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 07/10/2026, with respect to objection to the drawing has been fully considered and are persuasive. The objection of the drawing has been withdrawn.
Applicant’s arguments, filed 07/10/2026, with respect to the rejection(s) of Claims 1-3 and 7-12 under 35 U.S.C. 102 (a) (1) as being anticipated by Nguyen et al. (US 2018/0252084 A1) and Claims 1-3, and 7-12 rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al. (US 2023/0313657 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 Therefore, the rejection has been withdrawn.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 the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a viscosity relationship at all shear rates (0.001-1600 sec⁻¹, Grace M5600) and a one-directional permanent seal holding pressure from the high-pressure storage side.) are not recited in the rejected claim(s).
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments rely on language solely recited in preamble recitations in claims 1 and 10. When reading the preamble in the context of the entire claim, the recitation subterranean energy storage is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations.
Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amended claims recite “wherein said first fluid holds pressure in one direction”. However, the specification recites “The seal is designed to hold pressure from one direction” ¶ [0045], Therefore, the amended claim is a new matter.
All the claims dependent of claims 1 and 10 are also rejected.
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 1 and 10 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claim recites “said first density and said second density being generally equal and said first viscosity less than said second viscosity at all shear rates occurring within the subterranean zone”. It is unclear what the boundaries of the claim limitation all shear rates would encompasses, making the claim indefinite.
All the claims dependent of claim 1 and 10 are also rejected.
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 1-3, and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al. (US 2023/0313657 A1) ("Schmidt" herein) and in further view of Schmidt et al. (US 2022/0268489 A1) (“’489 “ herein- provided by applicant)
(Claims contain only selected species)
Claim 1
Schmidt discloses a system for sealing a subterranean zone for subterranean energy storage, the system comprising: [0004, 0007, 0010]
a subterranean zone having one or more propagating fracture tips;
a first fluid having a first density and a first viscosity; (i.e. pad fluid ; a pad comprising bentonite mud; a slurry comprising rubber tire crumb (RTC) in linear guar) [0008]
a second fluid having a second density and a second viscosity; (i.e. a sweep comprising cross-linked guar with enzymatic breaker) [0008, 0011]
said first density and said second density being generally equal, and said first viscosity less than said second viscosity at all shear rates occurring within the subterranean zone [0010-0013, 0015] and said first fluid and said second fluid from a wellbore into said zone whereby said second fluid displaces said first fluid to seal said tips [0012-0013, 0015]
Schmidt however does not explicitly discloses a facility to pump and said second fluid displaces said first fluid to seal said tips wherein said first fluid holds pressure in one direction.
‘489 teaches the above limitation (See paragraph 0019→ ‘849 teaches this limitation in that the fracture thickness may be controlled by a pressure applied within the fracture which will vary with depth and temperature of the working fluid. In embodiments, a screening slurry including one or more compliant materials or particulates may be pushed to the propagating tips of a fracture such that they screen out the fracture tip and stop fracture propagation, allowing additional fluid to be pumped into the fracture, thereby increasing net pressure in the fracture and pushing the rock out further to increase the thickness of the fracture. In such embodiments, a typical fracture normally 1 millimeter thick may be expanded to several centimeters. For example, a maximum fracture thickness may vary from 2.5 centimeters to 10 centimeters. Such compliant screening materials may be augmented by solid or rigid particles to promote bridging and filtration as well as other materials and particulates commonly employed as lost circulation materials and mixtures, for example additives including fibers or sheets. In certain embodiments, the compliant materials may be elastic, for example rubber, silicone rubber, or organic polymers, or may swell upon being injected into the fracture.) for the purpose of providing a means of addressing the natural convection resulting from the temperature gradient in the rock across the depth of the well and fracture to produce energy or work, or perform useful work, at the surface via a primary working fluid. [0020]
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 Schmidt with the above limitation, as taught by ‘489, in order to provide a means of addressing the natural convection resulting from the temperature gradient in the rock across the depth of the well and fracture to produce energy or work, or perform useful work, at the surface via a primary working fluid. [0020]
The Examiner takes Official Notice that it is well-known in the art of treating a subterranean formation, pumps would be used in order to inject fluids into the subterranean formation for treatment.
