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 were received on 02/25/25. These drawings are accepted in view of Applicant’s specification amendments.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5, 6, 14, 15, 21, 28 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patton (US 2021/0261451 – cited previously).
With respect to independent claim 1, Patton discloses a method comprising:
determining a target composition of an aqueous fluid for use in a nanobubble solution of a gas at a specified temperature and a specified pressure ([0048], wherein the target composition is carbon dioxide in the form of nanobubbles; [0038], wherein the temperature of the produced water is disclosed; [0039], wherein the formation of nanobubbles is dependent on the pressure and temperature of the water; [0041], wherein the temperature of the water is decreased);
preparing the aqueous fluid according to the target composition ([0041]-[0046]);
mixing the gas 520 in the aqueous fluid 522 to establish a supersaturated solution of the gas in the aqueous fluid at the specified temperature and the specified pressure ([0045]); and
subjecting the gas and the aqueous fluid to a bubble generation process to establish a dispersion of nanobubbles of the gas in the aqueous fluid 540 at the specified temperature and the specified pressure ([0045]).
With respect to dependent claim 2, Patton discloses wherein the gas is carbon dioxide ([0038]). Carbon dioxide has a solubility in water less than 2 g/L at standard temperature and pressure (see evidence in Conclusion of previous office action).
With respect to dependent claim 3, Patton discloses wherein the specified temperature is greater than 0oC and less than a boiling point of the aqueous fluid at the specified pressure ([0038]; [0041]).
With respect to dependent claim 5, Patton discloses wherein the dispersion of nanobubbles of gas in the aqueous fluid exhibits a supersaturation amount greater than that of the supersaturated solution of the gas in the aqueous fluid ([0039]).
With respect to dependent claim 6, Patton discloses wherein the dispersion of nanobubbles of the gas in the aqueous fluid exhibits a higher intensity and/or faster kinetics of mineral dissolution and/or precipitation than the supersaturated solution of the gas in the aqueous fluid ([0011], wherein carbon dioxide in nanobubble form will itself help prevent scaling; [0046]; [0048]).
With respect to dependent claim 14, Patton discloses wherein the aqueous fluid comprises one or more salts ([0003]; [0035]; [0037]; wherein it is disclosed produced water, i.e., the aqueous fluid, contains salts).
With respect to dependent claim 15, Patton discloses wherein the aqueous fluid comprises an additive selected from the group as claimed (claims 10 and 20, wherein ozone is an additive in the aqueous fluid and is provided as nano-bubbles, claims 17-19, wherein nitrogen is added as nano-bubbles, i.e., nanoparticles).
With respect to dependent claim 21, Patton discloses wherein the bubble generation process comprises one as claimed ([0045], wherein nanobubble generator 530 is used).
With respect to dependent claims 28 and 31, Patton discloses injecting the dispersion of nanobubbles into a subterranean reservoir, and, further, wherein the dispersion of nanobubbles is subjected to a mineralization process in the subterranean reservoir to transform at least a portion of the gas to a solid mineral in the subterranean reservoir ([0046]; [0048]; [0050]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 4, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Patton.
With respect to dependent claim 4, Patton discloses wherein the process of forming nanobubbles is dependent upon the temperature and pressure of the water ([0039]); the reference further provides for the provision of a super-saturated concentration of carbon dioxide in the water at such temperature and pressure ([0039]; [0045]). Although silent to the specific pressure as within the range as claimed, since the reference suggests a temperature of the water ([0038]), and, further, specifies wherein such is decreased during the process ([0041]), along with an end result of a super-saturated concentration of carbon dioxide nanobubbles therein, one having ordinary skill in the art would recognize a specific pressure value within the extensive range as claimed as suitable for forming such a super-saturated carbon dioxide concentration of nanobubbles since 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). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed pressure range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the method of Patton clearly discloses the generation of the nanobubbles depends upon the pressure and temperature of the water, as well as wherein a super-saturated concentration of carbon dioxide in the water is indeed achieved with a produced water having a temperature, one of ordinary skill in the art would recognize the optimal pressure associated therewith, as it does not appear that achieving a super-saturated concentration of carbon dioxide in the water would be considered an unexpected result of a pressure within the range as instantly claimed, and, thus one of ordinary skill in the art would recognize the optimal pressure associated therewith.
