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 Amendments and Arguments
Applicant’s amendments and arguments, filed November 11, 2025, with respect to the objection to claim 15. Applicant has amended the claim in accordance with the suggestion provided in the previously mailed Office Action. Accordingly, the objection has been withdrawn.
Applicant’s amendments and arguments, filed November 11, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Gordon et al. and Taylor et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant argues that the boron nitride is only contemplated by Gordon in a “laundry list” of potential tagging materials and the tagging material is used strictly as a tagging material. This argument is not persuasive as Gordon explicitly discloses that boron nitride is recognized within the art as a suitable additive for blending with polymeric/resinous components for forming resin-based materials for wellbore applications and the finding that Gordon contemplates alternative additives to polymeric/resinous components is not evidence of nonobviousness. The Examiner acknowledges that the function of boron nitride as a tagging agent of Gordon is required by the invention, however, it would appear that the traceability of the tagging material arises from the neutron absorbing properties of the material. Taylor teaches that the boron nitride nanotubes of the invention exhibit neutron radiation absorption ([0009]). Therefore, the modification of Gordon with the boron nitride nanotubes of Taylor would not appear to render the traceable polymeric additive of Gordon unsatisfactory for its intended purpose of tracing the material within a wellbore. Applicant also notes that Gordon discloses that the boron nitride is a particle, however, Gordon does not teach or require a specific two- or three-dimensional structure of the boron nitride and merely contemplates that the traceable polymeric additive as a whole may be in particulate form ([0026]).
Applicant also points to the disclosure of Gordon at para. [0022] that discloses that in some embodiments the tagging material is inert and should cause no significant changes in the properties of the cement composition. The Examiner notes that Gordon contemplates this as an optional embodiment and furthermore that it appears that said optional embodiment is discourages changes detrimental to “conventional, desirable” properties of the cement composition ([0022]). However, Gordon is explicit in allowing for the traceable polymeric additive which comprises the tagging material to enhance the mechanical properties of the cement composition ([0013]). Thus, any modification of Gordon such that the boron nitride component and traceable polymeric additive improve the mechanical properties of the cement composition would not appear to render the composition unsatisfactory for its intended purpose, and would appear to be in accordance with the disclosure of Gordon (note that Gordon also contemplates other additives besides the traceable polymeric additive to enhance mechanical properties of the composition, see [0027], [0034]).
Applicant further argues that Taylor does not teach or suggest using its boron nitride nanotubes in a cement composition or that the improvements noted by Taylor would be possible for the cement composition of Gordon. Taylor teaches that boron nitride nanotubes having an epitaxial h-BN/BNNT structure that comprises a hexagonal boron nitride structure that is epitaxial with respect to a boron nitride nanotube structure impart improvements in properties such as adherence to matrix materials and high-temperature resistance ([0015]). The boron nitride contemplated by Gordon is dispersed within a polymer ([0021]), which a person having ordinary skill in the art would reasonably recognize as a “matrix” in which nanotubes are known to be dispersed (see, e.g., Shestakova et al., cited under Pertinent Prior Art heading in the previously mailed Office Action, which discloses that boron nitride nanotubes are known within the art as suitable for reinforcing resin-based materials for wellbore tools). Gordon does not disclose or require a specific morphology/crystal structure (i.e., nanotube, hexagonal, etc.) of the boron nitride tagging agent. Therefore, although Gordon only contemplates the boron nitride additive as a tagging material, a person having ordinary skill in the art when selecting a species of boron nitride for blending with the polymer of Gordon would reasonably consider the benefit of adherence to matrix materials (e.g., the polymer additive of Gordon) provided by the specific configuration of boron nitride disclosed by Taylor. Based on the prior at of record, a person having ordinary skill in the art of resin-based materials for wellbore applications would reasonably recognize that boron nitride nanotubes like that of Taylor are suitable for use in resin-based wellbore applications and that using the same within the composition of Gordon would not render the composition unsuitable for its intended purpose and could be carried out with reasonable expectation of success.
Based on the foregoing, the rejections within the previously mailed Office Action are maintained.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Gordon et al. (US20160046854, hereinafter referred to as “Gordon”) in view of Taylor et al. (US20190292051, hereinafter referred to as “Taylor”).
As to Claim 11: Gordon teaches a method of well treatment comprising introducing a fluid comprising a polymeric additive (i.e., a resin) into a wellbore (Abstract) wherein said resin may be, inter alia, acrylic acid or methacrylic acid ([0019]) (the instant specification discloses that the claimed resin may be methacrylic acid or acrylic acid, see pg. 6, lines 24-34). Gordon further teaches that the polymeric additive may comprise a tagging material additive ([0021]) which may be boron nitride ([0023]). Gordon further teaches delivery of a cement composition comprising the polymeric additive to a wellbore (see Fig. 1) and further contemplates various subterranean operations ([0042]), which reads on the claimed performing a wellbore operation in the wellbore with the resin-based material.
Gordon teaches that the polymeric additive (i.e., analogous to the claimed resin-based material as above) may comprise inert additive materials including boron nitride ([0023]). However, Gordon is silent towards wherein said boron nitride is a boron nanotube having a hexagonal boron nitride structure epitaxial to the boron nitride nanotube.
