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 .
Drawings
The drawings were received on 07/09/26. These drawings are accepted.
Claim Rejections - 35 USC § 102
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 8-23, 26 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stude (US 4,036,659 – cited previously).
With respect to independent claim 8, Stude discloses a hydraulic cement composition, comprising:
hydraulic cement (col. 1, l. 33-60; col. 3, l. 21-33); and
at least one anti-corrosion agent selected from the group as claimed (col. 1, l. 60; col. 2, l. 54-55).
With respect to dependent claim 9, Stude discloses wherein said hydraulic cement is Portland cement (col. 1, l. 33-60; col. 3, l. 21-33).
With respect to dependent claims 10-12, Stude discloses wherein said anti-corrosion agent comprises/is urea (col. 1, l. 60; col. 2, l. 54-55).
With respect to dependent claims 13 and 14, and new claims 21 and 22, Stude discloses wherein said anti-corrosion agent is present in an amount of at least 0.5% by weight, and, further, wherein said anti-corrosion inhibitor is present in said composition in an amount in the range of from about 0.5-40% by weight, and, further, wherein said anti-corrosion agent is present in an amount in the range of from 1-30%, and, further, 1-10% by weight (col. 1, l. 60; col. 2, l. 54-55; col. 13, l. 11).
With respect to independent claim 15, Stude discloses a hydraulic cement slurry, comprising:
hydraulic cement (col. 1, l. 33-60; col. 3, l. 21-33);
at least one anti-corrosion agent selected from the group as claimed (col. 1, l. 60; col. 2, l. 54-55); and
water (col. 2, l. 5-8; col. 2, l. 61-63).
With respect to dependent claims 16-18, Stude discloses wherein said anti-corrosion agent comprises/is urea (col. 1, l. 60; col. 2, l. 54-55).
With respect to dependent claims 19 and 20, and new dependent claim 27, Stude discloses wherein said anti-corrosion agent is present in an amount of at least 0.5% by weight, and, further, wherein said anti-corrosion inhibitor is present in said composition in an amount in the range of from about 0.5-40% by weight, and, further, wherein said anti-corrosion agent is present in an amount in the range of from 1-30% (col. 1, l. 60; col. 2, l. 54-55; col. 13, l. 11).
With respect to dependent claim 23, Stude discloses at least one additive selected from the group as claimed (col. 1, l. 59-66; col. 2, l. 65-colo. 3, l. 20; col. 4, l. 51-54).
With respect to dependent claim 26, Stude discloses wherein said hydraulic cement is Portland cement (col. 1, l. 33-60; col. 3, l. 21-33).
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.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Stude as applied to claim 23 above, and further in view of Mintz et al. (BR PI0709354 A2 – cited and provided previously).
Stude discloses the hydraulic cement slurry as set forth above in the rejection of claim 23, wherein such is disclosed as used to set in areas having low temperatures (col. 1, l. 42-50; col. 2, l. 25-33) and is further suggested to include known additives for their known function in hydraulic cements (col. 4, l. 48-54). The reference, however, fails to disclose the inclusion of a defoamer as instantly claimed. Mintz teaches additives included in hydraulic cement wherein a defoaming agent is present therein for the purpose of improving freeze/thaw durability of the composition. Since Stude discloses the inclusion of known additives within the hydraulic cement disclosed therein, wherein such have known functions, and, further, wherein the hydraulic cement is used in areas having temperatures to about freezing (abstract) and Mintz suggests the inclusion of a defoamer in a hydraulic cement for the purpose of improving freeze/thaw durability, it would have been obvious to one having ordinary skill in the art to try a defoamer as an additive in the hydraulic cement of Stude in order to yield the predictable result of improving the freeze/thaw durability thereof.
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Stude as applied to claim 23 above, and further in view of Brothers et al. (US 2007/0221379 – cited previously).
