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 .
Status of the Claims
Claims 1-24 are currently pending in the application.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 and 20-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 22-26, and 28-45 of U.S. Patent No. 12,540,273 (‘273 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 and 20-24 are anticipated by claims 1-6, 8, 22-26, and 28-45 of ‘273. That is, claims 1-16 and 20-24 fall entirely within the scope of claims 1-6, 8, 22-26, and 28-45 of ‘273.
This is a nonstatutory double patenting rejection because the patentably indistinct claims have been patented.
Reasons for Potential Allowance
Pending a filing of a Terminal Disclaimer, the Application is otherwise in condition for allowance. The following is an examiner’s statement of reasons for allowance:
The closest prior art fails to disclose, teach, or suggest the combination of key limitations instantly claimed. More specifically, the closest prior art fails to recite a fracturing fluid, or method of using or making thereof, comprising a carrier fluid and a proppant comprising at least one of fluid coke and flexicoke, where the fluid coke and flexicoke are post-treated by heating to a temperature ranging from 400 °C to 1200 °C. For ease of reference, it is noted that the term “fluid coke” has been defined in the Specification as the solid concentrated carbon material byproduct remaining after a thermal cracking process utilizing fluidized solids for the conversion of heavy, low-grade hydrocarbon feeds into lighter products (see [0041]). It is also noted that the term “flexicoke” has been defined in the Specification as the solid concentrated carbon material byproduct remaining after a thermal cracking process utilizing fluidized solids and gasification for the conversion of heavy, low-grade hydrocarbon feeds into lighter products (see [0039]).
For example: Graham et al. (US 3,66,420), Terry et al. (US 3,700,032), and Gordon et al. (US 2021/0246364) all teach a fracturing fluid comprising a carrier fluid and a petroleum coke, such as fluid coke. However, they each fail to expressly recite wherein the fluid coke is post-treated by heating to a specific temperature, as claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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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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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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674
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