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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-18, as well as the Species of “silica sand” first granular material; and “silica sand” second granular material, drawn to claims 1-18, in the reply filed on 20 January 2026 is acknowledged.
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/662,971, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, 63/662,971 fails to support at least the limitations of “wherein the grinder crushes a first granular material having a particle size of 105 microns to 841 microns to produce a micro-proppant having an average particle size of 3 microns to 88 microns” and “a second granular material having an average particle size of 105 microns to 841 microns.” While 63/662,971 describes generating micro-proppant of e.g. “from 140 mesh (0.105 mm) to 325 mesh (0.044 mm) with a mean size around 230 mesh (0.063 mm)” and “from 150 mesh to 635 mesh with a mean size around 325 mesh (0.044 mm)” (Specification, p.2) and placing in a fracture proppants of sizes 40/70 mesh (0.270 mm), 70/140 mesh (0.149 mm), and 140/325 mesh (0.063 mm) (Specification, p.7), these descriptions are not equivalent to “wherein the grinder crushes a first granular material having a particle size of 105 microns to 841 microns to produce a micro-proppant having an average particle size of 3 microns to 88 microns” or “a second granular material having an average particle size of 105 microns to 841 microns,” especially at the edges of the claimed ranges, which are smaller than the disclosed sizes. Furthermore, 63/662,971 fails to describe the starting sizes of materials which are crushed to form the micro-proppants. Accordingly, 63/662,971 fails to provide adequate support or enablement for all claims of the application.
Accordingly, the current Application is being treated under the current filing date of 19 June 2025.
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 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.
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.
Claims 1-8 and 10-17 are rejected under 35 U.S.C. 103 as obvious over Shirley (2025/0387803) in view of Fisher (11,821,298) (cited by Applicant) and Nguyen (2020/0056090).
Regarding independent claim 1, Shirley discloses A system (Title “METHODS FOR PREPARING PETROLEUM COKE PROPPANT PARTICLES FOR HYDRAULIC FRACTURING” and [0007] “a method for preparing petroleum coke proppant particles for hydraulic fracturing”) comprising:
a grinder ([0101] “In some embodiments, at least a portion of the petroleum coke may be ground prior to the initial sieving process… Any suitable type(s) of grinding/milling technique(s) may be used for this purpose. For example, in some embodiments, the petroleum coke particles may be processed using hammer milling techniques, jet milling techniques, ball milling techniques, or the like, where each of these techniques generally involves crushing or pulverizing the particles to a suitable size and shape for utilization as petroleum coke proppant particles”) …, wherein the grinder crushes a first granular material having a particle size of 105 microns to 841 microns ([0126] “FIG. 10 is a process flow diagram of another exemplary method 1000 for preparing petroleum coke proppant particles for hydraulic fracturing. The exemplary method 1000 may begin at block 1002, dry petroleum coke comprising particles larger than 297 μm may be provided” and [0127] “At block 1004, the dry petroleum coke may be ground to obtain ground petroleum coke particles”; this clearly anticipates the particle size range from e.g. 298-841 μm) to produce a micro-proppant having an average particle size of 3 microns to 88 microns ([0128] “At block 1006, the ground petroleum coke particles may be sieved to obtain a first fraction of petroleum coke particles and a second fraction of petroleum coke particles. …the second fraction may comprise no more than 25 vol % of petroleum coke microproppant particles, based on the total volume of the second fraction” and [0090] “petroleum coke microproppant particles according to embodiments described herein have a particle size of at most 105 μm (140 mesh) or, in some cases, a particle size of at most 88 μm (170 mesh), but potentially within a range from around 0.0001 μm to 105 μm (e.g., from around 0.0001, 0.001, 0.01, 0.1 μm to 0.5, 1.0, 2.0, 5.0, 8.0 10 μm, to 15, 20, 25, 30, 35, 40, 45 μm, to 50, 53, 55, 60, 63, 65 μm, to 74, 75, 80, 85, 88, 90, 95, 100, 105 μm)”; this clearly anticipates the 3-88 μm size range);
