
With respect to dependent claim 5, Mazyar et al. discloses the carrier fluid as comprising
an organic solvent, as noted above within the rejection of claim 1, wherein examples thereof
include oils and non-polar liquids such as crude oil, mineral oil, alkyl benzenes, aromatic
hydrocarbons, terpenes and paraffinic hydrocarbons ([0037]). The reference, however, fails to
disclose wherein the solvent is selected from the group as claimed. Oghena et al. suggests
nanoparticles injected into a hydrocarbon-bearing zone wherein such are incorporated with a
solvent that may include toluene and/or alkylbenzenes ([0036]). Since Oghena et al. suggests
toluene and hexane as known alternatives to, for example, alkylbenzenes, a solvent specifically
disclosed by Mazyar et al., wherein aromatic hydrocarbons are further disclosed, it would have
been obvious to one having ordinary skill in the art to try toluene or hexane in place of, or in
addition to, the alkylbenzenes and/or as the aromatic hydrocarbon of Mazyar et al. in order to
yield the predictable result of dispersing the nanoparticles of Mazyar et al. therein since such are
known alternatives to the solvents of Mazyar et al., as suggested by Oghena et al., and/or to be
used in combination therewith, and, therefore, one of ordinary skill in the art would have a
reasonable expectation of success.
Claims 1-7 and 21are rejected under 35 U.S.C. 103 as being unpatentable over Bousaid et al. in view of Mazyar et al..
With respect to independent claim 1, Bousaid et al. discloses a nanomaterial composition (col. 3, l. 59-66, wherein a preferable colloidal size range of 1 micron, i.e., 1000 nm, is disclosed, thereby providing for a “nanomaterial” composition) for reducing the viscosity of an oil (col. 4, l. 62- col. 5, l. 2), the nanomaterial composition comprising:
reactive metal nanoparticles (col. 3, l. 22-31, l. 41-43 and l. 59-66, wherein a preferable colloidal size range of 1 micron, i.e., 1000 nm, is disclosed, thereby providing for “nanoparticles”) comprising metallic Li, Na, K or a combination thereof (col. 2, l. 32-33; col. 3, l. 13-15); and
an organic solvent (col. 2, l. 33-41; col. 3, l. 5-13),
wherein the reactive metal nanoparticles are dispersed within the organic solvent such that the reactive metal nanoparticles are in contact with the organic solvent and the organic solvent prevents the reactive metal nanoparticles from premature contact with water, oxygen, or a combination thereof (col. 4, l. 40-61), and wherein the reactive metal nanoparticles react with water in oil to lower a viscosity of the oil and facilitate extraction from a body (col. 4, l. 62-col. 5, l. 30; col. 6, l. 51-55).
Bousaid et al. discloses wherein the particles are ground to a desired very fine particle size, wherein exemplary sizes include 1-20 micron range, with a preferable size of 1 micron, i.e., 1000 nm; it is suggested wherein the minimum particle size varies with the permeability of the formation into which the particle is injected, wherein low permeability formations require dispersions of alkali metal in the lower part of the particle size range (col. 3, l. 14-65). Although silent to a diameter of less than 200 nm as claimed, it is the position of the Office that the use of such a size reactive metal particle would have been obvious to one having ordinary skill in the art as based on the permeability of the formation into which the composition is injected since it has been "[W]here the general conditions of a claim are disclosed in the 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). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed size range for the reactive metal nanoparticles as critical, as further exemplified by Applicant’s inclusion in the disclosure of use of nanoparticles having a size of 1 nm to 1000 microns in several instances therein, including [0009], [0011] and [0012]. It is noted, such a size range is extensive and thus overlaps the size range of particles disclosed by Bousaid et al.. Since it is unclear if any unexpected results are achieved by using particles having a size as claimed, and since Bousaid et al. clearly discloses the use of reactive metal nanoparticles to achieve the same result as Applicant, as well as wherein such particles have a size that overlaps an extensive range of particle sizes disclosed by Applicant, it does not appear that reacting the particles with water in oil to lower a viscosity of the oil and facilitate extraction of the oil would be considered an unexpected result of using particles having a size within the range as instantly claimed, and, as such, the determination of optimal size therefor would be achievable through routine experimentation in the art as based on the permeability of the formation to be treated therewith.
