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 .
Applicant’s Response
In the response date 02/26/2026, the Applicant amended claims 1 and 3, added new claims 7-11, and argued against the rejections in the Non-Final Rejection dated 08/28/2025.
In light of the claim amendments to claims 1 and 3, the examiner withdraws the claim objections previously set forth in the Non-Final office action dated 08/28/2025.
Upon further consideration of the 112(b) rejection regarding claim 4 “wherein the composition contains no living microorganisms” and the Applicant’s arguments (pages 5-6 dated 02/06/2026) as well as paragraph [0047] of the Specification, the examiner concludes the Applicant’s arguments are persuasive and therefore the examiner withdraws the previous 112(b) rejection previously set forth in the office action dated 08/28/2025.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Benoit et al (U.S Patent 10,023,787) (“Benoit”) in view of Duran (U.S Pub 2017/0044586) (“Duran”).
Regarding Claim 1, Benoit discloses a method of treating produced water, flow-back, brine and/or fracking fluids (Col 4, lines 35-49; Col 5, lines 1-20 [Wingdings font/0xE0] Benoit discloses methods of treating produced water fluids), having dissolved solids, hydrocarbons and/or other impurities therein (Abstract; Col 3, lines 30-50; Col 5, lines 20-35 [Wingdings font/0xE0] Benoit discloses wherein the produced treatment fluids comprises hydrocarbons), wherein the method comprises:
contacting, by mixing (Col 5, lines 36-48 [Wingdings font/0xE0] Benoit discloses wherein the mixture may be formed by any process; any degree of mixing may be sufficient), a composition comprising a surfactant (Col 4, lines 24-35) with the produced water, flow- back, brine and/or fracking fluids (Col 4, lines 35-49; Col 5, lines 1-20 [Wingdings font/0xE0] Benoit discloses methods of treating the produced water and/or flow-back fluids) for a time period until the dissolved solids, hydrocarbons and/or other impurities separate therefrom (Figure 1; Col 3, lines 21-49; Col 5, lines 21-36 and lines 36-57; Col 7, lines 15-25 [Wingdings font/0xE0] Benoit discloses wherein in some embodiments a hydrocarbons 102C may be pretreated with one or more surfactants 102A before a treatment fluid 102B (i.e., the produced water, flow-back, brine and/or fracking fluid) is added to create a mixture. Benoit further discloses wherein formation materials 102D used with the present disclosure are acquired from a subterranean formation to be treated with a surfactant. These formation materials consist of unconsolidated sand, rock samples, clay). Although Benoit fails to expressly disclose “mixing continuously,” since Benoit discloses wherein a high speed mixer may be used and/or a low shear tumbling or hand shaking is used and any degree of mixing is sufficient, it would be obvious to one of ordinary skill in the art to contact the composition comprising a surfactant with the produced water by mixing continuously as claimed by the Applicant for a time period until the dissolved solids, hydrocarbons, and/or other impurities separate therefrom; and
recovering the separated dissolved solids, hydrocarbons and/or other impurities (Col 1, lines 27-32; Col 5, lines 21-36 [Wingdings font/0xE0] Benoit discloses the use of surfactants to improve treatment fluids and hydrocarbon recovery operations).
Benoit, however, fails to expressly disclose wherein the surfactant is specifically a glycolipid biosurfactant.
Duran teaches the methods above comprising a surfactant that is specifically a glycolipid biosurfactant (Abstract; Page 1, paragraph [0010]; paragraphs [0021] and [0028] [Wingdings font/0xE0] Duran teaches glycolipid biosurfactants such as sophorolipids) for the purpose of being used as a flowback additive in a natural gas and/or crude oil operation in order to improve the recovery of the treatment fluids introduced into a formation downhole (Abstract; Page 1, paragraphs [0010] and [0028]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Benoit to include a surfactant that is specifically a glycolipid biosurfactant, as taught by Duran, because doing so would utilize the surfactant as a flowback additive in order to improve the recovery of the treatment fluids introduced into a formation downhole.
