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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-23, in the reply filed on 12 August 2026 is acknowledged.
However, based on the cited related Application 18/651,003 (now U.S. Patent No. 12,655,339), the Restriction requirement is hereby withdrawn, insofar as the Groups currently appear to be patentably indistinct. Accordingly, claims 1-29 are under examination.
Nevertheless, Applicant should note that this Restriction requirement may be “reinstated” at a later time, should Amendments be presented (or Art become of record) requiring distinction between the Groups.
Note to Applicant
As below, Applicant may see the rejections are substantially the same as those for 18/651,003 (now U.S. Patent No. 12,655,339). Accordingly, Applicant may overcome the Prior Art rejections in a similar manner (e.g., “wherein the wellbore contains packer rubber, and wherein the packer rubber, when exposed to the packer fluid, expands by less than 9%”) and file a e-Terminal Disclaimer over U.S. Patent No. 12,655,339 to overcome the Double Patenting rejections.
As always, Applicant may contact the Examiner for an Interview or the like, if further discussion is desired.
Claim Objections
Claims 26-29 are objected to because of the following informalities:
Claims 26-29 should each recite “The wellbore of claim” (correcting the typos; because independent claim 24 is “A wellbore comprising”).
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 1-8, 10-15, 17, and 19-29 are 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 Zha (2016/0024367).
Regarding independent claim 1, Zha discloses A method of treating a wellbore (abstract “for treatment of a subterranean formation” and [0016] “the higher viscosity under high temperature conditions can make the viscosifier polymer a more thermally efficient packer fluid”), comprising
providing a packer fluid ([0016] “a more thermally efficient packer fluid”) comprising water ([0094] “The composition can include a fluid including at least one of water”) and ethylene glycol ([0073] “the composition can include at least one of an aqueous liquid and a water-miscible liquid. … The water-miscible liquid can be any suitable water-miscible liquid, such as … ethylene glycol”), present in the packer fluid in a weight ratio of about 100:1 to about 1:1 ([0094] “The composition can include any suitable proportion of the one or more fluids, such as about 0.001 wt % to 99.999 wt %, about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.001 wt % or less, or about 0.01 wt %, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, or about 99.999 wt % or more of the composition” vs. [0074] “The composition can include any suitable proportion of the aqueous liquid or the water-miscible liquid, such that the composition can be used as described herein. For example, about 0.000.1 wt % to 99.999.9 wt % of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof, or about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.000.1 wt % or less, or about 0.000,001 wt %, 0.000,1, 0.001, 0.01, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, 99.999 wt %, or about 99.999.9 wt % or more of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof”; this plainly anticipates a 1:1 ratio because the two are treated the same); and
injecting the packer fluid into an annulus of the wellbore ([0064] “As used herein, the term “packing fluid” refers to fluids or slurries that can be placed in the annular region of a well between tubing and outer casing above a packer” and [0100] “the composition is used in the subterranean formation, at least one of alone and in combination with other materials, as a … packer fluid”).
As above, regarding the 100:1 to 1:1 weight ratio of water to ethylene glycol, Zha discloses, e.g., “The composition can include any suitable proportion of the one or more fluids, such as about 0.001 wt % to 99.999 wt %, about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.001 wt % or less, or about 0.01 wt %, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, or about 99.999 wt % or more of the composition” ([0094]), which appears to anticipate a 1:1 ratio.
Regarding the rest of the weight ratio, although silent to the exact range as instantly claimed, this appears well-within the general conditions disclosed by Zha. For example, using 50 wt% water and 5 wt% ethylene glycol would be a weight ratio of 10:1. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Zha to include:
“providing a packer fluid comprising a water and ethylene glycol, present in the packer fluid in a weight ratio of about 100:1 to about 1:1;”
with a reasonable expectation of success, in order to provide suitable amounts of each within the general conditions disclosed by Zha. Applicant may note that, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
The Office further observes that Applicant fails to disclose any criticality to using the claimed weight ratios in particular, as opposed to other amounts generally like in Zha. For example, the data merely demonstrates that the presence of ethylene glycol vs. absence of ethylene glycol maintains the packer rubber with minimal damage and no corrosion ([0045]-[0049] Tables 1-4), and Zha already provides ethylene glycol.