a fracturing manifold …, wherein the fracturing manifold receives a fracturing slurry (e.g., [0104] “Finally, at block 412, the petroleum coke proppant particles may be used in the field during the hydraulic fracturing operation via introduction of the fracturing fluid including the petroleum coke proppant particles into a subterranean formation” and [0054] “the term “hydrocarbon well” (or simply “well”) includes the wellbore in addition to the wellhead and other associated surface equipment”; this must include a manifold) comprising: a) the micro-proppant ([0090] “such petroleum coke microproppant particles will perform better than sand and other non-coke proppant particles in terms of transport capacity within hydraulic fractures that are created, reopened, and/or extended during a hydraulic fracturing operation”), … and c) an aqueous fluid ([0004] “Hydraulic fracturing typically involves the pumping of large quantities of fracturing fluid” e.g. [0069] “slickwater” or [0073] “gelled fracturing fluids”; these are both water-based); and
one or more fracturing pumps that pump the fracturing slurry from the fracturing manifold into a wellhead of the wellsite (e.g., [0104] “More specifically, in various embodiments, this may include pumping the fracturing fluid including the petroleum coke proppant particles into the subterranean formation at a high pump rate (e.g., an average pump rate of at least 25 bbl/min (0.07 m3/s) and at most 250 bbl/min (0.68 m3/s)) to form hydraulic fractures within the subterranean formation”).
Regarding the grinder “adjacent” to the wellsite and “in communication” with a fracturing manifold, Shirley discloses “This disclosure relates generally to the field of hydraulic fracturing operations and the fracturing fluids and proppant particles employed therein” ([0001]) and, in relation to the Fig. 4 thermal post-treatment embodiment, “At block 410, the petroleum coke proppant particles may be transported to the production site and stored in any suitable manner. In some embodiments, the petroleum coke proppant particles may be transported via truck or rail. When the hydraulic fracturing operation commences, the petroleum coke proppant particles may then be mixed with a carrier fluid, additives (if any), and non-coke proppant particles (if any) to form a fracturing fluid” ([0103]).
However, Shirley fails to disclose for the Fig. 10 grinding embodiment if the grinder may be located adjacent to a wellsite and in communication with a fracturing manifold.
Nevertheless, such on-site grinders appear to be known in the art. For example, Fisher teaches “a system for processing a mixed proppant at a wellsite for a well, the system including a separator including a screen configured to receive the mixed proppant that includes a proppant meeting a desired size criteria and an oversized proppant exceeding the desired size criteria, sort the proppant from the oversized proppant, direct the proppant along a primary flow path to a blender, and direct the oversized proppant along a diverted flow path to a reducer” (abstract) wherein “Once the oversized proppant 106 is transferred along the diverted flow path 123, the oversized proppant enters the reducer 160, and a reducer feed 162 operates to refine (e.g., reduce, break, crush, etc.) the particle size of the oversized proppant 106. In the example of FIG. 1, the reducer 160 is a cone crusher, however other methods of particle size refinement are contemplated (e.g., jaw crusher, auger crusher, ball mill, rod mill, hammer mill, impactor, pulverizer, breaker plate mill)” (Col. 4, lines 45-53) and “the system 100 is part of a larger fracking system 103 coupled to a wellhead 150 of a well 154 at the wellsite 152” used for fracturing (Col. 3, lines 28-30). Fisher also teaches “new sources and suppliers of proppant have shown inconsistency in quality control and thus may deliver proppant to the wellsite which has some particles that are larger than what is allowed by the API standards. Rejecting an entire proppant shipment results in costly delays when fracturing the well” (Col. 3, lines 8-13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shirley to include an on-site grinder coupled to the wellhead, with a reasonable expectation of success, in order to avoid costly delays when fracturing the well in the case of inconsistencies in sources and suppliers of proppant (thereby including:
“a grinder located adjacent to a wellsite, wherein the grinder crushes a first granular material having a particle size of 105 microns to 841 microns to produce a micro-proppant having an average particle size of 3 microns to 88 microns;
a fracturing manifold in communication with the grinder, wherein the fracturing manifold receives a fracturing slurry comprising: a) the micro-proppant, … and c) an aqueous fluid;”).
