Atty Docket: 2013-IPM-098903 ULPI US (4727-34910) Patent REMARKS/ARGUMENTS eneral Remarks Please consider the application in view of the following remarks. Applicant thanks the Examiner for the careful consideration of this application, H Status of Claims Claims 1, 15, and 18 are amended herein Claim 22 is previously presented Claims 7, 9, 12-14, 16, 20-21, and 23-24 are canceled. Claims 2- , 8, 10-11, 14, 17 and 19 are original Claims 25-30 are new and are supported by existing dependent claims 22, 22, 8, 8, 10, and 11, respectively Thus, claims 1-6, 8, 10-11, 13-15, 17-19, 22, and 25-30 are currently pending in this application, Accordingly, no new matter has been added by way of present submissions. Applicant hereby requests further examination and reconsideration of the presently claimed application IIL, Response to Advisory Action Applicant respectfully reiterates the distinction between drilling operations and post- drilling operations as explained in detail in previous responses. The Examiner has provided the following comments in the Advisory Action (emphasis added)Atty Docket: 2015-IPM-098903 UIPI US (4727-34910) Patent Applicant argues that Glasborgen cannot be combined with Muthusamy since Glasborgen is diroctod towards a method of production whereas Nuthusamy is directed towards a method of driling, The Examiner finds tis argument unpersuasive. A person having ordinary skilln the ar would recognize that methods of producing hydrocarbons commonly include (and actually requite) at least one driing operation ;oppant pack has formed is bul a means by which a for Respectfully, the underlined sentence above is incorrect. Specifically, the sentence above states “drilling once a proppant pack has formed” is a “means by which a well can be drilled further for is that the Examiner's rejection subsequent recovery.” The unequivocal meaning of this sentenc is premised on an incorrect interpretation that the prior art teaches that a proppant pack is placed first and then the well is “drilled further” after placement of the proppant pack — respectfully, this, is an incorrect sequence of events. A proppant pack is placed downhole after drilling is completed In view of this incorrect reading of the prior art, Applicant respectfully requests reconsideration of the detailed explanation in paragraphs IV.A and V.C below of the differences between drilling operations (as disclosed in Musinsamy) and post-drilling operations, specifically placement of a proppant pack via a fracturing operation (as disclosed in Glasbergen and Zhang). Applicant has provided a detailed explanation of why the prior art of record is not properly combinable, and therefore the presently pending claims are in condition for allowance Additionally, in an effort to substantively advance prosecution to allowance, independent claims 1 and 18 have been further amended to recite a specific list of solvents that are not disclosed in the prior art of record and are not obvious for the reasons set forth in paragraph IV.B below. Applicant respectfully submits that these additional amendments further distinguish the prior art rejections of record, and therefore the presently pending claims are in condition for allowance.Atty Docket: 2013-IPM-098903 ULPI US (4727-34910) Patent IV. Remarks Regarding Rejection of Claims Under 35 U.S.C. § 103 5 1-6, 8, 10, 11, 13, and 14 stand rejected under 35 U, S.C. § 103 as being unpatentable over U.S. Patent Publication No, 2014/0256603 to Muthusamy et al, (hereinafter "Muthusamy") in view of U.S. Patent Publication No. 2015/0126417 to Hatchman et al. (hereinafter "Hatchman") and further in view of U.S. Patent Publication No. 201 1/0048708 to Glasbergen et al. (hereinafter "Glasbergen"). Claims 15 and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Muthusamy and Hatchman, as evidenced by U.S. Patent Publication No. 2016/0122626 to Dwarakanath et al. (“Dwarakanath"). C! ms 18, 19, and 22- 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Mutiusamy and Hatchman in further view of U.S. Patent Publication No, 2008/0011486 to Zhang et al. (hereinafter "Zhang"), as evidenced by Glashergen. Applicant respectfully disagrees with these rejections To form the basis of a rejection under § 103, the Final Office Action must establish a prima’ facie case of obviousness. Obviousness is determined by construing the scope of the prior art, idemtifying the differences between the claims and the prior art, determining the level of skill in the pertinent art at the time of the invention, and considering objective evidence present in the application indicating obviousness or nonobviousness. MPEP § 2141; Graham v. John Deere, 383 USS. 1, 17 (1966). All claim limitations must be considered to form a prima facie conclusion of