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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1, along with claims 3-5, 7-15, 21 and 22, dependent therefrom, is 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claim 1 has been amended to recite “wherein the sliding ring polymer and the additional polymer are present in the cement slurry as a blended mixture of polymers.” Such, however, is not explicitly disclosed by Applicant within the specification as filed. Rather, the specification discloses wherein the sliding ring polymer and additional polymer are blended into a cement slurry and distributed throughout in [0017]. The specification further recites wherein the sliding ring polymer and additional polymer are blended with a cement precursor to form a cement precursor mixture in [0042]. Such description, however, does not explicitly provide for wherein the sliding ring polymer and the additional polymer are present in the cement slurry as a blended mixture of polymers as now required by independent claim 1, and, as such, constitutes new matter.
New dependent claim 21 is 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 21 recites “wherein the additional polymer and the sliding ring polymer are present in the cement slurry as discrete polymers.” Such, however, has not been explicitly disclosed and/or described in the specification as filed and thus constitutes new matter.
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 21 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. New claim 21 requires the presence of the additional polymer and sliding ring polymer as discrete polymers. However, independent claim 1 has been amended to require the sliding ring polymer and additional polymer presence in the cement slurry as a blended mixture of polymers. It is unclear how 2 polymers can be present as both a blended mixture and discrete. Clarification is required.
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 1, 3-5, 7-15 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Santra et al. (US 2022/0289887 – cited previously) in view of Alkhalaf et al. (US 2022/0049150 – cited previously) and Reddy et al. (US 2007/0062691 – cited previously).
With respect to independent claim 1, Santra et al. discloses a cement slurry comprising:
water ([0019]);
a cement precursor ([0017]);
a sliding ring polymer comprising a polyrotaxane polymer ([0080]-[0081]);
an additional polymer ([0096], additional polymers that can be included in the slurry are disclosed); and
a cement retarder, wherein the cement retarder may be lignosulfonate ([0097]); and
wherein the sliding ring polymer and the additional polymer are present in the cement slurry as a blended mixture of polymers ([0131]-[0133]; the Examiner notes, Applicant has not defined and/or provided any specific definition for “blended mixture of polymers,” i.e., homogeneous, heterogeneous, a specific blended ratio, etc. Rather, Applicant discloses wherein “The cement may include blending a sliding ring polymer and an additional polymer with a cement precursor and to form a cement mixture.” As such, the example compositions of Santra et al. disclosed in [0131]-[0133] that are prepared by blending the sliding ring polymer and additional viscosifying polymer with the cement provides for Applicant’s claimed blended mixture. Since Applicant’s mixture is obtained by blending the components with the cement, it is the position of the Office that Santra provides for the invention as claimed. Santra discloses the inclusion of a viscosifier in the form of xanthan in the cement slurry in [0131]. Xanthan is a polymer, and, therefore, would further provide for “an additional polymer” as well as wherein such is present as a blended mixture of polymers, as claimed.)
Santra et al. discloses wherein the slurry may include various cement precursor materials, such as Portland cement, Pozzolanic cement and non-Portland cements ([0103]). The reference, however, fails to explicitly disclose the inclusion of silica flour therein. Alkhalaf et al. further teaches the cement slurry noted above as formed from cement precursors including materials such as those disclosed by Santra et al. ([0050]-[0051]) and further suggests wherein silica flour may be include therewith for the purpose of stabilizing the strength and permeability of the cement at downhole temperatures between 230-700oF, preventing strength retrogression and decreasing the permeability of the cured cement; suitable amounts thereof to include are suggested as from 0-50% by weight ([0056]-[0058]). Since Alkhalaf et al. teaches the same cement precursors as Santra et al., it would have been obvious to one having ordinary skill in the art to try and include a material such as silica flour within the cement slurry of Santra et al. in order to stabilize the strength and permeability of the cement at downhole temperatures between 230-700oF and prevent strength retrogression in the cured cement therewith.
