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 the Species of “thermoplastic polyurethane elastomers (TPU) block copolymer” required non-degradable polymer and required degradable polymer (i.e. [0024] “Similarly, thermoplastic polyurethane elastomers consist of alternating sequences of "hard" (i.e., non-degradable) and "soft" (i.e., degradable) domains formed by the reaction of diisocyanates and various dials”); “phthalocyanine blue” tracer; and “particle” form of the particle composite, drawn to claims 18-22, in the reply filed on 22 May 2026 is acknowledged.
Claim Objections
Claims 18-22 are objected to because of the following informalities:
Independent claim 18 should recite “a degradable portion; and” (correcting the typo). The dependent claims are objected to by dependency.
Appropriate correction is required.
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 18-21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Lafitte (2010/0307745) (also U.S. Patent No. 9,290,689 cited in parent 17/815,379).
Regarding independent claim 18, Lafitte discloses A composition (abstract “tracer particles”) comprising:
a polymer composite particle ([0131] “FIG. 4 illustrates a possible further development to the "architecture" of particles. A particle made by the procedure used for Examples 1 to 6 provides a core 50, which contains a tracer dye distributed within an encapsulating polymer matrix” and [0049] “Islands-in-matrix type particles can release the islands of tracer substance upon chemical degradation of the matrix”) comprising:
a degradable portion ([0051] “An organic polymer which undergoes chemical degradation may have a polymer chain which incorporates chemical bonds which are labile to reaction, especially hydrolysis, under reservoir conditions leading to cleavage of the polymer chain. A number of chemical groups have been proposed as providing bonds which can be broken, including ester, acetal, sulfide and amide groups. … Cleavable groups which are particularly envisaged are ester and amide groups both of which provide bonds which can be broken by a hydrolysis reaction” and [0054] “a polymer containing hydrolytically cleavable bonds may be a block copolymer with the blocks joined through ester or amide bonds”; the portions which are the ester or amide bonds are thus degradable); and
a non-degradable portion (e.g., [0055] “One or both of the pre-polymers may itself be a polymer or oligomer. Prepolymers with reactive hydroxyl groups include oligosaccharides, synthetic polymers containing primary and secondary hydroxyl groups, such as poly(vinyl alcohol) and poly(hydroxy alkyl(meth)acrylate) copolymers, poly(siloxanes), epoxy resins, dihydroxy-terminated poly(amides), dihydroxy-terminated poly(amines),and dihydroxy-terminated poly(carbonates)”; the portions which are not the ester or amide bonds are thus non-degradable) comprising a tracer (e.g. [0049] “Islands-in-matrix type particles can release the islands of tracer substance upon chemical degradation of the matrix”; based on the nature of island-in-matrix polymer architecture, there must be some non-degradable portion that comprises some tracer); and
stimulation fluid (e.g. [0019] “Transport of particles down the wellbore may be carried out in the course of a fracturing job and the fluid(s) in which the tracer particles are conveyed down the wellbore may be fluid(s) used in the course of that fracturing job”).
Regarding claim 19, Lafitte discloses “An organic polymer which undergoes chemical degradation may have a polymer chain which incorporates chemical bonds which are labile to reaction, especially hydrolysis, under reservoir conditions leading to cleavage of the polymer chain. A number of chemical groups have been proposed as providing bonds which can be broken, including ester, acetal, sulfide and amide groups. … Cleavable groups which are particularly envisaged are ester and amide groups both of which provide bonds which can be broken by a hydrolysis reaction” ([0051]) wherein “a polymer containing hydrolytically cleavable bonds may be a block copolymer with the blocks joined through ester or amide bonds” ([0054]) and “One or both of the pre-polymers may itself be a polymer or oligomer. Prepolymers with reactive hydroxyl groups include oligosaccharides, synthetic polymers containing primary and secondary hydroxyl groups, such as poly(vinyl alcohol) and poly(hydroxy alkyl(meth)acrylate) copolymers, poly(siloxanes), epoxy resins, dihydroxy-terminated poly(amides), dihydroxy-terminated poly(amines),and dihydroxy-terminated poly(carbonates)” ([0055]). Accordingly, Lafitte discloses
wherein the polymer composite particle is a block copolymer wherein one block of the block copolymer is the degradable portion and one block of the block copolymer is the non-degradable portion, insofar as the blocks bearing the ester or amide bonds are the degradable portion and the blocks which are other polymer or oligomer are the non-degradable portion.