Regarding independent claim 19, Zha discloses A method of preventing corrosion in a wellbore (abstract “for treatment of a subterranean formation” and [0016] “the higher viscosity under high temperature conditions can make the viscosifier polymer a more thermally efficient packer fluid” e.g. [0064] “In various examples, the packing fluid can … protect metals and elastomers from corrosion”), comprising
providing a packer fluid ([0016] “a more thermally efficient packer fluid”) comprising water ([0094] “The composition can include a fluid including at least one of water”) and ethylene glycol ([0073] “the composition can include at least one of an aqueous liquid and a water-miscible liquid. … The water-miscible liquid can be any suitable water-miscible liquid, such as … ethylene glycol”), present in the packer fluid in a weight ratio of about 100:1 to about 1:1 ([0094] “The composition can include any suitable proportion of the one or more fluids, such as about 0.001 wt % to 99.999 wt %, about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.001 wt % or less, or about 0.01 wt %, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, or about 99.999 wt % or more of the composition” vs. [0074] “The composition can include any suitable proportion of the aqueous liquid or the water-miscible liquid, such that the composition can be used as described herein. For example, about 0.000.1 wt % to 99.999.9 wt % of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof, or about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.000.1 wt % or less, or about 0.000,001 wt %, 0.000,1, 0.001, 0.01, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, 99.999 wt %, or about 99.999.9 wt % or more of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof”; this plainly anticipates a 1:1 ratio because the two are treated the same); and
contacting a metal surface of the wellbore with the packer fluid ([0064] “As used herein, the term “packing fluid” refers to fluids or slurries that can be placed in the annular region of a well between tubing and outer casing above a packer. In various examples, the packing fluid can … protect metals and elastomers from corrosion” = the metal tubing/casing and [0100] “the composition is used in the subterranean formation, … as a … packer fluid”).
As above, regarding the 100:1 to 1:1 weight ratio of water to ethylene glycol, Zha discloses, e.g., “The composition can include any suitable proportion of the one or more fluids, such as about 0.001 wt % to 99.999 wt %, about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.001 wt % or less, or about 0.01 wt %, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, or about 99.999 wt % or more of the composition” ([0094]), which appears to anticipate a 1:1 ratio.
Regarding the rest of the weight ratio, although silent to the exact range as instantly claimed, this appears well-within the general conditions disclosed by Zha. For example, using 50 wt% water and 5 wt% ethylene glycol would be a weight ratio of 10:1. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Zha to include:
“providing a packer fluid comprising a water and ethylene glycol, present in the packer fluid in a weight ratio of about 100:1 to about 1:1;”
with a reasonable expectation of success, in order to provide suitable amounts of each within the general conditions disclosed by Zha. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding independent claim 24, Zha discloses A wellbore (abstract “for treatment of a subterranean formation” and [0016] “the higher viscosity under high temperature conditions can make the viscosifier polymer a more thermally efficient packer fluid” e.g. [0064] “In various examples, the packing fluid can provide hydrostatic pressure in order to lower differential pressure across the sealing element, lower differential pressure on the wellbore and casing to prevent collapse, and protect metals and elastomers from corrosion”) comprising:
an annulus ([0064] “As used herein, the term “packing fluid” refers to fluids or slurries that can be placed in the annular region of a well between tubing and outer casing above a packer. In various examples, the packing fluid can provide hydrostatic pressure in order to lower differential pressure across the sealing element, lower differential pressure on the wellbore and casing to prevent collapse, and protect metals and elastomers from corrosion”);
a packer disposed within the annulus ([0064] “a packer”); and
a packer fluid disposed within the annulus and adjacent the packer ([0100] “the composition is used in the subterranean formation, … as a … packer fluid” and [0064] “fluids or slurries that can be placed in the annular region of a well between tubing and outer casing above a packer”);
wherein the packer fluid ([0016] “a more thermally efficient packer fluid”) comprises water ([0094] “The composition can include a fluid including at least one of water”) and ethylene glycol ([0073] “the composition can include at least one of an aqueous liquid and a water-miscible liquid. … The water-miscible liquid can be any suitable water-miscible liquid, such as … ethylene glycol”), present in the packer fluid in a weight ratio of about 100:1 to about 1:1 ([0094] “The composition can include any suitable proportion of the one or more fluids, such as about 0.001 wt % to 99.999 wt %, about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.001 wt % or less, or about 0.01 wt %, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, or about 99.999 wt % or more of the composition” vs. [0074] “The composition can include any suitable proportion of the aqueous liquid or the water-miscible liquid, such that the composition can be used as described herein. For example, about 0.000.1 wt % to 99.999.9 wt % of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof, or about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.000.1 wt % or less, or about 0.000,001 wt %, 0.000,1, 0.001, 0.01, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, 99.999 wt %, or about 99.999.9 wt % or more of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof”; this plainly anticipates a 1:1 ratio because the two are treated the same).
