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 without traverse of Group II, and species as follow:
Applicant herein amends claim 3 to remove the dependency to claim 1, selecting the gas lift flow improving composition. ii. gas lift flow improving composition in a subterranean formation or well: 1.
Applicant herein selects hydrocarbon of claim 8 .
Applicant herein selects amphoteric surfactant, including claim 13.
Applicant herein selects increase production in the subterranean formation or well, including claims 8 and 9.
Applicant herein selects wherein the aqueous medium comprises a solvent. d. Applicant herein selects claim 19 including claim 20; claims 16-18 are withdrawn as directed to an unelected species,
in the reply filed on 06/03/2026 is acknowledged.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
The attempt to incorporate subject matter into this application by reference to US Serial No. 18/679,647is ineffective because it is an unpublished application. It should be replaced by U.S. Patent No. 12509972.
Claim Objections
Claims 6 and 12 are objected to because of the following informalities: The claim recites the term “about”. This term does not provide an exactitude of range, but rather, a contemplated variation.
Appropriate correction is required.
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 3 recites the limitation "the nanoparticle" in line 6. There is insufficient antecedent basis for this limitation in the claim.
All the claims dependent of claim 3 are also rejected.
Claims 6, 7, 11 are 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 6 recites “..less than % or… greater than %, and …less than mg/L. These are ranges with unbounded upper limit and unbounded lower limit, and , as such, it is unclear as to the extent of water cut and total dissolved solid Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claims 7and 11 recite “..less than… mD. This is range with unbounded lower limit, and , as such, it is unclear as to the extent permeability Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claim 8 recites the limitation “the treated subterranean formation or well " and “the recovered hydrocarbon " in line 2. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 15 recites the broad recitation from 1 nm to about 500 nm, and the claim also recites from about 1 nm to about 200 nm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 19 recites the limitation "the surface" in line 3. There is insufficient antecedent basis for this limitation in the claim.
All the claims dependent of claim 19 are also rejected.
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 3-6, 8-10, 12, 14, and 15 are rejected under 35 U.S.C. 102(A) (1) as being anticipated by Watts et al. (US 2019/0093462 A1) (“Watts” herein).
(Claims contain only selected species)
Claim 3.
Watts discloses, as best understood based on the indefiniteness above, a method of improving gas lift flow in a subterranean formation or well comprising:
introducing a gas lift flow improving composition into a fluid comprising hydrocarbon in a subterranean formation or well, and increase production in the subterranean formation or well, [0064-0068]
wherein the gas lift flow improving composition comprises a functionalized nanoparticle, wherein the nanoparticle has an average particle size from about 1 nm to about 1000 nm; [0069, 0104-0106]
a foaming surfactant comprising an amphoteric surfactant; [0112] and
wherein the composition is dispersed in an aqueous medium. [0070-0071]
Since Watts discloses the same composition comprising an amphoteric surfactant, functionalized nanoparticles, and aqueous medium, it would improve gas lift flow in a subterranean formation or well comprising, be a gas lift flow improving composition, increase production in the subterranean formation, a foaming surfactant, and composition dispersed in an aqueous medium.
“Products of identical chemical composition cannot have mutually exclusive properties”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 4.
Watts discloses the method of claim 3, wherein the introducing step is injecting the composition into the subterranean formation or well. [0064-0067]
Claim 5.
Watts discloses the method of claim 3, wherein the injectate is introduced into the subterranean formation or well with a drilling fluid, a fracturing fluid, or an injectate. [0063-0068]
Claims 6, 9, and 10
Since Watts discloses the same composition comprising an amphoteric surfactant, functionalized nanoparticles, and aqueous medium, it would have a water cut less than about 39% or greater than 76%, a total dissolved solid of less than about 300,000 mg/L, and it would result in an increase in recovered hydrocarbon in comparison to a subterranean formation or well-treated with an injectate or gas lift flow improving composition that is free of the functionalized nanoparticle
“Products of identical chemical composition cannot have mutually exclusive properties”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 8.
Watts discloses the method of claim 3, further comprises recovering hydrocarbon from the treated subterranean formation or well, wherein the recovered hydrocarbon comprises an oil. [0067]
Claim 12
Watts discloses the method of claim 3, wherein the ratio of the functionalized nanoparticle to the surfactant is about 1:1 or greater on an actives (ppm) basis, or between about 1:1 to about 1:100 on an actives (ppm) basis. [0092-0093, 0107, 0109]
Claim 14.
Watts discloses the method of claim 3, wherein the aqueous medium comprises a solvent. [0070-0071]
Claim 15.
Watts discloses the method of claim 3, wherein the nanoparticle has an average particle size from about 1 nm to about 500 nm, or from about 1 nm to about 200 nm. [0069, 0104-0106]
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.
Claims 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Watts, applied to claim 3 above, and further in view of Nguyen et al. (US 2019/0010381 A1 ) (“’381” herein)
Claim 7.
Watts discloses the method of claim 3. Watts however does not explicitly disclose, wherein the subterranean formation or well comprises a low permeability formation of less than 0.1 mD.
