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 with traverse of Group I (Claims 1-9) in the reply filed on January 26, 2026 is acknowledged. The first traversal is on the ground(s) that the inventions are not independent or distinct (See Applicant’s Remarks, filed 01/26/2026, pp. 9-10). This is not found persuasive, because the inventions are independent or distinct for the reasons explained in the previous Office action; and the composition as claimed is not limited to the intended use method(s) as claimed or the field of search as claimed (Examiner note: any prior art structure that is capable of performing the intended use meets the claim). The second traversal is on the ground(s) that there would be no serious search and/or examination burden to the examiner (See Applicant’s Remarks, filed 01/26/2026, p. 10). This is not found persuasive, because there would be a serious search and/or examination burden if restriction were not required because: the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). The inventions may require different components (e.g., aggregation device, breaking mechanism); the inventions require a different field of search (composition that can be used in any field versus method used in a wellbore); and the inventions require different search strategies.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant's election with traverse of Species A in the reply filed on January 26, 2026 is acknowledged.
The first traversal is on the ground(s) that the inventions are not independent or distinct (See Applicant’s Remarks, filed 01/26/2026, p. 11). This is not found persuasive because the species are independent or distinct because as disclosed, the different species have mutually exclusive characteristics for each identified species. In addition, these species are not obvious variants of each other based on the current record. As disclosed, the various species of binding agents may have mutually exclusive characteristics for each identified species (e.g., an electrically sensitive binder traditionally has patentably distinct properties and/or chemical structures than a pressure-sensitive binder); and while the binding agents are different classes of chemicals that may be applied together, they are not necessarily art-recognized interchangeable substitutes. The second traversal is on the ground(s) that there would be no serious search and/or examination burden to the examiner (See Applicant’s Remarks, filed 01/26/2026, p. 11). This is not found persuasive because the species or groupings of patentably indistinct species are divergent compositions requiring different search strategies or search queries.
The requirement is still deemed proper and is therefore made FINAL.
Applicant's election with traverse of Species B in the reply filed on January 26, 2026 is acknowledged.
The traversal is found persuasive for Species B. The restriction requirement for Species B, as set forth in the Office action mailed on January 23, 2026, has been reconsidered in view of the Applicant’s arguments. The election of species requirement of January 23, 2026 is partially withdrawn.
Once a restriction requirement is withdrawn (fully or partially), the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Rejections - 35 USC § 103
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lesko et al. (US 2008/0135242).
Claim 1. A micromesh proppant composition, comprising:
a plurality of micromesh proppant particles having a particle size from about 140 mesh to about 635 mesh, wherein the proppant composition is configured to transition between:
a micromesh structural state in which micromesh proppant particles of the plurality of micromesh proppant particles are unbounded and free from each other; and
an aggregated structural state in which the plurality of micromesh proppant particles is bound into super-particles, each super-particle comprising two or more of the micromesh proppant particles,
wherein the micromesh proppant composition in the aggregated structural state includes a temporary binding agent configured to form the super-particles from the micromesh proppant particles of the plurality of micromesh proppant particles, and wherein the temporary binding agent is configured to break down under predetermined conditions, allowing the proppant composition to transition from the aggregated structural state to the micromesh structural state.
Lesko et al. (US 2008/0135242) discloses a well treatment fluid composition comprising a proppant and a channelant (i.e. removable proppant-spacing material) ([0029]; [0033]); wherein the proppant and/or channelant particles may have a sticky self-adherent coating to agglomerate with or adhere to other particles ([0020]; [0056]; [0062]). Lesko discloses that the channelant may be any degradable or dissolvable material ([0017]; [0034] – [0039]; [0060]); and the channelant can be removed in various embodiments by flushing, dissolving, softening, melting, breaking, or degrading the channelant, wholly or partially, via a suitable activation mechanism, such as, but not limited to, temperature, time, pH, salinity, solvent introduction, catalyst introduction, hydrolysis, and the like, or any combination thereof ([0034] – [0038]). Lesko further discloses that the channelant can be selected to have a size and shape similar or dissimilar to the size and shape of the proppant particles as needed ([0060]).
