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 03/17/2026, with respect to objection of the title have been fully considered and are persuasive. The objection of the specification has been withdrawn.
Applicant’s arguments, filed on 03/17/2026, with respect to rejection of claims 1, 3, 5 and 7 rejections under 35 USC 112 b/2nd have been fully considered and are persuasive. The rejection of the claims have been withdrawn.
Applicant's arguments filed on 03/17/2026 regarding claim 7 rejected under 35 USC 112 b/2nd as indefinite have been fully considered but they are not persuasive. The applicant has not been amended in a way that would clear the indecisiveness of claim 1, therefore, the rejection has been maintained
Applicant's arguments filed on 03/17/2026 regarding claim 1 rejected under 35 USC 112 b/2nd as indefinite have been fully considered but they are not persuasive. The applicanclear the indefiniteness of claim 1, therefore, the rejection has been maintained.
Applicant's arguments filed on 03/17/2026 regarding Claims 1- 8 rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Brand et al. (US 2021/0222546 A1)have been fully considered but they are not persuasive. Therefore, the rejection has been maintained.
With regards to claim 1, the applicant argues that “the tracers are deliberately introduced as part of the fracturing operation-often embedded in proppant or carried in fracturing fluid-and the subsequent drilling activity is performed for the express purpose of recovering those intentionally placed tracers to map fracture extent.” (See Arguments, page 6, 1st paragraph).
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., ..the present claims are directed to detecting tracers that were previously injected into the reservoir for interwell or waterflood purposes, potentially many years before drilling, and that remain in reservoir rock when a production well is drilled for production purposes. The present invention does not place or inject tracers …) 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 examiner respectfully disagrees,.
Therefore, Brand discloses the invention as claimed.
Claim Objections
Claim 7 is objected to because of the following informalities: Even though the claim has been amended, the claim still has problems related to broader and narrower range in the same claim, for instance: at least 50 years and the claim also recite at least 5 years and for all the other ranges within the claim language. The claim should be amended in order to avoid further 112s rejection.
. Appropriate correction is required.
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.
Claim 1 is 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. It is unclear how does the tracers appears in the subterranean formation. It is part of the cuttings used as tracers or tracers added while circulating the drilling fluid and attaching to the cuttings, a previously tracer placed in wells previously drilled for injection purpose of production or any other time place while the well is drilled, making the claim indefinite.
All the claims dependent of claim 1 are also rejected.
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- 8 are rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Brand et al. (US 2021/0222546 A1) ("Brand" herein- cited previously)
Claim 1
Brand discloses, as best understood based on the indefinites above, a method of analyzing fluid flow paths in a hydrocarbon reservoir, the method comprising: [0007, 0009]
a) drilling a production well into the reservoir; [0019-0020, 0023]
b) whilst drilling, circulating drilling fluid into the well and retrieving returned drilling fluid together with rock cuttings; [0020, 0023-0024]
c) analyzing the rock cuttings for one or more tracers. [0020-0026]
or a different interpretation of Brand
Brand discloses, as best understood based on the indefinites above, a method of analyzing fluid flow paths in a hydrocarbon reservoir, the method comprising: [0007, 0009]
a) drilling a production well into a reservoir; [0019-0020, 0023]
b) whilst drilling, circulating drilling fluid into the well and retrieving returned drilling fluid together with rock cuttings; [0023-0024]
c) analyzing the rock cuttings for one or more tracers. [0020-0026]
Brand does not explicitly recite the terminology in the claim: circulating drilling fluid into the well. However, Brand discloses that As this drilling process continues, the drill cuttings and fluids recovered at the wellhead can be monitored and analyzed for the presence of the tracers distinctive of each fractured region Cuttings can also be collected along the observation wellbores 50, which can be drilled with water- based mud, so that a fluid inclusion analysis can be performed ([0020 , 0024]) which serves as circulating drilling fluid into the well. Therefore, the Examiner interprets this disclosure to cover the claimed invention.
Claim 2
Brand discloses the method according to claim 1, wherein the rock cuttings contain tracers previously injected into the reservoir through a different well. [0016-0019]
Claim 3
Brand discloses the method according to claim 1, wherein analyzing rock cuttings includes identifying a well or wells from which tracers originate. [0016-0019]
Claim 4
Brand discloses the method according to claim 3, wherein differentiable tracers have previously been injected into respective wells. [0016-0019]
Claim 5
Brand discloses the method according to claim 1, wherein fluid flow paths within the reservoir are deduced based on analyzing one or more tracers in rock cuttings. [0024, 0026] .
Claim 6
Brand discloses the method according to claim 1, wherein a substantial time has elapsed between injection of tracers into the reservoir and drilling the production well. [0022-0023]
Claim 7
Brand discloses the claimed invention according to claim 6, wherein the said substantial time is a period selected from at least 5, 10, 15, 20, 25, 30, 35, 40, 45, and 50 years.
It is elementary that the mere recitation of a newly discovered function or property, possessed by things in the prior art, does not cause a claim drawn to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter, may in fact, be a characteristic of the prior art, it possess the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart, 169 USPQ 226 (CCPA 1971).
Claim 8
Brand discloses the method according to claim 1, including making a decision about where to drill a further production well or injection well, based on the presence and variety of tracers in cuttings from the original production well. [0026]
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 05/01/2026
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