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 .
Response to Arguments
Applicant’s arguments, filed on 08/11/2026 , with respect to claims 1 and 17 rejected under 35 USC 112 second / b have been fully considered and are persuasive. The rejection of the claims have been withdrawn.
Applicant’s arguments, filed on 08/11/2026, with respect to Claims 1, 3-6, and 8-17rejected under 35 U.S.C. 102(a) (1) as being anticipate by Onaizi (US 11,453,813 B1) have been fully considered and but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 1-6, and 9-17 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Ghosh et al. (US 2021/0179910 A1) (“Ghosh” herein )
Claim 1.
Ghosh discloses a treatment fluid comprising:
a continuous phase comprising a hydrocarbon liquid; [0018-0022, 0033, 0040, 0042]
a discontinuous phase comprising water; [0033, 0035-0036, 0042]
a bridging agent of insoluble particles, wherein the insoluble particles have a mean particle size measured at a largest dimension in a range of 5 to 1,000 micrometers; [00070, 0074]
a fluid loss control additive, wherein the fluid loss control additive consists of a biodegradable surfactant having a hydrophobic-lipophilic balance less than or equal to 5, [0024-0026]
Since Ghosh discloses the same treatment fluid comprising a continuous phase hydrocarbon fluid, a discontinuous phase water, a bridging agent barite, a surfactant having a hydrophilic -lipophilic less than or equal to 5, it would be a biodegradable surfactant, a fluid loss control additive, have a high-pressure, high-temperature fluid loss less than 5 milliliters per 30 minutes after hot rolling at a testing temperature of 250°F (121.1°C), and a pressure differential of 500 psi (3.45 megapascals), and wherein a test treatment fluid consisting of the continuous phase, the discontinuous phase, the bridging agent, and the fluid loss control additive have a high-pressure, high- temperature fluid loss less than 5 milliliters per 30 minutes after hot rolling at a testing temperature of 250°F (121.1°C) and a pressure differential of 500 psi (3.45 megapascals).
"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 (I), 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 Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 2.
Ghosh discloses the treatment fluid according to Claim 1, wherein the hydrocarbon liquid is selected from the group consisting of a fractional distillate of crude oil; a fatty derivative of an acid, an ester, an ether, an alcohol, an amine, an amide, or an imide; a saturated hydrocarbon; an unsaturated hydrocarbon; a branched hydrocarbon; a cyclic hydrocarbon; and any combination thereof. [0018-0021]
Claim 3.
Ghosh discloses the treatment fluid according to Claim 1, wherein the water is selected from the group consisting of freshwater, seawater, brine, and any combination thereof in any proportion. [0029, 0033]
Claim 4.
Ghosh discloses the treatment fluid according to Claim 1, wherein the discontinuous phase further comprises a water-soluble salt selected from the group consisting of sodium chloride, calcium chloride, calcium bromide, potassium chloride, potassium bromide, magnesium chloride, sodium formate, potassium formate, cesium formate, zinc bromide, and any combination thereof. [0035-0036]
Claim 5.
Ghosh discloses the treatment fluid according to Claim 1, wherein the treatment fluid is an invert emulsion having an oil-to-water ratio in the range of 60:40 to 90:10. [0042]
Claim 6.
Ghosh discloses the treatment fluid according to Claim 1, wherein the insoluble particles are selected from the group consisting of ground coal; petroleum coke; sized calcium carbonate; barite; ilmenite; hematite; manganese tetroxide; asphaltene; perlite; cellophane; cellulose; ground tire material; ground oyster shell; vitrified shale; a plastic material; paper fiber; wood; cement; hardened foamed cement; glass; foamed glass; sand; bauxite; a ceramic material; a polymeric material; a polytetrafluoroethylene material; ground nut shells, for example walnut, almond, or pecan; ground seed shells, for example sunflower seed shells; ground fruit pits; clay; silica; alumina; fumed carbon; carbon black; recycled carbon black; graphite; mica; titanium oxide; meta-silicate; calcium silicate; calcium carbonate; kaolin; talc; zirconia; boron; fly ash; a hollow glass microsphere; any composite particle thereof; and any combination thereof in any proportion. [0070, 0074]
Claim 9.
