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 .
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.
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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Ayasse (US Patent Application Publication No. 2015/0007988).
In reference to claim 1, Ayasse discloses a method of reducing the decline curve in production rate for an existing well in a formation, the method comprising:
a. identifying a producing well 90 (par. 0136) having existing fractures (par. 0138, Fig. 4A) that has a production rate (Fig. 9, either of the curves (b) or (d)), wherein the production rate is at least 20% below an initial production rate for the well (Fig. 9); and wherein the well has a closure pressure (par. 0172);
b. pumping a restimulation liquid (par. 0132) into the existing fractures of the well 90 at a predetermined flow rate and predetermined pressure (par. 0163);
C. whereby, the production rate of the well is increased by not less than 50% (Fig. 9, curves (b) or (d)).
In this embodiment Ayasse does not make clear that the closure pressure of the well is not exceeded. In other embodiments, Ayasse discloses that the closure pressure of the well is not exceeded (par. 0172, “safe (non-fracturing) level of 23,000 kPa”). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to maintain the pressure below the closure pressure with a reasonable expectation of success to avoid creating new fractures in the formation.
In reference to claim 2, Ayasse discloses that there is no perceivable fracturing of the formation (par. 0172, “safe (non-fracturing) level of 23,000 kPa”).
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 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 13 and 19 of U.S. Patent No. 10,731,448. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent entirely anticipate the claims of the present invention.
Response to Arguments
Applicant's arguments filed 7/27/2026 have been fully considered but they are not persuasive.
In reference to claim 1, Applicant argues that the rejection should be withdrawn as Ayasse is directed to fracturing the formation. Applicant cites paragraphs 0021, 0029 and 0136 in support of this argument. Par. 0136 is the only cited paragraph directed to the embodiment cited in the rejection and does not state that fracturing occurs. Applicant also argues that paragraphs 0163 and 0170 disclose creation of new fractures but neither paragraph states that fracturing occurred.
Applicant also argues that Ayasse fails to identify a predetermined flow rate for its gas. This argument is unpersuasive as the claim does not require any specific flow rate.
Last, Applicant argues that Ayasse’s disclosure of “safe (non-fracturing) level of 23,000 kPa” (par. 0172) is not related to the closure pressure of the identified well. The examiner does not agree with this characterization as it appears to be in reference to the fracturing level.
The rejection has been amended to reflect the new claim limitations.
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 BRAD HARCOURT whose telephone number is (571)272-7303. The examiner can normally be reached Monday through Friday, 9am to 6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/BRAD HARCOURT/Primary Examiner, Art Unit 3674
8/24/26
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