‘381 teaches the above limitation (See paragraph 0008 →‘381 teaches this limitation in that In addition to the foregoing problems known to exist in the injectate art, there is a paucity of injectate compositions that are effective to increase either the rate or amount of hydrocarbon recoverable from wells characterized as having “tight” or “very tight” subterranean reservoir rock. Such tight rock is characterized as having permeability of about 0.1 milliDarcy (mD) or less, with “very tight” rock characterized as having permeability of about 0.01 mD or less. Some hydrocarbon-bearing shale formations have permeability as low as 0.0001 mD for example.) for the purpose of have injectate compositions that are effective to increase either the rate or amount of hydrocarbon recoverable from wells characterized as having “tight” or “very tight” subterranean reservoir rock. [0003]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Watts, with the above limitation, as taught by ‘381, in order to have injectate compositions that are effective to increase either the rate or amount of hydrocarbon recoverable from wells characterized as having “tight” or “very tight” subterranean reservoir rock.
Claim 11.
Watts teaches the method of claim 7, wherein the subterranean formation or well comprises a low permeability formation of less than 0.01 mD. (Same as claim 7)
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Watts, applied to claim 3 above, and further in view of Nguyen et al. (US 2011/0071060 ) (“Nguyen” herein)
Claim 13.
Watts discloses the method of claim 3. Watts however does not explicitly disclose, wherein the foaming surfactant comprises an amphoteric alkyl betaine.
Nguyen teaches the above limitation (See paragraph 0017 →Nguyen teaches this limitation in that Examples of suitable surfactants are … amphoteric surfactants, such as alkyl betaines, alkylamido propyl betaines) for the purpose of having foamers or foaming agents of this invention have been shown to be effective for penetrating subterranean oil-bearing or gas-bearing formations to recover natural gas from a gas well or recover crude oil from a gas-lifted oil well. [0018]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the surfactant of Watts, with the above limitation, as taught by Nguyen, in order to have foamers or foaming agents of this invention have been shown to be effective for penetrating subterranean oil-bearing or gas-bearing formations to recover natural gas from a gas well or recover crude oil from a gas-lifted oil well.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Watts, applied to claim 3 above, and further in view of Kuznetsov et al. (US 20190010382) (“Kuznetsov” herein).
Claims 19-20
Watts discloses the method of claim 3. Watts however does not explicitly disclose, wherein the nanoparticle has a core-shell nanoparticle morphology comprising a trialkoxyorganosilane coated nanoparticle core and an amine functionalized group on the surface of the nanoparticle as a shell, wherein the trialkoxyorganosilane is an epoxy functional silane, hydroxylic hydrophilic silane, hydroxyl functional silane, or thiol functional silane.
Kuznetsov teaches the above limitation (See paragraphs 0035-0037 → Kuznetsov teaches this limitation in that In some embodiments, surfaces of the nanoparticles may be functionalized with an alkyl group, an alkenyl group, an alkynyl group, a hydroxyl group, an organohalide group, a halide group, a carbonyl group, an amine group, an organosulfur group, an epoxy group, and a polyamine group, an aryl group (e.g., an aralkyl or an alkaryl group), a carbonyl group (a carbonyl group (—C═O)), such as a ketone, an aldehyde, a carboxylate (—COO.sup.−) group, an amine group, a thiol group, a phosphate (—PO.sub.4.sup.3−) group, another functional group, or combinations thereof. In some embodiments, surfaces of the nanoparticles may be functionalized with functional groups formulated and configured to provide a negative charge to the surface of the nanoparticles (e.g., anionic functional groups). By way of nonlimiting example, the anionic functional groups may include one or more of hydroxyl (—OH) groups, carboxylate (—COO.sup.−) groups, sulfonate (—SO.sub.3.sup.−) groups, phosphate (—PO.sub.4.sup.3−) groups, etc. In some embodiments, the functional groups may be formulated and configured to form nanoparticles formulated and configured to form a suspension having a negative zeta potential when mixed with the carrier fluid. The functional group may be bonded directly to the core of the nanoparticle. In other embodiments, the functional group may be bonded to the core of the nanoparticle through one or more bridge groups (e.g., an R group, such as an alkyl group, an alkenyl group, an alkynyl group, a carbonyl group, an amine group, another group, or combinations thereof).) for the purpose of recovering hydrocarbons from a subterranean formation. [0006]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claims invention to modify the method of Watts, with the above limitation, as taught by Kuznetsov, in order to recover hydrocarbons from the subterranean formation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Duncan et. Al. (US 2022/0135871 A1) METHOD OF MITIGATING FRAC HIT PRODUCTION INTERFERENCE FROM ADJACENT OIL WELLS USING TREATMENT FLUIDS WITH NANOPARTICLES teaches A method for minimizing the creation and existence of frac hits in an oil field comprising the step of pumping treatment fluids into the Parent well before performing the frac on the Child well wherein the treatment fluids contain brine resistant silica nanoparticles is described and claimed, Phan et al. (US 2018/0112122 A1) COMPOSITIONS FOR ENHANCED OIL RECOVERY teaches Disclosed herein are compositions and methods for increasing recovery, or flowback, of hydrocarbon compounds from hydrocarbon-containing subterranean reservoirs. The flowback compositions include an anionic sulfonated surfactant, an amphoteric surfactant, water, and a coupling agent. The flowback compositions convert oil-wet rocks to water-wet, yet exhibit a low tendency of composition components to sorb to the rock, and Huang et al. (US 2016/0257879 A1) FOAM ASSISTED LIQUID REMOVAL USING ALCOHOL ETHER SULFONATES teaches A composition comprising an alcohol ether sulfonate is provided for use in methods of removing a fluid from a subterranean hydrocarbon-containing formation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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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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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 06/15/2026
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