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 Arguments
Applicant’s arguments, filed on 12/22/2025, with respect to objection to the drawings have been fully considered and are persuasive. The objection has been withdrawn.
Applicant’s arguments, filed on 12/22/2025, with respect to rejection of claims 4 and 12 under 35 USC 112 1st and 2nd have been fully considered and are persuasive. The rejection of claims has been withdrawn.
Applicant’s arguments, filed on 12/22/2025, with respect to the rejection of Claims 1-8 and 10-18, and 20 are rejected under 35 U.S.C. 102 (a) (1) as being
anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sherman et al.(US 2020/0123873 A1)have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Claim Rejections - 35 USC § 102
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.
Claims 1-20 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 Khatiwada et al. (US 2016/0369083 A1) (“Khatiwada” herein).
Claim 1.
Khatiwada discloses a method for removing a downhole tool comprising:
contacting a downhole tool with a fluid has pH of greater than 7. (i.e. alkaline fluid) , wherein the downhole tool comprises a composite of a polymer matrix reinforced with degradable glass fibers, wherein the degradable glass fibers are degradable at a pH of greater than 7 and degrading the degradable glass fibers using the fluid having a pH of greater than 7. [0010-0018, 0031-0033]
Since Khatiwada discloses the same downhole tool comprising a composite a polymer matrix reinforced with degradable glass fibers, wherein the degradable glass fibers are degradable, it would be a downhole tool that would degrade with a pH greater than 7.
"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 Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Murphree (US 2013/0292123 A1, used as evidence, recites on [0081] The degradable balls described herein may be degradable by aqueous based fluids under acidic, neutral, or basic pH environments, depending on the chemical composition of the degradable balls. By "acidic pH", it is meant that the environment surrounding the degradable balls (e.g., the treating fluid) has a pH less than about 7, while by "neutral pH" it is meant that the environment surrounding the degradable balls has a pH of about 7, and "basic pH" (i.e. alkaline) means a pH of above about 7. Accordingly, in the methods described herein, degrading a degradable ball may involve contacting the degradable ball with a degrading fluid (e.g., an appropriately acidic, neutral, or basic aqueous fluid).
Or a different interpretation of Khatiwada
Khatiwada discloses a method for removing a downhole tool comprising:
contacting a downhole tool with a fluid has pH of greater than 7. (i.e. alkaline fluid) , wherein the downhole tool comprises a composite of a polymer matrix reinforced with degradable glass fibers, wherein the degradable glass fibers are degradable at a pH of greater than 7 and degrading the degradable glass fibers using the fluid having a pH of greater than 7. [0010-0018, 0031-0033]
Since Khatiwada discloses the same downhole tool comprising a composite a polymer matrix reinforced with degradable glass fibers, wherein the degradable glass fibers are degradable, it would be a downhole tool that would degrade with a pH greater than 7.
"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 Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Murphree (US 2013/0292123 A1, used as evidence, recites on [0081] The degradable balls described herein may be degradable by aqueous based fluids under acidic, neutral, or basic pH environments, depending on the chemical composition of the degradable balls. By "acidic pH", it is meant that the environment surrounding the degradable balls (e.g., the treating fluid) has a pH less than about 7, while by "neutral pH" it is meant that the environment surrounding the degradable balls has a pH of about 7, and "basic pH" (i.e. alkaline) means a pH of above about 7. Accordingly, in the methods described herein, degrading a degradable ball may involve contacting the degradable ball with a degrading fluid (e.g., an appropriately acidic, neutral, or basic aqueous fluid).
Khatiwada does not explicitly disclose the terminology as recited within the claimed invention: a composite of a polymer matrix reinforced with degradable glass fibers. However, Khatiwada discloses that For example, applicants found that by forming a polymer composite containing dissolvable glass such as dissolvable glass fiber, the tensile strength of the polymer component can be greatly increased. ([0011]) and ] Dissolvable glass can be supplied in various forms, for example, continuous glass fiber ([0015])r; which serves as the a polymer matrix reinforced with degradable glass fibers. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
Claim 2.
Khatiwada discloses the method of claim 1 wherein the fluid having a pH of greater than 7 is pumped and contacts the downhole tool. [0011, 0032-0033, 0037] .
