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 “dibenzylidene sorbitol (DBS)” gelator; “organic acid” degrading agent; “dimethylsulfoxide (DMSO)” solvent; and “oil-based liquid” liquid, drawn to claims 28-48, 50, and 52-71, in the reply filed on 14 November 2025 is acknowledged. The traversal is on the ground(s) that “a search of the elected species would likely uncover art of interest to other species recited in the instant claims. Any additional searches that would be needed would not be an undue burden on the Examiner” (Response, p.1-2). This is not found persuasive because, although a single Species may uncover art of interest to another Species, here, there are multiple groups of Species being claimed in combination. A search which uncovers art for the combination of DBS, organic acid (e.g. citric acid), DMSO, and an oil-based liquid would not necessarily or even likely uncover art of interest for the combination of dimethyl-DBS, a Lewis acid (e.g. AlCl3), NMP, and a water-based liquid. Accordingly, this argument is not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 49 and 51 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Species, there being no allowable generic or linking claim.
Claim Objections
Claims 49-51 are objected to because of the following informalities:
Although not under examination, it appears claim 49 should recite “wherein the acid is the mineral acid, and wherein the mineral acid is hydrochloric acid” (correcting the typo; clarifying that the mineral acid is required in claim 49, like in claim 50 below).
Claim 50 should recite “wherein the acid is the organic acid, and wherein the organic acid is butanoic acid, hexanoic acid, octanoic acid, decanoic acid, dodecanoic acid, citric acid, formic acid, or a combination thereof” (correcting the typo; clarifying that the organic acid is required in claim 50).
Although not under examination, it appears claim 51 should recite “wherein the acid is the Lewis acid, and wherein the Lewis acid is aluminum(III) chloride or bismuth(III) triflate” (correcting the typo; clarifying that the mineral acid is required in claim 51, like in claim 50 above).
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 28-34 and 37-71 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 28-34 and 37-71 are also 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:
“a gelator that gels into a gel that plugs a fracture or pore space within the rock formation” “wherein the gelator is dibenzylidene sorbitol (DBS), methyl dibenzylidene sorbitol (methyl-DBS), dimethyl dibenzylidene sorbitol (dimethyl-DBS), any other functional derivative of dibenzylidene sorbitol, or a combination thereof” and/or “A self-degrading gel composition, comprising a liquid, a gelator, and a degrading agent, wherein the degrading agent degrades the gelator over time” “wherein the gelator is dibenzylidene sorbitol (DBS), methyl dibenzylidene sorbitol (methyl-DBS), dimethyl dibenzylidene sorbitol (dimethyl-DBS), any other functional derivative of dibenzylidene sorbitol, or a combination thereof” and “wherein the degrading agent comprises one or more acids,”
does not reasonably provide enablement for:
“a gelator that gels into a gel that plugs a fracture or pore space within the rock formation” and/or “A self-degrading gel composition, comprising a liquid, a gelator, and a degrading agent, wherein the degrading agent degrades the gelator over time” wherein the gelator and the degrading agent may be any/every possible gelator and degrading agent capable of gelling into “a gel that plugs a fracture or pore space within the rock formation” and forming a “self-degrading gel composition.”
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.
Claims 28-34 and 37-71 are also 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 28 recites “injecting a plugging material into the borehole, wherein the plugging material comprises a gelator that gels into a gel that plugs a fracture or pore space within the rock formation.” Similarly, independent claim 71 recites “a self-degrading gel composition comprising a liquid, a gelator, and a degrading agent, wherein the degrading agent degrades the gelator over time.”
Upon consultation with the Specification, the Office observes that Applicant only discloses “DBS gels” ([0112]), wherein “The gels formed by DBS are highly robust and can effectively plug the fractures.” ([0004]), and degrading agents which are acids ([0112]-[0131]), such as hydrochloric acid (HCl) i.e. mineral acid ([0115]); butanoic acid, hexanoic acid, octanoic acid, decanoic acid, dodecanoic acid, citric acid, or formic acid, i.e. organic acids ([0021]/[0124]); and AlCl3 or bismuth(III) triflate i.e. Lewis acids ([0126]/[0131]). Applicant generically states “Other gelators besides DBS may be used” ([0094]). However, there are no other specific types of gelators or degrading agents disclosed to be capable of gelling into “a gel that plugs a fracture or pore space within the rock formation” and forming a “self-degrading gel composition” “wherein the degrading agent degrades the gelator over time.”