Santra et al. discloses wherein the cement slurry further comprises a cement retarder such as lignosulfonate ([0097]), as noted above. With regard to the amount thereof, Santra et al. suggests an amount of SHMP, disclosed as an alternative retarder to lignosulfonate, in an amount of 0.1-6% ([0131], Table 1). As such, it would have been obvious to one having ordinary skill in the art to include a cement retarder of a lignosulfonate in the cement in an amount as claimed since it has been held “[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). With regard to the specific lignosulfonate, Alkhalaf et al. further teaches wherein low temperature cement retarders include calcium lignosulfonate while high temperature retarders include sodium lignosulfonates ([0062]). As such, when considering a lignosulfonate as a cement retarder for use in the cement slurry of Santra et al., it would have been obvious to one having ordinary skill in the art to try either calcium or sodium lignosulfonate therein as based on the temperature conditions to which the cement slurry will be subjected in order to yield the predictable result of reducing the curing rate at such temperatures.
With further regard to the inclusion of silica flour, Santra et al. in view of Alkhalaf et al. provides for the inclusion thereof for at least the reasons set forth above. Alkhalaf et al. further teaches suitable amounts thereof to include are suggested as from 0-50% by weight ([0056]-[0058]). Given the guidance of Alkhalaf et al., one having ordinary skill would recognize an optimal amount thereof to include in the cement slurry of Santra et al. in order to effectively stabilize the cured cement therewith since it has been held “[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).
Santra et al. discloses the additional polymer included in the cement slurry as set forth above, wherein examples thereof include various viscosifiers ([0096]). Santra et al. further suggests wherein the cement slurry exhibits improved compression strength ([0101]), wherein the addition of the polyrotaxane to the foamed cement imparts improvement in the properties of the cement ([0112]). The reference, however, is silent to wherein the additional polymer is a thermoplastic styrene-butadiene copolymer as claimed. Reddy et al. teaches cement slurries wherein the base cement includes a cement precursor and water ([0017]-[0018]) and additives may be included therein for the purpose of imparting a baseline set of physical properties; such additives include foam and expanding additives such as gas ([0019]). The cement slurry is used to cement a subterranean formation and is formed as an optimized cement (abstract); the elastic modulus/Young’s modulus of the cement slurry is evaluated to determine if such is in an optimizing range ([0028]-[0030]) and a thermoplastic elastomer may be added in an amount of 5-50% by weight of the cement for the purpose of adjusting the elastic/Young’s modulus to within the optimizing range. Suitable elastomers used for such a purpose include styrene-butadiene copolymers, including FINAPRENE 411, as well as other FINAPRENE elastomers, wherein typical values of styrene/butadiene content are suggested as 31/69%, respectively ([0032]-Table 1). Since Santra et al. discloses a base cement that includes foam and expanding additives, wherein such is formulated so as to have improved compressive strength and resiliency ([0035]) and Reddy et al. teaches wherein optimized cements formed from base cements including foam and expanding additives may be evaluated and optimized by inclusion of thermoplastic elastomers of styrene-butadiene copolymer therein, it would have been obvious to one having ordinary skill in the art to evaluate the cement slurry of Santra et al. and try an additive such as a thermoplastic elastomer of styrene-butadiene therein in order to provide for a Young’s/elastic Modulus within an optimized range for use in cementing a subterranean formation therewith.
With respect to dependent claim 3, Santra et al. in view of Reddy et al. suggests the cement slurry as set forth above. Based on the suggestions of Reddy et al. set forth above, it is the position of the Office that one having ordinary skill in the art would recognize an amount thereof to include in the cement slurry of Santra et al. as within the range as instantly claimed in order to provide an optimized Young’s modulus therewith since it has been held “[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).