Khatiwada however does not explicitly disclose the fluid pumped through a wellhead. It would have been obvious to a person of ordinary skill in the art and it is well-known in the art of treating a subterranean formation that a wellhead is used as part of the pumping system in order to inject a fluid in the subterranean formation.
Claim 3.
Khatiwada discloses the method of claim 1 wherein the downhole tool is disposed in a wellbore and/or a borehole and the fluid having a pH of greater than 7 is generated within the wellbore and/or the borehole and contacts the downhole tool. [0011, 0032-0033]
Claims 4 and 14
Khatiwada discloses the method of claims 1 and 11 wherein the fluid comprises a hydroxide releasing agent selected from the group consisting of sodium hydroxide, potassium hydroxide, Mg(OH)2 Ca(OH)2. CaCO3. MgO CaO ZnO, NiO. CuO, Al203 borax sodium pentaborate, sodium tetraborate, and combinations thereof . [0011, 0031-0033]
Claims 5 and 15
Khatiwada discloses the method of claims 1 and 11 wherein the polymer matrix comprises at least one polymer selected from the group consisting of a thermoset polymer, a thermoplastic polymer, aromatic copolyester thermoset, an aliphatic polyester, and combinations thereof. [0021-0028, 0031-0033]
Claims 6 and 16
Khatiwada discloses the method of claim 1 wherein the polymer matrix comprises at least thermoplastic polymer selected from the group consisting of acrylonitrile butadiene styrene (ABS), nylon, acrylic, polyetherimide (PEI), polyether ether ketone (PEEK), polyetherketoneketone (PEKK), and combinations thereof. [0021-0028, 0031-0033]
Claims 7 and 17
Khatiwada discloses the method of claims 1 and 11 wherein the polymer matrix comprises at least one aliphatic polyester selected from the group consisting of poly(lactic acid) (PLA), poly(ε-caprolactone), poly(glycolic acid) (PGA), poly(lactic-co-glycolic acid), poly(hydroxyl ester ether), poly(hydroxybutyrate), poly(anhydride), polycarbonate, poly(amino acid), poly(ethylene oxide), poly(phosphazene), polyether ester, polyester amide, polyamides, sulfonated polyesters, poly(ethylene adipate), polyhydroxyalkanoate, poly(ethylene terephtalate), poly(butylene terephthalate), poly(trimethylene terephthalate), poly(ethylene naphthalate), and combinations thereof. . [0021-0028, 0031-0033]
Claims 8 and 18
Khatiwada discloses the method of claims 1 and 11, wherein the downhole tool comprises at least one tool selected from the group consisting of a frac plug, a frac sleeve, a frac ball, a ball seat, a bridge plug, an inflow control device (ICD) plug, a wiper plug, a packer, a mandrel, a gauge mandrel, a pressure housing, a tubing, a piping, a valve, a perforating gun assembly, a perforation charge carrier, and combinations thereof. [0036-0037]
Claims 9 & 19
Khatiwada discloses the method of claims 1 and 11, wherein the degradable glass fibers comprise at least one glass selected from the group consisting of C glass, D glass, E glass, E glass with boron, E glass without boron, ECR glass, R glass, S2 glass, and combinations thereof. [0014]
Claims 10 and 20
Khatiwada discloses the method of claims 1 and 11, wherein the tool further comprises an additional fiber selected from the group consisting of carbon fiber, aramid fiber, boron based fibers, basalt fibers, metal fibers, polyethylene fibers, polypropylene fibers, poly(p-phenylene-2,6-benzobisoxazole) fibers, and combinations thereof. [0031-0033]
Claim 11.
Khatiwada discloses a method for removing a downhole tool comprising:
contacting a downhole tool with an aqueous fluid, wherein the downhole tool comprises a composite of a polymer matrix reinforced with degradable glass fibers, wherein the degradable glass fibers are degradable at a pH of greater than 7;
generating a fluid having a pH of greater than 7 within the downhole tool; and
degrading the degradable glass fibers using the fluid having a pH of greater than 7. (i.e. alkaline fluid), [0010-0018, 0031-0033]
Since Khatiwada discloses the same downhole tool comprising a composite a polymer matrix reinforced with degradable glass fibers and other additives such as Ca(OH)2 or Mg(OH) or MgO, it would be a downhole tool that would degrade, generate a fluid having a pH of greater than 7 within the downhole tool, and degrade the degradable glass fibers using the fluid having a pH of greater than 7.
