DETAILED CORRESPONDENCE
Status of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 20, 22, 23, 27, 28, 30, 31 & 33-36 have been examined in this application. This communication is a Final Rejection in response to the Amendment filed on November 5, 2025. Claims 1-19, 21, 29 & 32 stand canceled. Claims 24-26 stand withdrawn.
Claim Objections
Claim 36 is objected to because of the following informalities:
Claim 36 recites “in a well” in line 2. As the parent claim previously recites a well, to improve clarity, replacement of this limitation with -in the well- is required. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 33 & 35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 33 recites “wherein the plug fills the full diameter of the well” and Claim 35 recites “wherein filling the length of the well with the alloy composition in the molten state comprises filling the full diameter of the well with the alloy composition in the molten state”. The instant specification appears to discuss the plug and related method steps of filling with respect to a length of the well, and does not appear to discuss the same with respect to the diameter or the full diameter of the well. While Applicants’ remarks cite portions of pages 8, 14 & 21 of the instant specification for support, it is noted that these portions do not appear discuss filling the full diameter of the well as respectively claimed. In abandonment operations, plugging does not necessarily require the filling of the full diameter, and may include filling leaks, limited/desired regions etc. (as also discussed on at least page 1 of the instant specification). As such, the plug comprising the instantly claimed alloy composition filling the “full diameter of the well” as respectively claimed is not sufficiently described in the specification as required above. Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 20, 22, 23, 27, 28, 30, 31, 33 & 35 are rejected under 35 U.S.C. 103 as being unpatentable over Billingham et al. (US 2018/0298720).
With respect to Claim 20, Billingham discloses a plug for sealing a well comprising an alloy composition of bismuth and silver, the plug filling a length of the well (Billingham: Sections [0007], [0008], [0031], [0033] & [0034]; Figures 2 & 3); wherein, as a non-limiting example, Billingham teaches filling areas such as “56”, which is considered to disclose sealing a well and filling a length of the well as broadly claimed; and wherein Billingham further teaches examples of such alloys comprising amounts of bismuth and silver in ranges that overlap with the preferred range of the instant invention as presented in the instant specification (page 9); and also teaches providing the alloy/fill material so as to have sufficient fluid viscosity in the molten state for wellbore applications.
As such, although the reference fails to explicitly limit the weight ranges of bismuth and silver to the ranges as respectively claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide/prepare the alloy as desired with suitable amounts of bismuth and silver to tailor properties such as fluid viscosity insofar as because it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed concentration ranges for each component as critical and it is unclear if any unexpected results are achieved by using the instantly claimed concentration ranges. Since the alloy of Billingham is suggested as achieving sealing/a plug as disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed concentration ranges, and, as such, the determination of percents of each component as claimed would be achievable through routine experimentation in the art.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for providing alloys comprising bismuth and silver, and a finite number of identified, predictable solutions including tailoring the alloy for desired properties such as fluid viscosity, as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Billingham, one of ordinary skill in the art could have pursued desired weights of the alloy components, i.e., bismuth and silver, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 22, Billingham teaches the plug as provided above with respect to Claim 20, and further discloses “…wherein the well is an oil well” (Billingham: Sections [0007] & [0008]).
With respect to Claim 23, Billingham discloses a method of forming a plug in a well comprising an alloy composition of bismuth and silver, the method comprising: filling a length of the well with the alloy composition in a molten state; and allowing the alloy composition in the molten state to solidify (Billingham: Sections [0007], [0008], [0031], [0033] & [0034]; Figures 2 & 3); wherein, as a non-limiting example, Billingham teaches filling areas such as “56”, which is considered to disclose filling a length of the well as broadly claimed; and wherein Billingham further teaches examples of such alloys comprising amounts of bismuth and silver in ranges that overlap with the preferred range of the instant invention as presented in the instant specification (page 9); and also teaches providing the alloy/fill material so as to have sufficient fluid viscosity in the molten state for wellbore applications.
As such, although the reference fails to explicitly limit the weight ranges of bismuth and silver to the ranges as respectively claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide/prepare the alloy as desired with suitable amounts of bismuth and silver to tailor properties such as fluid viscosity insofar as because it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed concentration ranges for each component as critical and it is unclear if any unexpected results are achieved by using the instantly claimed concentration ranges. Since the alloy of Billingham is suggested as achieving sealing/a plug as disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed concentration ranges, and, as such, the determination of percents of each component as claimed would be achievable through routine experimentation in the art.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for providing alloys comprising bismuth and silver, and a finite number of identified, predictable solutions including tailoring the alloy for desired properties such as fluid viscosity, as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Billingham, one of ordinary skill in the art could have pursued desired weights of the alloy components, i.e., bismuth and silver, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claims 27, 28, 30 & 31, Billingham teaches the plug and method as provided above with respect to Claims 20 & 23, respectively, and further teaches the respective amounts of bismuth and silver for reasons as set forth above with respect to Claims 20 & 23, respectively.
With respect to Claims 33 & 35, Billingham teaches the plug and method as provided above with respect to Claims 20 & 23, respectively, and further discloses one or more embodiments where filling areas are circumferential, and where areas such as “56” complete a full circle, and one or more embodiments where the composition cools and solidifies within the casing; which is considered to disclose filling the full diameter of the well as broadly and respectively claimed (Billingham: Sections [0022], [0029] & [0034]).
