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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-15 and 20 in the reply filed on 03/12/26 is acknowledged. No specific arguments with regard to the traversal were made.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/12/26.
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 15 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. Claim 15 recites “wherein the proppant comprises a micro-proppant, a fracturing sand, proppant particulates, or a combination thereof.” Claim 15, however, depends upon claim 9 wherein Applicant lists alternative materials from which the particulate material is chosen; although one of such materials is indeed a proppant, Applicant has not positively identified the particulate as such in claim 15, and, as such, it is unclear if the particulate matter of claim 9 is indeed required to be the proppant that is further defined by claim 15. Applicant is advised to amend claim 15 to recite – The method of claim 9, wherein the particulate material comprises (a) the proppant, and further, wherein the proppant comprises a micro-proppant, a fracturing sand, proppant particulates, or combinations thereof.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Belakshe et al. (US 10,266,749).
With respect to independent claim 1, Belakshe et al. discloses a method of servicing a well having a wellbore extending from a surface wellsite and penetrating a subterranean formation, comprising:
(i) contacting a binder composition with a particulate material (col. 12, l. 12-26); and
(ii) binding the particulate material with the binder composition to form a consolidated particulate material in the wellbore, in the subterranean formation, or both (col. 9, l. 36-54; col. 11, l. 6 and 13-16; col. 12, l. 12-26),
wherein the binder composition comprises a poly-epoxy glycerol-based oil (col. 14, l. 1-65), a crosslinker (col. 23, l. 4-5), and a soluble organic acid with two or more acid groups (col. 7, l. 35 and col. 24, l. 34-35, wherein oxalic and succinic acid are disclosed, i.e., organic acids disclosed by Applicant in [0020]; col. 20, l. 34, wherein citric acid is disclosed, i.e., an organic acid disclosed by Applicant in [0020]).
The Examiner notes, with regard to the combination of specifically choosing a carrier fluid including a soluble organic acid with two or more acid groups, such as oxalic acid or succinic acid, and/or an additional optional component of citric acid, as suggested by Belakshe et al., in combination with an additional optional component, such as the crosslinker of Belakshe et al., since Belakshe et al. discloses the inclusion of each of the noted components, a prima facie case of obviousness exists over the claimed combination. See Merck v Biocraft, 10 USPQ2d 1843 (Fed Cir 1985) where it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. One skilled in the art would be motivated to select Applicant’s claimed combination of a binder comprising the poly-epoxy glycerol-based oil of Belakshe et al. with a carrier fluid such as succinic acid or oxalic acid, and/or a tackifier of citric acid, along with a crosslinker, for the purpose of increasing the viscosity of the binder composition, in order to obtain a curable composition that can form a stronger bond with proppants, gravel and subterranean surfaces than other consolidating compositions, providing greater strength using a smaller amount compared to other treatment methods (col. 8, l. 45-63).
With respect to dependent claim 2, Belakshe et al. discloses forming the consolidated particulate material in the wellbore, in the subterranean formation, or both via contact with the binder (col. 11, l. 4-16; col. 12, l. 12-26).
With respect to dependent claim 3, Belakshe et al. discloses wherein the (i) contacting occurs at a surface and the particulate material comprises a proppant (col. 12, l. 12-17; col. 12, l. 27-35).
With respect to dependent claim 4, Belakshe et al. discloses wherein the proppant comprises one as claimed (col. 11, l. 41-60).
With respect to dependent claim 5, Belakshe et al. discloses wherein the proppant is dry and wherein the (i) contacting further comprises: contacting a dry proppant with the binder composition to form a coated proppant (col. 12, l. 30-35); forming a proppant-laden fracturing fluid comprising the coated proppant and a carrier fluid (col. 10, l. 55-58); pumping the proppant-laden fracturing fluid via the wellbore into fractures of the subterranean formation (col. 10, l. 36-37); and depositing the coated proppant into at least a portion of the fractures prior to (ii) binding (col. 11, l. 13-15; col. 12, l. 20).
With respect to dependent claim 6, Belakshe et al. discloses wherein the contacting (i) further comprises combining an aqueous carrier fluid (col. 25, l. 8-9), a proppant, and the binder composition to form a proppant-laden fracturing fluid comprising a coated proppant; pumping the proppant-laden fracturing fluid via the wellbore into at least a portion of the fractures; and depositing the coated proppant into at least a portion of the fractures prior to the (ii) binding (col. 12, l. 12-20 and 27-29).
