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 .
Election/Restrictions
Newly submitted claims 20-21 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The independent claim 20 have different composition thane the ones of claim 1, previously selected.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits.
Accordingly, claims 20-21 have been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 18-19 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.
Claims 18 and 19 recite “… an amount ranging from greater than 30 wt.% to 60 wt.%...” The ranges of ratios with unbounded upper limit for the limitation … greater than 30wt% or greater than 60 wt. %. These ranges with unbounded upper limits, and as such, it is unclear as to extent of amounts Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claims 18 and 19 recite the broad recitation greater than 60 wt. %, and the claim also recites 30 wt. % to 60 wt.% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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, 3-9 ,and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Zakaria et al. (US 2020/0399530 A1) ("Zakaria" herein- cited previously) and further in view of Dahanayake (US 2007/0107897 A1) ("Dahanayake" herein- cited previously)
Claim 1
Zakaria discloses an acid retarder composition for acidizing a subterranean formation comprising: [Fig. 1, 0100]
a nitrogen-containing derivative of carbonic acid, (i.e. urea or urea derivative) [0009-0016, 0032, 0100]
a quaternary ammonium compound, (i.e. chloline chloride ) [Fig. 10, 0009-0016, 0018, 0090-0093] and
a surfactant. [Fig. 10, 0009-0016, 0018, 0100]
Since Zakaria teaches the same composition comprising urea or urea derivative, a chloline 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, 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).
Zakaria however does not explicitly discloses the surfactant as a viscoelastic surfactant. (Same as claims 2-4 below)
Claim 3-4
Zakaria discloses the composition according to claim 1. Zakaria however, does not explicitly disclose, wherein the surfactant is a viscoelastic surfactant, wherein the viscoelastic surfactant is selected from the group consisting of 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. Fluids having viscoelastic surfactants also exhibit higher conductivity through a reservoir or formation than fluids having non-viscoelastic surfactants. Other representative zwitterionic surfactants include dihydroxyethyl tallow glycinate, propionates, oleamidopropyl betaine, and erucyl amidopropyl betaine.) for the purpose of having stable surfactant in high shear applications. [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 Zakaria, as taught by Dahanayake, in order to have stable surfactant in high shear applications.
Claim 5.
Zakaria discloses the composition according to claim 1, wherein the quaternary ammonium compound is choline chloride. [Fig. 10, 0018, 0090-0093]
Claim 6.
Zakaria discloses the composition according to claim 1, wherein the nitrogen-containing derivative of carbonic acid is urea or a urea derivative. [Fig. 1, 0018, 0100]
Claim 7
Zakaria discloses the composition according to claim 1, wherein the urea or urea derivative is present in an amount ranging from 0.1 wt.% to 60 wt.%, relative to the total weight of the composition. [Fig. 1, 0018, 0100]
Claim 8.
Zakaria discloses the composition according to claim 1, wherein the quaternary ammonium compound is present in an amount ranging from 0.1 wt.% to 60 wt.%, relative to the total weight of the composition. [Fig. 1, 0018, 0090-0093, 0100]
Claim 9.
Zakaria 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. [Fig.1, 0018, 0100]
Claim 18
Zakaria discloses the composition according to claim 1, wherein the urea or urea derivative is present in an amount ranging from 30 wt.% to 60 wt.%, relative to the total weight of the composition. [0094]
Claim 19
Zakaria discloses the composition according to claim 1, wherein the quaternary ammonium compound is present in an amount ranging from 30 wt.% to 60 wt.%, relative to the total weight of the composition. [0094]
Response to Arguments
Applicant’s arguments, filed on 11/06/2025, with respect to rejection of claims 3, 7-9 under 35 USC 112 (b) / 2nd have been fully considered and are persuasive. The rejections of the claims have been withdrawn.
Applicant’s arguments, filed on 11/06/2025 with respect to the rejection(s) of Claims 1, 5, 6, 7, 8, and 9 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Zakaria et al. (US 2020/0399530 A1) ("Zakaria" herein) 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 since claim 2 has been incorporated into claim 1. The rejection under 35 U.S.C. 103 as being unpatentable over Zakaria, as applied to claim 1 above, and further in view of Dahanayake (US 2007/0107897 A1) has been maintained.
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.
With regards to amended claim 1 to include a viscoelastic surfactant, the applicant argues that “A skilled artisan would not have been motivated to
use Dahanayake's surfactants to modify Zakaria, in view of each reference's explicit teachings. Dahanayake states that the surfactants used increase the viscosity to "about 10 cps or more"…The systems would be expected to be limited to including types of surfactants which do not significantly increase the viscosity, and only comprising the surfactants present in low enough amounts, so as to ensure the viscosity remains low. The modification proposed by the Examiner, to
use viscoelastic, i.e. viscosity increasing, surfactants in Zakaria would make Zakaria unsatisfactory “…(See Remarks on page 7, 2nd para.)
The examiner respectfully disagrees.
Firstly, In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., viscosity and / or amount of surfactant) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Secondly, Zakaria discloses that ¶ [0039] In an embodiment, the viscosity of the aqueous delayed acid system may be from about 0.5 cP to about 10 cP “
Zakaria however does not explicitly disclose the type of surfactant a viscoelastic surfactant..
Dahanayake teaches on ¶ .[0012] viscoelastic surfactants sufficient to provide an interfacial surface tension of about 1 millinewtons per meter (mNm) or less and a viscosity of about 10 centipoise (cPs) &¶ [0038] .. zwitterionic surfactants include dihydroxyethyl tallow glycinate, propionates , oleamidopropyl betaine, and erucyl amidopropyl betaine
Therefore, 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 composition of Zakaria, with the viscoelastic surfactant of Dahanayake such as erucyl amidopropyl betaine, as clearly point out to reach the same desired viscosity with an expectation of success and have stable surfactant in high shear applications. (See complete rejection below for details)
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).
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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SILVANA C RUNYAN/ Primary Examiner, Art Unit 3674 01/07/2026