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 .
Applicant’s Response
In the response date 07/06/2026, the Applicant amended claims 1, 9-10 and 20, and argued against the rejections in the Non-Final Rejection dated 04/02/2026.
Claim Objections
Claims 1 and 10 are objected to because of the following informalities:
in Claim 1, the phrase "or based on contact with the subterranean formation or drilling equipment to form the wellbore to release the tracer material into the wellbore to attach to one or more drill cuttings" in Lines 8-10 should be amended to ― or based on contact with the subterranean formation or drilling equipment used to form the wellbore, thereby releasing the tracer material into the wellbore to attach to one or more drill cuttings ― so that the entire limitation reads more clearly and easily.
Claim 10 includes the same phrase and should be amended the same way.
Additionally, in Claim 10, the phrase "a shell or coating formed of a thermoresponsive material" in Line 2 should be amended to ― a shell
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 recites, "The drill cuttings tracer pill of claim 10, wherein the thermoresponsive material forms the shell." Claim 11 fails to further limit the subject matter of Claim 10 which also recites "a shell formed of a thermoresponsive material" in Line 2. The Examiner suggests cancelling dependent Claim 11 or amending Claim 11 to further define a different characteristic of the recited "shell."
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hall et al (U.S Pub 2018/0237680) (“Hall”) in view of Solovyeva et al (U.S Patent 11,846,179) (“Solovyeva”).
Regarding Claim 1, Hall discloses a method, comprising:
filling at least a portion of a volume of a shell formed of a thermoresponsive material (Abstract; paragraphs [0066], [0096], [0098] and [0099] [Wingdings font/0xE0] Hall discloses a hydrophobic shell that can include a polyacrylamide, a polyolefin, fluorocarbon and/or a polymer including a repeating group that is formed by polymerization). Although Hall fails to expressly disclose wherein the shell comprises at least one open end and at least one closed end, because reference Hall discloses a shell comprising of the same thermoresponsive materials as disclosed by dependent claims 2 and 3 and further mentions wherein the shell can be porous and include one or more holes therein (paragraph [0096]), it would have been obvious to one of ordinary skill in the art for “the shell to comprise at least one open end and at least one closed end,” as claimed by the applicant; and
sealing the tracer material within the shell by closing the at least one open end to form a tracer pill (Abstract; paragraphs [0068] and [0079]; Page 16, paragraph [0115]; paragraph [0139] [Wingdings font/0xE0] Hall discloses methods of encapsulation that encloses the shell comprising the hydrophilic core/payload within the shell), wherein
the thermoresponsive material of the shell is configured to degrade or dissolve based on a temperature within a wellbore at a subterranean formation or based on contact with the subterranean formation or drilling equipment to form the wellbore to release the tracer material into the wellbore to attach to one or more drill cuttings (Abstract; paragraphs [0068], [0070] and [0074] [Wingdings font/0xE0] Hall discloses wherein the core-shell can dissolve and wherein the dissolved shells and dissolved core can provide enhanced oil recovery).
Hall, however, fails to expressly disclose methods of manufacturing a tracer pill, wherein the tracer pill is specifically a drill cuttings tracer pill.
Solovyeva teaches the methods above of manufacturing a tracer pill, wherein the tracer pill is specifically a drill cuttings tracer pill (Abstract; Col 1, lines 45-55; Col 2, lines 1-16 [Wingdings font/0xE0] Solovyeva teaches this limitation by manufacturing labeled drill cuttings, wherein the labeled drill cuttings comprise of a fluorescent COF tracer in the drill cuttings) for the purpose of utilizing the drill cuttings tracers that are labeled with a fluorescent covalent organic framework downhole in order to obtain information regarding the depth of drill cuttings in a formation downhole (Col 2, lines 17-35).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Hall to include manufacturing a drill cuttings tracer pill, as taught by Solovyeva, because doing so would help to utilize the drill cuttings tracers downhole in order to determine the depth of drill cuttings in formations downhole.
Regarding Claim 2, Hall discloses the method of claim 1, wherein the thermoresponsive material comprises a thermoplastic polymer (Abstract; paragraphs [0066], [0096], [0098] and [0099] [Wingdings font/0xE0] Hall discloses a hydrophobic shell that can include a polyacrylamide, a polyolefin, fluorocarbon and/or a polymer including a repeating group that is formed by polymerization).
Regarding Claim 3, Hall discloses the method of claim 2, wherein the thermoplastic polymer is selected from the group consisting of polypropylene, polyolefin, fluoropolymer, polyvinyl chloride, neoprene, silicone elastomer, and Viton (Abstract; paragraphs [0066], [0096], [0098] and [0099] [Wingdings font/0xE0] Hall discloses a hydrophobic shell that can include a polyacrylamide, a polyolefin, fluorocarbon and/or a polymer including a repeating group that is formed by polymerization).
Regarding Claim 4, Solovyeva teaches the method of claim 1, wherein the tracer material comprises a solid tracer material (Abstract; Col 1, lines 45-54; Col 2, lines 16-30 and lines 37-45; Col 4, lines 9-15 [Wingdings font/0xE0] Solovyeva teaches the use of fluorescent covalent organic framework (COF) tracers that are a class of 2D and 3D materials constructed from rigid organic building blocks).
