DETAILED CORRESPONDENCE
Status of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 9-20 have been examined in this application. This communication is a Final Rejection in response to the Amendment filed on September 8, 2025. Claims 1-8 stand withdrawn.
Claim Objections
Applicant is advised that should Claims 9-12 be found allowable, Claims 13, 14, 16 & 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
Claim Rejections - 35 USC § 112
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 9, 11-13, 15-17 & 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 17 recites the amount range of polyaramid polymer with units of “by weight of dry cement (bwob)” (emphasis added), where such amounts based on the weight of “dry” cement are not sufficiently described in the specification as required above.
Further, Claims 9, 11-13, 15-17 & 20 each recite components of the polyaramid-reinforced cement in units of “bwob”; which appears to be presented as “weight of the cement” (Abstract with respect to the polyaramid polymer), “by weight of blend” (Claims 9, 11-13, 15, 16 & 20, Abstract and portions of the specification such as [0006]), and “by weight of dry cement” (Claim 17). While Applicant can be his/her own lexicographer, the term “bwob” is presented in different ways. The respectively claimed amount ranges for the components of the cement cannot be supported by the instant specification for identical numerical values/ranges with different units of measure. The specification does not clearly and sufficiently describe which one of the different units of measure Applicants had possession of and, therefore, the respectively claimed amount ranges are not sufficiently described in the specification as required above.
Appropriate correction and/or clarification is required. Claims 10-12 & 14-20 are also rejected for being dependent on Claims 9 & 13, respectively. The claims have been examined as best understood.
Claims 9-20 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 9, 11-13, 15-17 & 20 each recite components of the polyaramid-reinforced cement in units of “bwob”; which appears to be presented in multiple different ways – such as “weight of the cement” (Abstract with respect to the polyaramid polymer), “by weight of dry cement” (Claim 17) and “by weight of blend” (Claims 9, 11-13, 15, 16 & 20; Abstract and various portions of the specification such as [0006]). While Applicant can be his/her own lexicographer, the term “bwob” is presented in multiple different ways; which is unclear. As a result, the amount ranges claimed for the respective components of polyaramid-reinforced cement are unclear. As such, the claimed polyaramid-reinforced cement composition is unclear. Appropriate correction and/or clarification is required. Claims 10-12 & 14-20 are also rejected for being dependent on Claims 9 & 13, respectively. The claims have been examined as best understood.
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.
Claims 9-18 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mata et al. (US 2016/0264839).
With respect to Claims 9 & 13, Mata discloses a method comprising: mixing a polyaramid-reinforced cement (Mata: Sections [0001], [0004]-[0007], [0051] & [0055]), the polyaramid-reinforced cement comprising: a cement (Mata: Sections [0047]-[0049]); a polymer component comprising a polyaramid polymer and water (Mata: Sections [0004]-[0007], [0051], [0054], [0055] & [0084]); and hydrating the polyaramid polymer with water (Mata: Sections [0054], [0055] & [0084]); introducing the polyaramid-reinforced cement into a wellbore; and curing the polyaramid-reinforced cement in the wellbore, the curing of the polyaramid-reinforced cement in the wellbore thereby forming a cement structure therein (Mata: Sections [0001] & [0004]-[0007]); wherein hydrating the composition with water is considered to hydrate components of the composition; and to the extent there is any difference between this feature as disclosed by Mata and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Mata further teaches the polyaramid-reinforced cement comprising the components as instantly claimed and/or described as set forth above, teaches suitable amount ranges for the components of the polyaramid-reinforced cement, including the polyaramid polymer and water in amounts that appear to encompass or overlap, respectively, the ranges as instantly claimed and/or described (Mata: Sections [0045]-[0047], [0051]-[0054] & [0109]; Examples), which would appear to allow for release of the polyaramid-bound water during curing as instantly claimed and described in at least [0049] of the instant specification. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between this feature as disclosed by Mata and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Further, Mata also teaches tailoring the amount of the components based on factors such as the well, cost, the hydraulic well cement used and/or the desired properties (Mata: Sections [0045], [0046] & [0052]-[0054]). As such, although the reference fails to explicitly limit the amount range of the polyaramid polymer to the specific range as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a suitable amount based on factors such as the well, cost, the hydraulic well cement used and/or the desired properties, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal amount to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for well cementing, and a finite number of identified, predictable solutions including employing cement compositions with components as set forth above and tailoring the amounts of the components as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Mata, one of ordinary skill in the art could have pursued desired amounts of the components with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claims 10 & 14, Mata teaches the method as provided above with respect to Claims 9 & 13, respectively; and further discloses employing water in an amount sufficient to hydrate the cement, teaches amount ranges for water that appears to include the ranges as instantly described (such as in [0026]) and further teaches the use of additives such as free-water control agents (Mata: Sections [0050], [0054] & [0084]); which is considered to provide for “a free water content of 0%” determined as respectively claimed and as described in [0051] of the instant specification. To the extent there is any difference between this feature as disclosed by Mata and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
With respect to Claims 11, 12, 15-17 & 20, Mata teaches the method as provided above with respect to Claims 9 & 13, respectively; and further discloses wherein the polyaramid-reinforced cement comprises components as respectively claimed (Mata: Sections [0040] & [0050]-[0054]). Mata also discloses one or more embodiments where the polymer component, such as the other fibers, are made from a polyaramid polymer (Mata: Section [0051]); which is considered to provide for a polymer component consisting of polyaramid polymer as respectively claimed.
