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 .
Response to Amendment
Applicant’s reply, filed September 2, 2025 has been fully considered.
The reply does not contain amendments to the claims.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3, 7-8, 10-13, 23-24, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Guynn (US 2020/0123054).
Claim 1. Guynn discloses A method of servicing a wellbore penetrating a subterranean formation (Abstract; [0100]), comprising: placing a cementitious composition into the wellbore, wherein the cementitious composition comprises a cement blend and water ([0100]),
wherein the cement blend consists essentially of Portland cement and pozzolan wherein the pozzolan is selected from the group consisting of fly ash, natural glass, agricultural waste ash, waste ash, ground slag, silica fume, diatomaceous earth, metakaolin, zeolite, calcined clays, shale, tuff, granite powder, silica sand, glass beads, cenospheres, a vitrified shale, and combinations thereof and wherein the pozzolan is not selected from the group consisting of cement kiln dust, pumicite, and combinations thereof ([0009]; [0011]; [0041] – [0043] “supplementary cementitious material”),
wherein the Portland cement is present in an amount of from equal to or greater than about 0.01 wt.% to equal to or less than about 18.0 wt.% based on the total weight of the cement blend ([0010] “hydraulic cement clinker can also be included as part of the granular component but is preferably … less than 15%”; [0040]), and
Guynn does not disclose wherein the cementitious composition has a thickening time to reach about 70 Bearden units of consistency (Bc) in a range of from about 2.0 hours to about 20.0 hours at about 160°F, when measured in accordance with test standard API-RP-10B-2.
However, since Guynn discloses the same composition as claimed, the thickening time would inherently act in the same manner as claimed if measured by the known standard of testing (i.e., it would be capable of reaching 70 Bc from 2 to 20 hours at about 160°F). If there is any difference between the composition of Guynn and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “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 discloses 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 Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
In the alternative, It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to adjust the concentration range(s) of compositional components in Guynn to achieve the thickening time range as claimed, because it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 3. Guynn discloses The method of claim 1. Regarding the limitation: wherein the pozzolan is present in the cement blend in an amount of from about 82.0 wt.% to about 99.99 wt.%, based on the total weight of the cement blend and wherein the cement blend is present in the cementitious composition in an amount of from about 0.001 wt.% to about 85.0 wt.% based on the total weight of the cementitious composition, Guynn discloses that the natural pozzolan may be present in an amount up to about 90% of the fine interground particulate component, and the cement clinker of the fine interground particulate component may comprise about 10% by weight of the fine interground particulate component ([0010]; [0063]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the concentration range of pozzolan in Guynn to the range as claimed, because it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 7. Guynn discloses The method of claim 1, wherein the cementitious composition further comprises one or more additives selected from the group consisting of weighting agents, retarders, accelerators, activators, gas control additives, lightweight additives, gas-generating additives, mechanical-property-enhancing additives, lost-circulation materials, filtration-control additives, fluid-loss-control additives, defoaming agents, foaming agents, transition time modifiers, dispersants, thixotropic additives, suspending agents, and combinations thereof ([0097]).
Claim 8. Guynn discloses The method of claim 1. Regarding the limitation: wherein a thickening time of the cementitious composition increases monotonically as the amount of the Portland cement increases, since Guynn discloses the same composition as claimed, the thickening time would inherently act in the same manner as claimed (i.e., it would be capable of increasing monotonically if the Portland cement concentration increased). If there is any difference between the composition of Guynn and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “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 discloses 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 Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claims 10-12. Guynn discloses The method of claim 1. Guynn does not disclose: wherein a time to reach 50 psi compressive strength of the cementitious composition increases as the amount of the Portland cement increases, wherein the time to reach 50 psi compressive strength is measured in an ultrasonic cement analyzer (UCA) test in accordance with test standard API-RP-10B-2 (Claim 10); or wherein the cementitious composition has a time to reach 50 psi compressive strength in a range of from about 2.0 hours to about 20.0 hours at about 160 °F in a UCA test, when measured in accordance with test standard API-RP-10B-2 (Claim 11); or wherein the cementitious composition has a UCA compressive strength in a range of from about 50.0 psi to about 10,000.0 psi at about 160 °F between about 24 hours to about 48 hours in a UCA test when measured in accordance with test standard API-RP- 10B-2 (Claim 12). However, since Guynn discloses the same composition as claimed, the compressive strength would inherently act in the same manner as claimed if measured by the known standard of testing, (i.e., it would be capable of reaching at least 50 psi in about 20 to 24 hours at 160°F, wherein the time would increase as the amount of the Portland cement increases). If there is any difference between the composition of Guynn and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “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 discloses 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 Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 13. Guynn discloses The method of claim 1. Regarding the limitation: wherein the cementitious composition has a viscosity of from about 3.0 cP to about 2500.0 cP and wherein the cementitious composition has a density of from about 4.0 lb/gal to about 25.0 lb/gal, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify the viscosity and/or density of the plugging composition in Guynn to the range(s) as claimed, because it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Moreover, it is a well-known and routine skill in the art of cementing to optimize the viscosity / thickening time / compressive strength of cement by modifying the concentration(s) of the cementitious components (cement, water, additive(s), etc.).