obviousness. MPEP § 2143.03. "[RJejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” MPEP § 2142. A Remarks Regarding Rejections of Claims 1-6, 8, 10, 11, 13, and 14 Applicant's independent claims I requires, among other things, "introducing the treatment fluid into a wellbore penetrating at least a portion of a subterranean formation containing one orAtty Docket: 2013-IPM-098903 ULPI US (4727-34910) Patent ‘more proppant packs" and "producing fluids from the wellbore during or subsequent to introducing the treatment fluid into the well bore, wherein the fluids travel from the subterranean formation through the one or more proppant packs.” The Final Office Action concedes that ions and instead neither Muthusamy nor Hatchman discloses these limit ies on newly cited Glasbergen. See Final Office Action at 2-4, More specifically, the Final Office Action asserts that "Glasbergen teaches an operation comprising forming a proppant pack, followed by injection of a spacer, followed by producing fluids through the proppant packs (Abstract, [0014], and [0026]).” Id. Applicant respectfully submits that the Final Office Action fails to provide a motivation or rationale for combining Muthusamy and Glasbergen that does not rely on impermissible hindsight. Although Glasbergen broadly teaches that its fluid may be use in any common subterranean treatments, it was well known to a person of ordinary skill in the art that proppant packs are used in production operations to prop open fractures to enable to production of fluids form a subterranean formation, Muthusamy, in contrast, is directed to a drilling operation. More specifically, Muthusamy discloses "method of displacing an oil-based drilling mud from a portion of a well” using a spacer fluid comprising alkyl polyglycoside. See, e.g., Muthusamy at Abstract (emphasis added). ‘The Final Office Action fails to provide a sufficient motivation or rationale for a person of ordinary skill in the art to employ the spacer fluid of Muthusamy that is used to displace a drilling fluid in the production operation of Glashergen in which proppant packs are used. Indeed, Muthusamy is directed to spacer fluids that "are used to displace [a] drilling fluid from [a] well before cementing operation." Muthusamy at { [0008] (emphasis added). Those operations occur hefore any fracturing operations in which proppant packs would be placed in a subterraneanAtty Docket: 2013-IPM-098903 ULPI US (4727-34910) Patent formation or subsequent production operations during which proppant packs are in the subterranean formation, and there is no teaching or suggestion in Muthusamy that s spacer fluid could be used a fracturing or production operation. The mere fact that a spacer fluid "may be employed following the forming of proppant packs, as taught by Glasbergen," (see Final Office Action at 4) does not explain why a person of ordinary skill in the art would use the specific drilling-related spacer fluid of Muthusamy in the production-related methods of Glasbergen. Indeed, a person of ordinary skill in the art would not have been motivated to do so given that Muthusamy is directed to an entirely different wellbore operation in which proppant packs are not used. Rather than providing a sufficient motivation or rationale, the Final Office Action uses Applicant's claims as a roadmap to arrive Applicant's claimed method. Such "impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art." MPEP § 2142. Accordingly, the Final Office Action fails to establish that it would have been obvious to employ the spacer fluid disclosed in Muthusamy in the methods taught by Glashergen. For at least these reasons, independent claim 1 is allowable over the cited references. Claims 2-6, 8, 10, 11, 13, and 14 depend from independent claim 1 and therefore incorporate all limitations of that claim by reference. See 35 U.S.C. § 112(d). Thus, claims 2-6, 8, 10, 11, 13, and 14 are allowable for the same reasons, Accordingly, Applicant respectfully requests withdrawal of these rejections. B. Remarks Regarding Rejections Claims 15 and 17 Applicant's independent claim 15 requires a solvent selected from a particular group. Applicant previously amended independent claim 15 herein to remove "a glycol ether" from the recited list of solvents. The Final Office Action concedes that Muthusamy and Hatchman do notAtty Docket: 2013-IPM-098903 ULPI US (4727-34910) Patent disclose the remaining solvents in Applicant's independent claim 15, but instead relies on Dwarakanath "as evidence" that certain of the remaining solvents (¢.g., ethoxylated alcohols) are “obvious variants" of the glycol ether solvent disclosed in Hatchman, See Final Office Action at to establish that 8-10, Applicant respectfully submits, however, that the Final Oftice Action