With respect to dependent claim 4, Santra et al. in view of Reddy et al. suggests the cement slurry as set forth above, wherein Reddy et al. teaches FINAPRENE 411. The Examiner notes, FINAPRENE 411 comprises 70% butadiene units and 30% styrene units, as evidenced by the reference cited in the Conclusion of non-final office action mailed 03/28/25. As such, when including the additional polymer of Reddy et al. in the cement slurry of Santra et al., it would have been obvious to one having ordinary skill in the art to provide a thermoplastic styrene butadiene copolymer that comprises 70% butadiene units and 30% styrene units in order to provide a cement slurry having an optimized Young’s modulus therewith.
With respect to dependent claim 5, Santra et al. discloses an exemplary cement slurry wherein water, the sliding ring polymer and additional polymer are included therein, wherein such are present in an amount by weight of the cement precursor in the amounts of 100, 0.5-10 and 0.2-2%, respectively ([0131], Table 1). As such, Santra et al. provides for amounts of each component within the ranges instantly claimed. With regard to any amounts not explicitly suggested by Santra et al., it is the position of the Office that the inclusion of such amounts would have been obvious to one having ordinary skill in the art since it has been held wherein 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed concentration ranges for each component as critical and it is unclear if any unexpected results are achieved by using the instantly claimed concentration ranges. Since the cement of Santra et al. has enhanced compressive strength properties, it does not appear that such would be considered an unexpected result of using the presently claimed weight percents for each component, and, as such, the determination of optimal amounts thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 7, Santra et al. discloses wherein the cement slurry further includes a dispersant selected from the group as claimed ([0097], wherein lignosulfonate is disclosed). With regard to the amount thereof, Santra et al. suggests an amount of SHMP, disclosed as an alternative to lignosulfonate, in an amount of 0.1-6% ([0131], Table 1). As such, it would have been obvious to one having ordinary skill in the art to include a dispersant of lignosulfonate in the cement in an amount as claimed since it has been held “[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).
With respect to dependent claim 8, Santra et al. discloses wherein the cement slurry further includes a fluid loss control agent selected from the group as claimed ([0096], wherein at least hydroxyethyl cellulose is disclosed). With regard to the amount thereof, Santra et al. suggests an amount of xanthan, disclosed as an alternative to the hydroxyethyl cellulose, in an amount of 0.2-2% ([0131], Table 1). As such, it would have been obvious to one having ordinary skill in the art to include a fluid loss control agent of hydroxyethyl cellulose in the cement in an amount as claimed since it has been held “[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).
With respect to dependent claim 9, Santra et al. discloses a cured cement composition prepared from the cement slurry of claim 1 ([0045]; [0113]-[0114).
With respect to dependent claims 10 and 11, Santra et al. discloses wherein the set cement has improved resiliency against cracking; it is further suggested wherein the inclusion of the sliding ring polymer in the cement facilitates the dispersion of stresses throughout the set cement matrix, as well as enhances stress distribution in the cement to prevent explosion or cracking ([0034]-[0035]). Although silent to wherein the cured cement has a lower Young’s modulus as compared to a cement prepared in the absence of the sliding ring polymer and the additional polymer, and, further, wherein the Young’s modulus of the cured cement composition is at least 25% less than the Young’s modulus of a cured cement prepared in the absence of the sliding ring polymer, the additional polymer, or both, since Santra et al. clearly discloses resiliency of the set cement, as well as the ability of the set cement to disperse stresses therethrough, and, further, for a cement composition and cured cement prepared therefrom containing the same components instantly claimed, the cured cement of Santra et al. would be expected to act in the manner as claimed, i.e., have a lower Young’s modulus as compared to a cement prepared in the absence of the sliding ring polymer and the additional polymer, and, further, have a Young’s modulus that is at least 25% less than the Young’s modulus of a cured cement prepared in the absence of the sliding ring polymer, the additional polymer, or both, 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 in the Young’s Modulus of the cured composition of Santra et al. 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 12, Santra et al. discloses wherein the set cement has improved resiliency against cracking; it is further suggested wherein the inclusion of the sliding ring polymer in the cement facilitates the dispersion of stresses throughout the set cement matrix, as well as enhances stress distribution in the cement to prevent explosion or cracking ([0034]-[0035]). Although silent to the value of Young’s modulus of the cured cement slurry, since Santra et al. clearly discloses resiliency of the set cement, as well as the ability of the set cement to disperse stresses therethrough, and, further, for a cement composition and cured cement prepared therefrom containing the same components instantly claimed, the cured cement of Santra et al. would be expected to act in the manner as claimed, i.e., have a lower Young’s modulus of 1.5 x 106 psi or less, 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 in the Young’s Modulus of the cured composition of Santra et al. 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. Any difference of Young’s Modulus of the cured cement of Santra et al. and that of the instant claims would have been obvious to one having ordinary skill in the art since it has been held "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed Young’s Modulus for the cured cement as critical and it is unclear if any unexpected results are achieved by imparting such a Young’s Modulus to the cured cement. Since the cured cement of Santra et al. is suggested as having improved resiliency againsta cracking, it does not appear that such would be considered an unexpected result of providing for a Young’s Modulus as instantly claimed, and, as such, the determination of optimal Young’s Modulus to impart to the cured cement of Santra et al. would be achievable through routine experimentation in the art.
