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 I claims 1-9 in the reply filed on 12/29/2025 is acknowledged.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claims 10-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/29/2025
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/16/2023 has been considered by the examiner.
Specification
The abstract of the disclosure is objected to because the abstract exceeds 150 words (the abstract has 152 + words) . A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
(emphasis added by examiner)
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 and 3-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kalgaonkar et al (US 10,053,613)(published 8/21/2018) alternatively further in view of Wagle (WO 2021/225681A1)
Regarding Independent Claim 1:
Kalgaonkar et al (US 10,053,613)(published 8/21/2018)
Kalgaonkar teaches an aqueous dispersion including silica nanoparticles and a C6-C12 fatty acid and initiating gelation in situ of a producing zone to yield a gel (Abstract)
The composition comprises an alkaline dispersion of silica nanoparticles (C5 L10-16) (meeting claim 1) The pH of the colloidal dispersion is in a range of 8 to 11 (C L43-51) (i.e. alkaline)
The composition comprises the silica nano particles in colloidal dispersion in a range of 10- 50 wt.% (see claim 5 reference)
The composition further comprises a C6 to C12 fatty acid in a ratio to the colloidal dispersion of a range of 0.25 vol.% to 5 vol. %.(see claim 9 reference) In an example 2 mL of the fatty acid combined with 100 mL of the alkaline silica nanoparticle dispersion is mixed to form the composition (C5 L5-18)
The composition includes a salt such as potassium formate, sodium formate and cesium formate (C3 L1-8)(meeting claim 1 for a formate activator)
Regarding the amount of the formate:
The reference does not expressly recite a range of the formate component. However, based on the amount of the required components such as the silica nanoparticle dispersion and the carboxylic acid, the amount of the formate salt additive would necessarily overlap the claimed range of 1-40 wt.%.
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)"
In addition and in the alternative:
Further, the reference teaches the amount of the formate salt may be used to change the pH and thereby adjust the speed of gelation:
Disturbing the charge balance of the dispersion will case gelation and may be accomplished by changing the pH such as with the addition of suitable salts. Changing the pH of the colloidal dispersion and adding salt to the colloidal dispersion will change the charge balance and affect gelation. The salts for this include sodium formate potassium formate and cesium formate (C3 L12-33)
Gelation occurs as a result of collision of the silica nanoparticles which aggregate into long chain like networks forming a gel. The collision is increased by reduction in pH of the dispersion (C3 L62-68)
When the pH is 8 it typically remains in liquid form. (C3 L12-15) The more acidic the pH of the composition the faster gelation occurs (C4 L7-15) the length of time between initiation of gelation and formation of set gel depends in part on the pH of the composition and the concentration of silica nanoparticles int eh dispersion (C4 L23-33) (i.e. the pH must be adjusted to be more acidic to cause gelation)
As such one of ordinary skill in the art at the time of filing the invention can optimize the amount of the formate salt to control speed of gelation which will include ranges of the formate salt which meet and/or overlap the instantly claimed ranges.
(The instantly claimed range of the formate is broad and includes 1 to 40 wt.% so when the composition comprises 40 % of the nano silica material and 5 % of the acid ).
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)
Assuming arguendo the amount of the formate salt is not rendered obvious, the examiner notes that
Wagle (WO 2021/225681A1) teaches an alkaline nanosilica dispersion which may have a gel pH compatible with down hole conditions of lost circulation zones [0026] which includes a chemical activator and which may adjusted based on change in pH and includes a weight ratio of the alkaline nanosilica dispersion and the chemical activator (i.e. formate) to be between 1 to 0.001 and 1 to 0.25 [0027] Chemical activators include carboxylic acid esters as well as diethylene glycol di-formate and ethyl formate [0023-0024]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use the activator of a formate of the prior art Kalgaonkar et al as a ratio to the nano silica dispersion as taught by Wagle (i.e. thereby overlapping the instantly claimed amount at a ratio of 0.5 or 1) as this ratio and amount corresponding thereto is suitable for adjusting pH and therefore gelation times with a reasonable expectation of success.
Regarding Claim 3:
Kalgaonkar et and in the alternative modified Kalgaonkar et teaches the limitations above set forth.
The more acidic the pH of the composition the faster gelation occurs (C4 L7-15) the length of time between initiation of gelation and formation of set gel depends in part on the pH of the composition and the concentration of silica nanoparticles in the dispersion (C4 L23-33)
The silica nanoparticles in the dispersion have a particle le size range of 1 nm to 500 nm where smaller sizes promotes faster gelling. The silica nanoparticles are 10-50 wt.% of the dispersion (C2 L62-68)(overlapping the range of claim 3 of 5 to 65 wt.%)
In one example CEM Binder 50 commercial product of nano silica is used having 15 wt.% SiO.sub.2 a pH of about 10 an average particle size of 5 nm (Table 2) (within the range of claim 3 for 5-65 wt.% SiO.sub.2 content)
Regarding Claim 4:
Kalgaonkar et and in the alternative modified Kalgaonkar et teaches the limitations above set forth.
