CTNF 18/577,823 CTNF 82782 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Drawings 06-36 Figure 1 is objected to because it is labeled as “Figure 1” and there is only a single figure within the application; applications including only 1 figure are required to refer to the single figure as “Figure.” See CFR 1.84(u)(1). Applicant is required to rename Figure 1 as “Figure” and refer to the figure as such throughout the specification. 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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. Specification The abstract of the disclosure is objected to because it includes the phrase “are described herein,” i.e., a phrase that is implied, at the end of the first sentence. 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). 06-16 AIA Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. The use of the terms TECNOFLON, KALREZ, CHEMRAZ, PERLAST, VITON, FLUOREL, AFLAS and DAI-EL which are trade names or marks used in commerce, have been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. Claim Rejections - 35 USC § 112 07-30-02 AIA 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 3 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. Regarding claim 3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-3 and 5-10 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Allison et al. (US 2011/0094746) . With respect to independent claim 1, Allison et al. discloses a method of treating a hydrocarbon reservoir, the method comprising: pumping into a well drilled into the reservoir an aqueous dispersion ([0016], wherein aqueous based fluids are disclosed) of particles that swell when in contact with water ([0019]; [0023]; [0026]), each particle comprising elastomeric material ([0019]; [0023]; [0026]) and having a size in a range from about 10-1000 microns ([0029]); and allowing the particles to swell before starting production from the well ([0048]-[0049], wherein the particles are placed and swell prior to cementing a tubular in the well, and, therefore, prior to production). With respect to dependent claims 2 and 3, Allison et al. discloses wherein the particles are made of an elastomeric material selected from the group as claimed ([0023]; [0026]). With respect to dependent claim 5, Allison et al. discloses wherein the aqueous dispersion also includes one or more as claimed ([0016]; [0030]; [0032]; [0041]). With respect to dependent claim 6, Allison et al. discloses wherein the particles comprise a hydrophilic elastomeric material ([0025]). With respect to dependent claims 7 and 8, Allison et al. discloses wherein the particles also comprise a hydrophobic material, and, further, wherein the hydrophobic material is a substrate or a fluid ([0020]). With respect to dependent claim 9, Allison et al. discloses wherein the hydrophilic elastomeric material is selected from the group as claimed ([0020]; [0026]). Claim Rejections - 35 USC § 102/Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-27-aia AIA Claim 4 is rejected under 35 U.S.C. 102( a)(1 ) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Allison et al .. With respect to dependent claim 4, Allison et al. discloses the elastomers as including the same elastomers instantly disclosed and claimed by Applicant ([0026]). Although silent to the average molecular weight thereof, the elastomeric material of Allison et al. would be expected to have an average molecular weight in the range as claimed since it has been held “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. If there is any difference between the average molecular weight of the elastomers disclosed by Allison et al. in [0026] and that of the instant claims, the difference would have been minor and obvious. See MPEP 2112.01(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433 . Claim Rejections - 35 USC § 103 07-21-aia AIA Claim s 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Allison et al. in view of Santra et al. (US 2014/0166285) . With respect to independent claim 11, Allison et al. discloses a method, comprising: pumping into a subterranean formation an aqueous dispersion ([0016], wherein aqueous based fluids are disclosed) of particles that swell when in contact with water ([0019]; [0023]; [0026]), the particles comprising elastomeric material ([0019]; [0023]; [0026]) and having been size selected to fall in a size range from about 10-1000 microns ([0029]); and allowing the particles to swell in the subterranean formation ([0048]-[0049]). Allison et al. discloses wherein the swellable particles may have a wide variety of shapes and sizes for use in accordance with the invention, wherein such may have a well-defined physical shape or an irregular geometry and be size selected to have a particle size within the range of 5-1500 microns ([0029]). The reference, however, fails to disclose wherein the particles are ground particles as claimed. Santra et al. teaches swellable elastomers for inclusion in well fluids ([0059]-[0062]) wherein such elastomers are prepared and comminuted for the purpose of providing a desired particle size or particle size distribution, with examples of comminution including grinding ([0107]). Exemplary sizes achievable thereby are suggested as in the range of 10 nm to about 1 mm ([0056]). It would have been obvious to one having ordinary skill in the art when providing the swellable particles of Allison et al. to provide such in the desired particle size range disclosed therein by grinding the solid elastomers into such a size range in order to achieve the desired size range therefor. Grinding is but one of a finite number of means known for achieving particles sizes overlapping those disclosed by Allison et al., and, as such, one having ordinary skill in the art would recognize such as at least obvious to try in order to impart the desired size to the particulate swellable elastomers therein. With respect to dependent claim 12, Allison et al. discloses wherein the particles are made of an elastomeric material selected from the group as claimed ([0019]; [0023]; [0026]). With respect to further dependent claim 13, Allison et al. discloses wherein the particles are pre-treated using an organic fluid ([0020]). With respect to dependent claim 14, Allison et al. discloses wherein the elastomeric material is a mixture of polymers ([0023]; [0026]). The reference, however, is silent to wherein such is an extruded mixture and further, wherein it is such an extruded mixture that is ground into particles as claimed. Santra et al. suggests grinding of solid particulate elastomers, as set forth above in the rejection of claim 11. The reference further suggests wherein such elastomers can include a mixture of water-swellable elastomers ([0059]-[0060]), including