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 .
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 1-21 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.
Independent claim 1 has been amended to require the method as a “single step method” and, further, wherein the water flow resisting chemical is introduced without subsequent introduction of another chemical.
Independent claim 17 has been amended to require the method as a “single step method.”
Independent claim 20 has been amended to require the method as a “single step method.”
The above italicized limitations are not supported by the specification as filed.
Although the specification may not explicitly recite an additional step aside from introduction of the water flow resisting chemical, such lack of disclosure does not support the instant requirement of the method as a single step method as is required by each of the instant independent claims or wherein the method is conducted without introduction of another chemical as is required by independent claim 1 with sufficient specificity to clearly suggest to one of ordinary skill in the art that such was indeed required and/or contemplated at the time of invention.
As such, Applicant’s amendments to each of independent claims 1, 17 and 20 constitute new matter.
Claims 2-16, 18, 19 and 21 are rejected by virtue of their dependency upon a rejected base claim.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-12 and 17-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Vasquez et al. (US 9475976).
With respect to independent claim 1, Vasquez et al. discloses a single step method of treating a water and hydrocarbon producing subterranean formation to reduce the water permeability thereof (col. 3, l. 8-14), the method comprising:
introducing into the formation a water flow resisting chemical which attaches to adsorption sites on surfaces within the porosity of the formation, and, without subsequent introduction of another chemical, reduces the water permeability thereof without substantially reducing the hydrocarbon permeability (col. 2, l. 55- col. 3, l. 21),
wherein the water flow resisting chemical comprises a polymer of at least one hydrophilic monomer and at least one hydrophobic monomer: (a) wherein the at least one hydrophilic monomer comprises N-vinyl formamide (col. 3, l. 64; col. 4, l. 66-67); or (b) wherein the at least one hydrophobic monomer comprises styrene, butadiene, 1-vinylnaphthalene, or a combination thereof (col. 6, l. 2); or (c), both (a) and (b) (col. 3, l. 64; col. 4, l. 66-67; col. 6, l. 2).
With respect to dependent claim 2, Vasquez et al. discloses the method comprising (a) (col. 3, l. 64; col. 4, l. 66-67).
With respect to dependent claim 3, Vasquez et al. discloses wherein the at least one hydrophobic monomer comprises one or more as claimed (col. 5, l. 54-col. 6, l. 9).
With respect to dependent claim 4, Vasquez et al. discloses wherein the at least one hydrophilic monomer further comprises one as claimed (col. 3, l. 51-col. 5, l. 40).
With respect to dependent claim 5, Vasquez et al. discloses the method of claim 1 comprising (b) (col. 6, l. 2).
With respect to dependent claim 6, Vasquez et al. discloses wherein the at least one hydrophilic monomer comprises one as claimed (col. 3, l. 51-col. 5, l. 40).
With respect to dependent claim 7, Vasquez et al. discloses wherein the at least one hydrophobic monomer further comprises one or more as claimed (col. 5, l. 54-col. 6, l. 9).
With respect to dependent claim 8, Vasquez et al. discloses wherein the at least one hydrophilic monomer comprises N-vinyl formamide (col. 3, l. 64; col. 4, l. 66-67), and wherein the at least one hydrophobic monomer comprises styrene, butadiene, 1-vinylnaphthalene, or a combination thereof (col. 6, l. 2). With respect to dependent claim 9, Vasquez et al. discloses wherein the at least one hydrophilic monomer further comprises one as claimed (col. 3, l. 51-col. 5, l. 40).
With respect to dependent claims 10 and 11, Vasquez et al. discloses wherein the at least one hydrophobic monomer further comprises one or more as claimed (col. 5, l. 54-col. 6, l. 9).
With respect to dependent claim 12, Vasquez et al. discloses wherein the at least one hydrophobic monomer comprises a hydrophobic monomer having a structure according to Formula I (col. 5, l. 54- col. 6, l. 9).
With respect to independent claim 17, Vasquez et al. discloses a single step method of treating a water and hydrocarbon producing subterranean formation to reduce the water permeability thereof (col. 3, l. 8-14), the method comprising:
introducing a polymer of at least one hydrophilic monomer and at least one hydrophobic monomer into the formation, whereby the polymer attaches to adsorption sites on surfaces within the porosity of the formation and reduces the water permeability thereof without substantially reducing the hydrocarbon permeability thereof (col. 2, l. 55- col. 3, l. 21), and wherein the polymer has a molecular weight in the range of from about 100,000 to about 10,000,000 (col. 3, l. 37-41),
(a) wherein the at least one hydrophilic monomer comprises N-vinyl formamide (col. 3, l. 64; col. 4, l. 66-67);
(b) wherein the at least one hydrophobic monomer comprises styrene, butadiene, 1-vinylnaphthalene, or a combination thereof (col. 6, l. 2); or
(c) both (a) and (b) (col. 3, l. 64; col. 4, l. 66-67; col. 6, l. 2).
With respect to dependent claim 18, Vasquez et al. discloses the method of claim 17 comprising (a) (col. 3, l. 64; col. 4, l. 66-67); or comprising (a) and (b) (col. 6, l. 2).
With respect to dependent claim 19, Vasquez et al. discloses the method of claim 17 comprising (b) (col. 6, l. 2); and/or wherein the mole ratio in the polymer is in the range as claimed (col. 6, l. 10-24).
