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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-12) in the reply filed on 4/23/26 is acknowledged.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Regarding claim 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, the term “preferably” will be considered as if removed. Claims 4-12, dependent upon claim 3, are hereby rejected under 35 USC 112(b) as being dependent upon a rejected base claim.
Claim 12 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 pre-AIA the applicant regards as the invention. Claim 12 recites the limitation “wherein the physical state of the composition in the downhole environment is selected from a liquid, a paste and a gel” (emphasis added). However, independent claim 1, upon which claim 12 depends, recites “said composition… is a fluid at the temperatures found within an oil/gas wellbore.” It is unclear as to how a composition which is a fluid in a downhole environment can simultaneously be a paste or gel in the downhole environment. For purposes of examination, claim 12 will be considered under Broadest Reasonable Interpretation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Phatak et al. (US 2019/0153844) in view of Reddy (US 2020/0270502).
With respect to independent claim 1, Phatak discloses a chemical reaction heat source composition for use in downhole operations, wherein said composition, which is a fluid at the temperatures found within an oil/gas wellbore, comprises:
an exothermic redox mixture forming around 80% by weight of the composition ([0033], [0034], [0044], [0083], and [0088]);
a co-oxidizing agent forming around 3% by weight of the composition ([0033], [0044], [0083], and [0088]); and
a carrier medium ([0027], [0044], [0079], and [0085]-[0088]);
wherein the exothermic redox mixture comprises a metal that forms 5 to 50% by weight of the mixture and an oxidizing reagent that forms 50 to 95% by weight of the mixture ([0033], [0034], [0044], and [0083]).
Regarding claim 1, Phatak discloses an exothermic redox mixture forming around 80% by weight of the composition ([0083]). Although silent to wherein the exothermic redox mixture forms “20 to 90% by weight of the composition,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for an exothermic redox mixture amount as claimed insofar as because 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)
Furthermore, 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 exothermic redox mixture amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed exothermic redox mixture amount. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Further regarding claim 1, Phatak discloses a co-oxidizing agent forming around 3% by weight of the composition ([0033], [0083], and [0088]). Although silent to wherein the co-oxidizing agent forms “2 to 40% by weight of the composition,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a co-oxidizing agent amount as claimed insofar as because 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)
Furthermore, 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 co-oxidizing agent amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed co-oxidizing agent amount. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Further regarding claim 1, Phatak discloses a composition for reacting downhole comprising oxidizers, wherein the carrier medium for the composition may be a salt solution ([0027], [0044], [0079], and [0085]-[0088]). However, Phatak fails to expressly disclose wherein the carrier medium is “hydrophobic,” as instantly claimed. Reddy discloses a composition for reacting downhole comprising oxidizers, wherein the carrier medium for the composition is hydrophobic and wherein a hydrophobic carrier medium is an obvious variant to a brine carrier medium (Abstract and [0092]). Replacing the carrier medium disclosed by Phatak with the carrier fluid medium by Reddy is but a simple substitution of one known equivalent carrier medium for another, performing the same function for the same purpose. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make this simple substitution as it has been held “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR at 1395 (citing United States v. Adams, 383 US 39, 50-51 (1966)).
Regarding the carrier medium amount, the combination of Phatak and Reddy teaches wherein the carrier medium is present in an amount of “about 0.001 wt.% to about 99.999 wt.%” (Reddy- [0092]). Although silent to wherein the carrier medium is present in an amount of “5 to 50% by weight of the composition,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a carrier medium amount as claimed insofar as because 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)
Furthermore, 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 carrier medium amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed carrier medium amount. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Further regarding claim 1, Phatak discloses wherein the exothermic redox mixture comprises a metal that forms around 25% by weight of the mixture and an oxidizing reagent that forms around 75% by weight of the mixture ([0033], [0083], and [0088]). Although silent to wherein the metal is present in an amount of “5 to 50% by weight of the mixture” and the oxidizing reagent is present in an amount of “50 to 95% by weight of the mixture,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for metal and oxidizing reagent amounts as claimed insofar as because 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)
Furthermore, 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 metal and oxidizing reagent amounts as critical and it is unclear if any unexpected results are achieved by using the instantly claimed co-oxidizing agent metal and oxidizing reagent amounts. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Further regarding claim 1, since Phatak discloses the same composition as claimed, the material, if placed downhole, would naturally act in the same manner as claimed, i.e., it would be capable of oxidizing the metal of the exothermic redox mixture at a lower temperature than the oxidizing reagent. If there is any difference between the composition of Phatak and that of the instant claims, the difference would have been minor and obvious insofar as because 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. See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934). With respect to depending claim 2, Phatak discloses wherein the metal in the exothermic redox mixture may be Al or Mg (Abstract and [0033]). With regard to the remaining materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the metal.
