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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al (US 2014/0158354)
Regarding Claims 1, 2, 15 and 20:
Kumar et al (US 2014/0158354) discloses water based drilling fluids [0005] comprising water in amounts such as greater than 50 % [0081](meeting claims 1 15 and 20 for water and overlapping the range of water of claims 11)
The composition may be used with and in cement and cement compositions [0111-0112] including cement slurry [0049] [0065]
The composition may comprise calcium sulfate hemihydrate [0115] magnesium chloride salt and water [0116] (meeting the limitations of the claims for one or more salts of claims 1, 15 and 20 for salts comprising chloride and sulfate and sodium calcium and magnesium of claim 3)
The composition may comprise water and a viscosity increasing agent such as a water soluble polysaccharide derivative a guar derivative. The composition may comprise water soluble inorganic salts such as alkali metal halide such as sodium chloride [0151-0152] (meeting claims 1, 15, 20, and 3-4)
Further regarding claims 3-4 and 18: The composition may comprise an inorganic setting material such as calcium sulfate [0154] (meeting claims 3-4)
The composition may comprise nano silica or silica as silica sol (i.e. micro meter silica also known as silica fume of instant claim 18) [0152]
The composition will have sufficient density to provide the appropriate degree of well control and salts may be added to a water course to provide a brine and resulting well fluid with a desired density and the salts also afford compatibility of the well fluid with the formation and formation fluids. one of ordinary skill in the art with the benefit of this disclosure will be able to determine whether a salt should be included in a well fluid [0164]
The composition comprises sodium chloride. The amount of the salt is that which is necessary for formation compatibility as well as stability of clay minerals taking into consideration the crystallization temperature of the brine where the salt precipitates from the brine as the temperature drops [0165]
The composition includes a water soluble polymer for shear thinning viscosity of the aqueous liquid phase. The viscosity increasing agents used include a cross liked hydroxy propyl guar. The composition includes a sodium sulfate which can set for formulating a settable fluid for use in fluid loss control [0166]
Water soluble polymers include polysaccharides as well as guar and its derivatives [0171-00172] (meeting claims 1, 15 and 20 for suspending aid and claim 6 for biopolymer and claim 7 for water soluble polymer)
The viscosity increasing agent is used in amounts of 0.01 to 5 wt.% of the continuous phase [0180] (viscosity increasing agent i.e. suspending aid of instant claims- within the range of claim 9)
Further regarding claim 2: The composition comprises anti-freeze / freeze point depressants such as ethylene glycol and propylene glycol at 0.1 to 10 wt. % [0203] (meeting the limitation for a glycol of claims 1, 15, and 20 and for the mono ethylene glycol of claim 2 and being within the range of claim 12)
The composition may include clay stabilizers and pH control additives [0248]
The composition comprises alumina from clay minerals 2-4 % [0266] and silicon dioxide/silica [0199]
The composition comprises particulate such as clay particles [0054] Nano particulates are used with water soluble inorganic salts including NaCl [0196] and sodium sulfates [0197] (meeting claims 4-5)
The composition may comprise diatomaceous earth of 80-90 % silica and 2 to 4 % alumina attributed to clay minerals [0266]
Hydraulic cement (i.e. Portland cement) is formed by mixing dry cement powder with water [0117] Hydraulic cement bonds to the formation and may help with controlling severe lost circulations [0143] Cements include gypsum [0114-0115]
A solid dispersed phase is a suspension or slurry [0065] The composition may be a suspension [0068] [0080] The material may be on ore more phases and includes a cement slurry [0049] (meeting claim 20)
Further Regarding Claim 2 and 12:
See MPEP 2144.05(I): "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)"
REGARDING THE NEWLY ADDED CLAIM LIMITATIONS of claims 1, 15 and 20:
Claim Interpretation: The instant claims are broad and do not recite a temperature or other storage conditions. The instant claims are directed to the stability of the liquid salt composition and not to a cement composition comprising same.
The prior art discloses the limitations above set forth.