Regarding the b) second granular material of 105-841 μm, Shirley discloses “such petroleum coke microproppant particles will perform better than sand and other non-coke proppant particles in terms of transport capacity within hydraulic fractures that are created, reopened, and/or extended during a hydraulic fracturing operation” ([0090]); “At least 75 vol % of the first fraction may have particle sizes of at least 297 μm, based on the total volume of the first fraction” ([0128]) and “At block 1008, the second fraction of petroleum coke particles may be elutriated to obtain a petroleum coke proppant particle fraction and a third fraction of petroleum proppant particles. The petroleum coke proppant particle fraction may have particle sizes ranging from greater than 105 μm to at most 297 μm” ([0130]); and, separately, “Based on the aforementioned discussion, it is clear that petroleum coke proppant particles should be appropriately sized to provide for the effective utilization of the petroleum coke proppant particles during hydraulic fracturing operations. If the particles are too large, such particles may become heavy and lose their advantageously low settling velocity. In addition, particles that are too large may create operational issues in pumping across rotating equipment and attempting to flow the particles through narrow perforations and perforation tunnels. On the other hand, if the particles are too small, such particles may be useful as petroleum coke microproppant particles in particular scenarios but may be unsuitable for other scenarios, such as when there is a concern regarding fine particles degrading the conductivity of the main proppant pack” ([0078]).
However, Shirley appears to only disclose using one selected size range of the ground-and-sieved pet coke proppant particles or microproppant particles, such as the pet coke microproppant particles in [0090], not a combination of proppant particles and microproppant particles.
Nevertheless, it is well-known to use a combination of proppant particles and microproppant particles. For example, Nguyen teaches “Some methods of fracturing and propping may comprise first introducing a pad fluid … Then introducing a proppant slurry comprising a macro-proppant into the wellbore penetrating the subterranean formation” (abstract) wherein “In some instances, a method of placing proppant into a subterranean formation to produce a proppant pack 106 may use (A) a pad fluid … and (B) a proppant slurry comprising a base fluid and macro-proppant 114 and optionally lightweight micro-proppant 108, heavy micro-proppant, or both. In such a method, the lightweight micro-proppant 108 may advantageously be placed in the microfractures 110 as they form” ([0022]), wherein “As used herein, the term “lightweight micro-proppant” refers to particles having a specific gravity of about 0.9 to about 1.4 and an average diameter of about 0.1 microns to about 80 microns. As used herein, the term “heavy micro-proppant” refers to particles having a specific gravity of greater than about 1.5 and an average diameter of about 0.1 microns to about 80 microns. As used herein, the term “macro-proppant” refers to particulates having an average diameter of about 100 microns or greater” ([0008]).
Although silent to the exact size range as instantly claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shirley to include fracturing with a proppant slurry comprising a base fluid, macro-proppant, and micro-proppant, with a reasonable expectation of success, in order to allow that the micro-proppant “may advantageously be placed in the microfractures 110 as they form” using sizes of macro-proppant and micro-proppant within the general conditions known in the art (thereby including:
“a fracturing manifold in communication with the grinder, wherein the fracturing manifold receives a fracturing slurry comprising: a) the micro-proppant, b) a second granular material having an average particle size of 105 microns to 841 microns, and c) an aqueous fluid;”). Applicant may note that, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Second, the modification is obvious as no more than the use of familiar elements (known grinders; well sites; macro-proppants; micro-proppants; pumps) according to known techniques (grinding proppant on-site) in a manner that achieves predictable results (tailoring proppant sizes to the needs of the current frac job). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness.
