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 I and species as follow:
Claim 1 and 18: , "an acid" for (A)(1), "Hydroxyethylidene diphosphonic salt"
for (A)(2),
Claim 5: pH from about 3.0 to about 7.0 for (A)(3),
"phosphonate" for (A)(4), "diverting agent" for (A)(5), and
"particulate material" for (A)(5b),
Applicant respectfully submits claims 1, 5-13, 18, 19, and 20 are readable on the elected species, in the reply filed on 08/26/2026 is acknowledged.
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, 5-13, 18-19, and 20 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Milne et al. (US 2007/0235189 A1) (“Milne” herein).
(Claims contain only selected species)
Claim 1.
Milne discloses an aqueous composition, comprising:
water; [0055]
an acid, having a non-zero, molecular weight less than about 400 Daltons, [0028-0029]
a hydrogen fluoride (HF) source; [0033] and a
fluoride scale inhibitor comprising hydroxyethylidene diphosphonic salt, wherein a concentration of the fluoride scale inhibitor in the aqueous composition is greater than or equal to about 0.1 wt.% and less than about 2.0 wt.%. [0030-0031]
Since Milne discloses the same composition to treat a wellbore comprising water, an acid, hydrogen fluoride source, a hydroxyethylene disphosphoic salt such as suitable phosphonic acids and their salts, include HEDP: 1-hydroxyethylidene-1,1-phosphonic acid , it would be an aqueous composition, and an acid having an acid, having a non-zero, molecular weight less than about 400 Daltons.
"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).
Claim 5.
Milne discloses the aqueous composition of claim 1, wherein the aqueous composition has a pH from about 3.0 to about 7.0. [0028-0029]
Claim 6.
Milne discloses the aqueous composition of claim 1, wherein the fluoride scale inhibitor further comprises a phosphonate. [0030-0031]
Claim 7.
Milne discloses the aqueous composition of claim 1, wherein the fluoride scale inhibitor further comprises 2-phosphonobutane-1,2,4-tricarboxylic salt thereof, amino trimethylene phosphonic salt thereof, diethylene triamine penta methylene phosphonic salt thereof, 2-hydroxy phosphonoacetic salt thereof, bis(hexamethylene triamine penta methylene phosphonic salt thereof, hydroxyethylamino-di(nethylene phosphonic salt thereof, ethylene diamine tetra (methylene phosphonic salt thereof, and hexamethylenediaminetetra methylenephosphonic salt thereof. [0030-0031]
Claim 8.
Milne discloses the aqueous composition of claim 1, further comprising diverting agent. [0016, 0046, 0056, 0062]
Claim 9.
Milne discloses the aqueous composition of claim 8, further comprising the permanent clay stabilizer, and wherein the permanent clay stabilizer comprises:
a blend of sodium formate and cationic polymer;
poly-quaternary amines;
boric acid; or
a combination thereof. [0029, 0040, 0047-0049, 0054]
Claim 10.
Milne discloses the aqueous composition of claim 1, further comprising one or more self- diverting additives including: foam; particulate material; or a viscoelastic surfactant-based diverter; or a combination thereof. [0016, 0046, 0056, 0062]
Claim 11.
Milne discloses the aqueous composition of claim 1, wherein the acid is an organic acid. [0028-0029]
Claim 12.
Milne discloses the aqueous composition of claim 11, wherein the acid is citric acid. [0028-0029]
Claim 13.
Milne discloses the aqueous composition of claim 1, wherein the acid is an organic acid in a mixture of organic and mineral acids. [0028-0029]
Claim 18-19
Milne discloses an aqueous composition, comprising:
water; [0055]
an acid, wherein the acid has a non-zero, molecular weight less than about 400 Daltons. [0028-0029]
a hydrogen fluoride (HF) source; [0033] and
a fluoride scale inhibitor comprising:hydroxyethylidene diphosphonic acid salt thereof; wherein a concentration of the fluoride scale inhibitor in the aqueous composition is greater than or equal to about 0.1 wt.% and less than about 2.0 wt.%.[0030-0031]
Since Milne discloses the same composition to treat a wellbore comprising water, an acid, hydrogen fluoride source, a hydroxyethylene disphosphoic salt such as suitable phosphonic acids and their salts, include HEDP: 1-hydroxyethylidene-1,1-phosphonic acid , it would be an aqueous composition, and an acid having an acid, having a non-zero, molecular weight less than about 400 Daltons.
"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).
Claim 20.
Milne discloses the aqueous composition of claim 18, wherein the aqueous composition has a pH from about -0.8 to about 7. [0028-0029]
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fuller et al. (US 2008/0139412 A1) Method For Treating A Subterranean Formation, Ziaudin et al. (US 2016/0025895 A1) Well Treatment With Digital Core Analysis, and Koelewiijn et al. (US 11,912,937 B2) Acidizing Treatment Fluid For Delayed Acidification In The Oil Field Industry.
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, Sue Liu can be reached at 571-272-5539. 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 1616 09/25/2026
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