The composition will have sufficient density to provide the appropriate degree of well control and salts may be added to a water course to provide a brine and resulting well fluid with a desired density and the salts also afford compatibility of the well fluid with the formation and formation fluids. one of ordinary skill in the art with the benefit of this disclosure will be able to determine whether a salt should be included in a well fluid [0164]
The composition comprises sodium chloride. The amount of the salt is that which is necessary for formation compatibility as well as stability of clay minerals taking into consideration the crystallization temperature of the brine where the salt precipitates from the brine as the temperature drops [0165]
Kumar also teaches stability of the composition:
[0211] The temperature of the aqueous solution of the silica sol also affects the formation of the colloidal silica gel; higher temperatures generally favoring more rapid gelling. Gels can be formed from the aqueous non-aggregated colloidal silica sols at temperatures from 5° C. to 200° C. or higher. Such gels are stable indefinitely at temperatures between 5° C. and 200° C. and are stable for a few days at temperatures as high as 260° C. In addition, because of the exceptionally low permeability, silica gels can withstand contact by fluids having temperatures as high as 350° C., e.g., steam.
[0201] There is no interaction of silica sol with hydrocarbon liquids. Silica sol is a non-combustible material. The product is stable under normal conditions of storage and reactivity. It can have a dangerous chemical reaction with powerful oxidants, however. It is nontoxic product, giving only light irritation in contact with eye or skin. Silica sol has NFPA ratings of Fire 0, Health 1, and Reactivity 0. It has no hazardous decomposition products.
[0202]
These characteristics make silica sols easy to transport and store on field locations without posing safety hazards.
As such the prior art teaches stability of the composition which may be adjusted by one of ordinary skill in the art at the time of filing the invention with a reasonable expectation of success as to duration based on temperature. 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)
Since the liquid salt composition of the reference comprising the claimed compositional components in ranges which meet and overlap the instantly claimed ranges will necessarily possess the claimed properties including but not limited to stable liquid suspensions on standing for at least seven days.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
In furtherance of the examiners position that the salt/brine composition will possess the claimed property without addition of the cement components: See for example instant claim 15 where the property claimed is directed solely to the liquid salt composition notwithstanding the composition comprising a cement material/inorganic setting material.
Further Regarding the amount of salt and the ratio thereof of claims 1, 15, 20 and claim 5::
Kumar et al (US 2014/0158354) discloses the limitations above set forth.
Given the amounts of the recited components in certain embodiments, the amount of the combined salts will overlap those of the instant claims. For example, the amount of water (greater than 50%) required as well as the amount of the glycol (0.1-10%)and suspending aid (0.1-5 % for example), the remaining amount will necessarily overlap the claimed range of salts (total minimum range 50.2 % or for example when water 50% and glycol is 10 % and suspending aid is 5 %= 65% so leaving 49.8-35% for example for the combined salts).
Further the amount, combination and ratio of salts can be determined by one of ordinary skill in the art at the time of filing the invention to afford desired density, compatibility of a well fluid with formation fluids taking into account stability of clay minerals and crystallization temperatures of the brine. See reference:
The composition will have sufficient density to provide the appropriate degree of well control and salts may be added to a water course to provide a brine and resulting well fluid with a desired density and the salts also afford compatibility of the well fluid with the formation and formation fluids. one of ordinary skill in the art with the benefit of this disclosure will be able to determine whether a salt should be included in a well fluid [0164]
The composition comprises sodium chloride. The amount of the salt is that which is necessary for formation compatibility as well as stability of clay minerals taking into consideration the crystallization temperature of the brine where the salt precipitates from the brine as the temperature drops [0165]
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)
Further Regarding Claims 3-5:
Kumar et al (US 2014/0158354) discloses the limitations above set forth.
The composition comprises particulate such as clay particles [0054] Nano particulates are used with water soluble inorganic salts including NaCl [0196] and sodium sulfates [0197] (meeting claims 4-5)
The composition may comprise water and a viscosity increasing agent such as a water soluble polysaccharide derivative a guar derivative. The composition may comprise water soluble inorganic salts such as alkali metal halide such as sodium chloride [0151-0152] (meeting claims 1, 15, 20, and 3-4)
The composition includes a water soluble polymer for shear thinning viscosity of the aqueous liquid phase. The viscosity increasing agents used include a cross liked hydroxy propyl guar. The composition includes a sodium sulfate which can set for formulating a settable fluid for use in fluid loss control [0166]
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)
Further Regarding Claims 6-7
Kumar et al (US 2014/0158354) discloses the limitations above set forth.
