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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/09/2026 has been entered.
Response to Arguments
Applicant’s arguments, filed 06/09/2026, with respect to the rejection(s) of Claims 1, 3-9 ,and 18-19 under 35 U.S.C. 103 as being unpatentable over Zakaria et al. (US 2020/0399530 A1) and further in view of Dahanayake (US 2007/0107897 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 Therefore, the rejection has been withdrawn.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 § 102
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 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 and 6 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Anderson et al. (US 2018/0249706 A1) (“Anderson” herein)
Claim 1.
Anderson discloses, an acid retarder composition for acidizing a subterranean formation comprising:
a nitrogen-containing derivative of carbonic acid, present in an amount ranging from a lower limit of greater than 30 wt.% to an upper limit of 60 wt.%; (i.e. urea) [0079-0080]
a quaternary ammonium compound, present in an amount ranging from a lower limit of greater than 30 wt.% to an upper limit of 60 wt.%; [0093-00110, 0115 ]
a viscoelastic surfactant. [0045, 0131, 0166]
Since Anderson discloses the same composition comprising an urea or urea derivative, a quaternary compound, and a surfactant, it would be a nitrogen-containing derivative of carbonic acid, and a viscoelastic surfactant.
"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).
When reading the preamble in the context of the entire claim, the recitation an acid retarder composition for acidizing a subterranean formation, is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Claim 6.
Anderson discloses the composition according to claim 1, wherein the nitrogen-containing derivative of carbonic acid is urea or a urea derivative. [0079-0080]
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, 6, and 9 ,and are rejected under 35 U.S.C. 103 as being unpatentable over Zakaria et al. (US 2021/0123333 A1) (“333 herein) and further in view of Zakaria et al. (US 2020/0399530 A1) (“Zakaria” herein – cited previously)
Claim 1
‘333 discloses an acid retarder composition for acidizing a subterranean formation comprising:
a nitrogen-containing derivative of carbonic acid, (i.e. urea or urea derivative) [0026-0027]
a quaternary ammonium compound, (i.e. chloline chloride ) [0050-0051] and
a surfactant. [0048, 0056]
‘333 however does not explicitly discloses the a nitrogen-containing derivative of carbonic acid, present in an amount ranging from a lower limit of greater than 30 wt.% to an upper limit of 60 wt.%; and the quaternary ammonium compound, present in an amount ranging from a lower limit of greater than 30 wt.% to an upper limit of 60 wt.%.
Zakaria teaches the above limitation (See paragraphs 0092 & 0094→ Zakaria teaches this limitation in that Exemplary bifunctional organic compounds are those containing at least one ammonium moiety and at least one —OH group. These include, for instance, choline chloride, as well as hydroxyethyl ammonium salts like trimethyl hydroxyethyl ammonium chloride as well as hydroxy ammonium salts. The acid retarder is added to the aqueous delayed acid system in an amount up to its solubility limit in the aqueous delayed acid system. When present, the concentration of acid retarder may range from about 5 to 80 weight percent of the total weight of the water fraction of the total treatment fluid. In an embodiment, the amount of bifunctional organic compound may be from 15 to 30 weight percent and the amount of urea may be from 15 to 30 weight percent.) for the purpose of reducing diffusion of protons to the surface of the rock. Since proton transport to the wormhole wall is slowed down during matrix acidizing, acid retardation increases. Further, the acid protons are less available for reaction as the rate of acid dissociation is reduced. [0044]
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 ‘333 with the above limitation, s taught by Zakaria, in order to reduce diffusion of protons to the surface of the rock. Since proton transport to the wormhole wall is slowed down during matrix acidizing, acid retardation increases. Further, the acid protons are less available for reaction as the rate of acid dissociation is reduced.
Since ‘333 discloses the same composition comprising urea or urea derivative, a choline chloride, an a surfactant, it would be an acid retarder, a nitrogen- containing derivative of carbonic acid, and a quaternary ammonium compound.
"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 (1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 5.
‘333 discloses the composition according to claim 1, wherein the quaternary ammonium compound is choline chloride. [0050-0051]
Claim 6.
‘333 discloses the composition according to claim 1, wherein the nitrogen-containing derivative of carbonic acid is urea or a urea derivative. [0026-0027]
Claim 9.
‘333 discloses the composition according to claim 1, wherein the surfactant is present in an amount ranging from 0.1 to 40 gpt, relative to the total amount of the composition. [0048, 0056]
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson and further in view of Dahanayake (US 2007/0107897 A1) ("Dahanayake"
herein- cited previously)
Claims 3 - 4
Anderson discloses the composition according to claim 1. Anderson however does not explicitly disclose, wherein the viscoelastic surfactant is selected from amido propyl betaines, wherein the amido propyl betaine is selected from the group consisting of oleyl amido propyl betaine and erucyl amido propyl betaine.
Dahanayake teaches the above limitation (See paragraphs 0018 & 0038 → Dahanayake teaches this limitation in that Viscoelastic surfactants form worm-like, rod- like or cylindrical micelles in solution. Viscoelastic surfactants are preferred because they remain stable in high shear applications, i.e., they do not irreversibly degrade under high shear. Other representative zwitterionic surfactants include dihydroxyethyl tallow glycinate, propionates, oleamidopropyl betaine, and erucyl amidopropyl betaine.) for the purpose of having stable surfactant. [0018]
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 have the surfactant of Anderson, as taught by Dahanayake, in order to have stable.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Anderson and further in view of Anderson.
.
Claim 9.
Anderson discloses the claimed invention except for the surfactant is present in an amount ranging from 0.1 to 40 gpt, relative to a total amount of the composition. It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to have the the surfactant is present in an amount ranging from 0.1 to 40 gpt, relative to a total amount of the composition, since it has been held that [W]here the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Conclusion
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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/SILVANA C RUNYAN/Primary Examiner, Art Unit 1616 10/10/2026
