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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. The Examiner notes the following references as included in the written description; each reference, however, has not been cited on the information disclosure statement of record, nor has a copy thereof been provided. As such, they have not been considered.
Li et al. on page 2, lines 19-21;
Onaizi et al. on page 23, lines 15-19;
Kumar et al. on page 24, lines 20-23;
Park et al. on page 24, line 23- page 25, line 3;
Zhong et al. on page 27, line 20-22; and
Abdelhameed et al. on page 28, lines 14-16.
Specification
The attempt to incorporate subject matter into this application by reference to:
Onaizi et al. on page 1, lines 5-10;.
Onaizi et al. on page 23, lines 15-19;
Kumar et al. on page 24, lines 20-23;
Park et al. on page 24, line 23- page 25, line 3;
Zhong et al. on page 27, line 20-22; and
Abdelhameed et al. on page 28, lines 14-16
is ineffective because each of the noted documents are publications. The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 and 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,270,266 (‘266 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by the method steps previously issued in ‘266; although instant independent claim 1 differs in the mixing step by further including barite, bentonite and caustic soda with the organic liquid and cobalt-imidazolate material, such is provided for in dependent claim 6 as issued in ‘266, and, as such, the provision thereof would have been obvious to one having ordinary skill in the art in view of the limitations as issued in ‘266.
Claims 1-9 and 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,428,590 (‘590 herein) in view of Zhang et al. (CN 115406937 A – cited and provided by Applicant with parent application 18/648003). ‘590 recites a method of removing hydrogen sulfide from a subterranean geological formation having steps that include and encompass each of the limitations instantly recited by the present application; the material with which the hydrogen sulfide is scavenged, however, is recited therein as a zinc-imidazolate material, ZIF-8, as opposed to the instantly claimed cobalt-imidazolate material, ZIF 67. Zhang et al., however, teaches metal organic framework structures ZIF-8 and ZIF-67 as both having a large specific surface area, high porosity and excellent supporting structure that allows for and improves the sensitivity and selectivity to hydrogen sulfide gas. Since ZIF-8 and ZIF-67 are known alternatives for producing the same result when used in the presence of hydrogen sulfide, it would have been obvious to one having ordinary skill in the art to try the instantly claimed ZIF-67 in place of the ZIF-8 of ‘590 in order to yield the predictable result of scavenging hydrogen sulfide therewith.
Allowable Subject Matter
Claims 1-9 and 11-20 would be allowed upon filing of a terminal disclaimer with regard to the double patenting rejection set forth above.
US 2024/0018406 and US 11,708,517 (cited by Applicant) each disclose a method of drilling wherein a ZIF-67 is suspended in a drilling fluid for scavenging of hydrogen sulfide within a subterranean formation therewith; the reference suggests wherein the drilling fluid includes an aqueous solvent, which may include an oil-in-water emulsion, as well as wherein the pH may be basic. The reference, however, fails to disclose, at least wherein the ZIF-67 is mixed with an organic liquid comprising one or more unsaturated oils, and, wherein such forms an oil-based mud, as well as wherein the basic pH is specifically 10 or more. Additionally, the reference was published on January 18, 2024, and therefore is a disclosure made 1 year or less before the effective filing date of the claimed invention and subject to the 102(b)(1) exceptions for prior art by an inventor or joint inventor; additionally, 102(b)(2)(A) exceptions apply.
US 2024/0198273 (cited by Applicant) discloses the use of ZIF-67 in removal of hydrogen sulfide; such, however, is not disclosed as being used as part of a drilling fluid.
US 2024/0117238 (cited by Applicant) discloses various zeolitic imidazolate frameworks used in well treatments for asphaltene inhibition, wherein ZIF-67 is disclosed as used as a carrier for the asphaltene inhibiting composition. The reference, however, fails to disclose, teach and/or suggest such as used for hydrogen sulfide removal, as well as a pH of the fluid in which the ZIF 67 is injected; additionally, the reference suggests 5-95 weight percent of the carrier material., i.e., ZIF-67, as well as circulation of a drilling fluid suspension to form an oil-based mud therein.
CN 113389533 A (cited and provided by Applicant) discloses ZIF 67 or ZIF 8 used to capture carbon dioxide and injected into a subterranean formation with alcohol based fracturing fluids.
US 2020/0190394 (cited by Applicant) discloses porous substrates used in well treatment wherein a scale inhibitor is leached therefrom and the substrate is subsequently used as a sponge for hydrogen sulfide absorption.
As such, the prior art fails to sufficiently disclose, teach and/or suggest the method as instantly claimed.
Conclusion
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached on 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
02/23/26