Furthermore, the Office notes, Bousaid et al. discloses wherein the particle size must be sufficiently small so that the particles will pass freely through the injection well equipment and through at least major flow channels of the formation (col. 3, l. 14-21). Mazyar et al. further teaches reactive metal ([0021]) nanoparticle containing ([0034]) suspensions used to generate heat and facilitate a change in viscosity of a hydrocarbon material contained in a subterranean formation ([0020]) wherein suitable carrier fluids therefor include organic liquids, wherein the size and shape of each of the reactive particles may be selected based on the characteristics of the hydrocarbon-bearing subterranean formation. For example, the reactive particles may be sized and shaped to fit within interstitial spaces including pores, cracks, fractures and channels of the subterranean formation and each of the reactive particles may independently have an average particle diameter of less than or equal to about 500 nm, such as less than or equal to about 100 nm, less than or equal to about 50 nm, less than or equal to about 10 nm, or less than or equal to about 1 nm ([0034]). As such, it would have been obvious to one having ordinary skill in the art to provide for reactive metallic nanoparticles in the composition of Bousaid et al. wherein a majority of the nanoparticles have a diameter of less than 200 nm in order to allow for such to pass freely through pores, cracks, fractures and channels of the subterranean formation and provide for the generation of heat therewith so as to facilitate a change in viscosity of a hydrocarbon material contained within the pores, cracks, fractures and channels.
With respect to dependent claim 2, Bousaid et al. discloses wherein the reactive metal nanoparticles comprise metallic Na (col. 2, l. 32-33; col. 3, l. 14-16; col. 6, l. 41-46).
With respect to dependent claims 3 and 4, Bousaid et al. discloses wherein the reactive metal nanoparticles comprise size-reduced particles which have been reduced in size by high shear blending in a nonaqueous liquid, and, further, wherein the size-reduced particles are dispersed in a nonaqueous liquid during size reduction (col. 3, l. 14-58, wherein high shear mixing, i.e., blending, is disclosed).
With respect to dependent claim 5, Bousaid et al. discloses wherein the organic solvent comprises one as claimed (col. 2, l. 33-41; col. 3, l. 5-13, wherein the Examiner notes both hexane and heptane are suggested).
With respect to dependent claim 6, Bousaid et al. discloses wherein the particles are ground to a desired very fine particle size, wherein exemplary sizes include 1-20 micron range, with a preferable size of 1 micron, i.e., 1000 nm; it is suggested wherein the minimum particle size varies with the permeability of the formation into which the particle is injected, wherein low permeability formations require dispersions of alkali metal in the lower part of the particle size range (col. 3, l. 14-65). Although silent to wherein a majority of such particles have a diameter within the range of 5-150 nm as claimed, it is the position of the Office that the use of such a size reactive metal particle would have been obvious to one having ordinary skill in the art as based on the permeability of the formation into which the composition is injected since it has been "[W]here the general conditions of a claim are disclosed in the 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). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed size range for the reactive metal nanoparticles as critical, as further exemplified by Applicant’s inclusion in the disclosure of use of nanoparticles having a size of 1 nm to 1000 microns in several instances therein, including [0009], [0011] and [0012]. It is noted, such a size range is extensive and thus overlaps the size range of particles disclosed by Bousaid et al. Since it is unclear if any unexpected results are achieved by using particles having a size as claimed, and since Bousaid et al. clearly discloses the use of reactive metal nanoparticles to achieve the same result as Applicant, as well as wherein such particles have a size that overlaps an extensive range of particle sizes disclosed by Applicant, it does not appear that reacting the particles with water in oil to lower a viscosity of the oil and facilitate extraction of the oil would be considered an unexpected result of using particles having a size within the range as instantly claimed, and, as such, the determination of optimal size therefor would be achievable through routine experimentation in the art as based on the permeability of the formation to be treated therewith. Furthermore, the Office notes, Bousaid et al. discloses wherein the particle size must be sufficiently small so that the particles will pass freely through the injection well equipment and through at least major flow channels of the formation (col. 3, l. 14-21). Mazyar et al. further teaches reactive metal ([0021]) nanoparticle containing ([0034]) suspensions used to generate heat and facilitate a change in viscosity of a hydrocarbon material contained in a subterranean formation ([0020]) wherein suitable carrier fluids therefor include organic liquids, wherein the size and shape of each of the reactive particles may be selected based on the characteristics of the hydrocarbon-bearing subterranean formation. For example, the reactive particles may be sized and shaped to fit within interstitial spaces including pores, cracks, fractures and channels of the subterranean formation and each of the reactive particles may independently have an average particle diameter of less than or equal to about 500 nm, such as less than or equal to about 100 nm, less than or equal to about 50 nm, less than or equal to about 10 nm, or less than or equal to about 1 nm ([0034]). As such, it would have been obvious to one having ordinary skill in the art to provide for reactive metallic nanoparticles in the composition of Bousaid et al. wherein a majority of the nanoparticles have a diameter of 5-150 nm in order to allow for such to pass freely through pores, cracks, fractures and channels of the subterranean formation and provide for the generation of heat therewith so as to facilitate a change in viscosity of a hydrocarbon material contained within the pores, cracks, fractures and channels.