Claims 34 & 36 are rejected under 35 U.S.C. 103 as being unpatentable over Billingham et al. (US 2018/0298720), in view of Spencer (US 2003/0132224).
With respect to Claims 34 & 36, Billingham teaches the plug and method as provided above with respect to Claims 20 & 23, respectively; and further teaches one or more embodiments where the plug/composition is employed in sealing cracks/voids in cement, and cools and solidifies within the casing, and may be removed if undesired depending on the implementation (Billingham: Sections [0002]-[0009], [0034] & [0035]). The reference, however, fail to explicitly disclose the plug to “abandon the well” and the method steps as “sealing and abandoning the well”, as respectively claimed.
Spencer teaches methods of repairing and sealing wells therein, wherein bismuth-based alloys provide improved bonding with lower viscosity, in comparison to cement, and are employed to seal faults in cement to improve production efficiencies or to terminate leaks for well abandonment; and also teaches wherein solidified material within the casing may be drilled out as is known if the well is intended to continue in production or can be left undrilled in place if the well is to be abandoned (Spencer: Sections [0002], [0006]-[0009] & [0056]-[0066]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified Billingham with the aforementioned teachings of Spencer to leave in place the solidified plug within the casing if desired, to seal/abandon the well, as an alternative to removing the same, with a reasonable expectation of success, in order to benefit from the properties of bismuth-based plugs and/or to yield predictable results in well sealing/plugging operations. (Spencer: Sections [0002], [0006]-[0009] & [0056]-[0066]).
Response to Arguments
Applicants' amendments regarding the claim objections and the 35 USC 112 rejections are persuasive and, therefore, these objections and rejections have been withdrawn.
Applicants’ arguments with respect to new Claims 33-36 and the rejection(s) of Claims 20, 22, 23 & 27-32 under 103 as being unpatentable over Billingham et al., have been fully considered but they are not persuasive.
Applicants assert that the skilled person will understand that microannuli occur between the well casing and the formation and that the sealing of microannuli does not therefore fill a length of the well as only a small volume of the length of the well is filled (i.e. that corresponding to the microannuli); therefore, Billingham's disclosure of sealing microannuli does not correspond to a disclosure of forming a plug that fills the well, and that therefore the claims are novel; and there is no teaching in Billingham that the alloy composition disclosed therein may be used for anything other than sealing microannuli, therefore the pending claims are also not obvious in view of Billingham. Applicants further assert that the person of ordinary skill would understand that a plug, in the context of sealing a well, is used for the abandonment of wells and prevents the movement of hydrocarbons from one level to another; and accordingly, it is implicit that the claimed plug fills the full diameter of the well, else it will not achieve the desired effect of abandonment.
Applicants assert that support for new Claims 33-36 may be found at least in the specification as well as what a person of ordinary skill in the art would appreciate in light of their knowledge and understanding of the art, as well as in the cited paper presented at the Offshore Technology Conference in 2019 which clearly describes the use of the term "plug" as being for "plugging and abandonment" and setting out that abandonment of wells requires a plug that completely fills a length of the well; and that new Claims 34 and 36 specify that the plug is for abandonment of the well, implicitly requiring filling the full diameter of the well to achieve abandonment.
The Examiner respectfully disagrees.
It is noted that the instant claims broadly recite (i) an intended use for “sealing a well” in Claim 20, and (ii) “filling a length” in Claims 20 & 23. The instant specification (page 1) also discusses sealing at any point in the well. As such, as broadly claimed, the instant claims do not limit the seal/plug to any specific length of plug, or a degree/volume/area/purpose for the plug. In abandonment operations, plugging does not necessarily require the filling of the full diameter, and may include filling leaks, limited/desired regions etc. (as also discussed on at least page 1 of the instant specification). As set forth above, as a non-limiting example, Billingham teaches filling areas such as “56”, which is considered to disclose sealing a well and filling a length of the well as broadly claimed and described. Billingham further discloses one or more embodiments where filling areas are circumferential, and where areas such as “56” complete a full circle, and one or more embodiments where the composition cools and solidifies within the casing; which is considered to disclose filling the full diameter of the well as broadly and respectively claimed (Billingham: Sections [0022], [0029] & [0034]).
Further, the instant specification as originally filed appears to discuss the plug and related method steps of filling with respect to a length of the well, and does not appear to discuss the same with respect to the diameter of the well as asserted. While Applicants’ remarks cite portions of pages 8, 14 & 21 of the instant specification for support, it is noted that these portions do not appear discuss filling the full diameter of the well as respectively claimed. In abandonment operations, plugging does not necessarily require the filling of the full diameter, and may include filling leaks, limited/desired regions etc. (as also discussed on at least page 1 of the instant specification). As such, the plug comprising the instantly claimed alloy composition filling the “full diameter of the well” as respectively claimed is not sufficiently described in the specification as set forth above.
As such, Claims 20, 22, 23, 27, 28, 30 & 31 remain rejected under 35 USC 103 in view of Billingham et al., with updates to address amendments as set forth above; and new Claims 33-36 are rejected under 35 USC 103 in view of Billingham et al., alone or in combination with Spencer, as set forth above.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674