Ghosh discloses the treatment fluid according to Claim 1, wherein the biodegradable surfactant is a non-ionic surfactant. [0024-0027]
Claim 10.
Ghosh discloses the treatment fluid according to Claim 1, wherein the biodegradable surfactant has a hydrophobic-lipophilic balance in a range from 0.5 to 4. [0024-0027]
Claim 11.
Ghosh discloses the treatment fluid according to Claim 1, wherein the biodegradable surfactant is selected from a sorbitan ester. [0025-0027]
Claim 12.
Ghosh discloses the treatment fluid according to Claim 11, wherein the sorbitan ester is sorbitan laurate, sorbitan stearate, sorbitan oleate, sorbitan sesquioleate, or sorbitan trioleate. [0025-0027]
Claim 13.
Ghosh discloses the treatment fluid according to Claim 11, wherein the sorbitan ester comprises a fatty acid group selected from lauric acid, oleic acid, or stearic acid; has a carbon chain length in a range of C₁₂ to C₂₀; and monoesters, diesters, triesters, tetraesters, or combinations thereof. [0025-0028]
Claim 14.
Ghosh discloses the treatment fluid according to Claim 11, wherein the sorbitan ester is sorbitan oleate. [0025-0028]
Claim 15.
Ghosh discloses the treatment fluid according to Claim 1, wherein the fluid loss control additive is in a concentration in a range of 1 to 10 pounds per barrel (3.9 to 38.7 kilograms per cubic meter) of the treatment fluid. [0025-0028,0065, 00070-0071]
Claim 16.-17
Since Ghosh discloses the same treatment fluid comprising a continuous phase hydrocarbon fluid, a discontinuous phase water, a bridging agent barite, a surfactant having a hydrophilic -lipophilic less than or equal to 5, it would be a biodegradable surfactant, a fluid loss control additive, have a plastic viscosity in a range of 10 to 90 centipoise and a yield point in a range of 2 to 40 pounds per 100 sq. ft. (0.96 to 19.2 Pa) before hot rolling or after hot rolling at a temperature of 176°F (80°C), and has a high-pressure, high-temperature fluid loss less than 1 milliliters per 30 minutes after hot rolling at a testing temperature of 250°F (121.1°C) and pressure differential of 500 psi (3.45 megapascals).
"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 (I), 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 Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ghosh as applied to claim 1 above, and further in view of Kulkarni et al. (US 2016/0257869 A1) (“Kulkarni” herein)
Claim 8.
Ghosh discloses the treatment fluid according to Claim 1 . Ghosh however does not explicitly disclose1, wherein the bridging agent is in a concentration in a range of 10 to 100 pounds per barrel (38.7 to 387 kilograms per cubic meter) of the treatment fluid.
Kulkarni teaches the above limitation (See paragraph 0035 →Kulkarni teaches this limitation in that the weighting agent can be any material capable of increasing the density of the treatment fluid. The weighting agent can additionally aid in controlling formation pressures and stabilizing the wellbore. Suitable weighting agents include, but are not limited to, barite; hematite; ilmentite; manganese tetraoxide; galena; calcium carbonate; iron oxide; manganese oxide; magnetite; siderite; celesite; dolomite; manganese carbonate and any combination thereof. Examples of a commercially-available weighting agents include, but are not limited to, BAROID®, BARODENSE®, MICROMAX™, and combinations thereof, marketed by Halliburton Energy Services, Inc. The weighting agent can be in a concentration in the range of about 1 to about 1,500 ppb (about 4 to about 5,800 kilograms per cubic meter “kg/m.sup.3”) of the treatment fluid) for the purpose aiding in controlling formation pressures and stabilizing the wellbore. [0035]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the treatment of Gosh, as taught by Kulkarni, in order to aid in controlling formation pressures and stabilizing the wellbore.
Conclusion
Applicant's 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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 1616 09/17/2026
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