With respect to dependent claim 7, Bousaid et al. discloses the composition as set forth above, wherein the nanomaterial composition containing the organic solvent may be blended with an emulsifiable crude simultaneously during injection and/or prior to injection, thereby providing for a nonaqueous liquid around the reactive metal nanoparticles as claimed, so as to stabilize the composition so that such can be used for its intended purpose, i.e., accomplish the desired recovery of oil from the formation (col. 5, l. 24-61). The reference, however, fails to disclose wherein the nonaqueous liquid comprises one as claimed. Mazyar et al. further teaches reactive metal ([0021]) nanoparticle containing ([0034]) suspensions used to generate heat and facilitate a change in viscosity of a hydrocarbon material contained in a subterranean formation ([0020]) wherein suitable carrier fluids therefor include organic liquids such as crude oil, with an alternative thereto suggested as mineral oil ([0037]). It would have been obvious to one having ordinary skill in the art to try mineral oil as an alternative to the crude oil disclosed by Bousaid et al., and thereby stabilize the reactive metal nanoparticles therewith, in order to yield the predictable result of providing a suitable carrier for delivery of a reactive metal to a subterranean formation for reaction with water therein so as to reduce the viscosity of the oil in the formation and thereby facilitate recovery thereof. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, 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 the product not of innovation but of ordinary skill and common sense.
With respect to dependent claim 21, Bousaid et al. suggests wherein the reactive metal nanoparticles are produced by blending bulk metal in a non-aqueous viscous oil to for size-reduced nanoparticles; and dispersing the size-reduced nanoparticles in the organic solvent (col. 3, l. 25-37, wherein larger particles of the metal, i.e., bulk metal, are disclosed as blended with the organic solvent). Furthermore, the Examiner notes, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Response to Arguments
Applicant’s remarks with respect to the objections to the priority claim and specification have been fully considered, and are persuasive. The objections as previously set forth have been withdrawn.
Applicant’s amendments and arguments presented with respect to the 35 USC 112 rejections, as set forth in the previous office action, have been fully considered and are persuasive. The 35 USC 112 rejections, as set forth therein, have withdrawn.
Applicant’s argument with respect to the 35 USC 103 rejections, as set forth in the previous Office Action have been fully considered, but they are not persuasive.
Applicant notes the final office action concludes it would have been obvious to arrive at the instantly claimed particle diameter through routine experimentation.
Applicant asserts In re Aller does not apply because the claimed range does not overlap Bousaid’s disclosed range.
The Examiner notes, such is not required; In re Aller was applied to a claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% and such was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%, i.e., the claimed did not overlap the reference range. Furthermore, the Examiner notes, Applicant discloses throughout the specification wherein the metal particle has a size between 1 nm and 1000 microns and, as such, there appears to be no criticality for the instantly claimed size range. Therefore, for at least the reasons set forth in the rejection above, the rejection is maintained.
Applicant notes the Office action further relies of Mazyar as teaching reactive metal nanoparticle suspensions.
Applicant asserts the combination of Bousaid and Mazyar is improper; Applicant notes Mazyar’s particle sizes pertain to chemically distinct reactive particles and, as such, Mazyar would not have motivated one of skill in the art to modify Bousaid’s alkali metal system. Applicant notes Mazyar is directed to reactive particles comprising metal alloys. The Examiner notes, Mazyar further suggests reactive metal particles, i.e., non-alloys, in [0021]. Applicant asserts nothing suggests Mazyar’s discussion of particle size is applicable to Bousaid’s alkali metal particles.
The Examiner respectfully disagrees. Mazyar discloses wherein the reactive particles may be sized and shaped to fit within interstitial spaces including pores, cracks, fractures and channels of the subterranean formation. Bousaid discloses the sizing of the reactive particles as to provide a particle size that is sufficiently small so that the particles will pass freely through flow channels of the subterranean formation. As such, the discussion of particle size of Mazyar is indeed applicable to Bousaid and the rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
06/10/26
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