Mata further teaches suitable amounts ranges for the components of the polyaramid-reinforced cement, and also teaches tailoring the amount of the components based on factors such as the well, cost, the hydraulic well cement used and/or the desired properties (Mata: Sections [0045], [0046] & [0052]-[0054]). As such, although the reference fails to explicitly limit the amount ranges to the specific ranges as respectively claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a suitable amount based on factors such as the well, cost, the hydraulic well cement used and/or the desired properties, with a reasonable expectation of success, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal amounts to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for well cementing, and a finite number of identified, predictable solutions including employing cement compositions with components as set forth above and tailoring the amounts of the components as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Mata, one of ordinary skill in the art could have pursued desired amounts of the components with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 18, Mata teaches the method as provided above with respect to Claim 9; and further teaches the polyaramid-reinforced cement comprising the components as instantly claimed and/or described as set forth above, teaches suitable amounts ranges for the components of the polyaramid-reinforced cement, including the polyaramid polymer and water in amounts that appear to encompass or overlap, respectively, the ranges as instantly claimed and/or described (Mata: Sections [0045]-[0047], [0051]-[0054] & [0109]; Examples), which would appear to provide the cured cement with properties as instantly claimed and described in at least [0049] & [0052]-[0056] of the instant specification. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between this feature as disclosed by Mata and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Mata et al. (US 2016/0264839), in view of Reddy et al. (US 2007/0062691).
With respect to Claim 19, Mata teaches the method as provided above with respect to Claim 9; and further teaches the method in improving properties, such as the tensile strength, of well cement for the duration of use (Mata: Sections [0001]-[0004]). The reference, however, fails to explicitly disclose the method in combination with the polymer component comprising a polymer selected from the group as instantly claimed.
Reddy teaches methods of well cementing therein, wherein aramid fibers such as Kevlar® are employed in modifying properties, such as the tensile strength, of the cement to withstand the cyclical stresses that occur during the life of the well and/or for long-term zonal isolation (Reddy: Sections [0004], [0008] & [0025]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified Mata with the aforementioned teachings of Reddy to include a polymer component comprising a polymer selected from the group as respectively claimed, with a reasonable expectation of success, in order to tailor the properties of the cement, such as tensile strength, to withstand the cyclical stresses that occur during the life of the well and/or for long-term zonal isolation. (Reddy: Sections [0004], [0008] & [0025]).
Response to Arguments
Applicants' remarks regarding the 35 USC § 112 rejections have been fully considered but they are not persuasive. Applicants assert that the instant specification describes all embodiments as cement being present at 100% and as such, the term bwob must refer to the cement composition and all other compositions must be relative to the cement component by weight. The Examiner respectfully disagrees for reasons discussed below and, as such, the rejections are maintained as set forth above.
In cementing, the units of measure BWOC (by weight of cement) and BWOB (by weight of blend) are distinct. Applicants appear to be acting as their own lexicographer in defining the term “bwob” to encompass both units of measure BWOB & BWOC. However, to act as their own lexicographer, Applicants must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366, 62 USPQ2d 1658, 1662 (Fed. Cir. 2002). See MPEP 2111.01. Applicants present/define “bwob” in multiple different ways – such as “weight of the cement” (Abstract with respect to the polyaramid polymer), “by weight of dry cement” (Claims) and “by weight of blend” (Claims; Abstract and various portions of the specification such as [0006]); and, as such, fail to clearly set forth a special definition of the claim term “bwob”. In the absence of a clear definition, under broadest reasonable interpretation, BWOB is not the same as BWOC.
