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 .
Response to Arguments
Applicant’s arguments, filed on 03/11/2026, with respect to rejection of claims 1, 14, and 29 under 35 USC 112 (b) /2nd have been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Applicant’s arguments, filed on 03/11/2026, with respect to the rejection(s) of Claims 1, 5, 8-13, 16, 20, 23, and 25-28 under 35 U.S.C. 102 (a) (1) as being anticipated by Navarro et al. (US 2011/0061870 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
The factual inquiries 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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
Claims 1 and 16 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. The new amended claims 1 and 16 recite “a chelating agent and wherein the breaker fluid degrades a filter-cake along a wellbore wall in the subterranean formation via cooperation between the organic peroxide and the enzyme”. After carefully examined the specification, the examiner has not found “cooperation” between the organic peroxide and the enzyme, making the limitation as new matter.
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.
Claims 1 and 16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claims contain limitation that were not previously recited in the instant application specification, making the claim indefinite.
All the claims dependent of claims 1 and 16 are rejected.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries 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 1, 5, 8, 10-13, 16, 20, 23, and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Navarro et al. (US 2011/0061870 A1) ("Navarro" herein- cited previously), and further in view of George et al. (US 2013/0333886 A1) (“George” herein).
Claim 1
Navarro discloses a breaker fluid comprising: [0010-0011]
an organic peroxide; wherein the organic peroxide comprises 0.1-to 10 % by volume of the breaker fluid; [0026]
an aqueous solution; [0027] .
an enzyme; [0023-0024] wherein the enzyme comprises 1 to 10 % by volume of the breaker fluid; [0025] . and
a chelating agent; [0018-0022]
wherein the breaker fluid is configured to degrade a filter-cake along a wellbore wall in the subterranean formation via cooperation between the organic peroxide and the enzyme . [0010- 0011]
Navarro however does not explicitly disclose the peroxide is a tert-butyl-hydroperoxide.
George teaches the above limitation (See paragraph 0203 →George teaches this limitation in that examples of oxidizers include chlorites, hypochlorites, chlorates, perchlorates, and other analogous halogen compounds, perborates, and peroxides. The oxidizer is preferably a peroxide. According to a most preferred embodiment, the oxidizer is t-butyl hydroperoxide ("TBHP", also known as 2-methylpropane-2-peroxol), which is commercially available in aqueous solution.) for the purpose of reducing the molecular weight of the friction-reducing polymer. The fragmented components of the polymer can then be readily removed from the wellbore. [0034]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Navarro with the above limitation, as taught by George, in order to reduce the molecular weight of the friction-reducing polymer.
Since Navarro teaches the same composition comprising a peroxide as a tert-butyl-hydroperoxide, aqueous solution, an enzyme, a chelating agent, it would be an organic peroxide, a breaker fluid that is configured to degrade a filter-cake along a wellbore wall in the subterranean formation via cooperation between the organic peroxide and the enzyme .
"Products of identical chemical composition cannot 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. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claims 5 and 20
Navarro discloses the breaker fluid of claims 1 and 16,
wherein the chelating agent is present in an amount between 5% by volume and 80 % by volume of the breaker fluid. [0021]
Claims 8 and 23
Navarro discloses the breaker fluid of claims 1 and 16,
wherein the enzyme comprises an alpha-amylase, [0023-0024]
wherein the chelating agent comprises EDTA (ethylenediamine tetraacetic acid), HEDTA (hydroxyethylenediamine triacetic acid), NTA (nitrilotriacetic acid), or citric acid. [0018-0022]
Claims 10 and 25
Navarro discloses the breaker fluid of claims 1 and 16, wherein the aqueous solution comprises water [0027]
Claims 11 and 26
Navarro discloses the breaker fluid of claims 1 and 16, wherein the aqueous solution comprises a brine. [0027]
Claims 12 and 27
Navarro discloses the breaker fluid of claims 11 and 26, wherein the brine is water comprising sodium bromide, potassium bromide, potassium chloride, sodium chloride, cesium bromide, or a combination thereof. [0027]
Claims 13 and 28
Navarro discloses the breaker fluid of claims 1 and 16, , wherein the aqueous solution comprises sodium bromide. [0027]
Claim 16
Navarro discloses a method comprising:
dispersing a breaker fluid into a wellbore on a subterranean formation, wherein the breaker fluid comprises
an organic peroxide; wherein the organic peroxide comprises 0.1 to 10 % by volume of the breaker fluid; [0026]
an aqueous solution; [ 0027] .
an enzyme; [0023-0024] wherein the enzyme comprises 1 to 10 % by volume of the breaker fluid; [0025] . and
a chelating agent; [0018-0022]
wherein the breaker fluid degrades a filter-cake along a wellbore wall in the subterranean formation via cooperation between the organic peroxide and the enzyme . [0010- 0011]
Navarro however does not explicitly disclose the peroxide is a tert-butyl-hydroperoxide.