With respect to dependent claim 7, Belakshe et al. discloses wherein the (i) contacting further comprises contacting a liquid component of the binder composition with a dry proppant to form a pre-treated proppant (col. 12, l. 30-35); combining the pre-treated proppant with a carrier fluid to form a fracturing fluid (col. 10, l. 55-58); pumping the proppant-laden fracturing fluid via the wellbore into at least a portion of the fractures (col. 10, l. 20-48; col. 12, l. 17-19); and depositing the coated proppant into at least a portion of the fracture (col. 12, l. 17-20). The reference additionally suggests wherein the binder can be combined with any suitable downhole fluid before, during or after placement of the composition in the subterranean formation (col. 24, l. 45-col. 25, l. 4). Belakshe et al. additionally suggests wherein the binder can be added to an aqueous fracturing fluid (col. 25, l. 8-9), as well as wherein the binder composition may include a viscosifier and crosslinker so as to crosslink a crosslinkable material in the composition and/or downhole (col. 21, l. 21-col. 23, l. 56); it is further suggested wherein such can provide increased viscosity before injection, at the time of injection, during travel through the tubular, once the composition has reached the desired location or some time after the composition reaches the desired location (col. 21, l. 23-33). The reference, however, fails to explicitly disclose wherein a liquid first component of the binder composition is contacted with the dry proppant to form a pre-treated proppant and wherein the pre-treated proppant is not only combined with a carrier fluid, but also, a second component of the binder composition, such as the crosslinker, as instantly claimed. Since Belakshe et al. suggests addition of the pre-treated proppant to a carrier fluid to form a fracturing fluid, and, further, suggests wherein the crosslinker of the composition can increase viscosity at the time of injection and/or during travel through the tubular, it would have been obvious to one having ordinary skill in the art to try the crosslinker as a second component and added to the carrier fluid and pre-treated proppant of Belakshe et al. in order to ensure the viscosity increase imparted to the binder thereby does not occur until the intended time, such as at the time of injection and/or during travel through the tubular, thereby providing for the invention as claimed. Furthermore, it has been held that the selection of any order of mixing ingredients is prima facie obvious (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)) and that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946)). Herein, Belakshe et al. suggests delaying crosslinking/viscosity increase of the binder composition, and, further provides for consolidated proppant within a fracture that has stronger bonds and greater strength comparable to other curable compositions (col. 8, l. 45-63). Since Applicant’s binder composition containing the same such materials also provides for consolidation of proppant within a fracture, it does not appear that such is a new or unexpected result, and, as such, the Office maintains the position of prima facie obviousness for at least the reasons set forth above.
With respect to dependent claim 8, Belakshe et al. discloses wherein the contacting (i) occurs downhole (col. 9, l. 65-67; col. 12, l. 21-26; col. 12, l. 38-42, wherein the preflush removes oils from the particulates downhole so that the binder composition can contact them).
With respect to dependent claim 9, Belakshe et al. discloses wherein the particulate material comprises at least one as claimed (col. 9, l. 37-45).
With respect to dependent claim 10, Belakshe et al. discloses wherein after (i) contacting, the particulate material forms a consolidated material downhole with the binder composition (col. 12, l. 12-26).
With respect to dependent claim 11, Belakshe et al. discloses wherein the consolidated particulate material comprises a consolidated proppant pack (col. 8, l. 45-49; col. 9, l. 37-44).
With respect to dependent claim 12, Belakshe et al. discloses wherein a treatment fluid comprising a binder composition and a carrier fluid is foamed, is an emulsion, or both (col. 7, l. 16-19).
With respect to dependent claim 13, Belakshe et al. discloses wherein a treatment fluid containing the binder composition may include an aqueous fluid (col. 7, l. 38-44). The reference additionally suggests wherein the binder can be added to an aqueous fracturing fluid (col. 25, l. 8-9), as well as wherein the binder composition may include a viscosifier and crosslinker so as to crosslink a crosslinkable material in the composition and/or downhole (col. 21, l. 21-col. 23, l. 56); it is further suggested wherein such can provide increased viscosity before injection, at the time of injection, during travel through the tubular, once the composition has reached the desired location or some time after the composition reaches the desired location (col. 21, l. 23-33). The reference additionally provides for contact of proppant present in fractures of the subterranean formation (col. 9, l. 40-42). Although silent to sequentially or simultaneously contacting the at least a portion of the proppant present in the fractures with a first composition comprising the poly-epoxy glycerol-based oil and the soluble organic acid with the two or more acid groups and a second aqueous component comprising the crosslinker, since the reference clearly suggests wherein crosslinking can occur downhole so as to increase viscosity or the binder composition, as well as wherein all components can contact the proppant particulates simultaneously, it would have been obvious to one having ordinary skill in the art to try a first and second aqueous composition pumped sequentially or simultaneously as claimed in order to yield the predictable result of allowing crosslinking and the viscosity increase of the binder to occur downhole/at the intended location for placement within the proppant containing fracture so as to consolidate the proppant therein. Furthermore, it has been held that the selection of any order of mixing ingredients is prima facie obvious (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)) and that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946)). Herein, Belakshe et al. suggests delaying crosslinking/viscosity increase of the binder composition, and, further provides for consolidated proppant within a fracture that has stronger bonds and greater strength comparable to other curable compositions (col. 8, l. 45-63). Since Applicant’s binder composition containing the same such materials also provides for consolidation of proppant within a fracture, it does not appear that such is a new or unexpected result, and, as such, the Office maintains the position of prima facie obviousness for at least the reasons set forth above.
