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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Applicant's submission filed on 04/07/2026 has been entered.
Response to Arguments
Applicant’s arguments, filed on 04/07/2026, with respect to the rejection(s) of Claims 11, 14, 16-19, and 22-25 under 35 U.S.C. 102(a) (1) as being anticipated by Li et al. (US 2020/0231865 A1) and Claims 11-19, and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Li, and further in view of Rieb et al. (US 2011/0143970 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
(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 11-13, 15-16, 18-19, and 21-26 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Karandkar et al. (US 2023/0323194 A1) (“Karandkar” herein).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim 11.
Karandkar discloses a method of stimulating a hydrocarbon-bearing formation, the method comprising:
introducing a foaming composition into the hydrocarbon-bearing formation under a pressure greater than fracturing pressure of the hydrocarbon-bearing formation to generate fractures in the hydrocarbon-bearing formation, wherein the foaming composition comprises: [0006, 0066-0067]
a base fluid; [0043-0044]
a graphene particle; [0036, 0040]
1.5 to 10.0 vol/vol% of one or more surfactants; [0027-0032] and
15 to 30 vol/vol% of hydrochloric an inorganic acid; [0046-0047] and
generating a foamed composition from the foaming composition inside the hydrocarbon-bearing formation using a gas, [0050-0053, 0066] wherein
Since Karandkar discloses the same composition comprising a base fluid, a graphene particle, surfactant, hydrochloric acid, and gas, it would be a foamed composition with has a half-life of 130 to 260 min at 200 °F, and a foam quality in a range of from 50 to 90 vol/vol% at a temperature in a range of from 120 °C to 165 °C.
"Products of identical chemical composition cannot have mutually exclusive properties”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 12.
Karandkar discloses the method of claim 11, further comprising injecting the gas into the hydrocarbon-bearing formation to generate the foam. [0066]
Claim 13.
Karandkar discloses the method of claim 11, wherein one or more surfactants are selected from the group consisting of anionic, nonionic, cationic, and amphoteric surfactants. [0027-0032]
Claim 15.
Karandkar discloses the method of claim 11, wherein the gas is nitrogen or carbon dioxide. [0050-0053]
Claim 16.
Karandkar discloses the method of claim 11, wherein the foaming composition further
comprises comprising a compound selected from the group consisting of a chelating agent, a corrosion inhibitor, an anti-sludge compound, a demulsifier, and combinations thereof. [0048]
Claim 18.
Karandkar discloses the method of claim 11, wherein the graphene particle is present in an amount of from 0.1 to 10.0 vol/vol% of the composition. [0036, 0040]
Claim 19.
Karandkar discloses the method of claim 11, wherein the inorganic the foaming composition further comprises at least one acid selected from the group consisting of a crosslinked acid, a gelling acid, an emulsified acid, and a self-diverting acid. [0071, 0088]
Claim 21.
Karandkar discloses the method of claim 11, wherein the gas is present in an amount of
from 50 to 90 vol% based on a total volume of the composition. [0050-0053]
Claim 22.
Since Karandkar discloses the same composition comprising a base fluid, a graphene particle, surfactant, hydrochloric acid, and gas, it would be a foamed composition with a viscosity in a range of from 25 cP to 38 cP at a temperature in a range of from 275 °F to 350 °F and a shear rate of 300 s⁻¹.
"Products of identical chemical composition cannot have mutually exclusive properties”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 23.
Karandkar discloses the method of claim 11, wherein the hydrocarbon-bearing formation comprises an unconventional reservoir. [0074-0075]
Claim 24.
Karandkar discloses the method of claim 11, conducted under a temperature in a range of from 50 °F to 350 °F. [0077]
Claim 25.
Karandkar discloses the method of claim 11, conducted under a pressure in a range of from50 psi to 30,000 psi. [0078]
Claim 26.
Karandkar discloses the method of claim 11, wherein the graphene particles is present in an amount of from 2.5 to 10.0 vol/vol% of the composition. [0036, 0040]
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 05/21/2026
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