some of the same water-swellable elastomers disclosed by Allison et al.. Such elastomers can be produced as a master batch that is mixed by extrusion for the purpose of producing a homogeneous master batch elastomer ([0026]); the elastomers are suggested as prepared by mixing in an extruder and then comminuted/ground to the desired particle size ([0107]). It would have been obvious to one having ordinary skill in the art to try mixing the mixture of polymers/elastomeric material of Allison et al. in an extruder in order to create a homogeneous master batch thereof, subsequent to which the desired particle size of individual particles is achieved by grinding in order to provide homogenous elastomeric particles that are thereby capable of even swelling due to the homogenous nature of the swellable elastomeric material in each particle. With respect to dependent claim 15, Allison et al. discloses wherein the elastomeric material comprises polyacrylamide (claim 3). With respect to dependent claim 16, Allison et al. discloses the elastomers as including the same elastomers instantly disclosed and claimed by Applicant ([0026]). Although silent to the average molecular weight thereof, the elastomeric material of Allison et al. would be expected to have an average molecular weight in the range as claimed since it has been held “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. If there is any difference between the average molecular weight of the elastomers disclosed by Allison et al. in [0026] and that of the instant claims, the difference would have been minor and obvious. See MPEP 2112.01(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433. With respect to dependent claim 17, Allison et al. discloses wherein the aqueous dispersion also includes one or more as claimed ([0016]; [0030]; [0032]; [0041]). With respect to dependent claim 18, Allison et al. discloses wherein the particles is hydrophilic ([0025]). With respect to independent claim 19, Allison et al. discloses a method of treating a hydrocarbon reservoir, the method comprising: pumping into a hydrocarbon reservoir an aqueous dispersion ([0016], wherein aqueous based fluids are disclosed) of elastomeric particles that swell when in contact with water ([0019]; [0023]; [0026]), the particles having been size selected to fall in a size range from about 10-1000 microns ([0029]); and allowing the particles to swell in the hydrocarbon reservoir ([0048]-[0049]). Allison et al. discloses wherein the swellable particles may have a wide variety of shapes and sizes for use in accordance with the invention, wherein such may have a well-defined physical shape or an irregular geometry and be size selected to have a particle size within the range of 5-1500 microns ([0029]). The reference, however, fails to disclose wherein the particles are ground particles as claimed. Santra et al. teaches swellable elastomers for inclusion in well fluids ([0059]-[0062]) wherein such elastomers are prepared and comminuted for the purpose of providing a desired particle size or particle size distribution, with examples of comminution including grinding ([0107]). Exemplary sizes achievable thereby are suggested as in the range of 10 nm to about 1 mm ([0056]). It would have been obvious to one having ordinary skill in the art when providing the swellable particles of Allison et al. to provide such in the desired particle size range disclosed therein by grinding the solid elastomers into such a size range in order to achieve the desired size range therefor. Grinding is but one of a finite number of means known for achieving particles sizes overlapping those disclosed by Allison et al., and, as such, one having ordinary skill in the art would recognize such as at least obvious to try in order to impart the desired size to the particulate swellable elastomers therein. With respect to dependent claim 20, Allison et al. discloses wherein the elastomeric material is a mixture of polymers ([0023]; [0026]). The reference, however, is silent to wherein such is an extruded mixture and further, wherein it is such an extruded mixture that is ground into particles as claimed. Santra et al. suggests grinding of solid particulate elastomers, as set forth above in the rejection of claim 11. The reference further suggests wherein such elastomers can include a mixture of water-swellable elastomers ([0059]-[0060]), including some of the same water-swellable elastomers disclosed by Allison et al.. Such elastomers can be produced as a master batch that is mixed by extrusion for the purpose of producing a homogeneous master batch elastomer ([0026]); the elastomers are suggested as prepared by mixing in an extruder and then comminuted/ground to the desired particle size ([0107]). It would have been obvious to one having ordinary skill in the art to try mixing the mixture of polymers/elastomeric material of Allison et al. in an extruder in order to create a homogeneous master batch thereof, subsequent to which the desired particle size of individual particles is achieved by grinding in order to provide homogenous elastomeric particles that are thereby capable of even swelling due to the homogenous nature of the swellable elastomeric material in each particle . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 7578347 discloses swellable elastomers that include rubber materials which swell in both water and crude oil, as well as rubber materials which only swell in water used in methods of well treatment prior to production. US 2010/0314111 discloses swellable particulate elastomers that may be prepared by grinding to a size range of 40-1000 microns. US 20080017374 discloses water swellable rubbers that include extruded rubber used in well treatment applications. US 3251769 discloses extruding and grinding of rubber materials to form particulate rubber for use in controlling lost circulation. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Angela M DiTrani Leff/Primary Examiner, Art Unit 3674 ADL 05/06/26 Application/Control Number: 18/577,823 Page 2 Art Unit: 3674 Application/Control Number: 18/577,823 Page 3 Art Unit: 3674 Application/Control Number: 18/577,823 Page 4 Art Unit: 3674 Application/Control Number: 18/577,823 Page 5 Art Unit: 3674 Application/Control Number: 18/577,823 Page 6 Art Unit: 3674 Application/Control Number: 18/577,823 Page 7 Art Unit: 3674 Application/Control Number: 18/577,823 Page 8 Art Unit: 3674 Application/Control Number: 18/577,823 Page 9 Art Unit: 3674 Application/Control Number: 18/577,823 Page 10 Art Unit: 3674 Application/Control Number: 18/577,823 Page 11 Art Unit: 3674 Application/Control Number: 18/577,823 Page 12 Art Unit: 3674 Application/Control Number: 18/577,823 Page 13 Art Unit: 3674
Prosecution Insights