As above, regarding the 100:1 to 1:1 weight ratio of water to ethylene glycol, Zha discloses, e.g., “The composition can include any suitable proportion of the one or more fluids, such as about 0.001 wt % to 99.999 wt %, about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.001 wt % or less, or about 0.01 wt %, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, or about 99.999 wt % or more of the composition” ([0094]), which appears to anticipate a 1:1 ratio.
Regarding the rest of the weight ratio, although silent to the exact range as instantly claimed, this appears well-within the general conditions disclosed by Zha. For example, using 50 wt% water and 5 wt% ethylene glycol would be a weight ratio of 10:1. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Zha to include:
“wherein the packer fluid comprises a water and ethylene glycol, present in the packer fluid in a weight ratio of about 100:1 to about 1:1;”
with a reasonable expectation of success, in order to provide suitable amounts of each within the general conditions disclosed by Zha. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claims 2, 3, and 20, as in claim 1, Zha discloses, e.g., “The composition can include any suitable proportion of the one or more fluids, such as about 0.001 wt % to 99.999 wt %, about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.001 wt % or less, or about 0.01 wt %, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, or about 99.999 wt % or more of the composition” ([0094]), which appears to anticipate a 1:1 ratio.
Regarding the rest of the weight ratio, although silent to the exact range as instantly claimed, this appears well-within the general conditions disclosed by Zha. For example, using 50 wt% water and 5 wt% ethylene glycol would be a weight ratio of 10:1. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Zha to include:
(claim 2) wherein the water and ethylene glycol are present in the packer fluid in a weight ratio of about 20:1 to about 1:1; and/or
(claim 3) wherein the water and ethylene glycol are present in the packer fluid in a weight ratio of about 10:1 to about 1.5:1; and/or
(claim 20) wherein the water and ethylene glycol are present in the packer fluid in a weight ratio of about 20:1 to about 1:1,
with a reasonable expectation of success, in order to provide suitable amounts of each within the general conditions disclosed by Zha. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claims 4, 5, 21, and 25, Zha discloses “The composition can include any suitable proportion of the aqueous liquid or the water-miscible liquid, such that the composition can be used as described herein. For example, about 0.000.1 wt % to 99.999.9 wt % of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof, or about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.000.1 wt % or less, or about 0.000,001 wt %, 0.000,1, 0.001, 0.01, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, 99.999 wt %, or about 99.999.9 wt % or more of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof” ([0074]).
This appears to disclose, e.g., 70 wt% water and 20 wt% ethylene glycol, which discloses:
(claim 4) wherein the packer fluid comprises about 50 wt% to about 95 wt% water; and about 5 wt% to about 50 wt% ethylene glycol; and/or
(claim 5) wherein the packer fluid comprises about 60 wt% to about 90 wt% water; and about 10 wt% to about 40 wt% ethylene glycol; and/or
(claim 21) wherein the packer fluid comprises about 50 wt% to about 95 wt% water; and about 5 wt% to about 50 wt% ethylene glycol; and/or
(claim 25) wherein the packer fluid comprises about 50 wt% to about 95 wt% water; and about 5 wt% to about 50 wt% ethylene glycol.
Regarding the ranges generally, these appear to be well-within the general conditions disclosed by Zha. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Zha to include, e.g., 70 wt% water and 20 wt% ethylene glycol, with a reasonable expectation of success, in order to provide suitable amounts of each within the general conditions disclosed by Zha. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
The Office further observes that Applicant fails to disclose any criticality to using the claimed concentrations in particular, as opposed to other amounts generally like in Zha.
Regarding claims 6-8 and 26, Zha discloses “the composition can include any suitable amount of any suitable material used in a downhole fluid. For example, the composition can include… density control agents, density modifiers, … heavy-weight additives, … BAROID®, a ground barium sulfate weighting agent” ([0102]) i.e. “barite” ([0138]/[0142] and Tables 1 & 3). Accordingly, Zha discloses:
(claim 6) wherein the packer fluid further comprises a weighting agent; and further
(claim 7) wherein the weighting agent comprises barite, manganese tetroxide, marble dust, or any combination thereof; and further
(claim 8) wherein the weighting agent comprises barite; and/or
(claim 26) wherein the packer fluid further comprises a weighting agent.