Stude discloses the hydraulic cement slurry as set forth above in the rejection of claim 23, wherein such is disclosed as used to set in areas having low temperatures (col. 1, l. 42-50; col. 2, l. 25-33) and is further suggested to include known additives for their known function in hydraulic cements (col. 4, l. 48-54). The reference, however, fails to disclose the inclusion of a defoamer or suspending agent as instantly claimed. Brothers et al. teaches cement slurries ([0021]) which may be used in a permafrost region ([0028]), wherein additives may be included therein for the purpose of improving or changing the properties thereof ([0022]); examples include retarders, defoamers, setting prevention agents, weighting materials, dispersants, formation-conditioning agents, or combinations thereof ([0022]), with additional examples including density-reducing additives such as hollow beads or foaming and expanding additives such as foaming surfactants gas, suspension aids and defoamers for the purpose of generating a lightweight cement slurry. It would have been obvious to one having ordinary skill in the art to try an additive such as a suspension aid, i.e., suspending agent, and/or defoamer in the hydraulic cement of Stude in order to yield the predictable result of generating a lightweight cement slurry therewith.
Terminal Disclaimer
The terminal disclaimer filed on 07/09/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on either US application Numbers 19257213 and 18816663 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments and amendments made with respect to the 35 USC 112 rejection of claim 27, as set forth in the previous office action, have been fully considered and are persuasive in view of Applicant’s amendments. The 35 USC 112 rejection has been withdrawn.
Applicant's arguments with respect to the rejections of claims as anticipated by Stude have been fully considered but they are not persuasive.
Applicant notes the examples of the instant invention show that when added to a hydraulic cement, the anti-corrosion agent effectively reduces the corrosion of a cement composition caused by exposure to carbon dioxide in a wellbore.
Applicant asserts Stude is directed to cement compositions for use in low-temperature or freezing environments and Stude provides a slurry having the unexpected property of increased pumpabilty time with increased temperatures while still setting at low temperatures.
Applicant further asserts such temperature performance is the focus of Stude, not any anti-corrosion function or carbon-dioxide related application.
Applicant asserts the presently claimed invention is directed specifically to carbon dioxide resistant hydraulic cement compositions and slurries that are formulated to prevent corrosion and degradation caused by exposure to carbon dioxide.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., carbon dioxide resistant hydraulic cement compositions and slurries that are formulated to prevent corrosion and degradation caused by exposure to carbon dioxide) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, the Examiner notes, such provision of the type of environment is merely an intended use of the hydraulic cement. 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.
Stude discloses a hydraulic cement composition comprising hydraulic cement and urea; Stude further provides for an amount of urea that overlaps that which is further claimed by dependent claim 13.
As such, Stude anticipates the composition and its components as instantly claimed.
Applicant further asserts Stude does not demonstrate that its compositions provide resistance to carbon dioxide induced corrosion or carbonation.
The Examiner notes, however, these features are not required by the instant claims.
Should Applicant intend to emplace the instantly claimed cement composition in a carbon dioxide environment, and, further, mitigate carbon dioxide related degradation therein, Applicant may consider filing a divisional application with method claims pertaining to such.
Applicant asserts Stude does not teach or suggest the use of urea as an anti-corrosion agent in a carbon dioxide environment.
In response to applicant's argument, 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.
As set forth above, Stude clearly discloses a hydraulic cement composition comprising a hydraulic cement and urea, as is required for claim 8. Furthermore, the reference suggests an amount thereof overlapping the instantly claimed amount by Applicant in dependent claim 13.
The Examiner notes, “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. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
Applicant repeats the argument wherein Stude does not disclose or suggest the use of urea for mitigating carbon dioxide induced corrosion.
As indicated above, such arguments are drawn to an intended use of the hydraulic cement, as well as features which are not claimed, i.e., a method of mitigating carbon dioxide induced corrosion.
As such, the rejections are maintained.
Since Applicant has presented no further arguments pertaining to the combination of references used to suggest additional features of the dependent claims, the rejections thereof are maintained on the grounds of record.
Conclusion
THIS ACTION IS MADE FINAL. 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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
08/20/26
Prosecution Insights