Regarding independent claim 10, Shirley discloses A method of hydraulic fracturing (Title “METHODS FOR PREPARING PETROLEUM COKE PROPPANT PARTICLES FOR HYDRAULIC FRACTURING” and [0007] “a method for preparing petroleum coke proppant particles for hydraulic fracturing”), the method comprising:
crushing, with a grinder ([0101] “In some embodiments, at least a portion of the petroleum coke may be ground prior to the initial sieving process… Any suitable type(s) of grinding/milling technique(s) may be used for this purpose. For example, in some embodiments, the petroleum coke particles may be processed using hammer milling techniques, jet milling techniques, ball milling techniques, or the like, where each of these techniques generally involves crushing or pulverizing the particles to a suitable size and shape for utilization as petroleum coke proppant particles”)…, a first granular material having an average particle size of 105 microns to 841 microns ([0126] “FIG. 10 is a process flow diagram of another exemplary method 1000 for preparing petroleum coke proppant particles for hydraulic fracturing. The exemplary method 1000 may begin at block 1002, dry petroleum coke comprising particles larger than 297 μm may be provided” and [0127] “At block 1004, the dry petroleum coke may be ground to obtain ground petroleum coke particles”; this clearly anticipates the particle size range from e.g. 298-841 μm) to produce a micro-proppant having an average particle size of 3 microns to 88 microns ([0128] “At block 1006, the ground petroleum coke particles may be sieved to obtain a first fraction of petroleum coke particles and a second fraction of petroleum coke particles. …the second fraction may comprise no more than 25 vol % of petroleum coke microproppant particles, based on the total volume of the second fraction” and [0090] “petroleum coke microproppant particles according to embodiments described herein have a particle size of at most 105 μm (140 mesh) or, in some cases, a particle size of at most 88 μm (170 mesh), but potentially within a range from around 0.0001 μm to 105 μm (e.g., from around 0.0001, 0.001, 0.01, 0.1 μm to 0.5, 1.0, 2.0, 5.0, 8.0 10 μm, to 15, 20, 25, 30, 35, 40, 45 μm, to 50, 53, 55, 60, 63, 65 μm, to 74, 75, 80, 85, 88, 90, 95, 100, 105 μm)”; this clearly anticipates the 3-88 μm size range);
receiving, at a fracturing manifold …, a fracturing slurry (e.g., [0104] “Finally, at block 412, the petroleum coke proppant particles may be used in the field during the hydraulic fracturing operation via introduction of the fracturing fluid including the petroleum coke proppant particles into a subterranean formation” and [0054] “the term “hydrocarbon well” (or simply “well”) includes the wellbore in addition to the wellhead and other associated surface equipment”; this must include a manifold) comprising: a) the micro-proppant ([0090] “such petroleum coke microproppant particles will perform better than sand and other non-coke proppant particles in terms of transport capacity within hydraulic fractures that are created, reopened, and/or extended during a hydraulic fracturing operation”), … and c) an aqueous fluid ([0004] “Hydraulic fracturing typically involves the pumping of large quantities of fracturing fluid” e.g. [0069] “slickwater” or [0073] “gelled fracturing fluids”; these are both water-based); and
pumping, with one or more fracturing pumps, the fracturing slurry from the fracturing manifold into a wellhead of the wellsite (e.g., [0104] “More specifically, in various embodiments, this may include pumping the fracturing fluid including the petroleum coke proppant particles into the subterranean formation at a high pump rate (e.g., an average pump rate of at least 25 bbl/min (0.07 m3/s) and at most 250 bbl/min (0.68 m3/s)) to form hydraulic fractures within the subterranean formation”).
