DETAILED CORRESPONDENCE
Status of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-25 have been examined in this application. This communication is a Non-Final Rejection in response to the Application filed on March 17, 2025.
Specification/Drawings/Information Disclosure Statement
The submitted Information Disclosure Statement (IDS) does not include all references cited in the specification. The listing of references in the specification 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “16” has been used in the specification to designate both a downhole direction and a first plug or diverter. 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.
The drawings 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: “18”. 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.
Claim Objections
Claims 1-25 are objected to because of the following informalities:
Claim 1 recites the limitation “a fluid barrier” in lines 4-5. As the claim previously recites this feature, replacement of this limitation with -the fluid barrier- is required. Claims 2-25 are also objected to for being dependent on Claim 1.
Claim 8 recites the limitation “towards the surface”. To improve clarity, replacement of this limitation with language such as -to surface- is recommended. Appropriate correction is required.
Claim 18 recites “defined by”. Deletion of this phrase is required to improve clarity of the claim.
Claim 24 recites a grain size distribution. As recited, the claim fails to specify whether the size distribution is before or after swelling. The specification (in at least page 7) describes this size distribution in an “unswelled condition”. To improve clarity, inclusion of language such as “before swelling” or similar is required. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11 & 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 11 recites “wherein the swellable particulates are configured to be substantially unaffected by substances the swellable particulates are expected to encounter during their operational lifetime”. As broadly recited, the scope, metes and bounds of this limitation are unclear.
The term “substantially” is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “substantially” renders the scope of the claim indefinite as it is unclear as to the degree required to be considered “substantially”.
Further, it is unclear what “substantially unaffected” encompasses. Unaffected how? Does this refer to a reaction, swelling, shrinking, degrading, other? It is also unclear what “substances….expected to encounter” encompasses. Does this refer to naturally occurring subterranean materials, injected materials, materials that make up downhole equipment, other? It is unclear what the “substances” are and how they do not affect the particulates. Also, as broadly claimed, “substances” could also include the swelling activator itself, which swells the particulates and thereby affects the particulates; which is also unclear.
It is also unclear what “operational lifetime” refers to. Is this with respect to the operation of creating the fluid barrier, the operation of the well, time in well, time staying swollen, other?
Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim 17 recites “wherein the swelling activator is at least one of water, oil and supercritical fluid”; which allows for the combination of two or more swelling activators. It is unclear how the particulates swell with a combination of the activators. As a non-limiting example, how do particulates swell with water, oil and supercritical fluid? It is also unclear what the term “supercritical fluid” includes and excludes. Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4, 5, 10, 17, 21-23 & 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nguyen et al. (US 2018/0149008).
With respect to Claim 1, Nguyen discloses a method for creating a fluid barrier in a geological formation surrounding a wellbore (Nguyen: Sections [0007]-[0011]), comprising: delivering a plurality of swellable particulates into the wellbore and into a first zone of the formation, the plurality of swellable particulates configured to volumetrically swell to create a fluid barrier in response to exposure to a swelling activator; and exposing the plurality of swellable particulates to the swelling activator in the first zone of the formation to create the fluid barrier and establish a restriction against fluid migration through the first zone (Nguyen: Sections [0025], [0026] & [0041]).
With respect to Claim 2, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses “…comprising delivering the swellable particulates into a first fracture in the first zone” (Nguyen: Sections [0025] & [0026]).
With respect to Claim 4, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses “…performing an operation in a second zone of the geological formation” (Nguyen: Sections [0028] & [0029]).
With respect to Claim 5, Nguyen discloses the method as provided above with respect to Claim 4, and further discloses “…wherein the operation comprises creating a second fracture in the second zone” (Nguyen: Sections [0028] & [0029]).
With respect to Claim 10, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses “…wherein the swellable particulates are non-degradable” (Nguyen: Sections [0043]-[0057]); where Nguyen does not disclose the swellable particulates as necessarily degradable, which is considered to disclose the feature as instantly claimed.
With respect to Claim 17, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses “…wherein the swelling activator is at least one of water, oil and supercritical fluid” (Nguyen: Section [0041]).
With respect to Claim 21, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses “…transporting the swellable particulates through the wellbore and into the first zone with a carrier fluid” (Nguyen: Sections [0025], [0026] & [0081]).
With respect to Claim 22, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses “…wherein the carrier fluid comprises the swelling activator” (Nguyen: Sections [0025], [0026] & [0081]).
With respect to Claim 23, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses “…exposing the swellable particulates to the swelling activator only after the swellable particulates have been delivered into the first zone of the formation” (Nguyen: Section [0041]).
With respect to Claim 25, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses “…wherein delivering the swellable particulates into the wellbore comprises pumping the swellable particulates into the wellbore” (Nguyen: Sections [0011] & [0086]-[0089]).
Claim Rejections - 35 USC § 102/35 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 9 & 11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nguyen et al. (US 2018/0149008).
