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 .
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The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper.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to U.S. Patent Application No. 17/676,202 and U.S. Patent Application No. 16/109,062 is ineffective because they are unpublished U.S. applications. They should be replaced by U.S. Patent No. 11,787,994 B2 and U.S. Patent No. 12,612,546, respectively.
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 1-3, and 6-10 are rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Worley et al. (US 2014/0048262 A1) (“Worley” herein).
Claim 1
Worley discloses a method comprising: [0008]
mixing a non-degradable component comprising three or more non-degradable particulates, [0038-0039] wherein the three or more non-degradable particulates have a long-term permeability at 7,500 psi of at least about 20 D, with a degradable component to produce a mixture, wherein the degradable component surrounds the non-degradable component in the mixture; [0040, 0047-0049] and
drying the mixture to provide a composite diversion particle agglomeration. [0040, 0047-0049]
Since Worley discloses the same composition comprising a non-degradable and a degradable component, it would wherein the three or more non-degradable particulates have a long-term permeability at 7,500 psi of at least about 20 D.
"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 disc loses 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).
Or a different interpretation of Worley
Claim 1
Worley discloses a method comprising: [0008]
mixing a non-degradable component comprising three or more non-degradable particulates, [0038-0039] wherein the three or more non-degradable particulates have a long-term permeability at 7,500 psi of at least about 20 D, with a degradable component to produce a mixture, wherein the degradable component surrounds the non-degradable component in the mixture;[0040, 0047-0049] and
drying the mixture to provide a composite diversion particle agglomeration. [0040, 0047-0049]
Worley however does not explicitly disclose the terminology as recited within the claimed invention: drying the mixture. However, Worley discloses a fracturing fluid system comprising a carrier fluid (e.g., a gel or a crosslinked gel fluid), and solids-laden gel bodies wherein the solids are non-degradable proppant materials (in a form such as aggregates, blobs, or clusters encapsulated by a degradable gel). ([0047]) which serves as drying the mixture. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
Claim 2.
Worley discloses the method of claim 1, wherein the non-degradable component is mixed with an aqueous solution containing the degradable component. [0047]
Claim 3.
Worley discloses the method of claim 1, wherein the non-degradable three or more non-degradable particulates comprise proppant particulates, and wherein the mixture comprises a concentration of proppant particulates of about 10 volume percent % to about 95 volume %., [0038-0039]
Claim 6.
Worley discloses the method of claim 1, wherein the degradable component is a first degradable component, and the method further comprises mixing a second degradable component into the mixture. [0038-0039, 0047-0049]
Claim 7.
Worley discloses the method of claim 6, wherein the non-degradable component is mixed with an aqueous solution containing the first degradable component. [0038-0039, 0047-0049]
Claim 8.
Worley discloses the method of claim 6, wherein the second degradable component comprises solid particles. [0038-0039, 0047-0049]
Claim 9.
Worley discloses the method of claim 6, wherein the first degradable component and the second degradable component have the same composition. [0038-0039, 0047-0049]
Claim 10.
Worley discloses the method of claim 6, wherein the first degradable component and the second degradable component have a different composition. [0038-0039, 0047-0049]
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Worley as applied to claim 10 above, and further in view of Nguyen et al. (US 2006/0113078 A1) (“Nguyen” herein).
Claim 11.
Worley discloses the method of claim 10, wherein the composition of the first degradable component includes polyvinyl alcohol, and wherein the composition of the second degradable component includes polylactic acid.
Nguyen teaches the above limitation (See paragraphs 0037 & 0055 → Nguyen teaches this limitation in that a variety of gelling agents may be used, including hydratable polymers that contain one or more functional groups, such as hydroxyl, carboxyl, sulfate, sulfonate, amino, or amide groups. Suitable gelling agents typically comprise biopolymers, synthetic polymers, or a combination thereof. Examples of such synthetic polymers include, but are not limited to, polyacrylate, polymethacrylate, polyacrylamide, polyvinyl alcohol, and polyvinylpyrrolidone. In other exemplary embodiments, the gelling agent molecule may be depolymerized. Blends of certain degradable materials and other compounds may also be suitable. One example of a suitable blend of materials is a mixture of poly(lactic acid) and sodium borate where the mixing of an acid and base could result in a neutral solution where this is desirable.) for the purpose of having degradable materials capable of undergoing an irreversible degradation downhole. [0051]
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 method of Worley with the above limitation, as taught by Nguyen, in order to have degradable materials capable of undergoing an irreversible degradation downhole.
Allowable Subject Matter
Claims 13-20 are allowed.
Claims 4, 5, and 12 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dueckel et al. (US 2014/0262247 A1) OMPOSITION AND METHOD FOR HYDRAULIC FRACTURING AND EVALUATION AND DIAGNOSTICS OF HYDRAULIC FRACTURES USING INFUSED POROUS CERAMIC PROPPANT teaches A composition and method for hydraulically fracturing an oil or gas well to improve the production rates and ultimate recovery using a porous ceramic proppant infused with a chemical treatment agent is provided. The chemical treatment agent may be a tracer material that provides diagnostic information about the production performance of a hydraulic fracture stimulation by the use of distinguishable both water soluble and hydrocarbon soluble tracers, Sinclair et al. (US 2006/0175059 A1) Soluble Deverting Agents teaches Methods and compositions for stimulating single and multiple intervals in subterranean wells by diverting well treatment fluids into a particular direction or into multiple intervals using water soluble coated diverting agents are described, and Okamoto et al. (US 2017/0166798 A1) DIVERSION SAND AND METHODS teaches Diversion sand and methods of using the same are described herein. The sand includes particles that have a coating. The coating comprises one or more water dissolvable layer(s).
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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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 06/26/2026
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