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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 8-20, in the reply filed on 12/29/26 is acknowledged.
Claims 1-7, drawn to an invention, non-elected, have been canceled by Applicant in the response filed 12/29/25.
Drawings
Fig. 2B is objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 50, described in [0061] as the displacement fluid. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 27 is 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. Claim 27 recites the limitation "The hydraulic cement composition of claim 20." There is insufficient antecedent basis for this limitation in the claim; claim 20 rather recites “The hydraulic cement slurry.” Replacement of “composition” with -slurry- is advised so that proper antecedent basis is provided.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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).
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 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 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).
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).
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 8-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-28 of copending Application No. 19/257,213 (‘213 herein) in view of Peppler et al. (US 3785839). Both the instant application and ‘213 provide for a hydraulic cement composition and slurry with the inclusion of an anti-corrosion inhibitor therein; ‘213 recites such as guanidine and derivatives thereof while the instant application recites urea and derivatives thereof. Peppler et al. teaches Portland cement compositions (abstract) that include an additive therein, wherein such an additive includes urea and its derivatives; examples of such compounds include urea and guanidine (col. 3, l. 18-23). As such, it would have been obvious to one having ordinary skill in the art to provide for the invention as instantly claimed, i.e. the use of a derivatives of urea as the anti-corrosion agent, in view of that which Applicant is seeking patent protection for in ‘213, as guanidine is but a known derivative of urea and the provision thereof and results of such a substitution/use would have been predictable to one having ordinary skill in the art as such are indeed functional equivalents, as taught by Peppler.
This is a provisional nonstatutory double patenting rejection.
Claims 8-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-20 of copending Application No. 18/816,663 (‘663 herein)*** in view of Burge et al. (US 6,149,725), as evidenced by Peppler et al. (US 3785839). Both the instant application and ‘663 provide for a hydraulic cement composition and slurry with the inclusion of an anti-corrosion inhibitor therein; ‘663 recites such as an alkanolamine and derivatives thereof while the instant application recites urea and derivatives thereof. Burge et al. teaches Portland cement compositions (col. 4, l. 31-32) that include an anti-corrosion agent therein, wherein such an agent can be an amino compound or amino alcohol selected from a group comprising amines, including mono-, di- and tri-ethanolamine and guanidine (col. 3, l. 27-47). Peppler et al. provides evidence of derivatives of urea including guanidine (col. 3, l. 18-23). As such, it would have been obvious to one having ordinary skill in the art to provide for the invention as instantly claimed, i.e. the use of a derivatives of urea as the anti-corrosion agent, in view of that which Applicant is seeking patent protection for in ‘663, as alkanolamines are but a known alternative anti-corrosion agent for cements to the derivative of urea guanidine and thus a substitution/use of derivatives of urea as instantly claimed for the alkanolamines of ‘663 would have been predictable to one having ordinary skill in the art as such are indeed functional equivalents, as taught by Burge et al. as evidenced by Peppler et al..
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 3615785 discloses a hydraulic cement composition comprising Portland cement and urea, wherein the urea is present in an amount up to 50 weight percent.
US 4,221,597 discloses reducing the water to solids ratio of a cement slurry with the addition of urea in concentrations of 1 to 5% by weight, basis dry solids. Urea also reduces the cement's sensitivity to sulfate attack and improves adhesion to concrete and ceramic surfaces though less dramatically than sodium acetate.
US 6177483 discloses a hydraulic cement composition comprising Portland cement and a pH reducing reactant of urea, wherein the set composition prevents corrosion of steel pipes.
WO 2021/096445 discloses a cement comprising 5-25% urea.
US 6,149,725 discloses guanidine, a derivative of urea, as evidenced by Peppler, cited above, used as an anti-corrosion agent in Portland cement compositions/slurries.
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.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
02/26/26