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 .
Election/Restrictions
Applicant’s election without traverse of Species II (non-ionic surfactant of claims 38 and 41) and Species IIa (a branched or unbranched C6-C32:P0(0-65):E0(0-100) of claim 41) in the reply filed on 5/13/26 is acknowledged.
In view of the prior art, the species requirement of Species IIa- Species IIc is withdrawn. As such, the entirely of claim 41 will be examined.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 36 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 pre-AIA the applicant regards as the invention. Claim 36 recites the limitation “substantially free of proppant particles.” The term “substantially free” is a relative term which renders the claim indefinite. The term "substantially" 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. It is unclear as to the amount of proppant particles required in claim 36 in order to provide for the aqueous fluid to be “substantially free of proppant particles" as claimed. For purposes of examination, the term “substantially” will be considered as if removed.
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.
Claims 28-38 and 41-47 are rejected under 35 U.S.C. 103 as being unpatentable over Morsy et al. (US 2021/0002990).
With respect to independent claim 28, Morsy discloses an aqueous fluid (Abstract and [0004]) comprising: an alkoxylated C6-C16 alcohol ([0107], [0136], and Examples 11 and 12; surfactant package comprises a combination of non-ionic surfactants as secondary surfactants);
a disulfonate ([0107], [0122], and Examples 11 and 12; surfactant package comprises an anionic surfactant as a primary surfactant);
a synthetic polymer, wherein the synthetic polymer may be polyacrylamide, polyacrylic acid (PAA), polyvinyl alcohol (PVA), co-polymers of polyacrylamide (PAM) and 2-acrylamido 2-methylpropane sulfonic acid, or any combination thereof in a concentration of 0.1% to 25% by weight of the total composition ([0103]-[0105]).
Regarding claim 28, Morsy discloses wherein the synthetic polymer is present in a concentration of 0.1% to 25% by weight of the total composition ([0105]). Although silent to wherein the synthetic polymer is present in an amount of “from 0.1 to 5 gpt,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a synthetic polymer amount as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With respect to depending claim 29, Morsy discloses wherein the synthetic polymer comprises a polyacrylamide polymer or co-polymer ([0103]-[0105]). With respect to depending claim 30, Morsy discloses wherein the aqueous fluid has a concentration of alkoxylated alcohol of between 0.001% by weight to 2.5% by weight ([0107], [0136], [0141] and Examples 11 and 12). Although silent to wherein the alkoxylated alcohol is present in an amount of “from 0.04% to 1% by weight,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a alkoxylated alcohol amount as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With respect to depending claim 31, Morsy discloses wherein the aqueous fluid has a concentration of disulfonate of between 0.001% by weight to 2.5% by weight ([0107], [0122], [0136] and Examples 11 and 12). Although silent to wherein the disulfonate is present in an amount of “from 0.03% to 0.75% by weight,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a disulfonate amount as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With respect to depending claim 32, Morsy discloses wherein the polyacrylamide polymer is present in a concentration of 0.1% to 25% by weight of the total composition ([0105]). Although silent to wherein the polyacrylamide polymer is present in an amount of “from 0.1 to 5 gpt,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a polyacrylamide polymer amount as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With respect to depending claim 33, Morsy discloses wherein the aqueous fluid has a concentration of alkoxylated alcohol of between 0.001% by weight to 2.5% by weight ([0107], [0136], [0141] and Examples 11 and 12). Although silent to wherein the alkoxylated alcohol is present in an amount of “from 0.04% to 1% by weight,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a alkoxylated alcohol amount as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Further regarding claim 33, Morsy discloses wherein the aqueous fluid has a concentration of disulfonate of between 0.001% by weight to 2.5% by weight ([0107], [0122], [0136] and Examples 11 and 12). Although silent to wherein the disulfonate is present in an amount of “from 0.03% to 0.75% by weight,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a disulfonate amount as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Further regarding claim 33, Morsy discloses wherein the polyacrylamide polymer is present in a concentration of 0.1% to 25% by weight of the total composition ([0105]). Although silent to wherein the polyacrylamide polymer is present in an amount of “from 0.1 to 5 gpt,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a polyacrylamide polymer amount as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With respect to depending claims 34 and 35, Morsy discloses wherein the aqueous fluid further comprises a well treatment agent, wherein the well treatment agent may be an acid, an alkali agent, a polymer, an anti-foam agent, a co-solvent, and a surfactant ([0004]). With regard to the remaining materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the well treatment agent.
With respect to depending claim 36, Morsy discloses wherein the aqueous fluid is free of proppant particles ([0092]).
With respect to depending claims 37 and 38, Morsy discloses wherein the aqueous fluid further comprises an additional surfactant, wherein the additional surfactant is a non-ionic surfactant ([0107], [0136], and Examples 11 and 12; surfactant package comprises a combination of non-ionic surfactants as secondary surfactants).
With respect to depending claim 41, which is dependent upon claim 38, Morsy discloses wherein the non-ionic surfactant may be a branched or unbranched C6-C32:PO(0-65):EO(0-100), such as a branched or unbranched C6-C30:PO(30-40):EO(25-35), a branched or unbranched C6-Cl2:PO(30-40):EO(25-35), or a branched or unbranched C6-C30:EO(8-30) ([0107], [0136], and Examples 11 and 12).
With respect to depending claim 42, Morsy discloses wherein the aqueous fluid further comprises a co-solvent present in the aqueous fluid in an amount of from 0.1% to 25% by weight of the total weight of the aqueous fluid ([0100]-[0102]).
With respect to depending claims 43-45, Morsy discloses wherein the aqueous fluid comprises water, wherein the water may be sea water, brackish water, fresh water, flowback or produced water, wastewater, or brine ([0091] and [0093]). With regard to the remaining materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the water.
With respect to depending claim 46, which is dependent upon claim 43, Morsy discloses wherein the water comprises from 30% to 99.85% by weight of the aqueous fluid ([0093]). With respect to depending claim 47, Morsy discloses wherein the aqueous fluid comprises a total surfactant concentration of from 0.01 % to 5% by weight, based on the total weight of the
aqueous fluid ([0147]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nizamidin et al. (US 2020/0056087) teaches an aqueous composition comprising polyacrylamide, disulfonate, and alkoxylated alcohol.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674
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