Regarding the grinder “adjacent” to the wellsite and “in communication” with a fracturing manifold, Shirley discloses “This disclosure relates generally to the field of hydraulic fracturing operations and the fracturing fluids and proppant particles employed therein” ([0001]) and, in relation to the Fig. 4 thermal post-treatment embodiment, “At block 410, the petroleum coke proppant particles may be transported to the production site and stored in any suitable manner. In some embodiments, the petroleum coke proppant particles may be transported via truck or rail. When the hydraulic fracturing operation commences, the petroleum coke proppant particles may then be mixed with a carrier fluid, additives (if any), and non-coke proppant particles (if any) to form a fracturing fluid” ([0103]).
However, Shirley fails to disclose for the Fig. 10 grinding embodiment if the grinder may be located adjacent to a wellsite and in communication with a fracturing manifold.
Nevertheless, such on-site grinders appear to be known in the art. For example, Fisher teaches “a system for processing a mixed proppant at a wellsite for a well, the system including a separator including a screen configured to receive the mixed proppant that includes a proppant meeting a desired size criteria and an oversized proppant exceeding the desired size criteria, sort the proppant from the oversized proppant, direct the proppant along a primary flow path to a blender, and direct the oversized proppant along a diverted flow path to a reducer” (abstract) wherein “Once the oversized proppant 106 is transferred along the diverted flow path 123, the oversized proppant enters the reducer 160, and a reducer feed 162 operates to refine (e.g., reduce, break, crush, etc.) the particle size of the oversized proppant 106. In the example of FIG. 1, the reducer 160 is a cone crusher, however other methods of particle size refinement are contemplated (e.g., jaw crusher, auger crusher, ball mill, rod mill, hammer mill, impactor, pulverizer, breaker plate mill)” (Col. 4, lines 45-53) and “the system 100 is part of a larger fracking system 103 coupled to a wellhead 150 of a well 154 at the wellsite 152” used for fracturing (Col. 3, lines 28-30). Fisher also teaches “new sources and suppliers of proppant have shown inconsistency in quality control and thus may deliver proppant to the wellsite which has some particles that are larger than what is allowed by the API standards. Rejecting an entire proppant shipment results in costly delays when fracturing the well” (Col. 3, lines 8-13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shirley to include an on-site grinder coupled to the wellhead, with a reasonable expectation of success, in order to avoid costly delays when fracturing the well in the case of inconsistencies in sources and suppliers of proppant (thereby including:
“crushing, with a grinder located adjacent to a wellsite, a first granular material having an average particle size of 105 microns to 841 microns to produce a micro-proppant having an average particle size of 3 microns to 88 microns;
receiving, at a fracturing manifold in communication with the grinder, a fracturing slurry comprising: a) the micro-proppant, … and c) an aqueous fluid;”).
Regarding the b) second granular material of 105-841 μm, Shirley discloses “such petroleum coke microproppant particles will perform better than sand and other non-coke proppant particles in terms of transport capacity within hydraulic fractures that are created, reopened, and/or extended during a hydraulic fracturing operation” ([0090]); “At least 75 vol % of the first fraction may have particle sizes of at least 297 μm, based on the total volume of the first fraction” ([0128]) and “At block 1008, the second fraction of petroleum coke particles may be elutriated to obtain a petroleum coke proppant particle fraction and a third fraction of petroleum proppant particles. The petroleum coke proppant particle fraction may have particle sizes ranging from greater than 105 μm to at most 297 μm” ([0130]); and, separately, “Based on the aforementioned discussion, it is clear that petroleum coke proppant particles should be appropriately sized to provide for the effective utilization of the petroleum coke proppant particles during hydraulic fracturing operations. If the particles are too large, such particles may become heavy and lose their advantageously low settling velocity. In addition, particles that are too large may create operational issues in pumping across rotating equipment and attempting to flow the particles through narrow perforations and perforation tunnels. On the other hand, if the particles are too small, such particles may be useful as petroleum coke microproppant particles in particular scenarios but may be unsuitable for other scenarios, such as when there is a concern regarding fine particles degrading the conductivity of the main proppant pack” ([0078]).