A viscosity increasing agent gelling agent thickener suspending agent may be added [0167] The composition includes water soluble polymers for increasing viscosity and water in an amount sufficient to substantially hydrate an viscosity increased agent. [0170](meeting the limitation of claim 7 for water soluble polymer)
The composition may include clay stabilizers and pH control additives [0248] (indicating the presence of clay which needs stabilization)The composition comprises alumina from clay minerals 2-4 % [0266] and silicon dioxide/silica [0199] The composition comprises particulate such as clay particles [0054] Nano particulates are used with water soluble inorganic salts including NaCl [0196] and sodium sulfates [0197] The composition may comprise diatomaceous earth of 80-90 % silica and 2 to 4 % alumina attributed to clay minerals [0266] (meeting the limitations for a suspending aid comprising clay of claims 6-7)
Further Regarding Claim 8:
Kumar et al (US 2014/0158354) discloses the limitations above set forth.
The composition includes xanthan gum [0177] (meeting claim 1, 15 and 20 for a suspending aid and claim 8)
Further Regarding Claim 9:
Kumar et al (US 2014/0158354) discloses the limitations above set forth.
Water soluble polymers include polysaccharides as well as guar and its derivatives [0171-00172] (meeting claims 1, 15 and 20 for suspending aid and claim 6 for biopolymer and claim 7 for water soluble polymer)
The viscosity increasing agent is used in amounts of 0.01 to 5 wt.% of the continuous phase [0180] (viscosity increasing agent i.e. suspending aid of instant claims- within the range of claim 9)
Further Regarding Claims 10-11:
Kumar et al (US 2014/0158354) discloses the limitations above set forth.
The water includes non-freshwater sources such as surface water, brackish water, seawater, brine, returned/flowback water from well fluid where the brine has at least 40,000 mg/L total dissolved solids [0162] (meeting claim 10)
comprising water in amounts such as greater than 50 % [0081](overlapping the range of claim 11)
Further Regarding Claims 1-2 and 12:
Kumar et al (US 2014/0158354) discloses the limitations above set forth.
The composition comprises anti-freeze / freeze point depressants such as ethylene glycol and propylene glycol at 0.1 to 10 wt. % [0203] (meeting the limitation for a glycol of claims 1 15, and 20 and for the mono ethylene glycol of claim 2 and being within the range of claim 12)
Further Regarding Claims 13-14:
The composition will have sufficient density to provide the appropriate degree of well control and salts may be added to a water course to provide a brine and resulting well fluid with a desired density and the salts also afford compatibility of the well fluid with the formation and formation fluids. one of ordinary skill in the art with the benefit of this disclosure will be able to determine whether a salt should be included in a well fluid [0164]
Setting time of the system can be varied by adjusting the free water in the system [0158]
Further regarding the limitations for ranges by weight percent and ratios:
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)(including but not limited to the ranges of claims 13-14)
The prior art having taught the claimed composition with amounts within/overlapping the instantly claimed ranges will necessarily possess the claimed performance properties including but not limited to free water content, density and free fluid after static at about 70F for about 1 week to about seven weeks in ranges which meet and/or overlap the claimed ranges.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Further Regarding Claims 15-20
Kumar et al (US 2014/0158354) discloses the limitations above set forth.
Kumar discloses [0009] The invention provides a method of treating a well, the method including the steps of: (A) forming a fluid including: (i) a shear-thinning aqueous liquid phase; and (ii) an inorganic setting material wherein the fluid is shear-thinning, pumpable, and settable; and (B) introducing the fluid into the well.
[0010] The invention also provides a composition comprising: (i) a shear-thinning aqueous liquid phase; and (ii) an inorganic setting material wherein the fluid is shear-thinning, pumpable, and settable.
