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 claims 1-7 in the reply filed on 3/18/2026 is acknowledged. It is noted that Group II was noted in the election, however in view of the indication that claims 1-7 are elected, and claims 8-15 withdrawn, claims 1-7 are examined.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2 and 5 are rejected under 35 U.S.C. 102(a1) as being anticipated by Park (US 2021/0070972) as evidenced by Navarrete (US 2024/0274324).
With respect to claims 1, 2 and 5 Park discloses forming a cable (0009) which is a downhole tool, and which comprises EPDM and silicone in amounts within the scope of claim 2 (0033). Regarding claim 5. Park also teaches the use of a lubricant (softener, 0042). The composition is cross-linked and thus is vulcanized. Park teaches that the irradiation cross-linking has the same effect as peroxide cross-linking, thus indicating that the composition is vulcanized (0042). Navarrete is presented as evidence that cables including EPDM and silicone are known to be used as downhole tools (0002 and 0018).
Claim(s) 1, 2, 5 and 6 is/are rejected under 35 U.S.C. 102 (a1) as being anticipated by Barbosa, Journal of Applied Polymer Science, pages 1-10 (2020) of record by applicant.
Regarding claims 1 and 2, Barbosa teaches formation of a polymer composition which comprises EPDM and silicone within the scope of the amounts in claim 2 (See Table I). Barbosa teaches that the composition is cross-linked by peroxide, and thus vulcanized (Section 2.2). Regarding claim 5, Barbosa teaches that the silicone can act as a lubricant (softner) at various concentrations (see page 4, second column).
Regarding claim 6, Barbosa teaches that the compositions can be used as seals (also cables see page 2, first column, first paragraph) which can be used as downhole tools, which is particularly true, since Barbosa teaches that these can withstand higher working temperatures (introduction).
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.
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) 1-4, 6 and 7 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Fripp (US 2022/0282590).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claims 1, 6 and 7, Fripp teaches forming a seal (abstract) which can be a part of a packer (0011 and Figure 8), wherein such can be used as a downhole tool (abstract). Fripp teaches that the seal material may comprise a heat-stable material and a heat-hardening material wherein the heat-stable material may be silicone and the heat hardening material may contain EPDM (0020-0021). Fripp teaches that the heat-hardening material can be vulcanized by cross-linking or sulfur curing (0022-0024). Although Fripp differs by not specifically teaching a combination of EPDM and silicone, It would be obvious to one of ordinary skill in the art to utilize a combination of silicone and EPDM which is vulcanized in a downhole tool with a reasonable expectation of success, given the teaching of Fripp that such a combination is useful as a seal in a packer (0019).
Regarding claim 2, Fripp does not teach the ratio of EPDM to silicone or their total in the composition, one of ordinary skill in the art would vary the amounts in order to find a suitable range for utility as a seal in a packer as taught by Fripp.
Regarding claims 3 and 4, Fripp teaches the use of glass or carbon fibers (0029), but does not specify the amount. One of ordinary skill in the art would adjust the amount of fibers in order to produce a seal with suitable hardness to use in a downhole tool..
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park (US 2021/0070972) as evidenced by Navarrete (US 2024/0274324) as applied to claim 1, further in view of Ren (US 2014/0147609).
Park differs from claims 3 and 4 in not specifically teaching a filler or the amount present. Ren teaches that it is known to add fillers, such as carbon black or glass fiber (0025) to crosslinked EPDM/silicone containing polymers (0052) in order to improve the strength of those polymers. Ren teaches that such is suitable for use in downhole tools (claim 20). It would be obvious to one of ordinary skill in the art to utilize fillers in the composition of Park in order to improve the strength of the cross-linked polymers comprising EPDM and silicone therein. . It would be obvious that one of ordinary skill would vary the amount of filler in the composition to achieve a desired strength and control cost of the composition.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barbosa, Journal of Applied Polymer Science, pages 1-10 (2020) as applied to claim 1, further in view of Ren (US 2014/0147609).
Barbosa differs from claims 3 and 4 in not specifically teaching a filler or the amount present. Ren teaches that it is known to add fillers, such as carbon black or glass fiber (0025) to crosslinked EPDM/silicone containing polymers (0052) in order to improve the strength of those polymers. Ren teaches that such is suitable for use in downhole tools (claim 20). It would be obvious to one of ordinary skill in the art to utilize fillers in the composition of Barbosa in order to improve the strength of the cross-linked polymers comprising EPDM and silicone therein. It would be obvious that one of ordinary skill would vary the amount of filler in the composition to achieve a desired strength and control cost of the composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
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