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 .
Response to Arguments
Applicant’s arguments, filed on 12/02/2025, with respect to objection to the abstract have been fully considered and are persuasive. The objection to the specification has been withdrawn.
Applicant's arguments filed on 12/02/2025 with regards to the rejection 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) have been fully considered but they are not persuasive.
With regards to claim 11 the applicant argues that “. Thus, the method of pending claim 11, which requires generating a foam from the foaming composition inside the hydrocarbon-bearing formation using a gas, is not disclosed by Li.” (See arguments, page 5, 3rd para.)
Since Li discloses the same method of fracturing a subterranean formation comprising a base fluid, a graphene particle, surfactant, an inorganic acid, and a foamer it would be a foaming composition, a gas that generates a foam from the foaming composition inside the hydrocarbon-bearing formation using the gas, wherein, the foam has a half-life of 130 to 260 min at 200 °F.
"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 discloses and /or claims are necessarily present. See MPEP 2112.01 (l), 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 Ludike, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Therefore, Li discloses the limitation as written.
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. ,a gas such as carbon dioxide nor nitrogen) are not recited in the rejected claim 11. 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).
Furthermore, in, the applicant further argues that “No evidence is specifically provided by the Examiner that the modified composition of Li has the half-life in the claimed range.” (See arguments, page 7, 2nd paragraph)
The examiner respectfully disagrees.
Li discloses a fracturing fluid in combination with Reib’s fracturing fluid teaches the composition as written, therefore, the half-life claimed range.
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 that “the half-life in the claimed range., it is well settle that a patent cannot be granted to a an applicant’s discovery of a result, even through it may be unsuspectedly good, which would flow logically from the teaching of the prior art. In re Rau, 117 USPQ 215 (CCPA 1958).
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.
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 11, 14, 16-19, and 22-25 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Li et al. (US 2020/0231865 A1) (“Li” herein- cited previously)
Claim 11
Li 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: [0019, 0034]
a base fluid; [0023]
a graphene particle; [0007, 0028]
one or more surfactants; [0030] and
an inorganic acid; [0023], and
foamer [0030]
Since Li discloses the same method of fracturing a subterranean formation
comprising a base fluid, a graphene particle, surfactant, an inorganic acid, and a foamer, it would be a foaming composition, a gas that generates a foam from the foaming composition inside the hydrocarbon-bearing formation using the gas, wherein, the foam has a half-life of 130 to 260 min at 200 °F.
"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 discloses
and /or claims are necessarily present. See MPEP 2112.01 (l), 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 Ludike, 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 14
Li discloses the method of claim 11, wherein the acid is hydrochloric acid. [0023]
Claim 16
Li discloses the method of claim 11, wherein the foaming composition further comprising a compound selected from the group consisting of a chelating agent, a corrosion inhibitor, an anti-sludge compound, a demulsifier, and combinations thereof. [0061]
Claim 17
Li discloses the method of claim 11, wherein the one or more surfactants are present in
an amount of from 1.0 to 10.0 vol/vol% of the composition. [0030]
Claim 18
Li 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. [0028]
Claim 19
Li discloses the method of claim 11, wherein the inorganic acid is selected from the
group consisting of a crosslinked acid, a gelling acid, an emulsified acid, and a self-
diverting acid. [0023-0025]
Claim 22
Li discloses the method of claim 11, wherein the foaming composition has 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.[ 0042 & Fig. 2-7]
Claim 23
Li discloses the method of claim 11, wherein the hydrocarbon-bearing formation comprises an unconventional reservoir. [0019, 0034]
Claim 24
Li discloses the method of claim 11, conducted under a temperature in a range of from 50 °F to 350 °F. [0032, 0042 & Fig. 2-7]
Claim 25
Li discloses the method of claim 11, conducted under a pressure in a range of from 50 psi to 30,000 psi. [0042 & Fig. 2-7]
Claim Rejections - 35 USC § 103
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 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.
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) (“Rieb” herein- cited previously).
Claim 11
Li 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: [0019, 0034]
a base fluid; [0023]
a graphene particle; [0007, 0028]
one or more surfactants; [0030] and
an inorganic acid; [0023], and
foamer [0030]
Since Li discloses the same method of fracturing a subterranean formation
comprising a base fluid, a graphene particle, surfactant, an inorganic acid, and a foamer
it would be a foaming composition, a gas that generates a foam from the foaming
composition inside the hydrocarbon-bearing formation using the gas, wherein, the foam
has a half-life of 130 to 260 min at 200 °F.
"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 discloses
and /or claims are necessarily present. See MPEP 2112.01 (l), /n 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 Ludike, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam
Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Li does not explicitly disclose the foamer as a gas.
Rieb teaches the above limitation (See paragraphs 0015 & 0020→ Rieb
teaches this limitation in that typically, aqueous solutions of the anionic surfactant and
the cationic surfactant are used. When treating a subterranean formation which is
sensitive to water (such as dry coal beds), it is often necessary to minimize the amount
of water in the well treatment fluid by energizing with either nitrogen or liquid carbon dioxide (CO.sub.2), foaming with a gas, such as nitrogen or emulsifying the fluid with
liquid CO.sub.2. Typically, the word "energized" refers to a fluid containing two phases
whereby less than 63 volume percent of the internal phase is either a gas or a liquid
(e.g. nitrogen or liquid CO.sub.2). Typically, the term "foamed" refers to a fluid that
contains more than 63 volume percent of the internal phase is either a gas or a liquid.