With respect to depending claim 3, Phatak discloses wherein the oxidizing agent in the exothermic redox mixture is a metal oxide, wherein the metal oxide may be copper oxide or iron oxide (Abstract and [0033]). With regard to the remaining materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the oxidizing agent.
With respect to depending claim 4, Phatak discloses wherein the exothermic redox mixture is either thermite or thermite based (Abstract and [0033]).
With respect to depending claims 5 and 6, Phatak discloses wherein the co-oxidizing agent may be perchlorates or permanganates, and the perchlorate may be potassium perchlorate ([0033], [0044], and [0088]). With regard to the remaining materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the co-oxidizing agent.
With respect to depending claim 7, the combination of Phatak and Reddy teaches wherein the hydrophobic carrier medium may be glycol, diesel, or kerosene ([0092]). With regard to the remaining materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the hydrophobic carrier medium.
With respect to depending claim 12, Phatak discloses wherein the physical state of the composition in the downhole environment may be a liquid, a solid, a gas, or a combination thereof (Abstract and [0028]). With regard to the remaining materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such physical states.
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Phatak et al. (US 2019/0153844- cited above) in view of Reddy (US 2020/0270502- cited above), and further in view of Lowry et al. (US 2015/0211322).
With respect to depending claims 8-10, Phatak discloses a thermite composition ([0026]). However, Phatak fails to expressly disclose wherein the thermite composition further comprises dampening or gas absorbing agents, as claimed. Lowry teaches a thermite composition comprising CaO (Abstract, [0018], and [0048]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider employing CaO in the thermite composition disclosed by Phatak as recited in the thermite composition taught by Lowry since it amount to nothing more than combining known components suitable for a composition, as it has been taught "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results... [W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious." KSR at 1395-66 (citing Sakraida v. AG Pro. Inc., 425 U.S. 273, 282 (1976)). Furthermore, Lowry teaches wherein the CaO in thermite acts as a dampening agent to reduce the reaction temperature or reaction speed ([0048]).
Further regarding claims 8-10, the combination of Phatak and Lowry teaches wherein the CaO is present in an amount “between 5 and 75% by mass ([0048]). Although silent to wherein the CaO is present in an amount “up to 30% by weight of the composition,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a CaO amount as claimed insofar as because 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)
Furthermore, 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 CaO amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed CaO amount. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Further regarding claims 8-10, the combination of Phatak and Lowry teaches a thermite composition comprising CaO, wherein the CaO acts as a dampening agent ([0048]). Inasmuch as Lowry teaches the same composition as claimed, i.e., a CaO in thermite, it would naturally act in the same manner as claimed, i.e., act as a “gas adsorbing agent.” If there is any difference between the composition of Phatak and Lowry and that of the instant claims, the difference would have been minor and obvious insofar as because 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. See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934). With respect to depending claim 11, the combination of Phatak and Lowry teaches further comprising a barrier formation additive, wherein the barrier formation additive may be the metal aluminum ([0006]). With regard to the remaining materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as a barrier formation additive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Willberg et al. (US 2014/0262249) teaches a chemical reaction heat source composition comprising an exothermic redox mixture for use in downhole operations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AVI T. SKAIST whose telephone number is (571)272-9348. The examiner can normally be reached M-F 9:30-6.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674
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