Claim 23. Guynn discloses The method of claim 1. Regarding the limitation: wherein a plot of the compressive strength of the cementitious composition increases monotonically as a function of Portland cement at amounts of Portland cement ranging from about 1 wt.% to about 99 wt.%, since Guynn discloses the same composition as claimed, the compressive strength would inherently act in the same manner as claimed (i.e., it would be capable of increasing monotonically as a function of Portland cement). If there is any difference between the composition of Guynn and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “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 discloses 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 Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 24. Guynn discloses The method of claim 23. Regarding the limitation: wherein a plot of thickening time as a function of Portland cement increases monotonically as the amount of Portland cement increases in a range of Portland cement of equal to or less about 18.0 wt.% and the thickening time decreases as Portland cement amounts increase to greater than about 18.0 wt.%, since Guynn discloses the same composition as claimed, the thickening time would inherently act in the same manner as claimed (i.e., it would be capable of increasing monotonically if the Portland cement concentration increased). If there is any difference between the composition of Guynn and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “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 discloses 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 Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 27. Guynn discloses The method of claim 1, wherein the cement blend consists essentially of Portland cement and pozzolan wherein the pozzolan is selected from the group consisting of fly ash, natural glass, agricultural waste ash, waste ash, ground slag, silica fume, and combinations thereof ([0009]; [0011]; [0041] – [0043]).
Claims 15, 20, 25-26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Guynn (US 2020/0123054) in view of Brenneis et al. (US 2010/0258312).
Claim 15. Guynn discloses The method of claim 1. Guynn discloses that the interground particulate material and/or supplementary cementitious materials (e.g., coal ash, metallurgical slags, natural pozzolans, biomass ash, post-consumer glass, and limestone) can be used to replace a portion of Portland cement in concrete or other cementitious composition ([0003]; [0014; [0041]), but Guynn does not disclose wherein the cementitious composition has a carbon footprint of equal to or less than about 150.0 kilograms of equivalent CO2 per barrel of the cementitious composition (kg/bbl). However, Brenneis teaches that the reduction of the amount of Portland cement reduces the carbon footprint of the operation ([0014] – [0017]; [0021]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to optimize the carbon footprint reduction in Guynn to the range as claimed, because it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 20. This claim is substantively similar to Claim 15. Therefore, the Examiner applies the rejection(s) and rationale(s), above, to Claim 20.
Claims 25-26 and 29. These claims are substantively similar to Claims 1, 8, 13, and 15. Therefore, the Examiner applies the rejection(s) and rationale(s), above, to Claims 25-26 and 29.
Claims 16-19, 21-22, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Guynn (US 2020/0123054) in view of Rogers et al. (US 2006/0076135).
Claims 16-18. Guynn discloses The method of claim 1. Guynn discloses that the composition may be used in an oil well cement pumped into a well bore ([0100]), but Guynn does not disclose further comprising pumping the cementitious composition down through a conduit and back up through an annular space between an outside wall of the conduit and a wall of the wellbore (Claim 16); or further comprising pumping the cementitious composition down through an annular space between an outside wall of a conduit and a wall of the wellbore and back up through the conduit (Claim 17); or allowing at least a portion of the cementitious composition to set (Claim 18). However, Rogers teaches a system for cementing a casing a wellbore, wherein fluid circulation may be performed by pumping cement down the inside of the tubing or casing and then back up the annular space around the casing; and wherein the reverse circulation method comprises pumping a cement composition into the annulus through the plug taking circulation fluid returns from the inner diameter of the casing ([0003]; [0007]; [0008]). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to circulate and/or reverse circulate the composition in Guynn through an annulus, as taught by Rogers, in order to seal the annulus with a plug around the casing ([0008]).