With respect to dependent claim 9, Patton discloses wherein the nanobubble generator generates nanobubbles ([0045]). The reference, however, fails to explicitly disclose the size thereof. The Examiner notes, by definition, nanoparticles typically have a size of less than 1000 nanometers in order to be considered such. As such, it is the position of the Office that when generating nanobubbles in the method of Patton, to provide for such as having a size within the extensive range of 1 nm to 1000 nm as claimed in order to provide a nanobubble that is indeed nano-sized. One having ordinary skill would recognize the optimal nanobubble size to employ for the methods as disclosed therein since 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). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed nanobubble size range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the nanobubbles of Patton are indeed capable of being injected into a subterranean formation for capture of carbon dioxide therein, it does not appear that such would be considered an unexpected result of using nanobubbles having a size within the range as instantly claimed, and, as such, the determination of optimal nanobubble size would be achievable through routine experimentation in the art.
With respect to dependent claim 10, Patton discloses wherein the use of nanobubbles allows for much higher concentrations of carbon dioxide to be introduced into the well, allowing for super-saturated concentrations therein ([0039]; [0045]). Although silent to a particular concentration associated therewith, it would have been obvious to one having ordinary skill in the art to provide for a super-saturated concentration of carbon dioxide in the aqueous fluid in an amount in the extensive range as claimed in order to create a super-saturated concentration of carbon dioxide therein for subsequent injection and capture in a subterranean formation since 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). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed concentration as critical, as further exemplified by the extensiveness thereof, and it is unclear if any unexpected results are achieved by providing for such. Since the nanobubbles of Patton are injected in a super-saturated concentration into a subterranean formation for capture of carbon dioxide therein, it does not appear that such would be considered an unexpected result of providing for a concentration of nanobubbles within the range as claimed, and, as such, the determination of optimal nanobubble concentration would be achievable through routine experimentation in the art.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Patton as applied to claim 1 above, and further in view of Grieco et al. (US 2023/0112608 – cited previously).
Patton discloses the method as set forth above with respect to claim 1, wherein the gas comprises carbon dioxide ([0039]); it is further suggested wherein an inert gas such as nitrogen may be added thereto (claims 17-19). The reference, however, fails to disclose wherein the gas comprises a hydrocarbon gas as claimed. Grieco et al. teaches nanogas dispersions for injection into a subterranean formation (abstract) wherein nanobubbles of such nanogas dispersions may include nitrogen, carbon dioxide, methane (i.e., a hydrocarbon gas), or combinations thereof ([0065]); effective amounts of one or more nanogas dispersions may be injected into a subterranean formation to target hydrocarbons therein ([0092]). It would have been obvious to one having ordinary skill in the art to try forming nanobubbles in the method of Patton with a hydrocarbon gas such as methane as nanobubble dispersions thereof are capable of being formed in the same manner as carbon dioxide nanobubble dispersions and can be injected into subterranean formations, and, as such, one of ordinary skill in the art would recognize the ability to form such in method as suggested by Patton.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Patton as applied to claim 1 above, and further in view of Yee (US 10337304 – cited previously).
With respect to dependent claim 18, Patton discloses the method as set forth above with respect to claim 1, wherein carbon dioxide is introduced into the produced water ([0039]); it is further disclosed wherein such produced water may include salts ([0003]; [0004]; [0035]; [0037]). The reference further suggests wherein ozone, disinfectants or other additives into the produced water ([0005]). The reference, however, fails to explicitly disclose determining an ionic composition or strength of the aqueous fluid as claimed. Yee teaches wherein the solubility of carbon dioxide in water is suppressed in the presence of high sodium chloride concentrations (col. 13, l. 29-31; Fig. 5). As such, it would have been obvious to one having ordinary skill in the art to determine an ionic strength/composition of the produced water of Patton for the target composition of the aqueous fluid in order to ensure the desired solubility of the carbon dioxide therein can be achieved.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Patton as applied to claim 1 above, and further in view of Pope et al. (US 2022/0381122 – cited previously).
With respect to dependent claim 22, Patton discloses the method as set forth above with respect to claim 1, wherein carbon dioxide is introduced into the produced water ([0039]); the reference further suggests wherein ozone, disinfectants or other additives into the produced water ([0005]). The reference, however, fails to explicitly disclose determining a target pH for the aqueous fluid as claimed. Pope et al. teaches determining a target pH of an aqueous fluid containing carbon dioxide for sequestration (abstract) for the purpose of avoiding production of insoluble carbonate ions therein and allowing more carbon dioxide to be captured per volume of water ([0023]). It would have been obvious to one having ordinary skill in the art to determine a target pH of the aqueous fluid of Patton in order to avoid production of insoluble carbonate ions therein and enable more carbon dioxide to be captured in the aqueous stream.
Claims 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Patton as applied to claim 1 above, and further in view of Kim et al. (Unraveling the mystery of ultrafine bubbles- cited previously).