Suitable foamed fluids typically have a foam quality greater than or equal to 70%,
preferably up to 95% when nitrogen is used and greater than or equal to 70%,
preferably up to 85% when liquid CO.sub.2 is used) for the purpose of increasing the
viscosity of the fracturing fluid and allowing for a reduction in the amount of water
without loss of treatment fluid volume. [0015]
Accordingly, it would have been obvious to a person of ordinary skill in the art
before the effective filling date of the claimed invention to modify the method of Li, with
the above limitation, as taught by Rieb, in order to increase the viscosity of the
fracturing fluid and allow for a reduction in the amount of water without loss of treatment fluid volume.
Claim 12
Li discloses the method of claim 11,. LI however does not explicitly disclose further comprising injecting the gas into the hydrocarbon- bearing formation to generate the foam.
Rieb teaches the above limitation (See paragraphs 0015 & 0020→ Rieb teaches this limitation in that typically, aqueous solutions of the anionic surfactant and the cationic surfactant are used. When treating a subterranean formation which is sensitive to water (such as dry coal beds), it is often necessary to minimize the amount of water in the well treatment fluid by energizing with either nitrogen or liquid carbon dioxide (CO.sub.2), foaming with a gas, such as nitrogen or emulsifying the fluid with liquid CO.sub.2. Typically, the word "energized" refers to a fluid containing two phases whereby less than 63 volume percent of the internal phase is either a gas or a liquid (e.g. nitrogen or liquid CO.sub.2). Typically, the term "foamed" refers to a fluid that contains more than 63 volume percent of the internal phase is either a gas or a liquid. Suitable foamed fluids typically have a foam quality greater than or equal to 70%, preferably up to 95% when nitrogen is used and greater than or equal to 70%, preferably up to 85% when liquid CO.sub.2 is used) for the purpose of increasing the viscosity of the fracturing fluid and allowing for a reduction in the amount of water without loss of treatment fluid volume. [0015]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Li, with the above limitation, as taught by Rieb, in order to increase the viscosity of the fracturing fluid and allow for a reduction in the amount of water without loss of treatment fluid volume.
Claim 13
Li discloses the method of claim 11. LI however does not explicitly disclose, wherein
one or more surfactants are selected from the group consisting of anionic, nonionic,
cationic, and amphoteric surfactants. (Same as claim 11)
Claim 15
Li discloses the method of claim 11,. Li however does not explicitly, wherein the gas is
nitrogen or carbon dioxide. (Same as claim 11)
Claim 14
Li discloses the method of claim 11, wherein the acid is hydrochloric acid. [0023]
Claim 16
Li discloses the method of claim 11, wherein the foaming composition further
comprising a compound selected from the group consisting of a chelating agent, a
corrosion inhibitor, an anti-sludge compound, a demulsifier, and combinations thereof.
[0061]
Claim 17
Li discloses the method of claim 11, wherein the one or more surfactants are present in
an amount of from 1.0 to 10.0 vol/vol% of the composition. [0030]
Claim 18
Li 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. [0028]
Claim 19
Li discloses the method of claim 11, wherein the inorganic acid is selected from the
group consisting of a crosslinked acid, a gelling acid, an emulsified acid, and a self-
diverting acid. [0023-0025]
Claim 21
Li discloses the method of claim 11,. Li however does not explicitly disclose, wherein
the gas is present in an amount of from 50 to 90 vol% based on a total volume of the
composition. (Same as claim 11)
Claim 22
Li discloses the method of claim 11, wherein the foaming composition has 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.[ 0042 & Fig. 2-7]
Claim 23
Li discloses the method of claim 11, wherein the hydrocarbon-bearing formation
comprises an unconventional reservoir. [0019, 0034]
Claim 24
Li discloses the method of claim 11, conducted under a temperature in a range of from
50 °F to 350 °F. [0032, 0042 & Fig. 2-7]
Claim 25
Li discloses the method of claim 11, conducted under a pressure in a range of from 50 psi to 30,000 psi. [0042 & Fig. 2-7]
Claim 26
Li discloses the claimed invention with except for the graphene particle is present in an
amount of from 2.5 to 10.0 vol/vol% of the composition. It would have been obvious to oner having ordinary skill in the art before the effective filling date of the claimed invention to have the graphene particle is present in an amount of from 2.5 to 10.0 vol/vol% of the composition, since it has been held that [W]here the general conditions of a claimed are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 12-13, 15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim11 above, and further in view of Rieb et al. (US 2011/0143970 A1) (“Rieb” herein- cited previously).
Claim 12 Li discloses the method of claim 11,. LI however does not explicitly disclose further comprising injecting the gas into the hydrocarbon- bearing formation to generate the foam.
