CTNF 18/756,356 CTNF 90271 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. Priority This application is a DIV of 17/647,428 01/07/2022 PAT 12065608. Election/Restrictions 08-25-02 Applicant’s election of species "units of a first monomer type and a second monomer type," namely claim 16, for a monomer type, and "2-acrylamido-2-methylpropane. sulfonic acid" and "lauryl acrylate" as the required monomer and "a first side and a second of the graphene particle comprise the grafted polymer," namely claim 14, as the required number of grafted side in the reply filed on 06/02/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 11-20 are pending, claims 13, 15, 17 are directed to non-elected species. Accordingly, claim 13, 15, 17 are withdrawn from further consideration by Examiner, 37 CFR 1.142(b), as being drawn to non-election invention/species. Claims 11-12, 14, 16, 18-20 are examined in this Office action. Claim Rejections - 35 USC § 103 07-20-aia AIA The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-21-aia AIA Claim s 11-12, 14, 16, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tour (US 2012/0129736) in view of Jung (US 2019/0185740) . NOTE: William Marsh (WO 2009/089391) is incorporated by reference in Tour (para [0072]). All documents that are directly or indirectly incorporated by reference in Tour are treated as part of the specification of Tour. M.P.E.P. 2163.07(b). Regarding claims 11-12, 16 , Tour discloses oil based non-aqueous drilling fluid comprising polymer grafted graphene particle, wherein polymer grafted graphene particle prepared by chemically converting, e.g. by attaching, or grafting, a plurality of polymer chains to the graphene particle and oil as non-aqueous liquid, and the polymer is polymerized from monomer such as acrylic acid or PEG-PEI block copolymer, wherein the oil based non-aqueous drilling fluid used for improved downhole production ([0059], [0061], [0067], [0072]), such drilling fluid used for improved downhole production implicitly teaches the method of drilling and/or the method of using such composition in drilling operation by introducing the drilling fluid into downhole or wellbore. Tour further discloses (para [0072]) that the graphene composition is present in a concentration range of about 0.01-10% by volume ([0031] of William Marsh). Instant claim 1 require 0.01 ppb to 10 ppb of graphene is 0.00285 to 2.85% by volume, or claim 18 require 1 ppb to 10 ppb of graphene is 0.285 to 2.85% by volume (wt approx. to vol). Thus, the concentration range of about 0.01-10% by volume from prior art overlap claimed range of 0.00285 to 2.85% by volume or encompasses 0.285 to 2.85% by volume. A prima facie case of obviousness exists for the method, where Tour teaches graphene about 0.01-10% by volume, overlapping the requirement of claim 1 or encompassing the requirement of claim 18. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). Tour is silent about circulating the oil-based drilling fluid during drilling operation. However, Jung discloses oil-based drilling fluid during drilling operation, wherein the drilling fluid comprises a (co)polymer of 2-acrylamido-2-methylpropane sulfonic acid, acrylic acid, and lauryl acrylate, the drilling fluid is circulated in wellbore operations to remove debris from a wellbore (para [0009], [0216]-[0219]). It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify the method of Tour by circulating the drilling fluid in the wellbore, as taught by Jung. The rationale to do so would have been motivation provided by of Jung that to do so would help to remove debris from a wellbore. Regarding claim 12 the elected copolymer species of monomers 2-acrylamido-2-methylpropane sulfonic acid, and lauryl acrylate , Jung discloses oil-based drilling fluid during drilling operation, wherein the drilling fluid comprises a (co)polymer of 2-acrylamido-2-methylpropane sulfonic acid, acrylic acid, and lauryl acrylate, the drilling fluid is circulated in wellbore operations to remove debris from a wellbore and/or filtration control (para [0009], [0216]-[0219], [0221]). Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationale (B). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the polyacrylic acid exemplified by Tour for another known polymer used for wellbore drilling and/or filtration control, including the acrylamide- AMPS-lauryl acrylate (co)polymer as disclosed by Jung, since they are taught as functional equivalents in the art. Regarding claim 14 , Tour discloses the use of chemically converted graphene compositions prepared by attaching, or grafting, a plurality of polymer chains to said graphene compositions (para [0067]). This teaching embraces the instant claim as this generic teaching would embrace grafting a polymer to one or both sides of the graphene particle. Regarding claims 19-20 , since the oil-based drilling fluid and its method of use is obvious over prior art, the properties such as improvement in the yield point and the improvement in low shear yield point would necessarily be the same as claimed. If there is any difference between the product of Tour and the product of the instant claims, the difference would have been minor and obvious. “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). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST). 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, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766 Application/Control Number: 18/756,356 Page 2 Art Unit: 1766 Application/Control Number: 18/756,356 Page 3 Art Unit: 1766 Application/Control Number: 18/756,356 Page 4 Art Unit: 1766 Application/Control Number: 18/756,356 Page 5 Art Unit: 1766 Application/Control Number: 18/756,356 Page 6 Art Unit: 1766 Application/Control Number: 18/756,356 Page 7 Art Unit: 1766
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