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 Objections
Claims 12-20 and 22-30 are objected to because of the following informalities: claims 12-20 recite “A method” , which appears to be “The method”; claim 22 recites “A subterranean treatment fluid”, which appears to be “ The subterranean treatment fluid”; claims 23-30 recite “ A subterranean treatment fluid to ”, which appears to be “The subterranean treatment fluid according to “. 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 12-20, 23-25 and 29 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 12, 16-18 and 20 depend upon claim 1, claim 13 depends upon claim 2, claim 14 depends upon claim 3, and claims 15 and 19 depend upon claim 4, however, claims 1-4 have been cancelled. For prior art purpose, claims 12, 16-18 and 20 has been interpreted as depending upon claim 11, claim 13 as depending upon claim 12, claim 14 as depending upon claim 13, and claims 15 and 19 as depending upon claim 14.
Claims 23-25 and 29 are rejected as depending upon rejected claims and fail to remedy the 112b issue.
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.
Claims 11-30 are rejected under 35 U.S.C. 103 as being unpatentable over US2009/0239771A1 (Frederici).
Regarding claims 11-15, 18-19, 21-25 and 28-29, Frederici teaches a method to inhibit the hydration of clays and shales during drilling operation comprises circulating through the well a water base drilling fluid ([0001]-[0003]), which meets introducing a fluid at a sufficient pressure to treat the formation, wherein the fluid contains from 0.2 to 5% by weight of an oligoester obtained from the condensation product of a dicarboxylic acid such as adipic acid ([0041], [0044] and [0052]), with alkanolamines or diamines ([0002]), which meets the claimed amount of the polyester.
Frederici teaches that the alkanol amine has a formula (I) R'''R''N--R'—XH ([0035]), wherein X can be NR0, R0 can be a linear alkyl group having from 1 to 6 carbon atoms, R' can be a linear alkylene group having from 2 to 10 carbon atoms, R'' and R''' can be equal or different from one another and can be a linear alkyl group having from 1 to 6 carbon atoms, optionally substituted with a hydroxyl group ([0036]. [0038] and [0040]), which one of ordinary skill in the art would envisage an alkoxylated diamine of formula CH3NH- (CH2)1-5-N((EOH)2-10, CH3NH- (CH2)2-10-N((POH)2 or CH3NH- (CH2)2-10-N(EOH)(POH), when R0 is methyl, R” and R’’’ are each hydroxylated ethylene or propylene groups, which meets the claimed o, p, q, r of integer number of 0 to 5 and a sum of 2, and overlaps with the claimed n of 1-5 of claims 11 and 21 and encompasses the claimed n of 3 of claims 12 and 22, which renders the claimed n obvious since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” 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.
Frederici does not teach the (CH3)2N- group of claimed formula (I) but CH3NH- group, however, (CH3)2N- is structurally similar to CH3NH-, absent evidence to the contrary, one of ordinary skill in the art would have reasonable basis to expect that a methyl substitution of the H on CH3NH- of Frederici would have similar clay inhibiting function since it has been held that "Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties." See, e.g., Dillon, 919 F.2d at 693, 696,16 USPQ2d at 1901,1904. See also Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214. MPEP 2144.09[R-08.2017].
Regarding claims 16 and 26, Frederici teaches that the molar ration between the dicarboxylic acid and the alkanolamine or the diamine is up to about 1:1 to obtain oligo amino-esters ([0054]), which meets the claimed molar ratio.
Regarding claims 17 and 27, Frederici exemplifies ester products of an acid number of 10 to 90 mg KOH/g (Examples 4-8) , which meets the claimed range.
Regarding claims 20 and 30, Frederici teaches the fluid contains from 0.2 to 5% by weight of the ester inhibitor obtained from the condensation product ([0041]), which overlaps with the claimed amount of 0.01 to 3 wt.%.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include ester clay inhibitor at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
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