Lesko does not expressly disclose a plurality of micromesh proppant particles having a particle size from about 140 mesh to about 635 mesh.1 However, Lesko does disclose a multi modal size distribution for the proppant ([0016]; [0049] – [0050]); wherein the channelant can have size and shape matching the proppant ([0017]) and/or the channelant may comprise particles with multi modal size distribution ([0063]). Lesko further discloses optimizing size of the proppant with the channelant to optimize segregation and enhance conductivity in the proppant pack ([0055]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the particle size range of the proppant and/or channelant particles in Lesko to the range as claimed, because it has been held that “where 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).
Claim 2. Lesko renders obvious The micromesh proppant composition of claim 1, wherein the temporary binding agent comprises at least one of: a water-soluble polymer, a temperature-sensitive binder, a pH- sensitive binder, an electrically sensitive binder, a pressure-sensitive binder, or a chemically degradable binder ([0034] – [0038]).
Claim 3. Lesko renders obvious The micromesh proppant composition of claim 2, wherein the temporary binding agent comprises a water-soluble polymer selected from the group consisting of starches, cellulose derivatives, polyvinyl alcohol, and lignin sulfonate ([0037]).
Claim 4. Lesko renders obvious The micromesh proppant composition of claim 1. Regarding the limitation: wherein the super-particles have a size range from about 4 mesh to about 140 mesh, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the particle size range of the proppant and/or channelant particles in Lesko to the range as claimed, because it has been held that “where 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).
Claim 5. Lesko renders obvious The micromesh proppant composition of claim 1, wherein the predetermined conditions comprise at least one of: exposure to water, exposure to a specific temperature range, exposure to a specific pH range, exposure to an electrical current, exposure to a specific pressure range, or exposure to a chemical breaking agent ([0034] – [0038]).
Claim 6. Lesko renders obvious The micromesh proppant composition of claim 1, further comprising a breaking agent configured to chemically cleave or dissolve the temporary binding agent ([0038]).
Claim 7. Lesko renders obvious The micromesh proppant composition of claim 6, wherein the breaking agent comprises an oxidizing agent or an enzyme ([0038]).
Claim 8. Lesko renders obvious The micromesh proppant composition of claim 1, wherein the super-particles are configured to disintegrate over a configurable period of time when exposed to wellbore conditions ([0034] – [0038]).
Claim 9. Lesko renders obvious The micromesh proppant composition of claim 1. Regarding the limitation: wherein the super-particles are configured to reduce dust generation during handling of the proppant composition compared to the micromesh structural state, since Lesko discloses the same composition as claimed, the composition would inherently act in the same manner as claimed, (i.e., it would be capable of reducing dust generation). If there is any difference between the composition of Lesko and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “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 Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2006/0113078).
Claim 1. A micromesh proppant composition, comprising:
a plurality of micromesh proppant particles having a particle size from about 140 mesh to about 635 mesh, wherein the proppant composition is configured to transition between:
a micromesh structural state in which micromesh proppant particles of the plurality of micromesh proppant particles are unbounded and free from each other; and
an aggregated structural state in which the plurality of micromesh proppant particles is bound into super-particles, each super-particle comprising two or more of the micromesh proppant particles,
wherein the micromesh proppant composition in the aggregated structural state includes a temporary binding agent configured to form the super-particles from the micromesh proppant particles of the plurality of micromesh proppant particles, and wherein the temporary binding agent is configured to break down under predetermined conditions, allowing the proppant composition to transition from the aggregated structural state to the micromesh structural state.