With respect to Claim 9, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses exposing the swellable particulates to the swelling activator in the first zone to volumetrically swell the particulates (Nguyen: Sections [0007]-[0011], [0025], [0026] & [0041]); which volumetric swelling is considered “to create a region of stress around the first zone of the formation” as instantly claimed and described in at least page 2 of the instant specification. To the extent there is any difference between this feature as disclosed by Nguyen and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the Office may make a rejection under both 35 U.S.C.102 and 103, expressed as a 102/103 rejection. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C.103 and for anticipation under 35 U.S.C.102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430,433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C.102/103 rejection is appropriate for these types of claims as well as for composition claims.
With respect to Claim 11, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses the swellable particulates as effective in creating the fluid barrier until removal is desired (Nguyen: Sections [0007]-[0011], [0025], [0026] & [0041]); which is considered to disclose “wherein the swellable particulates are configured to be substantially unaffected by substances the swellable particulates are expected to encounter during their operational lifetime” as instantly claimed. To the extent there is any difference between this feature as disclosed by Nguyen and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the Office may make a rejection under both 35 U.S.C.102 and 103, expressed as a 102/103 rejection. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C.103 and for anticipation under 35 U.S.C.102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430,433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C.102/103 rejection is appropriate for these types of claims as well as for composition claims.
Claim Rejections - 35 USC § 103
Claims 3, 6-8, 12-16, 18-20 & 24 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2018/0149008).
With respect to Claim 3, Nguyen discloses the method as provided above with respect to Claim 2, and further teaches one or more embodiments where the treatment fluid comprising the swellable particulates is introduced at or above a fracture gradient; and where treatment zones are both fractured and fluidically sealed to enhance complex fracture networks (Nguyen: Sections [0007]-[0011] & [0025]-[0029]); which provides for embodiments where delivering the swellable particulates into a zone creates the one or more fractures. As such, although the reference fails to explicitly disclose the above method steps in combination with “delivering the swellable particulates into the first zone of the formation creates the first fracture”, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to deliver the swellable particulates as instantly claimed, with a reasonable expectation of success, in order to enhance complex fracture networks and/or yield predictable results in fracturing applications.
With respect to Claim 6, Nguyen discloses the method as provided above with respect to Claim 4, and further teaches one or more embodiments where the intervals are treated and intended for the production of fluids (Nguyen: Sections [0008] & [0025]). As such, although the reference fails to explicitly disclose the above method steps in combination with “wherein the operation comprises extracting a formation product from the second zone”, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to extract a formation product from a desired zone, such as the second zone, as instantly claimed, with a reasonable expectation of success, in order to benefit from the treatment and/or yield predictable results in enhanced hydrocarbon production operations.
With respect to Claims 7 & 8, Nguyen discloses the method as provided above with respect to Claim 4, and further teaches one or more embodiments where flow barriers are tailored based on the desired diversion for the operation to enhance complex fracture networks and hydrocarbon production (Nguyen: Sections [0007]-[0011] & [0025]-[0029]). As such, although the reference fails to explicitly disclose the above method steps in combination with “obstructing a fluid flow within the formation from the second zone with the swellable particulates in the first zone” or “wherein the first zone is an upper zone and the method comprises creating the fluid barrier to establish a restriction against fluid migration from the second zone towards the surface”, in a single embodiment, as respectively claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to obstruct/restrict flow as desired by tailored delivery of the swellable particulates, such as respectively claimed, with a reasonable expectation of success, in order to enhance complex fracture networks and/or hydrocarbon production; and/or yield predictable results in fracturing applications.
With respect to Claim 12, Nguyen discloses the method as provided above with respect to Claim 1, and further teaches one or more embodiments “wherein the swellable particulates comprise a coating configured to degrade after a certain duration of time” to enhance complex fracture networks and hydrocarbon production (Nguyen: Sections [0007]-[0011], [0025], [0026], [0043]-[0057] & [0078]). As such, although the reference fails to explicitly disclose the above method steps in combination with this feature, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ swellable particulates comprising a coating as instantly claimed, with a reasonable expectation of success, in order to enhance complex fracture networks and/or hydrocarbon production; and/or yield predictable results in fracturing applications.
With respect to Claim 13, Nguyen discloses the method as provided above with respect to Claim 1, and further teaches one or more embodiments where the swelling of the swellable particulates is adjusted/controlled/tailored, such as by selection of type, size, coating, triggers etc., to enhance complex fracture networks and hydrocarbon production (Nguyen: Sections [0007]-[0011], [0035], [0026], [0042]-[0057] & [0078]), which is considered to teach “wherein the swellable particulates are configured to swell at a certain swell rate in response to exposure to the swelling activator to provide the swellable particulates in a swelled condition after a certain duration of time”. As such, although the reference fails to explicitly disclose the above method steps in combination with this feature, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ swellable particulates configured as instantly claimed, with a reasonable expectation of success, in order to enhance complex fracture networks and/or hydrocarbon production; and/or yield predictable results in fracturing applications.