Since Schmidt discloses the same composition comprising a first fluid and a second fluid, it would be a system for sealing a subterranean zone for subterranean energy storage, a first and second density generally equal said first density and said first viscosity less than said second viscosity at all shear rates occurring within the subterranean zone.
"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 (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 2
Schmidt discloses the system as defined by claim 1 wherein said second fluid is a polysaccharide. (i.e. , guar) [0008]
Claim 3
Schmidt discloses the system as defined by claim 1 wherein said first fluid is a water- based specialty polymer gel. [0008, 0016]
Claim 4
Schmidt discloses the system as defined by claim 1 wherein said first fluid is a silicone rubber containing polymers. (i.e. rubber tire) [0008, 0016]
Claim 8
Schmidt discloses the system as defined by claim 1 whereby said first fluid and said second fluid inside a rock formation within said zone. [0013] Schmidt however does not explicitly disclose said facility further pumps. (Same as claim 1)
Claim 9
Schmidt discloses the system as defined by claim 1 wherein said sealing fluid holds pressure in one direction. (i.e. impermeable seal). [0012]
Claim 10
Schmidt discloses a method for sealing a subterranean zone for energy storage, the method comprising: [0004, 0007, 0010]
selecting a subterranean zone for high pressure fluid storage; [Abstract, 0007, 0010]
fracturing said zone and creating fracture tips within said zone; [0010-0012]
providing a first fluid having a first density and a first viscosity; (i.e. pad fluid ; a pad comprising bentonite mud; a slurry comprising rubber tire crumb (RTC) in linear guar) [0008]
providing a second fluid having a second density generally equal to said first density, and a second viscosity greater than said first viscosity; (i.e. a sweep comprising cross- linked guar with enzymatic breaker) at all shear rates occurring within the subterranean zone [0008, 0011-0013, 0015]
said first and second fluid into said zone; [0010-0013,0015]
displacing said first fluid; and sealing said tips. [0012-0013,0015]
Schmidt however does not explicitly discloses a facility to pump and said second fluid displaces said first fluid to seal said tips wherein said first fluid holds pressure in one direction.
‘489 teaches the above limitation (See paragraph 0019→ ‘849 teaches this limitation in that the fracture thickness may be controlled by a pressure applied within the fracture which will vary with depth and temperature of the working fluid. In embodiments, a screening slurry including one or more compliant materials or particulates may be pushed to the propagating tips of a fracture such that they screen out the fracture tip and stop fracture propagation, allowing additional fluid to be pumped into the fracture, thereby increasing net pressure in the fracture and pushing the rock out further to increase the thickness of the fracture. In such embodiments, a typical fracture normally 1 millimeter thick may be expanded to several centimeters. For example, a maximum fracture thickness may vary from 2.5 centimeters to 10 centimeters. Such compliant screening materials may be augmented by solid or rigid particles to promote bridging and filtration as well as other materials and particulates commonly employed as lost circulation materials and mixtures, for example additives including fibers or sheets. In certain embodiments, the compliant materials may be elastic, for example rubber, silicone rubber, or organic polymers, or may swell upon being injected into the fracture.) for the purpose of providing a means of addressing the natural convection resulting from the temperature gradient in the rock across the depth of the well and fracture to produce energy or work, or perform useful work, at the surface via a primary working fluid. [0020]
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 Schmidt with the above limitation, as taught by ‘489, in order to provide a means of addressing the natural convection resulting from the temperature gradient in the rock across the depth of the well and fracture to produce energy or work, or perform useful work, at the surface via a primary working fluid. [0020]
The Examiner takes Official Notice that it is well-known in the art of treating a subterranean formation, pumps would be used in order to inject fluids into the subterranean formation for treatment.
Since Schmidt discloses the same composition comprising a first fluid and a second fluid, it would be a system for sealing a subterranean zone for subterranean energy storage, a first and second density generally equal said first density and said first viscosity less than said second viscosity at all shear rates occurring within the subterranean zone.
"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 (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 11
Schmidt discloses the method as defined by claim 10 further comprising said sealing fluid inside a rock formation within said zone.
Schmidt however does not exilically discloses pumping. (Same as claim 10)
Claim 12
Schmidt discloses the method as defined by claim 10 further comprising holding pressure from one side of said seal. (i.e. impermeable seal). [0012]
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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, Sue Liu can be reached at 571-272-5539. 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 1616 09/14/2026