George teaches the above limitation (See paragraph 0203 →George teaches this limitation in that examples of oxidizers include chlorites, hypochlorites, chlorates, perchlorates, and other analogous halogen compounds, perborates, and peroxides. The oxidizer is preferably a peroxide. According to a most preferred embodiment, the oxidizer is t-butyl hydroperoxide ("TBHP", also known as 2-methylpropane-2-peroxol), which is commercially available in aqueous solution.) for the purpose of reducing the molecular weight of the friction-reducing polymer. The fragmented components of the polymer can then be readily removed from the wellbore. [0034]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Navarro with the above limitation, as taught by George, in order to reduce the molecular weight of the friction-reducing polymer.
Since Navarro teaches the same composition comprising a peroxide as a tert-butyl-hydroperoxide, aqueous solution, an enzyme, a chelating agent, it would be an organic peroxide, a breaker fluid that degrades a filter-cake along a wellbore wall in the subterranean formation via cooperation between the organic peroxide and the enzyme . "Products of identical chemical composition cannot 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. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claims 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Navarro , George, and further in view of Applicant’s Admitted Prior Art (hereinafter, “Admissions”)
Claim 31.
Navarro discloses the breaker fluid of claim 1, wherein:
the enzyme comprises an alpha-amylase; [0023-0024]
the chelating agent comprises EDTA (ethylenediamine tetraacetic acid), HEDTA (hydroxyethylenediamine triacetic acid), NTA (nitrilotriacetic acid), or citric acid;
the chelating agent is present in an amount between 5% by volume and 80% by volume of the breaker fluid; [0018-0022]
the aqueous solution comprises a brine comprising sodium bromide; the aqueous solution is present in an amount between 20% by volume and 80% by volume of the breaker fluid; [0027]
Navarro however does not explicitly disclose the filter-cake is formed from a water-based drilling fluid and comprises starch; and the breaker fluid is configured for use in a direct injector well.
Admissions teaches the above limitation (See paragraphs 0004-0008→ Admissions teaches this limitation in that one way of protecting the formation is by forming a filter-cake on the surface of the subterranean formation. Filter-cakes are formed when particles, suspended in a wellbore water-based drilling fluid, coat and plug the pores in the subterranean formation such that the filter-cake prevents or reduce both the loss of fluids into the formation and the influx of fluids present in the formation, starch contained in the filter-cake. The effect is more profound in direct injector wells where the well cannot be put on production to flow back the filter-cake residues resulting in unsatisfactory injection) for the purpose of providing filter-cake that prevents or reduce both the loss of fluids into the formation and the influx of fluids present in the formation. [0004]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of using the breaker fluid of Navarro, with the above limitation, as taught by Admissions, in order to provide filter-cake that prevents or reduce both the loss of fluids into the formation and the influx of fluids present in the formation. [0004]
Claim 32.
(New) The method of claim 16, wherein:
the enzyme comprises an alpha-amylase; [0023-0024]
the chelating agent comprises EDTA (ethylenediamine tetraacetic acid), HEDTA (hydroxyethylenediamine triacetic acid), NTA (nitrilotriacetic acid), or citric acid;
the chelating agent is present in an amount between 5% by volume and 80% by volume of the breaker fluid; [0018-0022]
the aqueous solution comprises a brine comprising sodium bromide; the aqueous solution is present in an amount between 20% by volume and 80% by volume of the breaker fluid; [0027]
Navarro however does not explicitly disclose the filter-cake is formed from a water-based drilling fluid and comprises starch; and the breaker fluid is configured for use in a direct injector well.
Admissions teaches the above limitation (See paragraphs 0004-0008→ Admissions teaches this limitation in that one way of protecting the formation is by forming a filter-cake on the surface of the subterranean formation. Filter-cakes are formed when particles, suspended in a wellbore water-based drilling fluid, coat and plug the pores in the subterranean formation such that the filter-cake prevents or reduce both the loss of fluids into the formation and the influx of fluids present in the formation, starch contained in the filter-cake. The effect is more profound in direct injector wells where the well cannot be put on production to flow back the filter-cake residues resulting in unsatisfactory injection) for the purpose of providing filter-cake that prevents or reduce both the loss of fluids into the formation and the influx of fluids present in the formation. [0004]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of using the breaker fluid of Navarro, with the above limitation, as taught by Admissions, in order to provide filter-cake that prevents or reduce both the loss of fluids into the formation and the influx of fluids present in the formation. [0004]
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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 03/26/2026