"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 Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Murphree (US 2013/0292123 A1, used as evidence, recites on [0081] The degradable balls described herein may be degradable by aqueous based fluids under acidic, neutral, or basic pH environments, depending on the chemical composition of the degradable balls. By "acidic pH", it is meant that the environment surrounding the degradable balls (e.g., the treating fluid) has a pH less than about 7, while by "neutral pH" it is meant that the environment surrounding the degradable balls has a pH of about 7, and "basic pH" (i.e. alkaline) means a pH of above about 7. Accordingly, in the methods described herein, degrading a degradable ball may involve contacting the degradable ball with a degrading fluid (e.g., an appropriately acidic, neutral, or basic aqueous fluid).
Or a different interpretation of Khatiwada
Khatiwada discloses a method for removing a downhole tool comprising:
contacting a downhole tool with an aqueous fluid, wherein the downhole tool comprises a composite of a polymer matrix reinforced with degradable glass fibers, wherein the degradable glass fibers are degradable at a pH of greater than 7;
generating a fluid having a pH of greater than 7 within the downhole tool; and
degrading the degradable glass fibers using the fluid having a pH of greater than 7. (i.e. alkaline fluid), [0010-0018, 0031-0033]
Since Khatiwada discloses the same downhole tool comprising a composite a polymer matrix reinforced with degradable glass fibers and other additives such as Ca(OH)2 or Mg(OH) or MgO, it would be a downhole tool that would degrade, generate a fluid having a pH of greater than 7 within the downhole tool, and degrade the degradable glass fibers using the fluid having a pH of greater than 7.
"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 Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Murphree (US 2013/0292123 A1, used as evidence, recites on [0081] The degradable balls described herein may be degradable by aqueous based fluids under acidic, neutral, or basic pH environments, depending on the chemical composition of the degradable balls. By "acidic pH", it is meant that the environment surrounding the degradable balls (e.g., the treating fluid) has a pH less than about 7, while by "neutral pH" it is meant that the environment surrounding the degradable balls has a pH of about 7, and "basic pH" (i.e. alkaline) means a pH of above about 7. Accordingly, in the methods described herein, degrading a degradable ball may involve contacting the degradable ball with a degrading fluid (e.g., an appropriately acidic, neutral, or basic aqueous fluid).
Khatiwada does not explicitly disclose the terminology as recited within the claimed invention: a composite of a polymer matrix reinforced with degradable glass fibers and generating a fluid having a pH of greater than 7 within the downhole tool However, Khatiwada discloses that For example, applicants found that by forming a polymer composite containing dissolvable glass such as dissolvable glass fiber, the tensile strength of the polymer component can be greatly increased. ([0011]) and ] Dissolvable glass can be supplied in various forms, for example, continuous glass fiber ([0015]); and Moreover, glass fibers having smaller diameters also have a higher disintegration rate. Adjusting the temperature, the pressure, and the pH of the selective fluid can further tailor the disintegration rate of the polymer composite or the articles formed therefrom. The composites dissolve faster at higher temperatures, higher pressures, and higher pH values. Using different degradable polymers can also change the dissolution rate. Additives can be selected to adjust the dissolution rate. For example, the presence of CaO, MgO, Mg, Zn, Ca(OH).sub.2, Mg(OH).sub.2, ([0033])which serves as the a polymer matrix reinforced with degradable glass fibers and generating a fluid having a pH of greater than 7 within the downhole tool. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
Claim 12.
Khatiwada discloses the method of claim 11 wherein generating the fluid having a pH of greater than 7 comprises contacting the aqueous fluid with a hydroxide releasing agent selected form the group consisting of sodium hydroxide, potassium hydroxide. Mg(OH)2 Ca(OH)₂ hydroxide, CaCO₃, MgO, CaO, ZnO, NiO, CuO, Al20₃, borax, sodium pentaborate, sodium tetraborate, and combinations thereof. [0011, 0031-0033]
Claim 13.
Khatiwada discloses the method of claim 11 wherein the polymer matrix comprises hydroxide releasing agent and wherein the fluid having a pH of greater than 7 is generated within the polymer matrix. [0011,0031-0033]
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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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, Doug Hutton can be reached at 571-272-4137. 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.
/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 03/06/2026