Nguyen et al. (US 2006/0113078) discloses forming a plurality of proppant aggregates, each proppant aggregate comprises a binding fluid and a filler material ([0031]; [0032]; [0039]); wherein the filler material and/or proppant particulates have sizes from about 4 mesh to about 400 mesh ([0040]; [0064]); and wherein the filler material may be coated with an adhesive substance ([0041]); wherein the adhesive substances, in conjunction with the binding fluid, encourage the filler materials to form aggregates, preventing the filler material from being dispersed within the fractures, so that the filler materials aggregate even if the binding fluid that is confining the filler material becomes deteriorated after prolonged exposure to downhole conditions ([0041]). Nguyen further discloses that each proppant aggregate may comprise degradable particles ([0050] – [0056]).
Claim 2. Nguyen discloses The micromesh proppant composition of claim 1, wherein the temporary binding agent comprises at least one of: a water-soluble polymer, a temperature-sensitive binder, a pH-sensitive binder, an electrically sensitive binder, a pressure-sensitive binder, or a chemically degradable binder ([0032]; [0041] – [0043]; [0046] – [0048]).
Claim 4. Nguyen discloses The micromesh proppant composition of claim 1. Regarding the limitation: wherein the super-particles have a size range from about 4 mesh to about 140 mesh, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the size of the proppant aggregates in Nguyen to the range as claimed, because it has been held that “where 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).
Claim 5. Nguyen discloses The micromesh proppant composition of claim 1, wherein the predetermined conditions comprise at least one of: exposure to water, exposure to a specific temperature range, exposure to a specific pH range, exposure to an electrical current, exposure to a specific pressure range, or exposure to a chemical breaking agent ([0052]; [0055]).
Claim 6. Nguyen discloses The micromesh proppant composition of claim 1, further comprising a breaking agent configured to chemically cleave or dissolve the temporary binding agent ([0063]).
Claim 7. Nguyen discloses The micromesh proppant composition of claim 6, wherein the breaking agent comprises an oxidizing agent or an enzyme ([0063]).
Claim 8. Nguyen discloses The micromesh proppant composition of claim 1, wherein the super-particles are configured to disintegrate over a configurable period of time when exposed to wellbore conditions ([0050] – [0056]).
Claim 9. Nguyen discloses The micromesh proppant composition of claim 1. Regarding the limitation: wherein the super-particles are configured to reduce dust generation during handling of the proppant composition compared to the micromesh structural state, since Nguyen discloses the same composition as claimed, the composition would inherently act in the same manner as claimed, (i.e., it would be capable of reducing dust generation). If there is any difference between the composition of Lesko and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “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 Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Parker et al. (US 2006/0048943); Nguyen et al. (US 2019/0106619).
Parker et al. (US 2006/0048943) discloses a slurry comprising a fracturing fluid and proppant particulates coated with an adhesive substance (Abstract; [0008]); wherein the adhesive substance is a sticky or tacky material that encourages the formation of aggregates of proppant particulates ([0022]; [0024]); and wherein the proppant particulates have a size in the range of from about 2 to about 400 mesh ([0033]). Parker discloses that the slurry may further comprise degradable material(s) that degrade in situ, causing the degradable material to be substantially removed in order to leave behind voids in the proppant pack ([0043] – [0046]).
Nguyen et al. (US 2019/0106619) discloses a proppant composition comprising: proppant particulates and degradable thermoplastic particulates; wherein the proppant has a particle size of about 4 to about 100 mesh; and wherein the proppant composition further comprises at least one binding agent selected from the group consisting of a curable resin, a tackifying agent, or a combination thereof. Nguyen discloses allowing the proppant composition to form a proppant pack, wherein the degradable thermoplastic particulates are degradable to generate voids in the proppant pack.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Crystal J. Lee whose telephone number is (571)272-6242. The examiner can normally be reached M-F from 8:00am - 5:00pm.
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/CRYSTAL J LEE/Primary Examiner, Art Unit 3674
1 Examiner note: 140 mesh – 635 mesh = 105 microns – 8.5 microns