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 I (claim 20) in the reply filed on 4/2/26 is acknowledged.
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 § 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 13, 14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Katterbaner et al. (US 2022/0120168) in view of Benoit et al. (US 2017/0350225).
With respect to independent claim 13, Katterbaner discloses a method comprising:
introducing a fluorescent metallic and/or organic framework taggant into a drilling fluid (Abstract, [0002], [0005], [0018], and [0029]; taggant may be metallic or polymeric, such as cellulose);
circulating the drilling fluid through a well during a drilling operation that creates formation
cuttings such that the fluorescent taggant interacts with the formation cuttings, creating tagged cuttings ([0018], [0023], [0029], and Fig. 1);
collecting returned cuttings from the circulating drilling fluid at a surface of the well ([0018], [0023], [0029], and Fig. 1);
detecting a presence of the fluorescent taggant on the returned cuttings to identify the tagged
cuttings (Abstract, [0005], [0018], and [0029]); and
correlating the tagged cuttings with a drill depth in the well at a time during the drilling
operation (Abstract and [0018]).
Regarding claim 13, Katterbaner discloses introducing a fluorescent metallic and/or organic framework taggant into a drilling fluid (Abstract, [0002], [0005], [0018], and [0029]). However, he fails to expressly disclose wherein the metallic and/or organic framework taggant is a “metal-organic framework (MOF),” as instantly claimed. Benoit teaches a drilling fluid comprising a metal-organic framework (MOF) taggant (Abstract, [0034], and [0051]). Replacing the metallic and/or organic framework component of the taggant disclosed by Katterbaner with the metal-organic framework (MOF) component of a taggant taught by Benoit is but a simple substitution of one known equivalent metallic and/or organic framework component of a taggant for another, performing the same function for the same purpose. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make this simple substitution as it has been held “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR at 1395 (citing United States v. Adams, 383 US 39, 50-51 (1966)).
With respect to depending claim 14, the combination of Katterbaner and Benoit teaches wherein detecting the fluorescent MOF comprises illuminating the tagged cuttings with UV light and obtaining images of the cuttings with a camera (Abstract, [0002], [0018], and [0029]). With respect to depending claim 16, the combination of Katterbaner and Benoit teaches wherein the returned cuttings are collected in a shaker ([0033]).
With respect to depending claim 17, the combination of Katterbaner and Benoit teaches further comprising: pumping a second fluorescent MOF with the drilling fluid down the well after circulating the
fluorescent MOF, wherein the second fluorescent MOF is configured to attach to and tag formation cuttings as the well is drilled ([0018], [0029], [0063]-[0065], and [0069]-[0076]);
returning the drilling fluid and tagged formation cuttings from the well ([0018], [0029], [0063]-[0065], and [0069]-[0076]);and
detecting the presence of the second fluorescent MOF on the tagged cuttings ([0018], [0029], [0063]-[0065], and [0069]-[0076]).
With respect to depending claim 18, which is dependent upon claim 17, the combination of Katterbaner and Benoit teaches wherein the fluorescent MOF comprises a first emission wavelength, wherein the second fluorescent MOF comprises a second emission wavelength, and wherein the first emission wavelength is different from the second emission wavelength such that the fluorescent MOP may be differentiated from the second fluorescent MOF by illuminating the fluorescent MOFs with UV light and obtaining images of the tagged cuttings with a camera ([0018], [0029], [0063]-[0065], and [0069]-[0076]).
With respect to depending claim 19, the combination of Katterbaner and Benoit teaches further comprising, after the detecting the presence of the fluorescent MOP on the returned cuttings, separating the fluorescent MOP from the formation cuttings ([0018], [0029], and [0033]-[0035]). However, neither reference expressly recites wherein the MOF and the cuttings are separated “using a magnetic field,” as instantly claimed. The Office considers it well known and standard in the art when separating a magnetic component from a non-magnetic component to employ magnetic fields. As such, a person having ordinary skill in the art before the effective filing date would find it obvious to consider employing a well known practice of separating magnetic and non-magnetic components such as with a magnetic field.
Allowable Subject Matter
Claims 15 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 15 would be allowable inasmuch as the closest prior art fails to expressly disclose detecting a fluorescent MOF tagged cuttings with all of the specific steps as instantly claimed.
Claim 20 would be allowable inasmuch as, as noted in the allowed parent application, the closest prior fails to expressly disclose wherein the fluorescent MOF is entrapped inside pores of a porous silica or a porous ceramic.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ogle et al. (US 2020/0283678) teaches a method for introducing a fluorescent tag into a well during a drilling operation and imaging returned cuttings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AVI T. SKAIST whose telephone number is (571)272-9348. The examiner can normally be reached M-F 9:30-6.
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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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