Regarding Claim 5, Solovyeva teaches the method of claim 1, wherein the tracer material is defined by a particular fluorescent color (Abstract; Col 35, lines 49-67 [Wingdings font/0xE0] Solovyeva teaches fluorescent covalent organic framework tracers defined by particular colors).
Regarding Claim 6, Hall discloses the method of claim 1, wherein the shell comprises a tube having one open end and one closed end (Abstract; paragraph [0096] [Wingdings font/0xE0] Hall discloses wherein the shell can be porous and include one or more holes therein), and the step of sealing the tracer material within the shell by closing the at least one open end to form the drill cuttings tracer pill comprises sealing the one open end of the tube to enclose the tracer material within the shell (Abstract; paragraphs [0068] and [0079]; Page 16, paragraph [0115] [Wingdings font/0xE0] Hall discloses methods of encapsulation that encloses the shell comprising the hydrophilic core within the shell).
Regarding Claim 7, Hall discloses the method of claim 6, wherein sealing the one open end of the tube comprises heat sealing the one open end of the tube Abstract; paragraphs [0068] and [0079]; Page 16, paragraph [0115] [Wingdings font/0xE0] Hall discloses methods of encapsulation that encloses the shell comprising the hydrophilic core within the shell).
Regarding Claim 8, Hall in view of Solovyeva teach the method of claim 1, wherein the shell comprises two hemispheres, each hemisphere having an open end and a closed end, and the step of sealing the tracer material within the shell by closing the at least one open end to form the drill cuttings tracer pill comprises sealing the open ends of the two hemispheres together to enclose the tracer material within the shell Abstract; paragraphs [0068] and [0079]; Page 16, paragraph [0115] [Wingdings font/0xE0] Hall discloses methods of encapsulation that encloses the shell comprising the hydrophilic core within the shell).
Regarding Claim 9, Hall discloses the method of claim 8, wherein sealing the open ends of the two hemispheres together comprises heat sealing the open ends of the two hemispheres together to form a sealed seam of the shell (paragraph [0096] [Wingdings font/0xE0] Hall discloses wherein the shell is porous and comprises holes within the shell). Although Hall fails to expressly disclose wherein sealing the open ends of the two hemispheres together comprises heat sealing the open ends of the two hemispheres together to form a sealed seam of the shell, because reference Hall discloses a shell comprising the same thermoresponsive materials as disclosed by dependent claims 2 and 3 and further mentions wherein the shell can be porous and include one or more holes therein (paragraph [0096]), it would have been obvious to one of ordinary skill in the art for “heat sealing the open ends of the two hemispheres together to form a sealed seam of the shell,” as claimed by the applicant.
Regarding Claim 10, Hall comprises:
a shell or coating formed of a thermoresponsive material (Abstract; paragraphs [0066], [0096], [0098] and [0099] [Wingdings font/0xE0] Hall discloses a hydrophobic shell that can include a polyacrylamide, a polyolefin, fluorocarbon and/or a polymer including a repeating group that is formed by polymerization); and wherein
the thermoresponsive material of the shell is configured to degrade or dissolve based on a temperature within a wellbore at a subterranean formation or based on contact with the subterranean formation or drilling equipment to form the wellbore to release the tracer material into the wellbore to attach to one or more drill cuttings (Abstract; paragraphs [0068], [0070] and [0074] [Wingdings font/0xE0] Hall discloses wherein the core-shell can dissolve and wherein the dissolved shells and dissolved core can provide enhanced oil recovery).
Hall, however, fails to expressly disclose a drill cuttings tracer pill comprising a tracer material enclosed within the shell.
Solovyeva teaches a drill cuttings tracer pill comprising a tracer material enclosed within the shell (of reference Hall) (Abstract; Col 1, lines 45-55; Col 2, lines 1-16 [Wingdings font/0xE0] Solovyeva teaches this limitation by manufacturing labeled drill cuttings, wherein the labeled drill cuttings comprise of a fluorescent COF tracer in the drill cuttings) for the purpose of utilizing the drill cuttings tracers that are labeled with a fluorescent covalent organic framework downhole in order to obtain information regarding the depth of drill cuttings in a formation downhole (Col 2, lines 17-35).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Hall to include manufacturing a drill cuttings tracer pill, as taught by Solovyeva, because doing so would help to utilize the drill cuttings tracers downhole in order to determine the depth of drill cuttings in formations downhole.
Regarding Claim 11, Hall discloses the drill cuttings tracer pill of claim 10, wherein the thermoresponsive material forms the shell (Abstract; paragraphs [0066], [0096], [0098] and [0099] [Wingdings font/0xE0] Hall discloses a hydrophobic shell that can include a polyacrylamide, a polyolefin, fluorocarbon and/or a polymer including a repeating group that is formed by polymerization).