Regarding claim 20, Lafitte discloses wherein the degradable portion is a degradable polymer comprising hydrolyzable bonds ([0051] “An organic polymer which undergoes chemical degradation may have a polymer chain which incorporates chemical bonds which are labile to reaction, especially hydrolysis, under reservoir conditions leading to cleavage of the polymer chain. A number of chemical groups have been proposed as providing bonds which can be broken, including ester, acetal, sulfide and amide groups. … Cleavable groups which are particularly envisaged are ester and amide groups both of which provide bonds which can be broken by a hydrolysis reaction” and [0054] “a polymer containing hydrolytically cleavable bonds may be a block copolymer with the blocks joined through ester or amide bonds”).
Regarding claim 21, as in claim 19, Lafitte discloses “Above a temperature known as the glass transition temperature Tg, the viscosity drops rapidly and the glass turns into a rubber, then as temperature increases further it turns into a deformable plastic which at even higher temperatures turns into a fluid” = thermoplastic ([0060]) and “If the encapsulating polymer incorporates hydrolysable or otherwise degradable bonds and also has a Tg below the reservoir temperature, it is possible that both of the above mechanisms of tracer release will play a role, so that encapsulated tracer substance is released in part by diffusion out of the particle concurrently with release as a result of degradation of the particle” ([0064]). Lafitte also discloses “Polymers incorporating such groups include poly(hydroxyacids), polyesters, polypeptides, polyesteramides and polysulfides” ([0051]) and “Block copolymers in which the blocks are joined through amide linkages can be prepared from pre-polymers containing amino groups. Examples of such pre-polymers include synthetic polymers that contain reactable primary amine groups, such as aminated polyacrylamide and diamino-terminated poly(amines) and poly(amides)” ([0056]). Accordingly, Lafitte discloses wherein the block copolymer is selected from the group consisting of thermoplastic copolyesters (TPC), thermoplastic polyurethane elastomers (TPU), and thermoplastic polyamides.
Claim Rejections - 35 USC § 103
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.
Claim 22 is rejected under 35 U.S.C. 103 as obvious over Lafitte as in claim 18 above, and further in view of Ogle (10,961,445) (cited in parent 17/815,379)
Regarding claim 22, Lafitte discloses “Chemicals which may be used as tracers may include various dyes and fluorescent materials, some examples being:
3,6-Bis(dimethylamino)acridine hydrochloride aka Acridine Orange (CAS Registry No. 65-61-2); 2-anthracenesulfonic acid, sodium salt (CAS Registry No 130-22-3); Anthrasol Green IBA (CAS Registry No. 2538-84-3, aka Solubilized Vat Dye); bathophenanthrolinedisulfonic acid disodium salt (CAS Registry No. 52746-49-3); amino 2,5-benzene disulfonic acid (CAS Registry No 98-44-2); Celestine Blue (CAS Registry No. 1562-90-9); 1-ethylquinaldinium iodide (CAS Registry No. 606-53-3); fluorescein (CAS Registry No. 2321-07-5); Keyfluor White ST (CAS Registry No. 144470-48-4); Lucigenin (CAS Registry No. 2315-97-1) aka bis-N-methylacridinium nitrate; 2,6-naphthalenedicarboxylic acid, dipotassium salt; mono-, di-, or tri-sulfonated napthalenes including 1,5-naphthalenedisulfonic acid, disodium salt (CAS Registry No. 1655-29-4); 4-amino-3-hydroxy-1-naphthalenesulfonic acid; 6-amino-4-hydroxy-2-naphthalenesulfonic acid and 1-amino-7-naphthalene sulfonic acid; Phorwite BKL (CAS Registry No. 61968-72-7); pyranine, (CAS Registry No. 6358-69-6) aka 8-hydroxy-1,3,6-pyrenetrisulfonic acid, trisodium salt; quinoline (CAS Registry No. 91-22-5); Rhodalux (CAS Registry No. 550-82-3); Rhodamine WT (CAS Registry No. 37299-86-8); Safranine 0 (CAS Registry No. 477-73-6); Disodium 4,4-bis((6-anilino-4-((2-hydroxypropyl)amino)-1,3,5-triazin-2-yl)amino)st- ilbene-2,2-disulphonate (CAS Registry No. 32694-95-4); Sulforhodamine B (CAS Registry No. 3520-42-1) aka Acid Red 52; Tinopal 5BM-GX (CAS Registry No. 169762-28-1); Tinopal CBS-X (CAS Registry No. 27344-41-8); and Thiazol Yellow (CAS Registry No. 1829-00-1)” ([0035]-[0036]).