First, while there is a presumption that an adequate Written Description of the claimed invention is present in the Specification as filed, a question as to whether a Specification provides an adequate Written Description may arise in the context of an original claim. An original claim may lack Written Description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad Genus claim is presented but the disclosure only describes a narrow Species with no evidence that the Genus is contemplated. See MPEP 2163.03 Typical Circumstances Where Adequate Written Description Issue Arises.
Applicant should note that the written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." See MPEP 2163.03 Typical Circumstances Where Adequate Written Description Issue Arises.
In this case, a broad Genus claim is presented (broadly encompassing all possible gelators and degrading agents which are capable of gelling to form a gel that plugs a fracture or pore space within the rock formation and forming a self-degrading gel composition wherein the degrading agent degrades the gelator over time) but the disclosure only describes a narrow Species (specifically, DBS gelator with acid degrading agents, which gels to form a gel that plugs a fracture or pore space within the rock formation and form a self-degrading gel composition wherein the acid degrading agent degrades the DBS gelator over time) with no evidence that the Genus is contemplated. For example, it is unclear if the claim might broadly encompass compositions formed of, e.g., potential gelators as diverse as cellulose ethers/polysaccharides, acrylamides, polyethylene glycols, polyvinyl alcohols, clays, etc. and potential degrading agents as diverse as bases (such as sodium hydroxide), enzymes, oxidants, etc. Would polyvinyl alcohol be capable of gelling “to form a gel that plugs a fracture or pore space within the rock formation”? Would a composition comprising acrylamide with an ammonium persulfate oxidant be one such “self-degrading” composition? What about a composition comprising xanthan with xanthanase be a “self-degrading” composition? Although Applicant generically states “Other gelators besides DBS may be used” ([0094]), one of ordinary skill reading the disclosure would not reasonably conclude that Applicant actually possessed all of the other possible combinations of gelators and degrading agents, and it is unclear if such compositions would even act “to form a gel that plugs a fracture or pore space within the rock formation” or to be “self-degrading” or not. Accordingly, Applicant has not actually demonstrated possession of any of these other possible “self-degrading gel compositions” “to form a gel that plugs a fracture or pore space within the rock formation” “wherein the degrading agent degrades the gelator over time.”
Accordingly, the claim lacks an adequate Written Description for its full scope.
Second, based on the foregoing, per In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), the following Undue Experimentation factors do not support a determination that the disclosure satisfies the Enablement requirement for the Full claim Scope:
(A) The breadth of the claims – because the claims encompass any/every possible gelator (and degrading agent), but the disclosure only describes DBS and its derivatives gelators (and acids degrading agent);
(D) The level of one of ordinary skill – because oilfield artisans are medium-skilled and do not ordinarily themselves perform assays of untested chemicals to locate working embodiments, instead relying on guidance to pick specific chemicals;
(E) The level of predictability in the art – because the chemical arts are relatively unpredictable and the operability of DBS and its derivatives does not reasonably predict operability of other chemicals;
(F) The amount of direction provided by the inventor – because Applicant has only provided direction for DBS and its derivatives, but not for any other specific chemicals;
(G) The existence of working examples – because the working examples only related to DBS and its derivatives; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure – because it would require virtually infinite experimentation to assay all of the possible chemicals for operability.
That is, six of the Wands factors do not support Enablement, five of which relate directly to the current claim scope (A/E/F/G/H).
Therefore, there also exists a Scope of Enablement deficiency for the current claims.
Third, based on the lacking disclosure, it is further unclear what other gelator(s) and degrading agent(s) would be encompassed by the claim to the self-degrading gel composition that gels “to form a gel that plugs a fracture or pore space within the rock formation” and “wherein the degrading agent degrades the gelator over time.” For example, it is unclear if the claimed self-degrading composition could comprise e.g. acrylamide with an ammonium persulfate oxidant or not, because Applicant has not described if such an embodiment would fall within the claimed invention or not. The same would apply to the other possible gelator(s) and degrading agent(s) listed above.
Accordingly, the claim scope is also rendered Indefinite.