Rieb teaches the above limitation (See paragraphs 0015 & 0020→ Rieb teaches this limitation in that typically, aqueous solutions of the anionic surfactant and the cationic surfactant are used. When treating a subterranean formation which is sensitive to water (such as dry coal beds), it is often necessary to minimize the amount of water in the well treatment fluid by energizing with either nitrogen or liquid carbon dioxide (CO.sub.2), foaming with a gas, such as nitrogen or emulsifying the fluid with liquid CO.sub.2. Typically, the word "energized" refers to a fluid containing two phases whereby less than 63 volume percent of the internal phase is either a gas or a liquid (e.g. nitrogen or liquid CO.sub.2). Typically, the term "foamed" refers to a fluid that contains more than 63 volume percent of the internal phase is either a gas or a liquid. Suitable foamed fluids typically have a foam quality greater than or equal to 70%, preferably up to 95% when nitrogen is used and greater than or equal to 70%, preferably up to 85% when liquid CO.sub.2 is used) for the purpose of increasing the viscosity of the fracturing fluid and allowing for a reduction in the amount of water without loss of treatment fluid volume. [0015]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Li, with the above limitation, as taught by Rieb, in order to increase the viscosity of the fracturing fluid and allow for a reduction in the amount of water without loss of treatment fluid volume.
Claim 13
Li discloses the method of claim 11. LI however does not explicitly disclose, wherein
one or more surfactants are selected from the group consisting of anionic, nonionic,
cationic, and amphoteric surfactants. (Same as claim 11)
Claim 15
Li discloses the method of claim 11,. Li however does not explicitly, wherein the gas is
nitrogen or carbon dioxide. (Same as claim 11)
Claim 21
Li discloses the method of claim 11,. Li however does not explicitly disclose, wherein
the gas is present in an amount of from 50 to 90 vol% based on a total volume of the
composition. (Same as claim 11)
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Li as
applied to claim11 above, and further in view of Francini et al. (US 2005/0020454 A1)
(“Francini” herein- cited previously)
Claim 20
Li discloses the method of claim 11,. Li however does not explicitly disclose, wherein
the inorganic acid is present in an amount of from 15 to 30 vol% based on a total
volume of liquid in the composition.
Francini teaches the above limitation (See paragraphs 0011 & 0029 →Francini
teaches this limitation in that One embodiment of the Invention is a method of treating a subterranean formation penetrated by a wellbore with an acid by injecting a viscoelastic energized diverter system and the acid. Optionally these steps may be repeated in alternation. Typically the formation is a carbonate, or a sandstone formation with a carbonate content of greater than about 10 weight percent. The acid may be foamed, gelled, emulsified or retarded and may contain a mutual solvent. The acid may be hydrochloric acid, hydrofluoric acid, formic acid, acetic acid, citric acid, glycolic acid,
malonic acid, tartaric acid, and mixtures thereof. The most common acid concentrations, for example for hydrochloric acid, are 5%, 15%, 20% and 28%.) for the purpose of having he foamed self-diverting fluids improve diversion/stimulation effectiveness. [0028]
Accordingly, it would have been obvious to a person of ordinary skill in the art
before the effective filling date of the claimed invention to modify the method of Li, with
the above limitation, as taught by Francini, in order to have foamed self-diverting fluids to improve diversion/stimulation effectiveness.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Li, Rieb, as applied to claim11 above, and further in view of Francini et al. (US 2005/0020454 A1) (“Francini” herein- cited previously)
Claim 20
Li discloses the method of claim 11. Li however does not explicitly disclose, wherein
the inorganic acid is present in an amount of from 15 to 30 vol% based on a total
volume of liquid in the composition.
Francini teaches the above limitation (See paragraphs 0011 & 0029 →Francini
teaches this limitation in that One embodiment of the Invention is a method of treating a subterranean formation penetrated by a wellbore with an acid by injecting a viscoelastic energized diverter system and the acid. Optionally these steps may be repeated in alternation. Typically the formation is a carbonate, or a sandstone formation with a carbonate content of greater than about 10 weight percent. The acid may be foamed, gelled, emulsified or retarded and may contain a mutual solvent. The acid may be hydrochloric acid, hydrofluoric acid, formic acid, acetic acid, citric acid, glycolic acid,
malonic acid, tartaric acid, and mixtures thereof. The most common acid concentrations, for example for hydrochloric acid, are 5%, 15%, 20% and 28%.) for the purpose of having he foamed self-diverting fluids improve diversion/stimulation effectiveness. [0028]
Accordingly, it would have been obvious to a person of ordinary skill in the art
before the effective filling date of the claimed invention to modify the method of Li, with
the above limitation, as taught by Francini, in order to have foamed self-diverting fluids to improve diversion/stimulation effectiveness.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Li alone.
Claim 26
Li discloses the claimed invention with except for the graphene particle is present in an
amount of from 2.5 to 10.0 vol/vol% of the composition. It would have been obvious to oner having ordinary skill in the art before the effective filling date of the claimed invention to have the graphene particle is present in an amount of from 2.5 to 10.0 vol/vol% of the composition, since it has been held that [W]here the general conditions of a claimed are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 01/13/2026
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