However, Lafitte does not appear to specify any of the claimed tracer dyes.
Nevertheless, the claimed dye tracers appear to be well-known in the art. For example, Ogle teaches “a first traceable solid particulate” (abstract) wherein “The tracer may comprise a dye which can be detected by visual means or by a spectroscopic method” (Col. 5, lines 4-6) such as “Some water-soluble and oil-soluble dyes may include, but are not limited to, acid dyes, basic dyes, direct or substantive dyes, mordant dyes, vat dyes, reactive dyes, dispersive dyes, azo dyes, sulfur dyes, porphyrin dyes, metal organic framework dyes, radioactive tracers, graphene-based dyes, and combinations thereof. Acid dyes may be water soluble and may be characterized by anionic groups present on the dye molecule in solution. For example, acid dyes may include alizarin bure blue 88 and acid red 88. Basic dyes may be water-soluble and may be characterized by cationic groups present on the dye molecule in solution. Direct or substantive dyes may include, but are not limited to, direct blue 1, direct blue 14, and direct blue 15. Mordant dyes may be characterized by forming a coordination complex with a mordant or dye fixative and a dye base. The dye base may include bran, calcium carbonate, and other dye bases that may be apparent to one of ordinary skill in the art. Vat dyes may be insoluble in water. For example, vat dyes may include, but are not limited to, vat blue 1, vat blue 4, vat blue 20, vat blue 21, vat blue 25, green vat 1, green vat 3, and other vat dyes that would be apparent to one of ordinary skill in the art. Reactive dyes may be insoluble in water and may include a chromophore attached to a substituent. Some reactive dyes may include, without limitation, procion MX, cibacron F, and drimarene k. Dispersive dyes may be insoluble in water. Some examples of dispersive dyes may include, without limitation, dyes based on azobenzene such as disperse red 1 or disperse orange 37. Azo dyes may be insoluble in water and may be characterized by the functional group R—N═N—R′ where R and R′ may be aryl. Sulfur dyes may include dyes such as nitrophenol derivates and sulfide or polysulfide. An example may include sulfur black 1. Some embodiments may include dyes that comprise chromophores such as acridine dyes which are derivates of acridine, anthraquinone dyes which are derivates of anthraquinone, arylmethane dyes such as diarylmethane dyes based on diphenyl methane and triarylmethane dyes which are derivates of triphenylmethane, azo dyes based on —N═N— azo structure, phthalocyanine dyes which are derivatives of phthalocyanine, quinone-imine dyes which are derivatives of quinone, azin dyes, eurhodin dyes, safranin dyes which are derivates of safranin, indamins, indophenol dyes which are derivates of indophenol, oxazin dyes which are derivates of oxazin, oxazone dyes which are derivates of oxazone, thiazine dyes, thiazole dyes, xanthene dyes, fluorene dyes which derivatives of fluorene, pyronin dyes, and rhodamine dyes which are derivatives of rhodamine” (Col. 6, line 27-Col. 7, line 8).
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 Lafitte to include dye tracers such as derivatives of phthalocyanines, etc. in order to use a tracer which is “a dye which can be detected by visual means or by a spectroscopic method” (thereby including: “wherein the tracer is selected from the group consisting of tetrachloroisoindolinone orange, perylene red, quinacridone red, phthalocyanine blue, phthalocyanine green, disazo diarylide yellows, and combinations thereof”).
Conclusion
Applicant may consider incorporating from claim 21 “wherein the block copolymer comprises thermoplastic polyurethane elastomers (TPU)” to overcome the cited Prior Art, which only appears to teach the thermoplastic copolyesters and thermoplastic polyamides block copolymer embodiments.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The reference to Cochet (2010/0307744) (also U.S. Patent No. 8,393,395 cited in parent 17/815,379) is similar to Lafitte and discloses an encapsulated chemical (abstract) such as a tracer ([0039]) within a block copolymer having ester or amide bonds ([0031]). However, this reference does not appear necessary at this time.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674
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