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 .
Claim Objections
Claims 1, 8, 10, 11 and 20 are objected to because of the following informalities:
(claim 1, line 6) “conduit first end and conduit second end” should be changed to “a conduit first end and a conduit second end”.
(claim 1, lines 6-7) “wherein conduit first end is appended by first mated connector” should be changed to “wherein the conduit first end is appended by a first mated connector”.
(claim 1, line 9) “wherein conduit second end” should be changed to “wherein the conduit second end”.
(claim 8, line 1) “the mobile elution kit” should be changed to “the elution kit”.
(claim 8, line 2) “the mobile elution kit” should be changed to “the elution kit”.
(claim 8, line 5) “the mobile elution kit” should be changed to “the elution kit”.
(claim 10, lines 1-2) “the mobile elution kit” should be changed to “the elution kit”.
(claim 11, line 1) “the mobile elution kit” should be changed to “the elution kit”.
(claim 20, line 1) “The passive elution system of claim 14” should be changed to “The passive elution system of claim 19” to provide proper antecedent basis for the limitation “the composite treatment material”.
Appropriate correction is required.
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 1-5, 7-14, 17, 19, 21 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 10 and 16-20 of U.S. Patent No. 12,352,144. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending application presents claims covered by the parent patent.
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 1-5, 7-14, 17-19, 21 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bansbach (US 3,710,867).
As concerns claim 1, Bansbach shows an elution kit comprising an elution device (chemical reservoir) having a top and a bottom and defining an interior volume defining an outlet therefrom (Fig. 1), the outlet situated proximal to the bottom of the elution device (Fig. 1) and appended by a first connector (chemical reservoir connector 9), wherein the interior volume comprises a treatment material (chemical); a conduit (1, 6, 11) having a conduit first end (upper end) and a conduit second end (lower right end), wherein the conduit first end is appended by a first mated connector (line 1 connector 9) for mating with the first connector of the elution device to form a sealed fluid connection (Fig. 1), and wherein the conduit second end is appended by a second connector (bypass line 11 connector 9), wherein the second connector is adapted and configured to obtain a fluid connection (pumping T) with a flow of produced fluid from a production tube (tubing) of a wellbore (Fig. 1).
As concerns claim 2, Bansbach shows wherein the first connector (chemical reservoir connector 9) and the first mated connector (line 1 connector 9) are a first rapid connection pair independently selected from push-to-connect connection pairs or threaded connection pairs (commonly used pipe union).
As concerns claim 3, Bansbach shows wherein the flow of produced fluid is received from a wellbore side stream of the production tube (Fig. 1).
As concerns claim 4, Bansbach shows wherein the kit excludes external or applied sources of power to receive the flow of produced fluid (Fig. 1).
As concerns claim 5, Bansbach shows wherein the treatment material is a solid treatment material or composite treatment material (gravity fed chemical).
As concerns claim 7, Bansbach shows wherein the elution device further comprises a valve (2, 5) proximal to the outlet (Fig. 1).
As concerns claim 8, Bansbach shows a method of using the elution kit, wherein the method includes the steps in order of: a) assembling the elution kit to form a passive elution system in fluid contact with a wellbore (Fig. 1); b) treating the wellbore by allowing an eluting contact of a produced water from the wellbore with the treatment material (Fig. 1); and c) disassembling the passive elution system (pipe union 9 allows for disassembly of chemical reservoir from line 1) to reform the elution kit (Fig. 1).
As concerns claim 9, Bansbach shows wherein the system is suitable for repeating steps a)-c) 2 to 10,000 times (Fig. 1).
As concerns claim 10, Bansbach shows transporting the elution kit after any one or more step c) (pipe union 9 allows for disassembly of chemical reservoir from line 1).
As concerns claim 11, Bansbach shows wherein assembling the elution kit comprises disposing the elution device on or above the surface of the earth (Fig. 1).
As concerns claim 12, Bansbach shows wherein allowing the eluting contact comprises allowing the treatment material to flow from the interior volume of the elution device and through the outlet, facilitated by gravity (gravity fed chemical).
As concerns claim 13, Bansbach shows wherein the elution device further comprises a valve (2, 5) proximal to the outlet, and the flow is a selected rate of flow (Fig. 1).