Claims 29-34, 37-49, 50, and 52-70 are rejected by dependency, also failing to limit the claims to the Described and Enabled embodiments in a Definite manner. In contrast, claims 35 and 36 limit claim 28 to the specifically disclosed gelators.
For examination purposes, independent claim 71 will be read as though incorporating claims 35 and 47, i.e.:
“71. (Currently Amended) A method of improving recovery of reservoir fluid from a fracture or pore space comprising plugging the fracture or pore space with a self-degrading gel composition comprising
a liquid,
a gelator, wherein the gelator is dibenzylidene sorbitol (DBS), methyl dibenzylidene sorbitol (methyl-DBS), dimethyl dibenzylidene sorbitol (dimethyl-DBS), any other functional derivative of dibenzylidene sorbitol, or a combination thereof, and
a degrading agent, wherein the degrading agent comprises one or more acids, and
wherein the degrading agent degrades the gelator over time.”
The above formatting is also suggested for readability.
Similarly, claims will be read as though independent claim 28 incorporates claim 35, i.e.:
“28. (Currently Amended) A method of preventing loss of a fluid within a rock formation, comprising the steps of:
injecting the fluid into a borehole of the rock formation; and
injecting a plugging material into the borehole, wherein the plugging material comprises a gelator that gels into a gel that plugs a fracture or pore space within the rock formation, wherein the gelator is dibenzylidene sorbitol (DBS), methyl dibenzylidene sorbitol (methyl-DBS), dimethyl dibenzylidene sorbitol (dimethyl-DBS), any other functional derivative of dibenzylidene sorbitol, or a combination thereof.”
Accordingly, claim 35 may be canceled.
Claim 34 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.
Claim 34 recites “wherein the gelator is a low molecular weight compound.”
The term “low molecular weight” is a relative term which renders the claim indefinite. The term “low molecular weight” 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. For example, is 100 g/mol a “low molecular weight” or not? 1,000 g/mol? 10,000 g/mol? The claim scope is rendered Indefinite.
Upon consultation with the Specification, there appears to be no actual description whatsoever of what, exactly, constitutes a “low molecular weight” vs. not “low molecular weight.” Accordingly, this claim should simply be canceled.
For examination purposes, claim 34 will be read as though providing DBS as in claim 28 above also provides “wherein the gelator is a low molecular weight compound.”
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 28-71 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-18 of U.S. Patent No. 12,203,029 (also parent Application 18/173,550) in view of claims 1-7 of 12,203,029.
Regarding independent claims 28 and 71, these correspond to 12,203,029 claims 8 and 12.
Regarding claims 29-37, 46, 47, 52, 56, 57, 62, 63, 66, 67, 68, 69, and 70, these correspond to 12,203,029 claims 9, 10, 11, 12, 12+13, 8, 8, 8, 14, 8, 8, 15, 8, 16, 17, 18, 12+18, 8, 10, 10, and 9.
Regarding claims 38-45, 12,203,029 claims 0.25-15 wt% DBS gelator in claim 14. Although silent to the exact concentrations as instantly claimed, 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 12,203,029 claim 14 to include the specific claimed amounts, with a reasonable expectation of success, in order to provide suitable amounts within the general conditions claimed by 12,203,029 claims. 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. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claim 48, 12,203,029 claims 8-18 do not specify the acid is a mineral acid, organic acid, or Lewis acid, but 12,203,029 claim 3 claims “wherein the one or more acids is a mineral acid, an organic acid, a Lewis acid, or a combination thereof.” Accordingly, it appears the “one or more acids” in 12,203,029 claim 8 must be read to refer to mineral acid, organic acid, or Lewis acid inherently or implicitly.
Regarding claim 50, 12,203,029 claim 8 does not specify the acid may be an organic acid such as the claimed organic acids. Nevertheless, 12,203,029 defines in the disclosure that “In some embodiments, the organic acid is butanoic acid, hexanoic acid, octanoic acid, decanoic acid, dodecanoic acid, citric acid, formic acid, or a combination thereof” (Col. 2, lines 32-34), and thus it appears that the “one or more acids” in 12,203,029 claim 8 must be read to include butanoic acid, hexanoic acid, octanoic acid, decanoic acid, dodecanoic acid, citric acid, formic acid, or a combination thereof inherently or implicitly.