Regarding Claim 12, Hall discloses the drill cuttings tracer pill of claim 11, wherein the shell comprises holes within the shell (paragraph [0096]). Although Hall fails to expressly disclose wherein the shell comprises at least one open end and at least one closed end, because reference Hall discloses a shell comprising of the same thermoresponsive materials as disclosed by dependent claims 2 and 3 and further mentions wherein the shell can be porous and include one or more holes therein (paragraph [0096]), it would have been obvious to one of ordinary skill in the art for “the shell to comprise at least one open end and at least one closed end,” as claimed by the applicant.
Regarding Claim 13, Hall discloses the drill cuttings tracer pill of claim 12, wherein the tracer material is sealed within the shell by closing the at least one open end (Abstract; paragraphs [0068] and [0079]; Page 16, paragraph [0115] [Wingdings font/0xE0] Hall discloses methods of encapsulation that encloses the shell comprising the hydrophilic core within the shell).
Regarding Claim 14, Hall discloses the drill cuttings tracer pill of claim 13, wherein the seal comprises a heat seal of the at least one open end (paragraph [0096] [Wingdings font/0xE0] Hall discloses wherein the shell is porous and comprises holes within the shell). Although Hall fails to expressly disclose wherein the seal comprises a heat seal of the at least one open end, because reference Hall discloses a shell comprising the same thermoresponsive materials as disclosed by dependent claims 2 and 3 and further mentions wherein the shell can be porous and include one or more holes therein (paragraph [0096]), it would have been obvious to one of ordinary skill in the art to discloses “wherein the seal comprises a heat seal of the at least one open end,” as claimed by the applicant.
Regarding Claim 15, Hall discloses the drill cuttings tracer pill of claim 10, wherein the thermoresponsive material comprises a thermoplastic polymer (Abstract; paragraphs [0066], [0096], [0098] and [0099] [Wingdings font/0xE0] Hall discloses a hydrophobic shell that can include a polyacrylamide, a polyolefin, fluorocarbon and/or a polymer including a repeating group that is formed by polymerization).
Regarding Claim 16, Hall discloses the drill cuttings tracer pill of claim 16, wherein the thermoplastic polymer is selected from the group consisting of polypropylene, polyolefin, fluoropolymer, polyvinyl chloride, neoprene, silicone elastomer, and Viton (Abstract; paragraphs [0066], [0096], [0098] and [0099] [Wingdings font/0xE0] Hall discloses a hydrophobic shell that can include a polyacrylamide, a polyolefin, fluorocarbon and/or a polymer including a repeating group that is formed by polymerization).
Regarding Claim 17, Solovyeva teaches the drill cuttings tracer pill of claim 10, wherein the tracer material comprises a solid tracer material (Abstract; Col 1, lines 45-54; Col 2, lines 16-30 and lines 37-45; Col 4, lines 9-15 [Wingdings font/0xE0] Solovyeva teaches the use of fluorescent covalent organic framework (COF) tracers that are a class of 2D and 3D materials constructed from rigid organic building blocks).
Regarding Claim 18, Solovyeva teaches the drill cuttings tracer pill of claim 10, wherein the tracer material is defined by a particular fluorescent color (Abstract; Col 35, lines 49-67 [Wingdings font/0xE0] Solovyeva teaches fluorescent covalent organic framework tracers defined by particular colors).
Regarding Claim 19, Hall discloses the drill cuttings tracer pill of claim 11, wherein the shell comprises two hemispheres, each hemisphere having an open end and a closed end, and the tracer material is sealed within the shell by sealing the open ends of the two hemispheres together to enclose the tracer material within the shell (paragraph [0096] [Wingdings font/0xE0] Hall discloses wherein the shell is porous and comprises holes within the shell). Although Hall fails to expressly disclose sealing the open ends of the two hemispheres together, because reference Hall discloses a shell comprising the same thermoresponsive materials as disclosed by dependent claims 2 and 3 and further mentions wherein the shell can be porous and include one or more holes therein (paragraph [0096]), it would have been obvious to one of ordinary skill in the art to discloses “sealing the open ends of the two hemispheres together,” as claimed by the applicant.
Regarding Claim 20, Hall discloses the drill cuttings tracer pill of claim 19, wherein the tracer material is sealed within the shell by heat sealing the open ends of the two hemispheres together to enclose the tracer material within the shell (paragraph [0096] [Wingdings font/0xE0] Hall discloses wherein the shell is porous and comprises holes within the shell). Although Hall fails to expressly disclose wherein sealing the open ends of the two hemispheres together comprises heat sealing the open ends of the two hemispheres together to form a sealed seam of the shell, because reference Hall discloses a shell comprising the same thermoresponsive materials as disclosed by dependent claims 2 and 3 and further mentions wherein the shell can be porous and include one or more holes therein (paragraph [0096]), it would have been obvious to one of ordinary skill in the art for “heat sealing the open ends of the two hemispheres together,” as claimed by the applicant.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ASHISH K VARMA whose telephone number is (571)272-9565. The examiner can normally be reached Monday-Friday 9:30-5:30pm, Telework Mondays and Fridays.
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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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/ASHISH K VARMA/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674
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