Further, Applicants present the cement as including components such as “…silica fume, silica sand, any known cementitious material or geopolymer” in [0024] of the instant specification, where materials such as geopolymers are not necessarily dry. Further, materials such as silica sand are presented as both a cement and an added material in [0024] & [0039] of the instant specification with distinct amount ranges based on “bwob”, which further emphasizes the lack of clarity in defining the term “bwob”.
Applicants’ arguments with respect to the rejection(s) of Claims 9-20 under 103 as being unpatentable over Mata et al., alone or in combination with Reddy et al., have been fully considered but they are not persuasive. As such, for reasons discussed below, the claims stand rejected under 35 USC 103 in view of Mata et al., alone or in combination with Reddy et al., as set forth above, with updates to address any amendments.
Applicants assert that Mata does not disclose any step for hydrating or reacting the polyaramid polymers with water, nor releasing water from the polyaramid polymers during curing.
The Examiner respectfully disagrees.
As set forth above, Mata discloses a method comprising: mixing a polyaramid-reinforced cement (Mata: Sections [0001], [0004]-[0007], [0051] & [0055]), the polyaramid-reinforced cement comprising: a cement (Mata: Sections [0047]-[0049]); a polymer component comprising a polyaramid polymer and water (Mata: Sections [0004]-[0007], [0051], [0054], [0055] & [0084]); and hydrating the polyaramid polymer with water (Mata: Sections [0054], [0055] & [0084]); introducing the polyaramid-reinforced cement into a wellbore; and curing the polyaramid-reinforced cement in the wellbore, the curing of the polyaramid-reinforced cement in the wellbore thereby forming a cement structure therein (Mata: Sections [0001] & [0004]-[0007]); wherein hydrating the composition with water is considered to hydrate components of the composition; and to the extent there is any difference between this feature as disclosed by Mata and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Mata further teaches the polyaramid-reinforced cement comprising the components as instantly claimed and/or described as set forth above, teaches suitable amount ranges for the components of the polyaramid-reinforced cement, including the polyaramid polymer and water in amounts that appear to encompass or overlap, respectively, the ranges as instantly claimed and/or described (Mata: Sections [0045]-[0047], [0051]-[0054] & [0109]; Examples), which would appear to allow for release of the polyaramid-bound water during curing as instantly claimed and described in at least [0049] of the instant specification. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between this feature as disclosed by Mata and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Applicants assert that Mata mentions the term aramid just once in its entire specification; there is no teaching in the specification towards aramid polymers, their benefits, or advantages uses thereof; and the formulations in Mata's examples section do not use aramids at all; Mata is directed to its multi-component fibers; the term aramid was added to the specification as boilerplate and was lumped in with the "other fibers."; The purposes of the other fibers are not close at all to the steps claimed by Applicant to achieve the benefits achieved; Mata clearly did not know about any benefits that Applicant discloses that flow performing its claimed methods; as such, a skilled artisan would not know about the benefits; and; the results yielded by the independents claims are unexpected in view of the cited references and thus weigh towards the nonobviousness of the independent claims.
The Examiner respectfully disagrees.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
In response to Applicants’ argument that the claimed invention exhibits unexpected results (and benefits), it is well settled that a patent cannot be granted for Applicants’ discovery of a result, even though it may be unexpectedly good, which would flow logically from the teaching of the prior art. In re Rau, 117 USPQ 215 (CCPA 1958).
Applicants assert that the steps of the claimed method control the availability of water over time for the curing reaction of cement clinker to cured cement. By controlling water availability during the curing reactions, the claimed method leads to improved Young's modulus, Poisson's ratio, and compressive strength as shown in the examples section of the instant application. Further, the binding of water via the polyaramid polymer prevents and/or minimizes water from being lost to subterranean formations. This prevents premature dehydration of the cement slurry.
The Examiner respectfully disagrees.
In response to Applicants’ argument that the references fail to show certain features of Applicants’ invention, it is noted that the features upon which Applicants rely (i.e., controlling water availability, minimizing water lost to formation etc.) 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).
In response to Applicants’ argument that the claimed invention exhibits unexpected results (and benefits), it is well settled that a patent cannot be granted for Applicants’ discovery of a result, even though it may be unexpectedly good, which would flow logically from the teaching of the prior art. In re Rau, 117 USPQ 215 (CCPA 1958).
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANURADHA AHUJA whose telephone number is (571)272-3067. The examiner can normally be reached Monday through Friday.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674
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