DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: 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
As previously set forth: Applicant’s election without traverse of Group I, species of cationic semi hydrophobic monomer, C4-C7 for the C1-C7 hydrocarbyl substituent, formula II, n=1,557, R R’ R’’ and R’’’ are C1-C7 alkyl in the reply filed on 11/19/21 and 6/22/21 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/19/21.
Priority
As previously set forth: The claims have a priority of the filing of the provisional application: 12/5/17
Response to Arguments/Amendments/Affidavit
Regarding the affidavit filed 6/20/25: the evidence therein is not persuasive. Arguments drawn to the difference between drilling fluids/accretion additives and fracturing fluids/friction reducers are not persuasive. The claims are drawn to “a drilling fluid for reducing bitumen accretion”. They are not drawn to a method of drilling. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Whitwell and Rey render prima facie obvious the claim requirements. Thus, therein, it does not matter that Whitwell and Rey are drawn to a different use, since Applicant has not distinguished the claims from such.
The different function of an anti-accretion additive vs. friction reducer is equally moot for the same reasons, E.G. Applicant has not distinguished the claims from them. Whitwell and Rey embrace the claimed invention and thusly render obvious the limitations thereof.
Applicant argues one of ordinary skill in the art would have no reason to expect the monomers taught by Whitwell would function equivalently to all the monomers taught by Rey in anti-accretion additives for drilling fluids, especially since Applicant shows that not all polymers will hydrate under field mixing conditions.
The Examiner disagrees. Applicant has shown one example, using one wt% and species thereof of: anionic, cationic, and nonionic monomers, that does not work for their intended purposes. Whitwell and Rey embrace a wide range of wt%’s and species for each monomer of the polymer. The Example thusly is not sufficient to overcome the positions previously set forth and arguments therein are thusly not found persuasive.
Applicant argues MW must be controlled and also discloses further laboratory testing of a Polymer C and Polymer D and argues the friction reducing polymers of Whitwell would not provide bitumen anti-accretion performance.
The Examiner disagrees. Any showings of unexpected results must be commensurate in scope with the claims. Whitwell and Rey embrace a wide range of possible combinations, however, though a large list of possible combinations is embraced it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985).
If there are certain MW’s, wt% cationic/anionic/nonionic, species of cationic/anionic/nonionic that give unexpected results (e.g. that give anti-accretion results), Applicant must show and claim such. The example in the specification doesn’t fully disclose the polymer therein, thus the Examiner cannot determine what therein may/may not be critical. Applicant has shown in the affidavit that 3% cationic monomer wherein the R groups are C7 gives anti-accretion results vs. a 70/30 acrylamide/acrylic acid polymer. The 70/30 polymer is not the closest prior art since the use of cationic monomers is embraced by Whitwell. Further, given the arguments of the affidavit, Applicant has argued the criticality of the MW and the R groups, so, the Examiner requests a showing of the criticalness thereof (E.G. what is the critical range, show examples of the endpoints and outside/inside to show the criticality thereof). These critical range endpoints must then be claimed. Further, the amount of cationic monomer along with the amount of nonionic/anionic would also be expected to be important for the same reasons as the R groups, e.g. they also affect dispersibility/solubility. How does the Examiner know if the solubility difference was due to the cationic monomer, or, due to using less anionic monomer, ect. Applicant should show what wt% of monomers give (and don’t give) unexpected results. Is there criticality for C1 vs. C2? Or C2 vs. C3? Whitwell and Rey embrace the claimed polymer and it is Applicant’s burden to show and claim the critical features that distinguish their polymer from the prior art. Since such has not been done, Applicant’s arguments are not found persuasive.
Applicant argues first about the disclosure of Rey being broad so as to not reasonably meet the claims.
The Examiner disagrees for reasons already set forth above, e.g. Rey embraces the claims and renders them prima facie obvious
Applicant argues second that the declaration shows how friction reducers and anti-accretion additives are different and the polymers of Whitwell and Rey would not function as such.
The Examiner disagrees for reasons already set forth above, e.g. it is Applicant’s burden to distinguish the structural limitations of the claims to be outside that of the prior art. The ‘drilling fluid’ and “use” are merely future intended use in the claims.
Applicant argues third the Examiner used impermissible hindsight since neither Whitwell or Rey uses the composition for accretion of bitumen.
The Examiner disagrees. As above, “drilling fluid” and the use for bitumen accretion is future intended use. The claim is not drawn to a method of drilling. Arguments herein are thusly moot.
Applicant argues fourth that there is a high level of experimentation required to achieve the claimed invention
The Examiner disagrees. Applicant can show which parameters are required and give unexpected accretion properties, and, claim them. However without that type of showing and claim limitation arguments herein are not found persuasive.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 9, 11-13, 21-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whitwell (US 2012/0214714) in view of Rey (US 2010/0307753).
Elements of this rejection are as previously set forth, reiterated below in italics. Claim 7 is removed since it has been cancelled. Regarding the new R requirements of claims 1, and new claims 24-27, as previously set forth: Rey discloses using R’s having C1-22 for the alkyl groups, embracing the new limitations.
Whitwell discloses fracturing fluid compositions comprising a water soluble copolymer comprising less than 10% ionic monomers (abstract). The copolymer may be amphoteric (another word for ampholytic of the claims) [0026] and comprise both anionic and cationic monomers [0026]. The copolymer may comprise a nonionic monomer such as acrylamide [0027], an anionic monomer such as acrylic acid [0028] and a cationic monomer such as MAPTAC [0029]. The MW may be 1-30 million g/mol [0031]. In one embodiment the copolymer has less than 10 mol% of anionic and cationic monomers [0032]. The copolymer is added in amounts ranging 0.005-0.3 wt% [0038] in an aqueous solution [0039].
Whitwell includes elements as set forth above. Whitwell discloses friction reducing polymers (title) for well treatment compositions. Whitwell discloses cationic monomers such as MAPTAC and those others of [0029] but does not disclose ones that have C2-C7 alkyl groups.
Rey discloses treatments of fluids from subterranean formations with friction reducing polymers (abstract). The friction reducing polymers may be ampholytic and have monomers such as acrylamide, acrylic acid and MAPTAC [0065, last 10 lines]. This embraces the polymer and use (friction reducing) as in Whitwell. Rey discloses general formulas for said polymer/monomers in [0062], wherein when R1 is H, Z is NR2 and R2 is a C1-C22 alkyl. Such embraces the MAPTAC above, and, also embraces the C2-C7 alkyl groups. Rey thusly teaches these monomers to function equivalently as cationic monomers for friction reducing polymers for subterranean formations.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Whitwell the use of the broader species of the formula of [0062] wherein the R2 groups are C1-C22 alkyl groups, as taught by Rey, since these are recognized in the art of cationic monomers for friction reducers to function equivalently to those taught in Whitwell.
The following table comprises calculations the Examiner did in Excel to convert mol% of Whitwell to wt% using the above monomers.
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445
958
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Greyscale
As you can see, the wt% above embrace and render prima facie obvious the wt% requirements of the claims. See In re Wertheim. Though the combination of monomers is picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985).
The acrylic acid would implicitly be an acrylate in the fluid. Regarding the “drilling fluid” requirements of the claims, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Elements above thusly embrace and render obvious the requirements of claims 1, 9, 11-13, 21-23.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759