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
Applicant’s election without traverse of Group II, claims 15-28 in the reply filed on 1/8/26 is acknowledged.
Specification
The abstract of the disclosure is objected to because the term “is provided” is stated in line 1. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
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.
Claims 15-28 are rejected under 35 U.S.C. 112(a), because the specification, while being enabling for certain high-thermal conductivity material, does not reasonably provide enablement for any and/or all high-thermal conductivity material/composition.
The original disclosure recites the following: “Suitable high-thermal k materials include, but are not limited to, graphite, sand, quartz silica, carbon nanotubes, graphene, boron nitride, brass, a brass alloy, chrome nickel steel, carbon steel, stainless steel, a transition metal (e.g., copper, cadmium, cobalt, gold, silver, iridium, iron, molybdenum, nickel, platinum, zinc, and the like), a transition metal alloy (e.g., a copper alloy, a cadmium alloy, a cobalt alloy, a gold alloy, a silver alloy, an iridium alloy, an iron alloy, a molybdenum alloy, a nickel alloy, a platinum alloy, a zinc alloy, and the like), a post-transition metal (e.g., lead, tin, and the like), a post-transition metal alloy (e.g., an lead alloy, a tin alloy, and the like), an alkaline earth metal alloy (e.g., a beryllium alloy, a magnesium alloy, and the like), or combinations thereof. In certain embodiments, the high-thermal k material is a carbon allotrope, and particularly contemplated allotropes include graphite powder, exfoliated graphite, flaked graphite, pyrolytic graphite, desulfurized petroleum coke, graphene, fly ash, copper powder, aluminum nitride, silicon carbide, and combinations thereof.” (See Applicant’s Specification, filed 1/27/25: [0033]).
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Further, not all of the materials listed in claim 16 can be found/supported by [0033] of applicant’s specification.
Claim Rejections - 35 USC § 102 or 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 15-28 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over STONE (US 2021/0071063 cited by applicant).
With respect to claim 15, STONE discloses a geothermal well (Fig. 1), comprising: a wellbore 22 extending from a topside location to a target location in a formation 18; a casing (loop 24 shown, but casing may be used [0033]) disposed in the wellbore such that an annular space 14 is formed between a wall of the wellbore and the casing, wherein the casing contains a working fluid (heating/cooling fluid [0031]); a high-thermal conductivity slurry composition (pumped through 16) that is at least partially settled [0033] or compacted to thereby form a continuous path for heat transfer from the formation to the casing [0028], [0031]; and wherein the high-thermal conductivity slurry composition comprises a plurality of high thermal k particles [0017]. However, STONE fails to explicitly teach the particles as high-thermal k particles as claimed. STONE teaches the composition having high thermal conductivity [0026-0027], which can be inferred or otherwise made obvious that the particles are high-thermal k particles, as many of the particles are the same as the particles used by the present application.
With respect to claim 16, STONE teaches wherein the high-thermal conductivity slurry composition comprises a high-thermal k material selected from the group consisting of zinc, graphite, graphene, tungsten, aluminum, silicon carbide, aluminum nitride, silicon nitride, boron nitride, gold, copper, silver, diamond, aluminum alloys, aluminum oxides, rhodium, cobalt, copper alloys, nickel, iron, platinum, palladium, tin, steel, zirconium, titanium, carbon fiber, carbon black, Hastelloy, carbon-based inorganic, metal, metal oxides, metal nitrides, alloys, and hybrids [0017]. With regard to the various treatment materials of the Markush group recited in the claim, the Examiner would like to note that the treatment materials of the Markush group are being considered as obvious variants, and, therefore, it would have been obvious to one having ordinary skill to employ such alternative treatment materials in the composition of STONE, as based on the desired treatment to be applied therewith.
With respect to claim 17, although silent to wherein the target location is at least 500 ft below ground and/or has a target temperature of between 1200C and 600 0C as claimed, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the present application to provide for a location distance and/or a target temperature range as claimed insofar as because 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).
With respect to claim 18, although silent to wherein the formation at the target location is in a dry and hot rock formation as claimed, it would be considered an obvious expedient for an underground formation of STONE to have such properties as claimed.
With respect to claim 19, STONE teaches wherein the target location extends in a substantially vertical orientation (Fig. 1).
With respect to claim 20, STONE teaches wherein the plurality of high-thermal k particles has a size distribution of between 0.1 pm and 5.0 mm [0036].
With respect to claim 21, STONE teaches wherein the high-thermal conductivity composition has a permeability of no greater than 0.01 Darcy [0026].
With respect to claim 22, STONE teaches wherein the high-thermal conductivity composition further comprises a thermally insulative material [0019].
With respect to claim 23, although silent to wherein the high-thermal conductivity composition, upon settling or compaction, has a thermal conductivity of at least 5 W/m°K as claimed, STONE does teach high thermal composition [0026-0027]. It would be considered obvious to one of ordinary skill before the effective filing date of the present application to provide for a composition having a thermal conductivity in the range as claimed insofar as because 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).
With respect to claim 24, STONE teaches wherein the high-thermal conductivity composition further comprises a functional agent selected from the group consisting of a plasticizer, a surfactant, and an organic polymer [0020-0021].
With respect to claim 25, STONE teaches wherein the plasticizer is a polycarboxylic ether plasticizer, a phthalate plasticizer, a terephthalate plasticizer, a sulfonamide plasticizer, a benzoate plasticizer, a phosphate plasticizer, or combinations thereof {0021].
With respect to claim 26, STONE teaches wherein the surfactant is a non-ionic surfactant, an anionic surfactant, a cationic surfactant, a zwitterionic surfactant, a surfactant that exhibits viscoelastic properties, or combinations thereof [0020].
With respect to claim 27, STONE teaches wherein the organic polymers is a polysaccharide, a polysaccharide ether, a polyvinylpyrrolidones, a polyvinylacetal, a polyvinyl alcohol, a melamine formaldehyde sulfonate, a naphthalene formaldehyde sulfonate, a block copolymer of propylene oxide and ethylene oxide, a styrene-maleic acid and/or vinyl ether-maleic acid copolymer, or combinations thereof [0020].
With respect to claim 28, STONE fails to explicitly teach wherein the high-thermal conductivity slurry composition at least partially fills a plurality of fissures in the formation to thereby form a continuous path for heat transfer from the formation to the casing via the high-thermal conductivity slurry composition in the fissures and the high-thermal conductivity slurry composition in the annular space as claimed. However, STONE does teach using an alternative piston pump [0030] for the purpose of pumping the slurry at higher pressures [0030]. Such high pressures would inherently form fissures in the formation. Therefore, it would be considered obvious expedient for the slurry composition to at least partially fill a plurality of fissures in the open wellbore 22.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZAKIYA W BATES whose telephone number is (571)272-7039. The examiner can normally be reached M-F 8:30am - 5pm.
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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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/ZAKIYA W BATES/Primary Examiner, Art Unit 3674 4/24/2026
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