With respect to dependent claims 13 and 14, Santra et al. discloses wherein the set cement has improved resiliency against cracking; it is further suggested wherein the inclusion of the sliding ring polymer in the cement facilitates the dispersion of stresses throughout the set cement matrix, as well as enhances stress distribution in the cement to prevent explosion or cracking ([0034]-[0035]). Although silent to wherein the cured cement is capable of axial deformation when compressive stress is applied, as well as wherein the cured cement composition is capable of withstanding 10% or more axial stress as compared to a cured cement prepared in the absence of the sliding ring polymer, the additional polymer, or both, since Santra et al. clearly discloses the ability of the set cement to disperse stresses therethrough, as well as provides for a cement composition and cured cement prepared therewith containing the same components instantly claimed, the cured cement of Santra et al. would be expected to act in the manner as claimed, i.e., be capable of axial deformation when compressive stress is applied, as well as be capable or withstanding 10% or more axial stress as compared to a cured cement prepared in the absence of the sliding ring polymer, the additional polymer, or both, since “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 cured composition of Santra et al. 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 15, Santra et al. discloses wherein the addition of the sliding ring polymer imparts improvement in the properties of the cement, especially compressive strength ([0035]); the references further discloses wherein cement compressive strengths can vary from 0 psi to 10,000 psi ([0046]). Although silent to wherein the compressive strength of the cured cement composition is 8000 psi or less, given the range of cement compressive strengths suggested by Santra et al., as well as the fact that Santra et al. provides for a cured cement composition obtained from a cement slurry having each of the components set forth by Applicant in independent claim 1, the compressive strength of the cement would be expected to fall within the range instantly claimed by Applicant 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 compressive strength of the cured composition of Santra et al. 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. Furthermore, one having ordinary skill would recognize an optimal compressive strength to provide for in the cured cement in order to effectively resist loads which tend to compress or reduce the size thereof since it has been held “[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).
With respect to new dependent claim 21, Santra et al. in view of Reddy et al. teaches wherein the additional polymer, i.e., FINAPRENE 411 of Reddy et al., and the sliding ring polymer are present in the cement slurry as discrete polymers (see explanation within rejection of claim 1, above).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Santra et al. in view of Alkhalaf and Reddy et al. as applied to claim 1 above, and further in view of Pewitt et al. (US 2013/0319673).
Santra et al. in view of Alkhalaf and Reddy et al. teaches the cement slurry as set forth above, wherein Santra et al. discloses set retarders included therein to include lignosulfonates and organic acids ([0097]). The reference, however, fails to suggest a retarder coprising a copolymer of AA and AMPS as claimed. Pewitt et al. teaches retarders used in cement compositions to include compounds such as lignosulfonates, organic acids or copolymers of AMPS with acrylic acid ([0019]). It would have been obvious to one having ordinary skill in the art to try a copolymer of AMPS and AA as an alternative to the lignosulfonate and organic acid cement retarders disclosed by Santra et al. in order to yield the predictable result of delaying the setting of the cement therewith.
