DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 18 August 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Amendment and Arguments
Applicant’s arguments and the Declarations under 37 CFR Section 1.132 by David Horton, Matthew Offenbacher, Leigh Gray, and Richard Toomes have been fully considered but are not persuasive.
Applicant maintains that Lyer teaches an amount of the ether amine 10 fold less than the claimed amount, and the friction modifier system comprises other components in addition to an ether amine. The examiner acknowledges that Lyer exemplified an amount of 0.02% of ether amine (Table 3), and the friction modifier system comprises a combination of an ether amine and an alkoxylated aliphatic amine ([0063]), however, Lyer expressly discloses that the friction modifier system is present in an amount of about 0.3 to 0.7% of the lubricant composition (Table 2), thus the amount of each component of the friction modifier system is less than 0.7%, i.e., the amount of ether amine is less than 0.7%, which overlaps with the claimed concentration of claim 1 and 6 and abuts the claimed concentration of claims 21 and 22, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I. Further, a person of ordinary skill in the art would have been motivated to adjust the amount of the ether amine in order to obtain a workable product. It is noted that no criticality has been demonstrated in the specification or in Applicants’ Declarations with regard to the amounts recited in the claims.
As such the rejection stands and reiterated below.
Claim Rejections - 35 USC § 103
Claims 1, 3, 4, 6-11 and 21-22 stand rejected under 35 U.S.C. 103 as being unpatentable over Napierala as evidenced by Kalgaonkar, and further in view of Lyer.
Regarding claims 1, 3, 4, 6-8 and 21-22, Napierala teaches a method comprises circulating a water-in-oil drilling fluid through a drilled hole ([0002], [0010] and [0056]-[0057]), and adding to the drilling fluid components that can reduces friction resistance and function as lubricants ([0049]), wherein the drilling fluid lubricates and cooling the drill bit ([0002]), wherein the components include an alkoxylated amine, a carboxylic acid emulsifier and an oil such as Fischer-Tropsch distillates ([0023], [0028], [0032] and [0033]), which meets the claimed Group III base oils, and the carboxylic acid emulsifier includes saturated and unsaturated carboxylic acid of 12 to 18 carbon atoms such as palmitic acid, stearic acid and oleic acid ([0028]), which is a known tall oil fatty acid as evidenced by Kalgaonkar ([0017]).
Napierala does not teach the instantly claimed ether amine, neither its amount.
Iyer teaches ether amine such as isodecyloxypropylamine, which meets the claimed ether amine and formula, can function as a friction modifier together with alkoxylated amine in a lubricating and cooling fluid comprising a lubricating base oil such as API Group III base oil, a tall oil fatty acid ( ([0023], [0029], [0063], [0065] and [0090]).
Lyer discloses that the friction modifier system is present in an amount of about 0.3 to 0.7% of the lubricant composition (Table 2), thus the amount of ether amine is less than 0.7%, which overlaps with the claimed concentration of claim 1 and 6 and abuts the claimed concentration of claims 21 and 22, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 Titanium Metals Corp of Am v Banner, 778 F2d 775, 783, 227 USPQ 773, 779 (Fed Cir 1985).
Further, a person of ordinary skill in the art would have been motivated to adjust the amount of the ether amine friction modifier in order to obtain a workable product. It is noted that no criticality has been demonstrated in the specification with regard to the amounts recited in the claims.
Iyer further teaches that the tall oil fatty acid additive is added in an amount of 0.01 to 1 wt.% of the lubricating composition ([0090]-[0091]), thus a ratio of 1:70 to 10:3 calculated by the examiner, which encompasses the claimed ratio, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to add the friction reducing ether amine of Iyer and amount to the drilling fluid of Napierala since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, a friction reducing modifier for a lubricating and cooling fluid. See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
Regarding claims 3 and 10, Napierala further discloses that high torque may cause stuck pipe during downhole drilling ([0005]), and the components function as lubricants to reduce frictional resistance and enable drilling to be carried out with considerable vertical offset ([0005] and [0047]). A person of ordinary skill in the art would have been motivated to add the component at below 100% of the torque limit to avoid operation interruption, which encompasses the claimed range of 75%, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Regarding claim 9, Napierala teaches adding oil and water to the fluid ([0053], [0056] and [0062]).
Regarding claim 11, Napierala teaches adding the components during drilling operation for drilling a drill hole ([0005], [0056] and [0057]), and the components function as lubricants to reduce frictional resistance and enable drilling to be carried out with considerable vertical offset ([0005] and [0047]), which meets drilling a built section of the wellbore.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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