The composition may include clay stabilizers and pH control additives [0248]
The composition comprises alumina from clay minerals 2-4 % [0266] and silicon dioxide/silica [0199]
The composition comprises particulate such as clay particles [0054] Nano particulates are used with water soluble inorganic salts including NaCl [0196] and sodium sulfates [0197]
The composition may comprise diatomaceous earth of 80-90 % silica and 2 to 4 % alumina attributed to clay minerals [0266]
Hydraulic cement (i.e. Portland cement) is formed by mixing dry cement powder with water [0117] Hydraulic cement bonds to the formation and may help with controlling sever lost circulations [0143]
Cements include gypsum [0114-0115]
A solid dispersed phase is a suspension or slurry [0065] The composition may be a suspension [0068] [0080]
The material may be on ore more phases and includes a cement slurry [0049]
Further Regarding Claim 20:
A solid dispersed phase is a suspension or slurry [0065] The composition may be a suspension [0068] [0080] The material may be on ore more phases and includes a cement slurry [0049] (meeting claim 20)
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant argues the prior art does not teach/render obvious the new claim limitations pertaining to storage stability. This is not persuasive.
Applicant refers to a single embodiment of the prior art and does not consider the overall teachings of the cited prior art. Notably the sections of the prior art cited by the applicant include more than just the brine/salt portion of the composition and require a temperature adjustment for setting. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As more fully above set forth, the brine composition is rendered obvious by the cited prior art. The prior art also recognizes parameters which may be adjusted to facilitate hardening (i.e. temperature)
REGARDING THE NEWLY ADDED CLAIM LIMITATION:
Claim Interpretation: The instant claims are broad and do not recite a temperature or other storage conditions. The instant claims are directed to the stability of the liquid salt composition and not to a cement composition comprising same.
In furtherance of the examiners position that the salt/brine composition will possess the claimed property without addition of the cement components: See for example claim 15 where the property claimed is directed solely to the liquid salt composition notwithstanding the composition comprising a cement material/inorganic setting material.
The prior art discloses the limitations above set forth.
The composition will have sufficient density to provide the appropriate degree of well control and salts may be added to a water course to provide a brine and resulting well fluid with a desired density and the salts also afford compatibility of the well fluid with the formation and formation fluids. one of ordinary skill in the art with the benefit of this disclosure will be able to determine whether a salt should be included in a well fluid [0164]
The composition comprises sodium chloride. The amount of the salt is that which is necessary for formation compatibility as well as stability of clay minerals taking into consideration the crystallization temperature of the brine where the salt precipitates from the brine as the temperature drops [0165]
Kumar also teaches stability of the composition:
[0211] The temperature of the aqueous solution of the silica sol also affects the formation of the colloidal silica gel; higher temperatures generally favoring more rapid gelling. Gels can be formed from the aqueous non-aggregated colloidal silica sols at temperatures from 5° C. to 200° C. or higher. Such gels are stable indefinitely at temperatures between 5° C. and 200° C. and are stable for a few days at temperatures as high as 260° C. In addition, because of the exceptionally low permeability, silica gels can withstand contact by fluids having temperatures as high as 350° C., e.g., steam.
[0201] There is no interaction of silica sol with hydrocarbon liquids. Silica sol is a non-combustible material. The product is stable under normal conditions of storage and reactivity. It can have a dangerous chemical reaction with powerful oxidants, however. It is nontoxic product, giving only light irritation in contact with eye or skin. Silica sol has NFPA ratings of Fire 0, Health 1, and Reactivity 0. It has no hazardous decomposition products.
[0202]
These characteristics make silica sols easy to transport and store on field locations without posing safety hazards.
As such the prior art teaches stability of the composition which may be adjusted by one of ordinary skill in the art at the time of filing the invention with a reasonable expectation of success as to duration based on temperature. 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)
Since the liquid salt composition of the reference comprising the claimed compositional components in ranges which meet and overlap the instantly claimed ranges will necessarily possess the claimed properties including but not limited to stable liquid suspensions on standing for at least seven days. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
For the above reasons the rejections as above set forth are made final.
Conclusion
Applicant's 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/ Primary Patent Examiner, Art Unit 1732
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