DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Preliminary Amendment
The preliminary amendment submitted on 11 March 2024 has been entered. After entry of the amendment claims 1-18 are currently pending in the application.
Claim Rejections - 35 USC § 112
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 6 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.
In claim 6, the phrase “the unsaturated monomer (A)” lacks proper antecedent basis.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 4, 7, 10-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Saka et al (US Patent Application Publication No. US 2020/0325383 A1).
The reference teaches, in claim 1, a filling material for underground treatment comprising: at least one polyvinyl alcohol-based resin of a modified polyvinyl alcohol-based resin and an unmodified polyvinyl alcohol, wherein a swelling ratio of the polyvinyl alcohol-based resin after immersion in water at a temperature of 80° C. for 30 minutes is 250% to 900%. Claim 4 recites that the modified polyvinyl alcohol-based resin is a crosslinked product (A2) of a polyvinyl alcohol-based resin (A) containing a carboxyl group with crosslinker. Claim 6 recites that the filling material for underground treatment according to claim 1 into a liquid to be flown into a well formed underground. Paragraph teaches that well treatment fluids include the muddy water (drilling fluid), the cementing fluid, the perforation fluid.
The instant claims are obvious over the reference.
As for claim 1, the reference teaches a polyvinyl alcohol based resin that is crosslinked. The degree of swelling is 250% to 900%. The resin may be added to a liquid to be used in the well. As this liquid may include a cementing fluid, the addition of the resin to a cementing material is obvious.
As for claim 4, the reference teaches 250% to 900%.
As for claim 7, the reference teaches, in paragraph [0053] that the average polymerization degree is preferably 300 to 4000 which overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 10, the crosslinking agent of the reference (paragraph [0093] is believed to meet this limitation as it teaches a boron compound such as boric acid which according to the specification is one of the preferred crosslinkers.
As for claim 11, the reference teaches a boron compound which is a group 13 element.
As for claim 12, the reference teaches a boron compound such as boric acid.
As for claim 13, the reference teaches a boron compound such as boric acid.
As for claim 14, the reference teaches boric acid.
As for claim 15, the reference teaches that the resin may be added to a liquid to be used in the well. As this liquid may include a cementing fluid, the addition of the resin to a cementing material is obvious.
As for claim 16, the reference teaches a polyvinyl alcohol based resin that is crosslinked. The degree of swelling is 250% to 900%.
As for claim 18, the reference teaches that the resin may be added to a liquid to be used in the well. As this liquid may include a cementing fluid, the addition of the resin to a cementing material is obvious.
Allowable Subject Matter
Claims 2-3, 5, 8-9, and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if amendment to overcome the 112(b) rejection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg July 21, 2026
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