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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 22 October 2025 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 amendment canceling claims 2 and 5 renders the objection to claims 2 and 5 moot.
Applicant’s amendments overcome the rejections of claims 1, 6-9 and 21-22 under 35 U.S.C. 102(a)(1)/(a)(2) over US2015/0014062A1(Napierala), and of claims 3, 4 and 10 under 35 U.S.C. 103 over Napierala. The rejections have been withdrawn. However, a new ground of rejection has been made in over Napierala in view of US2022/0298449A1 (Iyer).
Applicant’s arguments in light of the amendments have been fully but are moot as they do not apply to the current rejection.
Claim Rejections - 35 USC § 103
Claims 1, 3, 4, 6-11 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Napierala as evidenced by Kalgaonkar, and further in view of Iyer.
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]), wherein the ether amine additive is present in an amount of about 0.3 to 0.7% of the lubricant composition (Table 2), 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).
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
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766