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/Restrictions
Applicant's election with traverse of Group 1 and species D, claims 1, 3-4, 6-13 and 16-17 in the reply filed on 01/01/2026 is acknowledged. The traversal is on the ground that the prior art of record does not teach the newly amended common technical feature (non-ionic water soluble polymer) as presently claimed. This is not found persuasive because, as set forth in the following rejection part in this office action, the cited reference teaches the common technical features as presently claimed. Therefore, the restriction requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 5 and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claims. Claims 1, 3-4, 6-13 and 16-17 are currently under examination on the merits.
Claim Objections
Claims 1, 4, 6, and 16-17 are objected to because of the following informalities: “…and/or…and /or… and/or…” is not a proper Markush group or conventional alternative limitation. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “average molecular weight” should read “weight average molecular weight” in order to be consistent with Mw L and Mw H as recited in the claim. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: “selected from… and…” is not a proper Markush group or conventional alternative limitation. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: “wherein the monomers of a hydrophobic nature are hydroxyethylacrylate, hydroxypropylacrylate, butylacrylate, propylacrylate, dimethylacrylamide, butylacrylamide” is not a proper Markush group or conventional alternative limitation. Appropriate correction is required.
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.
Claims 1, 3-4, 6-13 and 16-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1, 4, 6 and 16-17 are rejected as being vague and indefinite when these claims recite multiple "and/or" in the recited limitations, because one of ordinary skill in the art would not know the listed monomers are included in the polymer or optional monomer, or how many monomers are included in the polymer. In this office action, it is taken that the polymer is a copolymer of acrylamide and vinylformamide being consistent with the species as elected by the applicant. Claims 3, 7-11 and 13 are also rejected for depending from claim 1 thus inclusion of its indefinite features.
Claim 1 is rejected as being vague and indefinite when it recites “monomer units of a different chemical nature from the abovementioned chemical natures”, because the claim does not provide definition of “chemical nature”. In this office action, it is taken that the monomer units as recited is a monomer unit having chemical structure different from monomers of acrylamide, vinylamine, and vinylformamide. Claims 3-4, 6-11 and 13 are also rejected for depending from claim 1 thus inclusion of its indefinite features.
Claim 13 is rejected as being vague and indefinite when it recites “based on the weight of aggregate” because it is not clear what is the aggregate as recited. In this office action, it is taken that the “aggregate” is hydraulic composition.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim 12 depending from claim 2 which has been cancelled. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1, 3-4, 6-11, 13 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Crema et al (US 5092935, ‘935 hereafter).
Regarding claims 1, 3 and 16-17, ‘935 discloses a method of making a cement composition comprising adding a fluid loss additive into a hydraulic composition (C6/L4-C7/L60), wherein the fluid loss additive is a non-ionic water soluble copolymer of two monomers including acrylamide and vinyl formamide and has a molecular weight range from about 10,000 to 3,000,000 (C4/L39-C4/L64, C5/L30-C5/L42), which overlap instantly claimed molecular weight range (if 100 % AM, Mw L is 3000, Mw H is 50,000, if 100% VF, Mw L is 1000, and Mw H is 300,000, copolymer can be 5% AM by weight and 95% VF by weight, ‘935 does not specifically set forth that the molecular weight is a weight average molecular weight, however, even if the molecular weight of ‘935 is a number average molecular weight with molecular weight distribution >2 (radical polymerization as disclosed in C5/L43-C5/L47), the molecular weight as disclosed still overlaps instantly claimed range of weight average molecular weight). ‘935 does not expressly name an polymer having weight average molecular falling within the presently claimed ranges, however, as set forth above, ‘935 discloses that the molecular weight range substantially overlaps the presently claimed ranges; therefore, it would have been obvious to a person of ordinary skill to use any average molecular weight within the ranges disclosed by ‘935, including those weight average molecular weight within the presently recited ranges. 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) (See MPEP 2144.05). ‘935 does not specifically set forth that the polymer is a clay inerting agent, however, since the polymer as used in the cement composition is identical to the polymer being added to a cement composition as presently claimed, it is reasonable to expect that the polymer of ‘935 is capable of functioning as a clay inerting agent. It is also noted that the method for inerting clays in hydraulic composition intended for construction purposes” is in intended use format, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, if prior art discloses the process and the hydraulic composition in this claim, then the prior art process and the composition will be capable of being used for construction purposes.
Regarding claims 4 and 6-11, ‘935 also discloses that the copolymer may comprise an additional monomer having hydrophobic nature include hydroxypropylacrylate, ethylene acrylate and the like (C5/L48-C5/L63), satisfying present claims 4, 7 and 9; wherein the content of the additional monomer can be in range of 0 to 60% by weight, and the content of acrylamide or/and vinylformamide can be up to 95 wt% by weight (C5/L64-C5/L67), which apparently overlap presently claimed ranges as in claims 6, 8 and 10-11, with molecular weight satisfying present claims 10 and 11 as discussed in the paragraph 17 above.
Regarding claim 13, ‘935 does not disclose that the content of the polymer in the cement composition is in a range of 2 to 200 ppm, but ‘935 discloses that the polymer content in the cement composition can be used in any amount which is effective in reducing the fluid loose from cement slurry to surrounding rock formations (C5/L6-C5/L8), thus the amount of the polymer in the cement composition is an effective variable in terms of the fluid loss properties. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the amount of the polymer within the scope of the present claims so as to produce desired fluid loss properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782