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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-13, drawn to cement mixtures, classified in C04B18/20.
II. Claims 14-17, drawn to a method of making a cement-based mixture, classified in Y02W30/91.
III. Claims 17-20, drawn to a solidified oil-field cement plug, classified in E21B33/13.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product can be made by a different process, for example by first mixing the glass reinforced plastic components with the cement particles and then comminuting the whole mixture such that no particles are above 100 microns.
Inventions I and III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as cement in a different application which does not require the properties deemed necessary for oil-field cement plugs and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions II and III are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination II has separate utility such as creating a cement that is not used as an oil-field cement plug. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
A search for a mixture does not read on a method of making the mixture because the method of making necessitates specific steps that are not present in the mixture itself. A search for the claimed method would not be coextensive for Group I’s mixture because the amount of granular particles by volume is different. A search for Group I or II is not coextensive for Group III because they do not involve the oil-field plug art. A search for Group III is insufficient for the other groups because it does not have the same restrictions on the glass-reinforced plastic.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mollie Lettang on 12/30/25 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Information Disclosure Statement
In the IDS filed 8/21/23, non-patent literature item 4 is lined out and not considered as it has not been provided.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 1, 2, 5, 7, 10-13 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 109608134 by Chen et al.
Chen describes a cement board.
Regarding claim 1, Chen describes a dry mixture (“material A”) comprising cement powder (45-70 parts) and “waste glass steel” 20-40 parts (machine translation p.2 penultimate paragraph). The “waste glass steel” is alternatively translated as “waste glass reinforced plastic” (p.3 paragraph 3), reading on the instant “glass-reinforced plastic”. Chen’s waste glass reinforced plastic has a fineness reported as “1 to 5% of the excess of 200 mesh sieve” (p.3 paragraph 3), wherein 200 mesh is equivalent to about 75 microns. Chen gives an example where the fineness is 1% of the excess of 200 mesh sieve (p.6 penultimate paragraph), and the amount is within the claimed range (p.6 examples). Since 95-99% of Chen’s waste glass reinforced plastic passes through a mesh size of 75 microns, one of ordinary skill would reasonably expect the average diameter to be less than 100 microns.
If in the alternative it is found that Chen’s material discloses diameter with insufficient specificity to anticipate the claimed range, the range would be obvious to one of ordinary skill because Chen’s disclosure at least overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Chen describes values overlapping with the claimed range.
Regarding claim 2, Chen describes a specific example of 25 parts waste glass “steel” (plastic)/96.1 total parts, or 26 wt% in the instant terms (p.6 paragraph 1). See all examples. Prior art which teaches a range overlapping or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity (see MPEP section 2131.03).
Regarding claim 5, Chen does not disclose adding silica flour/powder (e.g. p.6 paragraph 1). Although some of Chen’s additives contain silica, this does not read on the additive silica flour.
Regardign claim 7, Chen describes a cement paste (p.6 paragraph 4) comprising the “waste glass steel” (waste glass fiber reinforced plastic) which has an excess of 200 mesh residue (hole size 75 microns) of only 2% (p.6 paragraph 1-2). Since 98% of Chen’s waste glass reinforced plastic passes through a mesh size of 75 microns, one of ordinary skill would reasonably expect the average diameter to be less than 100 microns.
If in the alternative it is found that Chen’s material discloses diameter with insufficient specificity to anticipate the claimed range, the range would be obvious to one of ordinary skill because Chen’s disclosure at least overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Chen describes values overlapping with the claimed range.
Regarding claim 10, Chen describes a slurry (“blank layer”) (p.6 paragraph 4-6, items (1)-(2)).
Regarding claim 11, Chen describes a solidified cement (p.6 paragraph 6, item (3)).
Regarding claim 12, Chen describes a solidified cement (p.6 paragraph 6, item (3)), which is capable of being associated with an oil-field. The term “oil-field cement” does not impart specific properties.
Regarding claim 13, Chen describes use as “exterior wall board”; i.e. stucco (p.1 final paragraph), for example.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 109608134 by Chen et al in view of US 20230174843 by Mahmoud et al.
Chen is described above.
Regarding claim 6, Chen is silent as to the addition of silica flour/powder.
Mahmoud describes cementing formulations containing halloysite and silica flour.
Mahmoud describes a cementing composition comprising hydraulic cement, silica flour and halloysite nanoparticles (paragraph 18). Mahmoud states that the presence of silica flour and halloysite strengthens the cement especially under high temperature conditions (paragraph 90). Thus it would be obvious to one of ordinary skill to add the silica flour and halloysite nanoparticles of Mahmoud to Chen’s cement composition in order to strengthen the cement.
Allowable Subject Matter
Claims 3, 4, 8 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest art is CN 109608134 by Chen et al, used above in rejection of other claims. Chen is inapplicable to claims 3, 4, 8 and 9 because they describe an average diameter of glass-reinforced plastic less than 50 microns, or fewer. The fineness of Chen’s particles is only reported with respect to percent that do not pass through a mesh size of 75 microns, so it is unclear that Chen’s particles meet claims 3, 4, 8 and 9.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766