Regarding claims 12, 13, and 27, Zha discloses:
Regarding the ethylene glycol and water, “The composition can include any suitable proportion of the aqueous liquid or the water-miscible liquid, such that the composition can be used as described herein. For example, about 0.000.1 wt % to 99.999.9 wt % of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof, or about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.000.1 wt % or less, or about 0.000,001 wt %, 0.000,1, 0.001, 0.01, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, 99.999 wt %, or about 99.999.9 wt % or more of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof” ([0074]); and
Regarding the weighting agent, “the composition can include any suitable amount of any suitable material used in a downhole fluid. For example, the composition can include… density control agents, density modifiers, … heavy-weight additives, … BAROID®, a ground barium sulfate weighting agent… Any suitable proportion of the composition can include any optional component listed in this paragraph, such as about 0.000.1 wt % to 99.999.9 wt %, about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.000.1 wt % or less, or about 0.001 wt %, 0.01, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, 99.999 wt %, or 99.999.9 wt % or more of the composition” ([0102])
This appears to disclose, e.g., 40 wt% water, 10 wt% ethylene glycol, and 40 wt% weighting agent, which discloses:
(claim 12) wherein the packer fluid comprises
about 25 wt% to about 70 wt% water;
about 2 wt% to about 25 wt% ethylene glycol; and
about 25 wt% to about 73 wt% weighting agent; and/or
(claim 13) wherein the packer fluid comprises
about 30 wt% to about 55 wt% water;
about 5 wt% to about 20 wt% ethylene glycol; and
about 35 wt% to about 65 wt% weighting agent; and/or
(claim 27) wherein the packer fluid comprises
about 25 wt% to about 50 wt% water;
about 2 wt% to about 25 wt% ethylene glycol; and
about 25 wt% to about 73 wt% weighting agent.
Regarding the ranges generally, these appear to be well-within the general conditions disclosed by Zha. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Zha to include, e.g., 40 wt% water, 10 wt% ethylene glycol, and 40 wt% weighting agent, with a reasonable expectation of success, in order to provide suitable amounts of each within the general conditions disclosed by Zha. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
The Office further observes that Applicant fails to disclose any criticality to using the claimed concentrations in particular, as opposed to other amounts generally like in Zha.
Regarding claims 14, 15, 22, 28, and 29, Zha discloses “The aqueous liquid can be any suitable aqueous liquid, such as at least one of water, brine, produced water, flowback water, brackish water, and sea water” ([0073]) i.e. fresh water and optionally includes salts e.g. at “0.1% w/v or less” ([0075]), which presumably includes 0% salt. Accordingly, Zha discloses:
(claim 14) wherein the packer fluid comprises less than about 5 wt% of a salt; and/or
(claim 15) wherein the packer fluid is substantially free from salts; and/or
(claim 22) wherein the packer fluid is substantially free from salts; and/or
(claim 28) wherein the packer fluid comprises less than about 5 wt% of a salt; and/or
(claim 29) wherein the packer fluid is substantially free from salt.
Regarding claim 17, Zha discloses wherein the annulus comprises a tubing-casing anulus ([0064] “As used herein, the term “packing fluid” refers to fluids or slurries that can be placed in the annular region of a well between tubing and outer casing above a packer”).
Regarding claim 23, Zha discloses wherein the metal surface comprises a surface of an annulus of the wellbore ([0064] “As used herein, the term “packing fluid” refers to fluids or slurries that can be placed in the annular region of a well between tubing and outer casing above a packer. In various examples, the packing fluid can … protect metals and elastomers from corrosion” = the metal tubing/casing).
Claim Rejections - 35 USC § 103
Claims 9-11 are rejected under 35 U.S.C. 103 as obvious over Zha as in claim 7, and further in view of Pindiprolu (2021/0403793).