With respect to dependent claim 14, Belakshe et al. discloses wherein the binder system is allowed to cure at formation temperature (col. 12, l. 12-26), thereby suggesting wherein the (ii) binding comprises allowing an organic acid with the two or more acid groups to react in the presence of the crosslinker with the poly-epoxy glycerol-based oil at an activation temperature as instantly claimed. Although silent to the specific formation temperature given temperatures within the extensive range instantly claimed exist within subterranean formations, it is the position of the Office that the provision of such an activation temperature within the range instantly claimed would indeed be obvious to one having ordinary skill in the art since such temperatures are commonly found within a formation and it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). The instant specification fails to explicitly establish the instantly claimed temperature range as critical and it is unclear if any unexpected results are achieved by providing for such as an activation temperature. Since using the instantly claimed concentration ranges. Since Belakshe et al. discloses wherein the binding indeed occurs at an activation temperature that is the formation temperature so as to form a consolidated mass, it does not appear that such would be considered an unexpected result of providing for an activation temperature within the range as claimed, and, as such, the determination of optimal activation temperature for binding in the method of Belakshe et al. would be achievable through routine experimentation in the art.
With respect to dependent claim 15, Belakshe et al. discloses wherein the proppant comprises one as claimed (col. 11, l. 41-60).
With respect to independent claim 20, Belakshe et al. discloses a method of servicing a wellbore extending from a surface wellsite and penetrating a subterranean formation, comprising:
(i) contacting a binder composition with a particulate material (col. 12, l. 12-26); and
(ii) binding the particulate material with the binder composition to form a consolidated particulate material in the wellbore, in the subterranean formation, or both (col. 9, l. 36-54; col. 11, l. 6 and 13-16; col. 12, l. 12-26),
wherein the binder composition comprises a poly-epoxy glycerol-based oil (col. 14, l. 1-65), a crosslinker (col. 23, l. 4-5), and a soluble organic acid with two or more acid groups (col. 7, l. 35 and col. 24, l. 34-35, wherein oxalic and succinic acid are disclosed, i.e., organic acids disclosed by Applicant in [0020]; col. 20, l. 34, wherein citric acid is disclosed, i.e., an organic acid disclosed by Applicant in [0020]), and
wherein a treatment fluid comprising a binder composition and a carrier fluid is foamed, is an emulsion, or both (col. 7, l. 16-19).
The Examiner notes, with regard to the combination of specifically choosing a carrier fluid including a soluble organic acid with two or more acid groups, such as oxalic acid or succinic acid, and/or an additional optional component of citric acid, as suggested by Belakshe et al., in combination with an additional optional component, such as the crosslinker of Belakshe et al., since Belakshe et al. discloses the inclusion of each of the noted components, a prima facie case of obviousness exists over the claimed combination. See Merck v Biocraft, 10 USPQ2d 1843 (Fed Cir 1985) where it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. One skilled in the art would be motivated to select Applicant’s claimed combination of a binder comprising the poly-epoxy glycerol-based oil of Belakshe et al. with a carrier fluid such as succinic acid or oxalic acid, and/or a tackifier of citric acid, along with a crosslinker, for the purpose of increasing the viscosity of the binder composition, in order to obtain a curable composition that can form a stronger bond with proppants, gravel and subterranean surfaces than other consolidating compositions, providing greater strength using a smaller amount compared to other treatment methods (col. 8, l. 45-63).
additives from the list of additives disclosed by Rae et al. as such are disclosed as useful for well cements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 10,501,684 discloses methods of treating a formation by placement of a proppant coated with a curable composition comprising a poly-epoxy glycerol-based oil therein.
US 10,155,902 discloses proppants coated with a hardened resin comprising a poly-epoxy glycerol-based oil.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
04/21/26
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