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 05/28/2026, with respect to the objection to the specification have been fully considered and are persuasive. The objection to the specification has been withdrawn.
Applicant’s arguments, filed on 05/28/2026, with respect to rejection of claim 14 under 35 USC 112 2nd / (b) has been fully considered and are persuasive. The rejection of the claim has been withdrawn.
Applicant’s arguments filed on 05/28/2026, with respect to the rejection(s) of Claims 9, 10, and 12-14 under 35 U.S.C. 102 (a) (1) as being anticipated by Portwood (US 2015/0247393 A1) and Claims 9, 10, 12, and 13-14 rejected under 35 U.S.C. 103 as being unpatentable over Applicant's Admitted Prior Art (Admission herein) and further in view of Portwood 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 Therefore, the rejection has been withdrawn.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., See, e.g., paragraphs [0014] and [0016] of the Specification.) 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).
The applicant further argues that “While paragraphs [0003]-[0004] of the Specification discuss the use of acid-based stimulation fluids that can contain a corrosion inhibitor and a surfactant and the use of CO2 in acid treatments, there is no disclosure or suggestion in those paragraphs of composition for stimulation an oil well that includes nano-sized bubbles of CO2. As disclosed in the Detailed Description, the nanobubbles used in the claimed compositions, as opposed to microbubbles and macrobubbles, have much longer lifespans in aqueous solutions and can remain suspended in solution for an extended period of time, making a stimulation fluid.” (See Arguments, page 3, 2nd paragraph).
The examiner respectfully disagrees.
Firstly, the unit of measurement could be nano or micro or macro bubbles. Any unit can be converted to each other; therefore, the arguments are not convincing by the applicant. There is no tool or apparatus that would generate a nanobubble , but rather a composition, furthermore, there is no even size range, therefore, as written the claim contain different sizes that could be converted to nano sizes.
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 § 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.
The term “low carbon oils” in claim 14 is a relative term which renders the claim indefinite. The term “low carbon oils” 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.
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 9, 10, 12, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant's Admitted Prior Art (Admission herein- cited previously), Portwood. and further in view of Hardin et al. /(US 2018/0073336 A1) (“Hardin” herein).
(Claims contain only selected species)
Claims 9, and 13-14
Admissions discloses a composition for stimulating an oil well, the composition comprising:
an acid selected from an inorganic acid,
a surfactant
a corrosion inhibitor; and
carbon dioxide (CO2).
(in the Specification, see paragraphs 0003-0004 → Admissions teaches this limitation in that in acid stimulation, an acid-based fluid such as HCI would be typically injected at various concentrations to create conductive channels to enhance the flow paths for hydrocarbons. The acid simulation fluid that is used typically involves various components depending on the desired treatment. These include a corrosion inhibitor, a surfactant, one or more types of acids, and others. For instance, CO2 is an efficient solvent for removing formation damage and condensate banking around the wellbore.
This is attributed to the CO2 being miscible with the condensate. The use of CO2 in the acid stimulation fluid will also increase the amount of CO2 avoided, thereby contributing to reducing the carbon footprint of the operation.)
Admissions however does not explicitly disclose the surfactant selected as a cationic surfactant and nano-sized bubbles.