Regarding Claim 2, Benoit discloses the method of claim 1, further comprising the step of injecting the produced water, flow-back, brine and/or fracking fluids (Col 4, lines 35-49; Col 5, lines 1-20) into an injection well (Abstract; Col 10, lines 18-48; Col 11, lines 8-22 [Wingdings font/0xE0] Benoit discloses methods for using the well treatment fluids with the present disclosure in order to perform a variety of subterranean operations such as drilling operations, fracturing treatments, etc. The well treatment fluids are introduced into a wellbore that penetrates subterranean formations, wherein the wellbore can be an injection well as claimed herein).
Regarding Claim 3, Duran teaches the method of claim 1, wherein the glycolipid biosurfactant is selected from the group consisting of sophorolipids, rhamnolipids, trehalose lipids and mannosylerythritol lipids (Abstract; Page 1, paragraph [0010]; paragraphs [0021] and [0028] [Wingdings font/0xE0] Duran teaches glycolipid biosurfactants such as sophorolipids).
Regarding Claim 4, Benoit, in view of Duran, discloses/teaches the method of claim 1, wherein the composition contains no living microorganisms (Benoit discloses a variety of surfactants and does not mention living microorganisms being present. Concerning Duran, the sophorolipids relied upon are considered to be separate from any living microorganism that produces them and are therefore not a part of the "composition," similar to claimed invention - see 112b rejection above.).
Regarding Claim 5, Benoit discloses the method of claim 1, wherein the composition further comprises an alcohol, glycol ether, and/or an acid (Abstract; Col 4, lines 31-35 and lines 49-65 [Wingdings font/0xE0] Benoit discloses wherein the composition further comprises co-solvents like alcohols and/or acids).
Regarding Claim 6, Benoit discloses the method of claim 1, comprising separating one or more impurities selected from sand, scale, silt, rust, clay, sludge, dissolved solids, asphaltenes and paraffins (Col 3, lines 21-49 [Wingdings font/0xE0] Benoit discloses wherein the formation materials used with the present disclosure are acquired from a subterranean formation to be treated with a surfactant. These formation materials consist of unconsolidated sand, rock samples, clay).
Regarding Claim 7, Benoit discloses the method of claim 1, wherein the period of time is hours (Col 6, lines 3-9). Although silent to wherein the period of time “is between 48 hours and 72 hours,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a period of time 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).
Regarding Claim 8, Benoit discloses the method of claim 1, further comprising:
prior to mixing continuously (Col 5, lines 36-48 [Wingdings font/0xE0] Benoit discloses wherein the mixture may be formed by any process; any degree of mixing may be sufficient), allowing the composition to rest for a second period of time (Col 6, lines 3-9 and lines 27-45 [Wingdings font/0xE0] Benoit discloses selecting specific surfactants based off of the time period for how long it takes for the mixtures to separate).
Regarding Claim 9, Benoit discloses the method of claim 8, wherein the second period of time is hours (Col 6, lines 3-9). Although silent to wherein the second period of time “is between 8 hours and 24 hours,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a second period of time 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).8 hours and 24 hours (Col 6, lines 3-9).
Regarding Claim 10, Benoit discloses a method of treating produced water, flow-back, brine, and/or fracking fluids (Col 4, lines 35-49; Col 5, lines 1-20 [Wingdings font/0xE0] Benoit discloses methods of treating produced water fluids), having dissolved hydrocarbons and solids and/or other impurities therein (Abstract; Col 3, lines 30-50; Col 5, lines 20-35 [Wingdings font/0xE0] Benoit discloses wherein the produced treatment fluids comprises hydrocarbons), wherein the method comprises:
contacting a composition comprising a surfactant (Col 4, lines 24-35) with the produced water, flow-back, brine and/or fracking fluids (Col 4, lines 35-49; Col 5, lines 1-20 [Wingdings font/0xE0] Benoit discloses methods of treating the produced water and/or flow-back fluids) for a time period until the dissolved hydrocarbons and solids and/or other impurities separate therefrom (Figure 1; Col 3, lines 21-49; Col 5, lines 21-36 and lines 36-57; Col 7, lines 15-25 [Wingdings font/0xE0] Benoit discloses wherein in some embodiments a hydrocarbons 102C may be pretreated with one or more surfactants 102A before a treatment fluid 102B (i.e., the produced water, flow-back, brine and/or fracking fluid) is added to create a mixture. Benoit further discloses wherein formation materials 102D used with the present disclosure are acquired from a subterranean formation to be treated with a surfactant. These formation materials consist of unconsolidated sand, rock samples, clay); and
recovering the separated dissolved hydrocarbons and solids and/or other impurities, wherein solids and/or impurities are mechanically removed subsequently to removing water and hydrocarbons (Col 1, lines 27-32; Col 5, lines 21-36 [Wingdings font/0xE0] Benoit discloses the use of surfactants to improve treatment fluids and hydrocarbon recovery operations).