Response to Arguments
Applicant’s arguments with respect to the rejections of claims 1 and 5-15 as being unpatentable over Santra in view of Alkhalaf et al. have been fully considered, but they are not persuasive.
Applicant notes claim 1 has been amended to clarify that the additional polymer is a thermoplastic styrene-butadiene copolymer and that the cement slurry includes the sliding ring polymer and the additional polymer as a mixture of separate polymers.
The Examiner notes, claim 1 does not explicitly require a mixture of separate polymers.
Applicant has amended independent claim 1 to require the sliding ring polymer and additional polymer to be present as a blended mixture of polymers.
Applicant asserts neither Santra nor Alkhalaf discloses or suggests a cement slurry including an additional polymer that is a thermoplastic styrene butadiene copolymer
The Examiner acknowledges such, but maintains that Reddy, previously used in the rejection of dependent claim 2, provides for such, as is now presented above.
Applicant notes Santra is directed to the use of polyrotaxane additives as reinforcing agents to prevent or inhibit cracking or explosion of cement.
Applicant notes Santra does not disclose or suggest silica flour in such compositions.
Applicant asserts Alkhalaf is directed to a corrosion inhibiting cement composition and one having ordinary skill would recognize adding silica flour to a slurry of Santra would destabilize such.
The Examiner respectfully disagrees. Alkhalaf suggests wherein silica flour may be included with a cement precursor for the purpose of stabilizing the strength and permeability of the cement at downhole temperatures between 230-700oF, preventing strength retrogression and decreasing the permeability of the cured cement, and, as such, the Office maintains one of ordinary skill in the art would recognize the ability to try such in the slurry of Santra for at least the reasons set forth above.
Applicant asserts Santra and Alkhalaf are silent to the mechanical properties of a cement obtained from a cement slurry as required by amended independent claim 1 and Applicant asserts unexpected results in view of the cited art.
The Examiner notes, as presently written, the claims do not require any particular mechanical properties. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., unexpected mechanical properties) 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).
Furthermore, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). The Examiner acknowledges the example systems Applicant has highlighted in the response. However, as presently written, independent claim 1 does not require a particular amount of either the polyrotaxane polymer or additional polymer and/or any particular ratio of such components. Given the examples of the specification are alleged by Applicant to show unexpected results, Applicant may consider inclusion of the amounts of each of the aforenoted components present within the cement slurry in independent claim 1 in order to establish objective evidence.
With further regard to Reddy, Applicant asserts one of ordinary skill would have no reasonable expectation of success by blending a sliding ring polymer with an additional styrene-butadiene as Santra suggests that direct anchoring is necessary.
Applicant asserts Santra clearly discloses that an additional high molecular weight polymer is included in the cement slurry and coupled to the polyrotaxane and is part of the sliding ring polymer and Reddy is silent to the compatibility of a blended mixture of a polyrotaxane with a thermoplastic styrene-butadiene copolymer. Applicant asserts Santra clearly suggests the additional polymer requires coupling to the sliding ring polymer.
The Examiner notes, Santra further discloses the inclusion of polymer additives separate from the high molecular weight polymer that is coupled to the polyrotaxane, such as those disclosed in [0096]. Nothing in the present claims excludes the presence of the high molecular weight polymer coupled to the polyrotaxane and the additional polymer; the instant claims rather recites “a sliding ring polymer comprising polyrotaxane.” It is noted, the Office action is not suggesting replacing the high molecular weight coupling polymer of Santra with the thermoplastic copolymer of Reddy, but rather the addition of the thermoplastic copolymer to the cement slurry as a separate additive in the slurry. As such, the rejection is maintained.
With regard to Applicant’s unexpected synergistic results, the Examiner maintains the position set forth above.
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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
02/10/26
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