Taylor teaches a composition comprising an epitaxial h-BN/BNNT structure that comprises a hexagonal boron nitride structure that is epitaxial with respect to a boron nitride nanotube structure (Abstract). Taylor further teaches that boron nanotubes having such a structure exhibit excellent mechanical strength ([0008]) and impart improvements in properties such as adherence to matrix materials and high-temperature resistance ([0015]). Gordon and Taylor are considered analogous art because Taylor describes improvements to the mechanical properties of boron nitride which would be reasonably pertinent to Gordon which contemplates boron nitride additives ([0023]) to polymers/resins wherein said polymer/resin is added to cement compositions to improve the mechanical properties thereof ([0013]) and also explicitly contemplates that the composition may benefit from mechanical property enhancing additives ([0034]). Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include the claimed boron nitride nanotube structure comprising a boron nitride nanotube having a hexagonal boron nitride structure epitaxial to the boron nitride nanotube and the motivation would have been that Gordon contemplates the importance of enhancing mechanical properties of both the polymer/resin material and cement compositions comprising said polymer/resin material ([0013] and [0034]) and explicitly contemplates boron nitride additives and Taylor teaches that such a crystal structure orientation enhances the mechanical properties and adhesion to matrices over standard boron nitride additives (see [0008] and [0015]).
As to Claim 12: Gordon and Taylor teach the method of claim 11 (supra).
Gordon further teaches that the polymer additive may swell to seal cracks in cement sheath ([0014]), which reads on the claimed sealing operation.
As to Claim 13: Gordon and Taylor teach the method of claim 12 (supra).
Gordon further teaches that the polymer additives may be used in subterranean applications, such as cementing operations ([0010], Claim 10) and further teaches that said polymer additives (i.e., resin material) may be included in a cement composition (i.e., in addition to a cement) ([0003]) in an amount of 0.1% to about 100% by weight ([0025]).
As to Claim 14: Gordon and Taylor teach the method of claim 11 (supra).
Gordon further teaches that the polymer additives may be included in a cement composition and utilized in subterranean applications, such as cementing operations ([0010], Claim 10) including cementing methods involving the placement of a cement plug ([0002]) (i.e., a wellbore tool according to the instant specification pg. 1, lines 27-29). Gordon contemplates that the polymeric additive may be included in cement compositions in an amount of 0.1% to about 100% by weight ([0025]).
As to Claim 15: Gordon and Taylor teach the method of claim 14 (supra).
Gordon further teaches that the polymer additives may be included in a cement composition and utilized in subterranean applications, such as cementing operations ([0010], Claim 10) including cementing methods involving the placement of a cement plug ([0002]) (i.e., a wellbore tool according to the instant specification pg. 1, lines 27-29). Gordon contemplates that the polymeric additive may be included in cement compositions in an amount of 0.1% to about 100% by weight ([0025]). Thus, as Gordon contemplates wellbore tools, such as cement plugs, which may be formed from cement compositions comprising a polymeric additive which reads on the claimed resin-based material in an amount of up to 100% by weight, Gordon renders obvious the claimed “wherein the resin-based material [comprises] substantially the entirety of a wellbore tool” (construed in line the instant specification pg. 1, lines 31-33 (i.e., greater than 95% of the tool)).
As to Claim 16: Gordon and Taylor teach the method of claim 14 (supra).
Gordon further teaches that the polymer additives may be included in a cement composition and utilized in subterranean applications, such as cementing operations ([0010], Claim 10) including cementing methods involving the placement of a cement plug ([0002]), which reads on the claimed component of a wellbore tool according to the instant specification pg. 21, lines 22-25 (wherein a cement plug is construed to be analogous to a “sealing element”).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shestakova et al. (US 20180180760, hereinafter referred to as “Shestakova”).
Shestakova teaches a downhole tool (construed to be analogous to the claimed wellbore tools) which may include a polymer matrix (i.e., resin-based material) integrated with boron nitride nanotubes (Abstract). Shestakova further teaches that downhole tools which comprise a polymer matrix integrated with boron nitride nanotubes exhibit improved heat dissipation and good thermal stability while maintaining required mechanical strength for downhole applications ([0024], [0035], and [0038]).
Chatterji et al. (US20160046853, hereinafter referred to as “Chatterji”).
Chatterji teaches a method comprising introducing a resin composition into a wellbore (Abstract), wherein said resins contemplated by Chatterji overlap with the resins disclosed in the instant specification (e.g., at least epoxy-based resins, furan resins, phenolic resins, bisphenol F resins ([0015] of Chatterji). Chatterji teaches that the resin may be used as alternatives for cementing operations or blended with traditional cement compositions ([0003]) (i.e., used in place of or in addition to a cement). Chatterji contemplates sealing operations ([0053]). Chatterji contemplates that the resin composition or resin-cement composites may form a plug ([0067]) (i.e., a wellbore tool according to the instant specification pg. 1, lines 27-29). Chatterji teaches that the resin may comprise mechanical-property enhancing additives traditionally used in cement ([0045]).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767