Claim 19. This claim is substantively similar to Claims 16-18. Therefore, the Examiner applies the rejection(s) and rationale(s), above, to Claim 19.
Claims 21-22 and 28. These claims are substantively similar to Claims 1, 8, 16-18, and 23-24. Therefore, the Examiner applies the rejection(s) and rationale(s), above, to Claims 21-22 and 28.
Response to Arguments
Applicant’s arguments, filed September 2, 2025, have been fully considered.
The Applicant argues that the prior art reference (Guynn) fails to disclose the claimed invention, because Guynn requires activated pozzolan, which “differ substantively from the natural pozzolans instantly claimed” (See Applicant’s Remarks, filed 09/02/2025: pp. 9-11).
The Applicant also argues that the prior art reference (Guynn) fails to disclose the claimed invention, because the claimed invention recites the limitation “wherein the cement blend consists essentially of Portland cement and pozzolan” in independent Claims 1, 19, and 20. (See Applicant’s Remarks, filed 09/02/2025: p. 11).
The Examiner respectfully disagrees with the Applicant’s arguments.
The Examiner acknowledges that the claimed invention recites the limitation “wherein the cement blend consists essentially of Portland cement and pozzolan” in independent Claims 1, 19, and 20. However, the Office notes that this limitation does not necessarily exclude other cementitious components. Moreover, the claimed invention does not exclude activated pozzolans.
The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). See MPEP § 2111.03(III) (cited in the previous Office action, mailed 10/182/2024).
Independent Claims 1, 19, and 20 recite “wherein the pozzolan is selected from the group consisting of fly ash, natural glass, agricultural waste ash, waste ash, ground slag, silica fume, diatomaceous earth, metakaolin, zeolite, calcined clays, shale, tuff, granite powder, silica sand, glass beads, cenospheres, a vitrified shale, and combinations thereof” (emphasis added).
Guynn discloses activated natural pozzolans, natural pozzolan blends, cement-SCM compositions, and methods and systems for activating natural pozzolans, forming natural pozzolan blends, and forming cement-SCM compositions ([0007]); wherein the SCMs may include highly reactive materials (e.g., GGBFS), moderately reactive materials (e.g., Class C fly ash, steel slag, silica fume, and metakaolin), lower reactive materials (e.g., Class F fly ash, calcined clays, natural pozzolans, ground pumice, ground glass, and metastable forms of CaCO3), and filler materials (e.g., ground limestone, ground quartz, and precipitated CaCO3) ([0041]).
The Examiner acknowledges that Guynn discloses that the natural pozzolans may be made by intergrinding ([0046]), wherein intergrinding is believed to form a more intimate and uniformly blended mixture of two or more different components compared to separate processing and simply blending ([0047]). However, the claimed invention does not exclude blended pozzolans but instead promotes combinations thereof.
Guynn discloses that the hydraulic cement clinker (e.g., Portland cement clinker) can be included as part of the granular component but is preferably less than 15% ([0010]). Thus, the plugging composition in Guynn may consist essentially of Portland cement and pumicite in an amount up to 95 wt%. The Examiner finds that the inclusion of additional cementitious component(s) disclosed by Brenneis (i.e. 5 wt % cement kiln dust) does not materially affect the basic and novel characteristics of the claimed invention.
This point is further evidenced by the Applicant’s original disclosure, which recites that the cementitious composition may include a variety of pozzolan, such as: fly ash, natural glass, volcanic glass, volcanic rock, agricultural waste ash, waste ash, ground slag, silica fume, diatomaceous earth, metakaolin, zeolite, calcined clays, shale, pumicite, tuff, cement kiln dust, granite powder, silica sand, glass beads, cenospheres, a vitrified shale, a ground pozzolanic by-product, or combinations thereof (emphasis added); natural pozzolans that can be used as the pozzolan are generally present on the Earth's surface and set and harden in the presence of hydrated lime and water; any type of ground pozzolanic by-products (e.g., recycled concrete dust, granite dust, and ceramic waste dust) (See Applicant’s Specification, filed 10/28/2021: [0014]; [0057]) without materially affecting the basic and novel characteristics of the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Crystal J. Lee whose telephone number is (571)272-6242. The examiner can normally be reached M-F from 8:00am - 5:00pm.
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/CRYSTAL J LEE/Primary Examiner, Art Unit 3674