With respect to independent claim 20, Vasquez et al. discloses a single step method of treating a water and hydrocarbon producing subterranean formation to reduce the water permeability thereof (col. 3, l. 8-14), the method comprising:
introducing into the formation a water flow resisting chemical which attaches to adsorption sites on surfaces within the porosity of the formation, and reduces the water permeability thereof without substantially reducing the hydrocarbon permeability (col. 2, l. 55- col. 3, l. 21),
wherein the water flow resisting chemical comprises a polymer of at least one hydrophilic monomer and at least one hydrophobic monomer: (a) wherein the at least one hydrophilic monomer comprises N-vinyl formamide (col. 3, l. 64; col. 4, l. 66-67) and wherein the at least one hydrophobic monomer comprises one or more as claimed (col. 5, l. 54-col. 6, l. 9); or (b) wherein the at least one hydrophobic monomer comprises styrene, butadiene, 1-vinylnaphthalene, or a combination thereof (col. 6, l. 2) and wherein the at least one hydrophilic monomer comprises one as claimed (col. 3, l. 51-col. 5, l. 40); or (c) both (a) and (b) (col. 3, 5l-col. 6, l. 9).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Vasquez et al. as applied to claim 1 above, and further in view of Martinez-Castro et al. (US 2014/0178324 – cited previously).
Vasquez et al. discloses the method as set forth above with respect to claim 1, wherein the water flow resisting chemical comprises (a), (b) and/or (c), as set forth therein, wherein the hydrophobic monomer can be various compounds (col. 5, l. 54-col. 6, l. 9). The reference, however, fails to disclose wherein the at least one hydrophobic monomer comprises a hydrophobic monomer having a structure according to Formulas II-V as claimed. Martinez-Castro et al. teaches additives for use in compositions for treating subterranean formations ([0003]-[0004]; [0023]) wherein a copolymer is formed from a mixture of monomers, wherein one of such monomers is a hydrophobic monomer ([0030]) for the purpose of imparting hydrophobic modification thereto ([0070]; [0084]). A monomer capable of being modified thereby includes N-vinylformamide ([0171]), i.e., a hydrophilic monomer instantly claimed by Applicant. Exemplary hydrophobic monomers include a monomer corresponding to the structure of instant Formula IV ([0211]) or a structure according to instant Formula V ([0262]). The reference further suggests a hydrophobic monomer corresponding to the structure of instant Formula III ([0247]-[0252]; see [0252], wherein instantly claimed X is suggested) as well as instant Formula II ([0247]-[0251]; [0258]-[0259]; [0262]). It would have been obvious to one having ordinary skill in the art to try a hydrophobic monomer such as one having a structure according to Formulas II-V in the method of Vasquez et al. in order to yield the predictable result of imparting hydrophobic modification to a hydrophilic monomer such as N-vinylformamide, as is disclosed therein.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Vasquez et al. as applied to claim 1 above, and further in view of Brannon et al. (US 2009/0093382).
Vasquez et al. discloses the method as set forth above with respect to claim 1, wherein such a method reduces water production from the formation (see rejection of claim 1, above). The reference, however, fails to disclose the permeability of the formation treated with such a method. Brannon et al. teaches methods for reducing production of water in oil and gas wells without substantially reducing the hydrocarbon permeability thereof (abstract) wherein such relative permeability modifying chemicals are suggested to be effective in formations having permeabilities of 1 to 10 darcy ([0036]). It would have been obvious to one having ordinary skill in the art to try the method of Vasquez et al. in a formation having a permeability within the range instantly claimed in order to yield the predictable result of reducing the water permeability thereof without substantially reducing the hydrocarbon permeability; since both Vasquez et al. and Brannon et al. teach the use of relative permeability modifying chemicals wherein Brannon et al. further suggests formation permeabilities that may be treated therewith, one having ordinary skill would recognize at least such permeabilities taught by Brannon et al. and overlapping the instantly claimed range as suitable to treat with relative permeability modifiers in order to yield predictable results. Furthermore, one of ordinary skill in the art would recognize the optimal permeabilities suitable for treatment with such chemicals since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed permeability range as critical and it is unclear if any unexpected results are achieved by providing for the instant treatment method in a formation having such a permeability. Since the water flow resisting chemical of Vasquez et al. in view of Brannon et al. is suggested as reducing water permeability of the formation without substantially reducing hydrocarbon permeability thereof for a formation having a permeability overlapping the instantly claimed range, it does not appear that such would be considered an unexpected result of conducting the method of Vasquez et al. in a formation having permeabilities over the entirety of the presently claimed range, and, as such, the determination of optimal formation permeability for which to conduct the instantly claimed method would be achievable through routine experimentation in the art.
Response to Arguments
Applicant’s amendments to the specification overcome the previous objections made with respect thereto in the non-final rejection mailed 04/23/26.
Applicant’s amendments are sufficient to overcome the claim objections and 35 USC 112, rejections, as set forth in the previous office action.
Applicant’s arguments with respect to the rejection(s) of claim(s) as anticipated by, and as unpatentable over, Reddy et al. have been fully considered and are persuasive in view of Applicant’s amendments to each of the independent claims. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of further consideration of Applicant’s amendments.
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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
08/07/26
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