the solvents of Dwarakanath are obvious variants of the glycol ether solvent disclosed in Hatchman because the solvents of Dwarakanath and Hatchman are used in entirely different compositions Dwarakanath discloses "polymer compositions" comp ing a "powder polymer" that is "suspended in a water soluble solvent." See, e.g., Dwarakanath at Title, | [0008]. In contrast, Hatchman is directed to "surfactant compositions" and does not disclose the inclusion of such powder polymers, much less the need to suspend them. Given this different, it would not have been obvious to a person of ordinary skill in the art that the solvents of Dwarakanath would be suitable in the fluids of Hatchman, The mere fact that both ethoxylated alcohol and glycol ether solvents may be used in the compositions of Dwarakanath does not support the Final Office Action's assertion that those solvents could also be used interchangeably in the completely different composition of Hatchman. The Final Office Action provides no motivation for substituting the glycol ether solvent of Haichman with the ethoxylated alcohol solvent of Dwarakanath or including the ethoxylated alcohol solvent of Dwarakanath in the fluids of Muthusamy. Without more, the Final Office Action’s rejections cannot be sustained. See MPEP § 2142 ("[R]ejections on obviousness cannot be sustained with mere conclusory statements, instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.Atty Docket: 2013-IPM-098903 ULPI US (4727-34910) Patent For at least these reasons, independent claim 15 is allowable over the cited references, Claim 17 depends from independent claim 15 and therefore incorporates all limitations of that claim by reference. See 35 U.S.C. § | 12(d). Thus, claim 7 is allowable for the same reasons. Accordingly, Applicant respectfully requests withdrawal of these rejections. C—-Remarks Regarding Rejections of Claims 18, 19, and 22-24 Applicant's prior response provided several reasons why a person of ordinary skill in the art would not have been motivated to employ the spacer fluids of Muthusamy for displacing a drilling mud in the entirely different fracturing operation disclosed in Zhang. Nevertheless, the Final Office Action fails to address the arguments presented in Applicant's prior response and restates the same rejections over the combination of Muthusamy and Zhang with the addition of Glasbergen "as evidence." See Final Office Action at 13. As discussed above, however, Glasbergen does not provide any support for the combination of Muthusamy and Zhang-which are directed to two entirely different operations-because the embodiments of Glasbergen on which the Final Office Action relies (i.e., the one utilizing proppant packs) is, like Zhang, directed to an entirely different operation than Muthusamy. For all of the reasons provided in Applicant's prior response as well as those provided in Section IV.A above, the Final Office Action fails to provide a sufficient motivat n or rationale for using the spacer fluids of Muthusamy in the entirely different fracturing operation disclosed in Zhang that does not rely on impermissible hindsight. See MPEP § 2142. For at least these reasons, independent claim 18 is allowable over the cited references, Claims 19 and 22-24 depend from independent claim 18 and therefore incorporate all limitations of that claim by reference. See 35 U.S.C. § 1 12(d). Thus, claims 19 and 22-24 are allowable for the same reasons. Accordingly, Applicant respectfully requests withdrawal of these rejections,Atty Docket: 2013-IPM-098903 ULPI US (4727-34910) Patent CONCLU! ION jeration of the foregoing submissions and remarks, reconsideration of the application, and withdrawal of the rejections are respectfully requested by Applicant. No new matter is introduced in the present response. Itis believed that each ground of rejection raised in the Final Office Action dated January 13, 2022 and Advisory Action dated May 18, 2022 has been fully addressed. If any fee is due, i.e. for excess number of claims, extension of time, as a result of the filing of this paper, please appropriately charge such fee to Deposit Account Number 50- 1515 of Conley Rose, P.C,, Texas. Ifa petition for extension of time is necessary in order for this paper to be deemed timely filed, please consider this a petition therefore. If a telephone conference would facilitate the resolution of any issue or expedite the prosecution of the application, the Examiner is invited to telephone the undersigned at the telephone number given below. Respectfully submitted, CONLEY ROSE, P.C. Date: June 3, 2022 (Rodney B. Carroll! Rodney B. Carroll Reg, No. 39,624 4965 Preston Park Boulevard, Suite 19SE ATTORNEY FOR APPLICANT Plano, Texas 75093, (972) 731-2288 (Telephone) (972) 731-2289 (Facsimile)