Regarding claims 9-11, Zha discloses “the composition can include any suitable amount of any suitable material used in a downhole fluid. For example, the composition can include… density control agents, density modifiers, … heavy-weight additives, … BARACARB®, a sized ground marble bridging agent; BAROID®, a ground barium sulfate weighting agent… Any suitable proportion of the composition can include any optional component listed in this paragraph, such as about 0.000.1 wt % to 99.999.9 wt %, about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.000.1 wt % or less, or about 0.001 wt %, 0.01, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, 99.999 wt %, or 99.999.9 wt % or more of the composition” ([0102]).
However, Zha does not appear to describe the ground marble bridging agent as a weighting agent, or the particle size.
Nevertheless, such additives are known to be used as weighting agents as well. For example, Pindiprolu teaches “Iron oxide, ground marble, and silica flour (all having particle size of 1 μm to 100 μm) were added in proportions at a solids to water ratio that doesn't kill thixotropy created by the initial reactive materials but at the same time contributes positively to the final density of the slurry” ([0053]) and the Ground Marble has a Specific Gravity of 2.5 ([0055] Table 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Zha to include using the ground marble bridging agent as a ground marble weighting agent in a particle size of e.g. ~50 μm, with a reasonable expectation of success, in order to use an available additive which is known to contribute “positively to the final density of the slurry” and which has a known density (thereby including:
(claim 9) wherein the weighting agent comprises marble dust; and further
(claim 10) wherein an average particle size of the marble dust is about 1 µm to about 100 µm; and/or
(claim 11) wherein an average particle size of the marble dust is about 5 µm to about 50 µm).
See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
The Office further observes that Applicant fails to disclose any criticality to using the claimed sizing of marble dust weighting agent in particular, as opposed to other weighting agents generally like in Zha.
Claim 16 is rejected under 35 U.S.C. 103 as obvious over Zha as in claim 1, and further as evidenced by Smith (2004/0087448) (cited by Applicant).
Regarding claim 16, Zha discloses a “packer fluid” ([0016]) wherein “As used herein, the term “packing fluid” refers to fluids or slurries that can be placed in the annular region of a well between tubing and outer casing above a packer. In various examples, the packing fluid can … protect metals and elastomers from corrosion” ([0064]).
Although Zha does not specify that the fluids or slurries that can be placed in the annular region displaces brine from the annulus, this is the typical way that packer fluids are used. For example, Smith provides evidence of this, stating in the Background “Annular fluids or packer fluids are liquids which are pumped into and reside in an annular space between a casing and a tubing wall, between adjacent concentric strings of pipe extending into a wellbore (casing annulus) or into the bore of a cased wellbore” ([0003]) and “Most often, during normal operation, the wellbore is filled with fluid which is typically an aqueous fluid, such as fresh water or produced brine” ([0010]).
Accordingly, Zha discloses “wherein the annulus comprises a brine before injecting the packer fluid, and injecting the packer fluid displaces the brine from the annulus,” by virtue of using the packer fluid as a packer fluid.
Alternatively, even if it were somehow found that Zha fails to inherently or implicitly disclose this, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Zha to include displacing a brine from the annulus with the packer fluid, with a reasonable expectation of success, in order to use Zha’s packer fluid as a typical packer fluid under typical conditions.
Claim 18 is rejected under 35 U.S.C. 103 as obvious over Zha as in claim 1, and further as evidenced by Sui (2015/0299558) (cited by Applicant).
Regarding claim 18, Zha discloses a “packer fluid” ([0016]) wherein “As used herein, the term “packing fluid” refers to fluids or slurries that can be placed in the annular region of a well between tubing and outer casing above a packer. In various examples, the packing fluid can provide hydrostatic pressure in order to lower differential pressure across the sealing element, lower differential pressure on the wellbore and casing to prevent collapse, and protect metals and elastomers from corrosion” ([0064]).
Although Zha does not specify that the annulus region can also be between inner casing and outer casing, “annular region” as used in Zha would broadly refer to both annular regions around smaller pipes and multiple casings. For example, Sui provides evidence of this, stating in the Background that “Packer fluids or annular fluids are liquids which are pumped into annular openings such as, for example, (1) between a wellbore wall and one or more casing strings of pipe extending into a wellbore, or (2) between adjacent, concentric strings of pipe extending into a wellbore, or (3) in one or both of an A- or B-annulus in a wellbore comprising at least an A- and B-annulus with one or more inner strings of pipe extending into a said wellbore, which may be running in parallel or nominally in parallel with each other and may or may not be concentric or nominally concentric with the outer casing string, or (4) in one or more of an A-, B- or C-annulus in a wellbore comprising at least an A-, B- and C-annulus with one or more inner strings of pipe extending into a said wellbore, which may be running in parallel or nominally in parallel with each other and may or may not be concentric or nominally concentric with the outer casing string” ([0002])
Accordingly, Zha discloses “wherein the annulus comprises a casing-casing anulus,” by virtue of using the packer fluid for any given annular region.