Portwood teaches the above limitation (See paragraph 0061 → Portwood teaches this limitation in that the microemulsion may comprise a single surfactant or a combination of two or more surfactants. For example, in some embodiments, the surfactant comprises a first type of surfactant and a second type of surfactant. The term "surfactant," as used herein, is given its ordinary meaning in the art and refers to compounds having an amphiphilic structure which gives them a specific affinity for oil/water-type and water/oil-type interfaces which helps the compounds to reduce the free energy of these interfaces and to stabilize the dispersed phase of a microemulsion. The term surfactant encompasses cationic surfactants generally possess a net positive charge) for the purpose of helping the compounds to reduce the free energy of these interfaces and to stabilize the dispersed phase of a microemulsion. [0061]
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 Admission, with the above limitation, as taught by Portwood, in order to help the compounds to reduce the free energy of these interfaces and to stabilize the dispersed phase of a microemulsion. [0061]
Hardin teaches the above limitation. (See paragraphs 0018 & 0020→ Hardin teaches this limitation in that The nanogas solution is a homogeneous mixture of nanobubbles and water. As used herein, the term “nanobubbles” means bubbles of a gas within a liquid, wherein the bubbles having an average diameter of about 10 nm to 100 nm. The nanogas solution can include nanobubbles that include, consist essentially of, or consist of oxygen (O.sub.2), nitrogen (N.sub.2), carbon dioxide (CO.sub.2), or a mixture thereof; and can include a liquid that is water, for example, distilled water, di-water, ground water, municipal water, collected water, produced water, or recycled water.) for the purpose of having the nanogas solution i preferably homogeneous, that is, the nanobubbles evenly distributed throughout the solution and appear as a suspended “particulate” in the liquid. [0019]
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 Admissions, with the above limitation, as taught by Hardin, in order to have the nanobubbles evenly distributed throughout the solution and appear as a suspended “particulate” in the liquid.
Since Admissions teaches the same composition comprising a HCI, surfactant, corrosion inhibitor, and CO2, it would be a composition for stimulating an oil well, an
inorganic acid, a nano-sized bubble, have a density of the composition comprising the nano-sized bubbles within 0.01 g/cc of the composition without the nano-sized bubbles, and are miscible with intermediate and low carbon oils.
"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 10
Admissions discloses the composition of claim 9, wherein the acid comprises hydrochloric acid, sulfuric acid, nitric acid, or any combination thereof. [0003]
Claims 9, 10, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Barati Ghahfarokhi (US 2017/0044425 A1) (“Barati” herein) and further in view of Hardin et al. /(US 2018/0073336 A1) (“Hardin” herein).
(Claims contain only selected species)
Claims 9, and 13-14
Barati discloses a composition for stimulating an oil well, the composition comprising:
an acid selected from an inorganic acid, [0020-0021]
a cationic surfactant, [0050]
a corrosion inhibitor; [0049] and
carbon dioxide (CO2).[0012, 0045, 0069-0073]
Barati however does not explicitly disclose the nano-sized bubbles .
Hardin teaches the above limitation. (See paragraphs 0018 & 0020→ Hardin teaches this limitation in that The nanogas solution is a homogeneous mixture of nanobubbles and water. As used herein, the term “nanobubbles” means bubbles of a gas within a liquid, wherein the bubbles having an average diameter of about 10 nm to 100 nm. The nanogas solution can include nanobubbles that include, consist essentially of, or consist of oxygen (O.sub.2), nitrogen (N.sub.2), carbon dioxide (CO.sub.2), or a mixture thereof; and can include a liquid that is water, for example, distilled water, di-water, ground water, municipal water, collected water, produced water, or recycled water.) for the purpose of having the nanogas solution i preferably homogeneous, that is, the nanobubbles evenly distributed throughout the solution and appear as a suspended “particulate” in the liquid. [0019]
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 Barati, with the above limitation, as taught by Hardin, in order to have the nanobubbles evenly distributed throughout the solution and appear as a suspended “particulate” in the liquid.
Since Barati teaches the same composition comprising a HCI, cationic surfactant, corrosion inhibitor, and CO2, it would be a composition for stimulating an oil well, an inorganic acid, a nano-sized bubble, have a density of the composition comprising the nano-sized bubbles within 0.01 g/cc of the composition without the nano-sized bubbles, and are miscible with intermediate and low carbon oils.
"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 10
Barati discloses the composition of claim 9, wherein the acid comprises hydrochloric acid, sulfuric acid, nitric acid, or any combination thereof. [0020]
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.
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 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 06/30/2026
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