However, Shirley appears to only disclose using one selected size range of the ground-and-sieved pet coke proppant particles or microproppant particles, such as the pet coke microproppant particles in [0090], not a combination of proppant particles and microproppant particles.
Nevertheless, it is well-known to use a combination of proppant particles and microproppant particles. For example, Nguyen teaches “Some methods of fracturing and propping may comprise first introducing a pad fluid … Then introducing a proppant slurry comprising a macro-proppant into the wellbore penetrating the subterranean formation” (abstract) wherein “In some instances, a method of placing proppant into a subterranean formation to produce a proppant pack 106 may use (A) a pad fluid … and (B) a proppant slurry comprising a base fluid and macro-proppant 114 and optionally lightweight micro-proppant 108, heavy micro-proppant, or both. In such a method, the lightweight micro-proppant 108 may advantageously be placed in the microfractures 110 as they form” ([0022]), wherein “As used herein, the term “lightweight micro-proppant” refers to particles having a specific gravity of about 0.9 to about 1.4 and an average diameter of about 0.1 microns to about 80 microns. As used herein, the term “heavy micro-proppant” refers to particles having a specific gravity of greater than about 1.5 and an average diameter of about 0.1 microns to about 80 microns. As used herein, the term “macro-proppant” refers to particulates having an average diameter of about 100 microns or greater” ([0008]).
Although silent to the exact size range as instantly claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shirley to include fracturing with a proppant slurry comprising a base fluid, macro-proppant, and micro-proppant, with a reasonable expectation of success, in order to allow that the micro-proppant “may advantageously be placed in the microfractures 110 as they form” using sizes of macro-proppant and micro-proppant within the general conditions known in the art (thereby including:
“receiving, at a fracturing manifold in communication with the grinder, a fracturing slurry comprising: a) the micro-proppant, b) a second granular material having an average particle size of 105 microns to 841 microns, and c) an aqueous fluid;”). Applicant may note that, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Second, the modification is obvious as no more than the use of familiar elements (known grinders; well sites; macro-proppants; micro-proppants; pumps) according to known techniques (grinding proppant on-site) in a manner that achieves predictable results (tailoring proppant sizes to the needs of the current frac job). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness.
Regarding claims 2 and 11, Shirley discloses wherein a majority of the micro-proppant has a reduced sphericity relative to a sphericity of the first granular material as a result of the crushing by the grinder ([0108] “FIGS. 5A and 5B illustrate the impact of grinding and sieving a 70/140-mesh petroleum coke sample. Specifically, FIG. 5A illustrates the petroleum coke sample 500, while FIG. 5B illustrates the petroleum coke sample 502 after grinding and sieving. As shown in FIG. 5B, the grinding process may cause at least a portion of the particles to undergo a reduction in sphericity”; as depicted in Fig. 5B, this is a majority of the particles).
Regarding claims 3 and 12, Shirley discloses “petroleum coke microproppant particles according to embodiments described herein have a particle size of at most 105 μm (140 mesh) or, in some cases, a particle size of at most 88 μm (170 mesh), but potentially within a range from around 0.0001 μm to 105 μm (e.g., from around 0.0001, 0.001, 0.01, 0.1 μm to 0.5, 1.0, 2.0, 5.0, 8.0 10 μm, to 15, 20, 25, 30, 35, 40, 45 μm, to 50, 53, 55, 60, 63, 65 μm, to 74, 75, 80, 85, 88, 90, 95, 100, 105 μm)” ([0090]).