The composition includes a salt such as potassium formate, sodium formate and cesium formate (C3 L1-8)(meeting claim 4 for a formate salt)
Regarding Claim 5:
Kalgaonkar et and in the alternative modified Kalgaonkar et teaches the limitations above set forth.
The pH of the colloidal dispersion is in a range of 8 to 11 (C L43-51) (overlapping the range of claim 5)
Regarding Claim 6:
Kalgaonkar et and in the alternative modified Kalgaonkar et teaches the limitations above set forth.
The composition further comprises a C6 to C12 fatty acid which may serve as an activator (C2 L50-60) (i.e. an organic acid of clam 6)
Regarding Claim 7:
Kalgaonkar et and in the alternative modified Kalgaonkar et teaches the limitations above set forth.
Changing the pH of the colloidal dispersion and adding salt to the colloidal dispersion will change the charge balance and affect gelation. The salts for this include sodium formate potassium formate and cesium formate (C3 L12-33) Gelation occurs as a result of collision of the silica nanoparticles which aggregate into long chain like networks forming a gel. The collision of the silica nanoparticles to cause aggregation and gelation is increased by reduction in pH of the dispersion (C3 L62-68) (meeting claim 7)
The more acidic the pH of the composition the faster gelation occurs (C4 L7-15) the length of time between initiation of gelation and formation of set gel depends in part on the pH of the composition and the concentration of silica nanoparticles in the dispersion (C4 L23-33)
Regarding Claim 8:
Kalgaonkar et and in the alternative modified Kalgaonkar et teaches the limitations above set forth.
The pH of the colloidal dispersion is in a range of 8 to 11 (C L43-51) (overlapping the range of claim 8)
Regarding Claim 9:
Kalgaonkar et and in the alternative modified Kalgaonkar et teaches the limitations above set forth.
The pH of the aqueous dispersion is 8 to 11 (C1 L42-50) and the pH of the composition pH is in the range of 1 to 6 (see claim 10 reference and C1 L40-45) (overlapping claim 9)
The silica nanoparticles in the dispersion have a particle size range of 1 nm to 500 nm where smaller sizes promotes faster gelling. The silica nanoparticles are 10-50 wt.% of the dispersion (C2 L62-68)(overlapping the range of claim 3)
In one example CEM Binder 50 commercial product of nano silica is sued having 15 wt.% SiO.sub.2 a pH of about 10 an average particle size of 5 nm (Table 2)
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kalgaonkar et al (US 10,053,613)(published 8/21/2018) alternatively further in view of Wagle (WO 2021/225681A1) as applied to claims 1 and 3-9 above as evidenced by Effect of colloidal nano silica on mechanical and physical behavior of waste glass cement mortar by M aly M Hashmi A Olabi M Messeiry E Abadir and A Hussain - M Aly et al / Materials and design 33 (2012 127-135)
Regarding Claims 2:
Kalgaonkar et and in the alternative modified Kalgaonkar et teaches the limitations above set forth.
The more acidic the pH of the composition the faster gelation occurs (C4 L7-15) the length of time between initiation of gelation and formation of set gel depends in part on the pH of the composition and the concentration of silica nanoparticles in the dispersion (C4 L23-33)
The silica nanoparticles in the dispersion have a particle size range of 1 nm to 500 nm where smaller sizes promotes faster gelling. The silica nanoparticles are 10-50 wt.% of the dispersion (C2 L62-68)
In one example CEM Binder 50 commercial product of nano silica is used having 15 wt.% SiO.sub.2 a pH of about 10 an average particle size of 5 nm (Table 2)
CEM Binder 50 is a commercially available nano silica dispersion having 15 wt. % solid material (the SiO.sub.2) a particle size of 5 nm and a 500 m2/g specific surface area
See P 128 C2 first par below Fig 1 of evidentiary reference Effect of colloidal nano silica on mechanical and physical behavior of waste glass cement mortar by M aly M Hashmi A Olabi M Messeiry E Abadir and A Hussain - M Aly et al / Materials and design 33 (2012 127-135)
PNG
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146
674
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Greyscale
(meeting the limitation of claim 2 for surface area between 100m2/g to 500 m2/g)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action. For example:
Kalgaonkar, Al-Yami et al (US 2018/0327649) Al-Yami teaches a subterranean formation composition of a mixture of an dispersion including silica nanoparticles a C6-C12 fatty acid (Abstract) including potassium sodium, potassium, cesium formate [0019] the nanoparticles of silica are in the range of 10-50 wt.% [0019] the silica dispersion has a pH of 8 to 11 [0019]
Oyler (Us 2006/0234875) teaches a wellbore treatment composition for subterranean formations including an activator (Abstract) the composition includes an activator of a potassium formate, sodium formate and cesium formate in a range of 10-78 wt.% [002
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.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732