With respect to dependent claims 23 and 24, Patton discloses the method as set forth above with respect to claim 1; the reference, however, fails to disclose wherein determining the target composition of the aqueous fluid comprises providing at least the specified temperature, the specified pressure and the identity of the gas to a thermodynamic mode, and, further, wherein the thermodynamic model determines properties of the dispersion including an amount of the gas present in the dispersion as the nanobubbles or wherein the determining the target composition further comprises providing the thermodynamic model identities of the one or more as claimed. Kim et al. teaches methods of forming ultrafine bubbles of a gas in an aqueous fluid by determining a target composition at a specified temperature and pressure wherein a thermodynamic model is used for the purpose of calculating gas molecule partitioning between gaseous and dissolved phases; the gas identity, temperature and pressure are input into an equation, i.e., thermodynamic model, to achieve such a calculation and an amount of gas present in the nanobubble dispersion can be determined therefrom (page 175, right column; page 176, left column; page 177, right column). It would have been obvious to one having ordinary skill in the art to try providing the specified temperature, pressure and gas identity of the method of Patton to a thermodynamic model in order to yield the predictable result of determining properties of the dispersion achievable therewith, thereby enhancing the method by ensuring desired properties are achieved that are suitable for injection in the subsequent steps disclosed by Patton.
With respect to dependent claim 25, it would have been further obvious to one having ordinary skill in the art to provide the identities of any additives to the thermodynamic model in order to ensure the nanobubble dispersion is indeed achievable therewith.
Response to Arguments
Applicant’s amendments made with respect to the specification objections, as set forth in the previous office action, have been fully considered and are persuasive. The specification objections as set forth therein have been withdrawn.
Applicant's arguments with respect to the rejections of claims as anticipated by Patton et al. have been fully considered but they are not persuasive.
Applicant notes claim 1 recites “an aqueous fluid” and “a gas” as distinct components and then requires “determining a target composition” of the aqueous fluid, “preparing the aqueous fluid according to the target composition” and “mixing the gas in the aqueous fluid.”
Applicant asserts Patton does not disclose the first two limitations since Patton instead begins with an existing stream of produced water generated as a byproduct of oil and gas extraction and then introduces carbon dioxide into that existing water stream.
Applicant asserts such does not identify a selected “target composition” of the aqueous fluid and it does not describe “preparing the aqueous fluid” to match such a target composition before gas introduction.
The Examiner first notes, such an order of steps, i.e., preparation of the aqueous fluid before gas introduction is not explicitly required by the claim. For a specific ordering of steps to be followed, Applicant is advised to incorporate terms such as “first,” “second” and “third,” or use phrase such as “subsequent to,” “after,” etc.. As presently written, the steps may be conducted simultaneously.
Applicant asserts none of the cited paragraphs describe determining a target composition of the aqueous fluid as the cited passages describe treatment conditions for an existing produced-water stream.
The Examiner notes, nothing in the claims requires the aqueous fluid to not be an existing produced-water stream. A produced-water stream is indeed considered an aqueous fluid.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., wherein the present Application confirms that “target composition of an aqueous fluid” refers to the makeup of the aqueous phase itself and wherein the specification describes the aqueous fluid as water, seawater…produced water…or combinations thereof,” wherein optional constituents may be included therewith, as described in [0011], [0044] and [0049], and, further, wherein determining the target composition of the aqueous fluid can include determining an ionic composition, ionic strength or target pH as described in [0012]-[0013]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., wherein determining a target composition of an aqueous fluid and preparing that fluid before the gas is mixed into it) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant asserts Patton lacks any disclosure of the claimed activity and instead starts with produced water already generated by the oilfield process.
Nothing in independent claim 1 currently prevents the aqueous fluid from being produced water generated by an oilfield process; produced water is indeed an aqueous fluid. Furthermore, [0011] of the specification as filed suggests wherein the aqueous fluid comprises produced water.
Patton discloses various processes that may be conducted to prepare an aqueous fluid in a manner that provides a target composition for mixing with carbon dioxide in [0041].
Should Applicant consider the target composition of the aqueous fluid encompass determining an ionic composition, ionic strength or target pH as described in [0012]-[0013] of the specification, and wherein preparing the aqueous composition to achieve such require particular additions of additives, and, further, wherein such occur prior to mixing with the gas, clarification of such within the claims is advised.
Applicant asserts the secondary references do not provide for the features not disclosed by Patton, and as such, the rejections should be withdrawn.
Since the arguments with regard to Patton have been addressed and Applicant has provided no further arguments with respect to the individual secondary references, the rejections made with respect thereto are maintained for at least the reasons of record.
Conclusion
THIS ACTION IS MADE FINAL. 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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
09/03/26
Prosecution Insights