With respect to Claim 14, Nguyen discloses the method as provided above with respect to Claim 1, and further discloses delivering a plurality of fibre elements into the wellbore and into the first zone (Nguyen: Sections [0025], [0026] & [0058]-[0060]). Nguyen further teaches one or more embodiments where the fibre elements are configured to adhere to one another and/or the swellable particulates to enhance the seal (Nguyen: Sections [0063]-[0076]), which is considered “a web arrangement for constraining movement of the swellable particulates in response to exposure to an adhesion activator” as instantly claimed. As such, although the reference fails to explicitly disclose the above method steps in combination with this feature, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ fibre elements configured as instantly claimed, with a reasonable expectation of success, in order to enhance the seal and/or yield predictable results in fracturing applications.
With respect to Claim 15, Nguyen teaches the method as provided above with respect to Claim 14, and further discloses pumping a fluid comprising the swellable particulates and the fibre elements (Nguyen: Sections [0007]-[0011] & [0025]-[0029]), which is considered to disclose “a pre-mixed state”, and thereby disclose “mixing the swellable particulates with the fibre elements for subsequent delivery into the wellbore in a premixed state”.
To the extent the pumping in Nguyen fails to disclose this feature, it is noted that Nguyen further teaches one or more embodiments where the treatment fluid comprising the swellable particulates and the fibre elements is formulated by mixing prior to delivery downhole in order to enhance complex fracture networks and/or hydrocarbon production (Nguyen: Sections [0007]-[0011], [0089] & [0090]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to mix the swellable particulates with the fibre elements as instantly claimed, with a reasonable expectation of success, in order to enhance complex fracture networks and/or hydrocarbon production; and/or yield predictable results in pumping treatment compositions in subterranean applications.
With respect to Claim 16, Nguyen teaches the method as provided above with respect to Claim 14, and further teaches “…wherein the swelling activator and adhesion activator are different activators” (Nguyen: Sections [0025], [0026], [0041], [0058]-[0060] & [0063]-[0076]).
With respect to Claim 18, Nguyen teaches the method as provided above with respect to Claim 14, and further teaches one or more embodiments where adhesive materials are activated under downhole conditions, such as temperature, to enhance the seal (Nguyen: Sections [0063]-[0080]). As such, although the reference fails to explicitly disclose the above method steps in combination with this feature, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ the adhesion activator as instantly claimed, with a reasonable expectation of success, in order to enhance the seal and/or yield predictable results in fracturing applications.
With respect to Claim 19, Nguyen teaches the method as provided above with respect to Claim 14, and further teaches one or more embodiments where the fibre elements comprise a core-shell configuration to enhance the seal (Nguyen: Sections [0058]-[0080]). As such, although the reference fails to explicitly disclose the above method steps in combination with this feature, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ fibre elements comprising a core-shell configuration as instantly claimed, with a reasonable expectation of success, in order to enhance the seal and/or yield predictable results in fracturing applications.
With respect to Claim 20, Nguyen discloses the method as provided above with respect to Claim 1, and further teaches one or more embodiments where the swellable particulates are configured to comprise or exhibit an adhesive characteristic after absorbing the swelling activator to enhance the seal (Nguyen: Sections [0063]-[0076]). As such, although the reference fails to explicitly disclose the above method steps in combination with this feature, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ swellable particulates configured as instantly claimed, with a reasonable expectation of success, in order to enhance the seal and/or yield predictable results in fracturing applications.
With respect to Claim 24, Nguyen discloses the method as provided above with respect to Claim 1, and further teaches wherein the swellable particulates comprise a grain size distribution that overlaps with the range as instantly claimed, where the size is selected based on factors such as particulate type, expansion size, fracture size etc. to form an effective seal (Nguyen: Sections [0007]-[0011], [0026] & [0042]). As such, although the reference fails to explicitly limit the grain size distribution to the range as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a suitable grain size distribution based on factors such as particulate type, expansion size, fracture size etc., with a reasonable expectation of success, to form an effective seal insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal grain size distribution to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for increasing oil recovery, and a finite number of identified, predictable solutions including injecting a composition comprising swellable particulates sized depending on operational factors as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Nguyen, one of ordinary skill in the art could have pursued a desired grain size distribution, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
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 11-19 & 21-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 7, 16-27 & 29 of copending Application No. 19/112,419 (‘419 hereinafter). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application overlap in scope with those of ‘419 and do not contain any additional limitations that are patentably distinguishable. The instant application discloses a method for creating a fluid barrier comprising the delivery of swellable particulates and fibre elements, which overlaps in scope with ‘419 which discloses a method for creating a fluid barrier comprising the delivery of swellable particulates and fibre elements. Although one or more of the instant claims differ in reciting features separately in distinct claims or in combination within a single claim, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine or separate features in a claim, such as instantly claimed, with a reasonable expectation of success, in order to yield predictable results in creating fluid barriers in a subterranean formation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lecerf et al. (US 2015/0159465) discloses methods employing swellable particulates and/or fibers in fracturing applications in a subterranean formation
Droger et al. (US 2015/0344772) discloses a methods employing swellable particulates and/or fibers in fracturing applications in a subterranean formation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANURADHA AHUJA whose telephone number is (571)272-3067. The examiner can normally be reached Monday through Friday.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674