Although silent to the exact size distribution as instantly claimed, if Shirley is particularly targeting a particle size of e.g. 45 μm through sieving, this would certainly be within a P50 range of 20-70 μm and a P90 range of 10-80 μm. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shirley to include “wherein the micro-proppant has a P50 between 20 microns and 70 microns and has a P10 to P90 distribution range between 10 microns and 80 microns,” with a reasonable expectation of success, in order to provide a suitable microproppant particle size within the general conditions disclosed by Shirley. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claims 4 and 13, as in claims 1 and 10, Nguyen further teaches “In some embodiments, the lightweight micro-proppant 108 and/or the heavy micro-proppant may be present in a proppant slurry in an amount of about 0.001 ppg to about 5 ppg, including a subset range thereof like about 0.001 ppg to about 0.05 ppg, about 0.05 ppg to about 0.5 ppg, and about 0.5 ppg to about 5 ppg. In some embodiments, the macro-proppant 114 may be present in a proppant slurry in an amount of about 0.01 ppg to about 20 ppg, including a subset range thereof like about 0.01 ppg to about 1 ppg, about 0.1 ppg to about 5 ppg, and about 5 ppg to about 20 ppg” ([0026]).
For an amount of e.g. 2.5 ppg micro-proppant and 10 ppg macro-proppant, the micro-proppant would be ~25 vol% of total proppant used. Accordingly, although silent to the exact volume ratio as instantly claimed, it would have been further obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Shirley to include “wherein the fracturing slurry pumped during a fracturing operation comprises a total volume of proppant, wherein the total volume of proppant comprises the micro-proppant and the second granular material that are pumped during the fracturing operation, and wherein the micro-proppant is 2.5% to 25% of the total volume of proppant pumped during the fracturing operation,” with a reasonable expectation of success, in order to provide relative amounts of the micro-proppant and macro-proppant within the general conditions taught by Nguyen. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claims 5, 6, 14, and 15, Shirley discloses “petroleum coke proppant particles” and “petroleum coke microproppant particles” (abstract), as well as “When the hydraulic fracturing operation commences, the petroleum coke proppant particles may then be mixed with a carrier fluid, additives (if any), and non-coke proppant particles (if any) to form a fracturing fluid” ([0103]) wherein “The term “non-coke proppant” means any proppant that is not a coke proppant. Examples of non-coke proppant include sand, ceramic proppants, glass proppants, and polymer proppants” ([0048])
(claims 5 and 14) wherein the first granular material comprises one or more of silica sand, drilling cuttings, petroleum coke particles, recycled glass particles, plastic particles, diatomite beads, walnut shells, and other inert solid materials; and/or
(claims 6 and 15) wherein the second granular material comprises one or more of silica sand, ceramic or other proppant, and drilling cuttings.
Although not required to render obvious the claims, the Office observes that Fisher further teaches a reducer such as a cone crusher, jaw crusher, auger crusher, ball mill, rod mill, hammer mill, impactor, pulverizer, breaker plate mill, etc. to reduce the size of proppants, which are not limited in materials and appear to include “Solid proppant (e.g., sand, rocks, crushed rocks, etc.)” (Fisher, Col. 1, lines 15-16). Accordingly, it appears it would similarly apply to “silica sand” and the like.
Regarding claims 7 and 16, as in claims 1 and 10, Fisher teaches “Once the oversized proppant 106 is transferred along the diverted flow path 123, the oversized proppant enters the reducer 160, and a reducer feed 162 operates to refine (e.g., reduce, break, crush, etc.) the particle size of the oversized proppant 106. In the example of FIG. 1, the reducer 160 is a cone crusher, however other methods of particle size refinement are contemplated (e.g., jaw crusher, auger crusher, ball mill, rod mill, hammer mill, impactor, pulverizer, breaker plate mill)” (Col. 4, lines 45-53) and “the system 100 is part of a larger fracking system 103 coupled to a wellhead 150 of a well 154 at the wellsite 152” used for fracturing (Col. 3, lines 28-30).