Benoit, however, fails to expressly disclose wherein the surfactant is specifically a glycolipid biosurfactant.
Duran teaches the methods above comprising a surfactant that is specifically a glycolipid biosurfactant (Abstract; Page 1, paragraph [0010]; paragraphs [0021] and [0028] [Wingdings font/0xE0] Duran teaches glycolipid biosurfactants such as sophorolipids) for the purpose of being used as a flowback additive in a natural gas and/or crude oil operation in order to improve the recovery of the treatment fluids introduced into a formation downhole (Abstract; Page 1, paragraphs [0010] and [0028]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Benoit to include a surfactant that is specifically a glycolipid biosurfactant, as taught by Duran, because doing so would utilize the surfactant as a flowback additive in order to improve the recovery of the treatment fluids introduced into a formation downhole.
Regarding Claim 11, Benoit discloses a method of treating produced water, flow-back, brine, and/or fracking fluids, having dissolved solids, hydrocarbons and/or other impurities therein (Col 4, lines 35-49; Col 5, lines 1-20 [Wingdings font/0xE0] Benoit discloses methods of treating produced water fluids), wherein the method comprises:
contacting a composition comprising a surfactant (Col 4, lines 24-35) with the produced water, flow-back, brine and/or fracking fluids (Col 4, lines 35-49; Col 5, lines 1-20 [Wingdings font/0xE0] Benoit discloses methods of treating the produced water and/or flow-back fluids) for a time period until the dissolved solids, hydrocarbons and/or other impurities separate therefrom (Figure 1; Col 3, lines 21-49; Col 5, lines 21-36 [Wingdings font/0xE0] Benoit discloses contacting the produced water with a surfactant in order to separate a mixture comprising a treatment fluid #102B and hydrocarbons #102C. Benoit further discloses wherein the formation materials used with the present disclosure are acquired from a subterranean formation to be treated with a surfactant. These formation materials consist of unconsolidated sand, rock samples, clay);
recovering the produced water, flow-back, brine, and/or fracking fluids (Col 1, lines 27-32; Col 5, lines 21-36 [Wingdings font/0xE0] Benoit discloses the use of surfactants to improve treatment fluids and hydrocarbon recovery operations);
recovering the separated dissolved solids, hydrocarbons, and/or other impurities (Col 1, lines 27-32; Col 5, lines 21-36 [Wingdings font/0xE0] Benoit discloses the use of surfactants to improve treatment fluids and hydrocarbon recovery operations);
subsequent to recovering the separated dissolved solids, hydrocarbons, and/or other impurities, injecting the produced water, flow-back, brine, and/or fracking fluids into an injection well (Col 1, lines 27-32; Col 5, lines 21-36; Col 10, lines 47 [Wingdings font/0xE0] Benoit discloses methods of recycling wherein a separated produced hydrated fracturing fluid is used to fracture a formation again).
Benoit, however, fails to expressly disclose wherein the surfactant is specifically a glycolipid biosurfactant.
Duran teaches the methods above comprising a surfactant that is specifically a glycolipid biosurfactant (Abstract; Page 1, paragraph [0010]; paragraphs [0021] and [0028] [Wingdings font/0xE0] Duran teaches glycolipid biosurfactants such as sophorolipids) for the purpose of being used as a flowback additive in a natural gas and/or crude oil operation in order to improve the recovery of the treatment fluids introduced into a formation downhole (Abstract; Page 1, paragraphs [0010] and [0028]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Benoit to include a surfactant that is specifically a glycolipid biosurfactant, as taught by Duran, because doing so would utilize the surfactant as a flowback additive in order to improve the recovery of the treatment fluids introduced into a formation downhole.