Regarding claims 53-55, 12,203,029 claims 8-18 do not specify the solvent is DMSO encapsulated in wax, cyrene, DMF, and/or NMP, but 12,203,029 claim 5 claims “wherein the solvent is dimethylsulfoxide (DMSO), dihydrolevoglucosenone (cyrene), dimethylformamide (DMF), N-methyl-2-pyrrohdone (NMP), or a combination thereof” and claim 6 claims “wherein the solvent is DMSO, and wherein a portion of the DMSO is encapsulated in wax particles.” Accordingly, it appears the “solvent” in 12,203,029 claim 15 must be read to refer to DMSO encapsulated in wax particles, cyrene, DMF, and/or NMP inherently or implicitly.
Regarding claims 58-61, 12,203,029 claim 8 does not specify the liquid may be the claimed amounts of mineral oil and hexanol. Nevertheless, 12,203,029 defines in the disclosure that “In some embodiments, the liquid comprises an oil-based liquid or a water-based liquid. In some embodiments, the oil-based liquid comprises mineral oil. In some embodiments, the liquid further comprises hexanol, an organic acid, or a combination thereof. In some embodiments, the liquid comprises from about 20 wt. % to about 80 wt. % mineral oil and from about 20 wt. % to about 80 wt. % hexanol, an organic acid, or a combination thereof. In some embodiments, the liquid comprises from about 30 wt. % to about 50 wt. % mineral oil and from about 30 wt. % to about 50 wt. % hexanol” (Col. 2, lines 46-58), and thus it appears that the “liquid” in 12,203,029 claim 8 must be read to include e.g. 30-50 wt% mineral oil and 30-50 wt% hexanol as the “liquid” inherently or implicitly.
Regarding claims 64 and 65, 12,203,029 claim 12 does not specify how much “time” the self-degrading gel degrades over. Nevertheless, 12,203,029 defines in the disclosure that “In some embodiments, the gel plugs the fracture or pore space for from about 1 day to about 4 weeks. In some embodiments, the gel plugs the fracture or pore space for 10 from about 2 weeks to about 6 weeks” (Col. 9, lines 8-11), and thus it appears 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 12,203,029 claim 12 to include the specific claimed time ranges, with a reasonable expectation of success, in order to provide suitable “time” within the general conditions claimed by 12,203,029 claims. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Conclusion
As above, claims 35 and 36 only face Double Patenting rejections over parent U.S. Patent No. 12,203,029. Accordingly, Applicant may incorporate claim 35 into independent claim 28 (and claims 35 and 47 into independent claim 71) and file an e-Terminal Disclaimer, to overcome all rejections.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The reference to Hatajima (2005/0100572) (cited by Applicant) teaches “A gelling agent for an oil” (abstract) which may include “one or more kinds of gelling agents for an oil” such as “dibenzylidene-D-sorbitol and the like” ([0030]). However, this reference specifies “The gelling agent of the present invention is useful for providing various forms by gelling an oil which is a liquid at an ordinary temperature” ([0001]) such as for applications at “room temperature” ([0023]) and thus it would not be obvious to apply this teaching to subterranean applications, which are well-known to be at extreme conditions including much-higher temperatures.
The reference to Mirakyan (2014/0174742) (cited by Applicant) teaches in the Background “U.S. Pat. No. 5,895,644 and WO 1999026598 disclose an anhydrous gel used in an antiperspirant stick composition, wherein the anhydrous gel comprises dibenzylidene sorbitol (DBS)” ([0012]). However, this reference specifies that this application is for “an antiperspirant stick composition,” and thus it would not be obvious to apply this teaching to subterranean applications, which are well-known to be at dramatically-different extreme conditions.
The reference to Lei (2015/0344767) (cited by Applicant) teaches “SHALE SWELLING INHIBITORS” (Title) which is for subterranean applications ([0004]) wherein “One or more suitable thickeners or viscosity increasing agents may be included in combination with the above-described polymer” such as “Dibenzylidene Sorbitol” ([0137]). However, this reference specifies that this application is for “the personal care/cosmetic compositions of the invention” ([0137]), and thus it would not be obvious to apply this teaching to subterranean applications, which are well-known to be at dramatically-different extreme conditions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SUE-AKO whose telephone number is (571)272-9455. The examiner can normally be reached M-F 9AM-5PM EST.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674