Although Fisher does not specify that the reducer 160 is on a mobile trailer, as in MPEP 2144.04, the fact that a claimed device is portable or movable is not sufficient by itself to patentably distinguish over an otherwise old device unless there are new or unexpected results. In re Lindberg, 194 F.2d 732, 93 USPQ 23 (CCPA 1952). In this case, there appear to be no new or unexpected results from locating the grinder on a mobile trailer. Accordingly, this cannot be sufficient by itself to patentably distinguish over an otherwise old device (an onsite grinder).
Accordingly, it would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shirley to include an on-site grinder coupled to the wellhead, “wherein the grinder is located on a mobile trailer adjacent to the wellsite,” with a reasonable expectation of success, in order to avoid costly delays when fracturing the well in the case of inconsistencies in sources and suppliers of proppant.
For example, Applicant has disclosed no criticality to locating the grinder on a mobile trailer as opposed to any other arrangement at the wellsite.
Regarding claims 8 and 17, Shirley discloses “in some embodiments, it may be desirable to increase the oil-wettability of the particles to reduce the water-oil ratio of the resulting produced hydrocarbon fluids; in this case, it may be preferable to spray or coat the particles with diesel” ([0093]) and “the grinding may be performed prior to the sieving, or the grinding may be performed both before and after the sieving, depending on the details of the particular implementation” ([0080]). Accordingly, Shirley discloses “wherein the first granular material is combined with a grinding fluid before the grinder crushes the first granular material.”
Claims 9 and 18 are rejected under 35 U.S.C. 103 as obvious over Shirley in view of Fisher and Nguyen as in claims 1 and 10, and further in view of Oren (2017/0190527).
Regarding claims 9 and 18, Shirley discloses “It is currently common practice to spray water with surfactant or diesel on petroleum coke particles at refineries for dust control purposes” ([0093]).
However, Shirley fails to disclose locating the grinder within a dust containment system.
Nevertheless, dust containment systems for proppant processing are rather well-known. For example, Oren teaches “a system for capturing proppant dust particles when positioned at a fracking operation site including a proppant delivery assembly” wherein “the system includes a dust collection assembly positioned proximate and associated with the proppant delivery assembly to capture dust particles released by movement and settling of the proppant when being dispensed and delivered by the proppant delivery assembly. The dust collection assembly is positioned to direct an air flow in a flow path overlying the dust particles to capture the dust particles and move the dust particles away from the proppant thereby reducing risk of dust exposure to fracking operation site personnel” (abstract). Oren further teaches “The containers 18 in the illustrated embodiment are substantially sealed, self-contained, and modular to enable transportation and storage of the proppant while minimizing the risk of exposure of the proppant and/or dust particles formed from the proppant” ([0061]) and “mechanical equipment may be damaged by the dust particles” ([0007]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shirley to include “wherein the grinder is located within a dust containment system,” such as the dust collection assembly surrounding the sealed, self-contained, and modular containers in Oren, with a reasonable expectation of success, in order to avoid wherein “mechanical equipment may be damaged by the dust particles.”
Second, the modification is obvious as no more than the use of familiar elements (known grinders; well sites; macro-proppants; micro-proppants; pumps; dust collectors) according to known techniques (grinding proppant on-site; capturing dust from dust-producing equipment) in a manner that achieves predictable results (tailoring proppant sizes to the needs of the current frac job; minimizing mechanical equipment damage from dust). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The reference to Alary (11,732,184) (cited by Applicant) a sintered rod-shaped proppant which is “milled to achieve better compacity and crush resistance in the final sintered rod” (abstract) wherein “the pre-milled alumina-containing material may have at least 95% of its particles smaller than 500 microns as measured by sieving or a Microtrac particle size analyzer, and may have all of its particles smaller than 500 microns. After milling, in certain embodiments the material has a d50 of less than 10 microns… The milled material may also have substantially all of its particles smaller than 30 microns” (Col. 9, lines 1-13). However, this reference does not appear necessary at this time.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674