Alternatively, even if it were somehow found that Zha fails to inherently or implicitly disclose this, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Zha to include treating a casing-casing annulus specifically, with a reasonable expectation of success, in order to use Zha’s packer fluid as a typical packer fluid for a given, well-known type of annular region.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,655,339 (also Application 18/651,003) (sharing Abushullaih, Al-Yami, Al Safran, Aljohar, and Wagle) in view of Zha.
Regarding independent claims 1, 19, and 24, these correspond to 12,655,339 claims 1, 17, and 20.
Regarding claims 2, 3, 6-12, 14-18, 20, 22, 23, and 26-29, these correspond with 12,655,339 claims 1-20.
Regarding claims 4, 5, 13, 21, 24, and 25, 12,655,339 claims the packer fluid comprising 20-55 wt% hydrocarbon, 3-15 wt% ethylene glycol, and 7-25 wt% water (claims 1/17/20) and e.g. 35-65 wt% weighting agent (claim 11).
Although these amounts of water do not overlap with the claimed 50-95 wt% and/or 60-90 wt% and/or 30-55 wt% water, Zha teaches a packer fluid ([0016]) comprising water ([0094]) and ethylene glycol ([0073]) wherein “The composition can include any suitable proportion of the aqueous liquid or the water-miscible liquid, such that the composition can be used as described herein. For example, about 0.000.1 wt % to 99.999.9 wt % of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof, or about 0.01 wt % to about 99.99 wt %, about 0.1 wt % to about 99.9 wt %, or about 20 wt % to about 90 wt %, or about 0.000.1 wt % or less, or about 0.000,001 wt %, 0.000,1, 0.001, 0.01, 0.1, 1, 2, 3, 4, 5, 10, 15, 20, 30, 40, 50, 60, 70, 80, 85, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 99.9, 99.99, 99.999 wt %, or about 99.999.9 wt % or more of the composition can be the aqueous liquid, water-miscible liquid, or combination thereof” ([0074]).
Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified 12,655,339 claims to include, e.g., 70 wt% water and 20 wt% ethylene glycol, with a reasonable expectation of success, in order to provide suitable amounts of each within the general conditions taught by Zha as suitable for a packer fluid. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
The Office further observes that Applicant fails to disclose any criticality to using the claimed concentrations in particular, as opposed to other amounts generally like in Zha. Similarly, 12,655,339 does not provide any criticality to using 12,655,339’s claimed concentrations in particular, as opposed to other amounts generally like in Zha.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The reference to House (4,528,104) (cited by Applicant) discloses an oil base packer fluid (abstract) comprising oleaginous medium such as diesel, an organophilic clay, a polar dispersant such as alcohols or ethylene glycol monobutyl ether, and a polyfunctional amino silane, along with additives such as barite weighting agent. However, this reference fails to disclose including ethylene glycol.
The reference to Smith (2004/0087448) (cited by Applicant) discloses a packer fluid comprising an aqueous portion and a capping fluid portion (abstract) which are pre-packaged together as a single fluid for dispensing ([0029]) comprising glycols ([0035]) such as ethylene glycol ([0055]) with water and Envirodrill ([0055] and Table C) which is a hydrotreated heavy petroleum naphtha hydrocarbon fluid ([0036]). However, this reference fails to disclose weighting agents.
The reference to Sui (2015/0299558) discloses a packer fluid with colloidal silica viscosifier (abstract) comprising an emulsion with an oleaginous phase such as diesel and water ([0067]) and optional salts ([0066]) using fresh water ([0022]), including ethylene glycol as thermal stabilizer ([0054]) up to 70 vol% ([0055]) and a barite weighting agent ([0058]). However, this reference does not appear necessary at this time.
The reference to McDaniel (2016/0122614) discloses a packer fluid with water and water-miscible organic liquid and salts (abstract) which may include ethylene glycol ([0015]) at 40-99% ([0017]) with barite weighting agent ([0025]) and diesel oil phase ([0026]). However, this reference requires the inclusion of salts.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674
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