As concerns claim 14, Bansbach shows a passive elution system comprising: an elution device (chemical reservoir) defining an interior volume having an outlet (1, 12) therefrom (Fig. 1), the outlet situated proximal to a bottom of the elution device (Fig. 1), wherein the interior volume comprises a treatment material (chemical), and wherein the elution device excludes an inlet (Fig. 1); and a conduit (11, 6, 13) arranged and adapted to receive a produced fluid flow from a wellbore of a subterranean reservoir at a location above a surface of the earth (Fig. 1), direct the produced fluid flow to provide an eluting contact with the treatment material at the outlet or proximal to the outlet (1, 12) to form a treated produced fluid flow (Fig. 1), and direct the treated produced fluid flow into the wellbore (Fig. 1).
As concerns claim 17, Bansbach shows wherein the elution device comprises a basket (4) affixed thereto and positioned beneath the outlet (Fig. 1), and the treatment material is a treatment solid or a composite treatment solid (gravity fed chemical).
As concerns claim 18, Bansbach shows wherein the elution device is part of a mobile elution kit (pipe union 9 allows for disassembly of chemical reservoir from line 1).
As concerns claim 19, Bansbach shows wherein the treatment material is a solid treatment material or composite treatment material (gravity fed chemical).
As concerns claim 21, Bansbach shows wherein allowing the eluting contact comprises allowing the treatment material to flow from the interior volume of the elution device and through the outlet, facilitated by gravity (gravity fed chemical).
As concerns claim 22, Bansbach shows wherein the elution device further comprises a valve (2, 5) proximal to the outlet, and the flow is a selected rate of flow (Fig. 1).
Allowable Subject Matter
Claims 6, 15, 16 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not appear to anticipate and/or render obvious:
a) an elution kit comprising an elution device having a top and a bottom and defining an interior volume defining an outlet therefrom, the outlet situated on or proximal to the bottom of the elution device and appended by a first connector, wherein the interior volume comprises a treatment material; a conduit having a conduit first end and a conduit second end, wherein the conduit first end is appended by a first mated connector for mating with the first connector of the elution device to form a sealed fluid connection, and wherein the conduit second end is appended by a second connector, wherein the second connector is adapted and configured to obtain a fluid connection with a flow of produced fluid from a production tube of a wellbore, wherein the treatment material is a solid treatment material or composite treatment material, and wherein the solid treatment material or the composite treatment material includes two or more treatment materials having different solubility in a produced fluid.
b) a passive elution system comprising: an elution device defining an interior volume having an outlet therefrom, the outlet situated at or proximal to a bottom of the elution device, wherein the interior volume comprises a treatment material, and wherein the elution device excludes an inlet; and a conduit arranged and adapted to receive a produced fluid flow from a wellbore of a subterranean reservoir at a location above a surface of the earth, direct the produced fluid flow to provide an eluting contact with the treatment material at the outlet or proximal to the outlet to form a treated produced fluid flow, and direct the treated produced fluid flow into the wellbore, and wherein the elution device defines an access opening, and a removable cap covering the access opening.
c) a passive elution system comprising: an elution device defining an interior volume having an outlet therefrom, the outlet situated at or proximal to a bottom of the elution device, wherein the interior volume comprises a treatment material, and wherein the elution device excludes an inlet; and a conduit arranged and adapted to receive a produced fluid flow from a wellbore of a subterranean reservoir at a location above a surface of the earth, direct the produced fluid flow to provide an eluting contact with the treatment material at the outlet or proximal to the outlet to form a treated produced fluid flow, and direct the treated produced fluid flow into the wellbore, and wherein the elution device is a single-use cartridge that is pre-loaded with the treatment material.
d) a passive elution system comprising: an elution device defining an interior volume having an outlet therefrom, the outlet situated at or proximal to a bottom of the elution device, wherein the interior volume comprises a treatment material, and wherein the elution device excludes an inlet; and a conduit arranged and adapted to receive a produced fluid flow from a wellbore of a subterranean reservoir at a location above a surface of the earth, direct the produced fluid flow to provide an eluting contact with the treatment material at the outlet or proximal to the outlet to form a treated produced fluid flow, and direct the treated produced fluid flow into the wellbore, wherein the treatment material is a solid treatment material or composite treatment material, and wherein the composite treatment material includes two or more treatment materials having different solubility in a produced fluid.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fouchard et al. (US 10,717,918) shows an injection system for controlled delivery of solid oil field chemicals and LaHaye (US 5,103,914) shows a well treatment system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R BUCK whose telephone number is (571)270-3653. The examiner can normally be reached Monday-Thursday 6:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571)272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R BUCK/Primary Examiner, Art Unit 3672
