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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 03/06/26 is acknowledged.
Claim 33 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/06/26.
Drawings
Fig. 1A and 1B are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 100A and 100B, respectively. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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.
Fig. 2 is objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 210. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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 abstract of the disclosure is objected to because it begins with the phrase “Described are,” i.e., a phrase that is implied. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The attempt to incorporate subject matter into this application by reference to PCT/US2022/027116 in [0016] and [0075] is ineffective because the reference is to a foreign application. 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).
Information Disclosure Statement
The listing of references in the specification, for example, Chen et al. in [0097], along with each of the references listed in [0211]-[0264], 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.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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).
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).
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 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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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).
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).
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).
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 and provided by Applicant).
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Carbon dioxide provides evidence of the solubility of carbon dioxide as 1.45 g/L.
WO 2005115598 A2 discloses a supersaturated liquid contacted with an external fluid, wherein gas dissolved in the liquid is released in the form of microbubbles for the purpose of promoting dissolution of the gas in the external fluid to aid in flocculation and flotation of any suspended particles therein.
US 11591268 discloses nanobubble infused liquid of water infused with a desired concentration of carbon dioxide mixed into a dry concrete.
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.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
05/28/26
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