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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "110" and "120" have both been used to designate “doors”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper.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).
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.
The only difference between claim 1 and the reference is the size of the bubbles (in as much as Koide et al. is using microbubbles, examiner notes that the written description of the instant application also uses a percentage of microbubbles (see at least 2:10)
Miller et al. discloses a method of carbon sequestration in conjunction with oil and gas operations, comprising treating treated water from a hydraulic fracturing operation with nanobubbles (see, 0058), and further discloses that the efficiency of the oxidation of contaminants is dependent on the size of the bubbles.
One of ordinary skill in the art, prior to the effective filing, would have obviously considered incorporating the different sizes of bubbles into the method with a reasonable expectation of success, as this provides for optimal removal of contaminants from the fluid stream.
As concerns claim 2, Koide et al. discloses the method of claim 1, further comprising the step of, after the step of injecting, introducing at least a portion of the supersaturated produced fluid stream into one or more subsurface formations 50.
As concerns claim 3, Koide et al. discloses the method of claim 2, further comprising the step of sequestering carbon in the one or more subsurface formations 50 into which the supersaturated produced fluid stream has been introduced (the method of Koide et al. would obviously be capable of performing this step).
As concerns claim 9, Miller et al. discloses the method of claim 1, further comprising the step of generating carbon dioxide nanobubbles (0058).
As concerns claim 10, Miller et al. discloses the method of claim 9, wherein the carbon dioxide nanobubbles are generated, in whole or in part, in a moveable trailer (0055).
As concerns claim 11, Miller et al. discloses the method of claim 1, further comprising the step of: prior to the step of supersaturating, injecting ozone or an ozone-oxygen mixture into the produced fluid stream (0058).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koide et al., as modified above, and further in view of US 2008/0237141 A1 (Kerfoot).
As concerns claim 12, the combination discloses the method of claim 1, but lacks to expressly disclose the method further comprising the step of: prior to the step of supersaturating, injecting nitrogen or a nitrogen-rich gas into the produced fluid stream.
Kerfoot discloses a method for hydrocarbon recovery and treatment of fracturing water further comprising the step of injecting nitrogen or a nitrogen-rich gas into the produced fluid stream (see at least 0184), and additionally discloses that this can facilitate the production of very small nano-bubbles (Id.).
One of ordinary skill in the art, prior to the effective filing, would have obviously considered incorporating the nitrogen injection step into the method with a reasonable expectation of success, as this provides the desirable result of facilitating nano-bubble formation as well as accommodation of different chemical contaminants present in the fracturing fluid.
Claim(s) 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Koide et al., and further in view of International Publication Number WO 2014/138011 (Holland).
As concerns claims 4-8, the combination lacks to expressly disclose the claimed well types, nevertheless Holland discloses a fluid conditioning method for fluid conditioning that includes recycling the fluid for fracturing, use in a waterflood operation, or injection into an injection well or a disposal well (0099, 00111, 0114, 00240 et seq.).
One of ordinary skill in the art, prior to the effective filing, would have considered using the fluid in a fracturing operation, a waterflood operation, or disposing of the fluid in an injection or disposal well with a reasonable expectation of success, as these would ordinarily be available in oil and gas operations depending on a particular application or location.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,246,975 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent, drawn to the same subject matter, obviously encompass the limitations of the pending claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES G. SAYRE whose telephone number is (571)270-7045. The examiner can normally be reached from 9:30-6:00 Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole A. Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES G. SAYRE
Primary Examiner
Art Unit 3679
/JAMES G SAYRE/ Primary Examiner, Art Unit 3679