DETAILED ACTION
Response to Amendment
The Amendment filed 10 April 2026 has been entered. Claims 28-33 and 36-73 remain pending in the application. Applicant’s Amendments to the Claims have overcome the Claim Objections and 112 Rejections previously set forth in the Non-Final Office Action mailed 11 December 2025.
Terminal Disclaimer
The terminal disclaimer filed on 2 June 2026 by University of Maryland, College Park disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,203,029 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 2 June 2026 by BP Exploration Operating Company Limited disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,203,029 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
Per the OPLC, the office which reviews Terminal Disclaimers, “TD disapprove the applicant BP … is unclear the applicants name should be readable. Please resubmit the TD. No fee required.” Accordingly, it appears that Applicant should resubmit the terminal disclaimer by BP Exploration Operating Company Limited with respect to U.S. Patent No. 12,203,029 in a clear and legible form, like the terminal disclaimer by University of Maryland, College Park.
The terminal disclaimers filed on 10 April 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,203,029 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The terminal disclaimer by University of Maryland, College Park recites a 100 percent interest and the terminal disclaimer by BP Exploration Operating Company Limited recites a 50 percent interest. However, the total percent interest shouldn’t equal more than 100%. Accordingly, these terminal disclaimers were disapproved.
The terminal disclaimers filed on 28 May 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,203,029 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
Per the OPLC, the office which reviews Terminal Disclaimers, “The TD for applicant “BP……Limited\” is unclear. (should be clear and readable).” Accordingly, these terminal disclaimers were disapproved.
Double Patenting
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.
As above, the terminal disclaimer filed on 2 June 2026 by BP Exploration Operating Company Limited disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,203,029 has been reviewed and is NOT accepted.
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, 70, and 72, 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, 9, and 6.
Regarding claims 38-45 and 73, 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 49, 12,203,029 claim 8 does not specify the acid may be mineral acid such as hydrochloric acid. Nevertheless, 12,203,029 defines in the disclosure that “In some embodiments, the mineral acid is hydrochloric acid” (Col. 2, lines 30-31), and thus it appears that the “one or more acids” in 12,203,029 claim 8 must be read to include wherein the acid is the mineral acid and the mineral acid is hydrochloric 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 claim 51, 12,203,029 claim 8 does not specify the acid may be Lewis acid such as aluminum(III) chloride or bismuth(lll) triflate. Nevertheless, 12,203,029 defines in the disclosure that “In some embodiments, the Lewis acid is aluminum(III) chloride or bismuth(III) triflate” (Col. 2, lines 35-36), and thus it appears that the “one or more acids” in 12,203,029 claim 8 must be read to include wherein the acid is the Lewis acid and the Lewis acid is aluminum(III) chloride or bismuth(lll) triflate 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.
Response to Arguments
Applicant's arguments filed 10 April 2026 with respect to claims rejected under nonstatutory Double Patenting over U.S. Patent No. 12,203,029 have been fully considered but they are not persuasive.
In Applicant’s arguments, Applicant points to the Terminal Disclaimer (p.8). However, as above, per the OPLC, the office which reviews Terminal Disclaimers, “TD disapprove the applicant BP … is unclear the applicants name should be readable. Please resubmit the TD. No fee required.” Accordingly, it appears that Applicant should resubmit the terminal disclaimer by BP Exploration Operating Company Limited with respect to U.S. Patent No. 12,203,029 in a clear and legible form, like the terminal disclaimer by University of Maryland, College Park.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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