Response to Arguments
Applicant’s arguments filed 02/26/2026 have been fully considered but are not persuasive.
The applicant argues wherein the combination of references Benoit and Duran fail to disclose and/or teach “contacting, by mixing continuously, a composition comprising a glycolipid biosurfactant with the produced water, flow-back, brine and/or fracking fluids for a time period until the dissolved solids, hydrocarbons and/or impurities separate therefrom,” as now recited by Independent claims 1, 10 and 11. The Applicant states wherein reference Benoit only describes any separation as subsequent to mixing and does not disclose “contacting, by mixing continuously, a composition…until…separate.”
The examiner respectfully disagrees.
Upon further search and consideration of the prior art references, the Examiner concludes the Applicant’s arguments are unpersuasive. Primary reference Benoit discloses a method of treating produced water, flow-back, brine and/or fracking fluids (Col 4, lines 35-49; Col 5, lines 1-20 [Wingdings font/0xE0] Benoit discloses methods of treating produced water fluids), having dissolved solids, hydrocarbons and/or other impurities therein (Abstract; Col 3, lines 30-50; Col 5, lines 20-35 [Wingdings font/0xE0] Benoit discloses wherein the produced treatment fluids comprises hydrocarbons), wherein the method comprises contacting, by mixing (Col 5, lines 36-48 [Wingdings font/0xE0] Benoit discloses wherein the mixture may be formed by any process; any degree of mixing may be sufficient), a composition comprising a surfactant (Col 4, lines 24-35) with the produced water, flow- back, brine and/or fracking fluids (Figure 1; Col 3, lines 21-49; Col 5, lines 21-36 and lines 36-57; Col 7, lines 15-25 [Wingdings font/0xE0] Benoit discloses wherein in some embodiments a hydrocarbons 102C may be pretreated with one or more surfactants 102A before a treatment fluid 102B (i.e., the produced water, flow-back, brine and/or fracking fluid) is added to create a mixture. Benoit further discloses wherein formation materials 102D used with the present disclosure are acquired from a subterranean formation to be treated with a surfactant. These formation materials consist of unconsolidated sand, rock samples, clay). Although Benoit fails to expressly disclose “mixing continuously,” since Benoit discloses wherein a high speed mixer may be used and/or a low shear tumbling or hand shaking is used and any degree of mixing is sufficient, it would be obvious to one of ordinary skill in the art to contact the composition comprising a surfactant with the produced water by mixing continuously as claimed by the Applicant for a time period until the dissolved solids, hydrocarbons, and/or other impurities separate therefrom. Reference Benoit further emphasizes wherein “although the methods of the present disclose may be described or claimed in a particular sequential order, such steps may be performed in different orders to select a surfactant for treating a subterranean formation; any sequence or order claimed does not necessarily indicate a requirement that the steps be performed in that order” (Col 11, lines 35-47).
With regards to the glycoplid biosurfactant, the examiner brings in secondary reference Duran to teach the methods above comprising a surfactant that is specifically a glycolipid biosurfactant (Abstract; Page 1, paragraph [0010]; paragraphs [0021] and [0028] [Wingdings font/0xE0] Duran teaches glycolipid biosurfactants such as sophorolipids) for the purpose of being used as a flowback additive in a natural gas and/or crude oil operation in order to improve the recovery of the treatment fluids introduced into a formation downhole (Abstract; Page 1, paragraphs [0010] and [0028]). It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Benoit to include a surfactant that is specifically a glycolipid biosurfactant, as taught by Duran, because doing so would utilize the surfactant as a flowback additive in order to improve the recovery of the treatment fluids introduced into a formation downhole.
As a result, in light of the arguments present, the rejection stands as previously set forth.
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 ASHISH K VARMA whose telephone number is (571)272-9565. The examiner can normally be reached Monday-Friday 9:30-5:30pm, Telework Mondays and Fridays.
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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.
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/ASHISH K VARMA/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674
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