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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Applicant's submission filed on 04/17/2026 has been entered.
Response to Arguments
Applicant’s arguments, filed on 04/17/2026 with respect to the rejection(s) of claim(s) Claims 1-20 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) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below.
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).
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.
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amended claim recites “a fluid path”. The specification recites “¶ [0026] For removal of the downhole tool 208 from the wellbore 202, the downhole tool 208 may be subjected to a high pH fluid, as mentioned, to dissolve the degradable glass fibers of downhole tool 208 or dissolve the polymer matrix of the downhole tool 208. The high pH dissolution fluid can include a pH greater than 7 (e.g., pH of at least 10, at least 11, at least 12, or at least 13) can be introduced into the wellbore 202 by pumping from the surface 212 or by forming the high pH dissolution fluid in the wellbore 202. The high pH dissolution fluid can be formed downhole in the wellbore 202 by reacting the existing downhole fluid with a solid precursor (e.g., solid sodium hydroxide, solid potassium hydroxide, solid calcium hydroxide, etc.) to generate a high pH fluid.” Therefore, the new amended claim contain limitation not recited in the specification failing to comply with the written description requirement.
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.
Claims 1 and 11 are 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. The claims contain limitation not recited in the disclosures making the claim indefinite.
All the claims dependent of claims 1 and 11 are indefinite.
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 1-5, 7-8, 11-15, 17-18 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 of Khatiwada (US 20217/0114480 A1) (“480 herein).
Claim 1.
‘480 discloses, as best understood based on the indefiniteness above, a method for removing a downhole tool comprising:
contacting a downhole tool having a fluid path therein with a fluid having a pH of greater than 7. (i.e. alkaline fluid) [0030] 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. [0006-0008, 0016-0031]
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 ‘480
‘480 discloses, as best understood based on the indefiniteness above, a method for removing a downhole tool comprising:
contacting a downhole tool having a fluid path therein with a fluid having a pH of greater than 7. (i.e. alkaline fluid) [0030] 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. [0006-0008, 0016-0031]
‘480 does not explicitly disclose the terminology as recited within the claimed invention: a fluid path therein with a fluid having a pH of greater than 7. However, ‘480 discloses the commingled glass composite 208a is exposed to certain conditions, such as hot water, brine, etc. that are present in a downhole environment. In an exemplary embodiment, the thermoplastic matrix 202a is formed from degradable materials in response to a downhole environment. In certain embodiments, the glass reinforcement 204a is also degradable in response to a downhole environment. In certain embodiments wherein the glass reinforcement 204a is degradable, certain glass fibers can release sodium hydroxide, potassium hydroxide, etc. upon exposure to the downhole environment to accelerate the degradation of the thermoplastic matrix 202a. Advantageously, downhole components 116a, 116b, 116c can be utilized to perform a desired task and then degrade after a predetermined time in the downhole environment, facilitating high strength, high pressure downhole components 116a, 116b, 116c that can be interventionless. ([0030]) and which serves a fluid path therein with a fluid having a pH of greater than 7. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
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).
Claim 2.
‘480 discloses the method of claim 1 wherein the fluid having a pH of greater than 7 is and contacts the downhole tool. [0016-0031] .
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 in order for the downhole to degrade, an aqueous solution may be pumped through the wellhead used as part of the pumping system in order to inject a fluid in the subterranean formation and degrade the downhole tool.
Claim 3 and 12
‘480 discloses the method of claims 1 and 11 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. [0030-0031]
Claims 4, 13, and 14
‘480 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, AI203 borax sodium pentaborate, sodium tetraborate, and combinations thereof [0030]
Claims 5 and 15
‘480 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. [0019-0020]
Claims 7 and 17
‘480 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.
[00219-0020]
Claims 8 and 18
‘480 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. [0033]
Claim 11.
‘480 discloses, as best understood based on the indefiniteness above, a method for removing a downhole tool comprising:
contacting a downhole tool having a fluid path therein 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. [0006-0008, 0016-0031]
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 ‘480
‘480 discloses, as best understood based on the indefiniteness above, a method for removing a downhole tool comprising:
contacting a downhole tool having a fluid path therein 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]
‘480 does not explicitly disclose the terminology as recited within the claimed invention: a fluid path therein with a fluid having a pH of greater than 7. However, ‘480 discloses the commingled glass composite 208a is exposed to certain conditions, such as hot water, brine, etc. that are present in a downhole environment. In an exemplary embodiment, the thermoplastic matrix 202a is formed from degradable materials in response to a downhole environment. In certain embodiments, the glass reinforcement 204a is also degradable in response to a downhole environment. In certain embodiments wherein the glass reinforcement 204a is degradable, certain glass fibers can release sodium hydroxide, potassium hydroxide, etc. upon exposure to the downhole environment to accelerate the degradation of the thermoplastic matrix 202a. Advantageously, downhole components 116a, 116b, 116c can be utilized to perform a desired task and then degrade after a predetermined time in the downhole environment, facilitating high strength, high pressure downhole components 116a, 116b, 116c that can be interventionless. ([0030]) and which serves a fluid path therein with a fluid having a pH of greater than 7. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
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).
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Khatiwada et al. (US 2016/0369083A1) ("Khatiwada" herein – cited previously) and further in view of Jiang (US 2022/0268119 A1) (“Jiang” herein).
Claim 1.
Khatiwada discloses, as best understood based on the indefiniteness above, 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]
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
Jiang teaches the above limitation (See paragraphs 0077, 0042 → Jiang teaches this limitation in that Some embodiments of the disclosure relate to the downhole tool described herein including one or more degradable/dissolvable components comprised of inorganic hydrolysable compound-containing polymers. The inorganic hydrolysable compound-containing polymers comprise dispersive inorganic hydrolysable compounds and polymer matrix. Optionally, the composites comprise other second phases—reinforcements (fillers). The polymers comprise no more than 5 wt. % of the inorganic hydrolysable compounds and the other second phases. The inorganic hydrolysable compounds have various shapes and sizes such as spherical, blocky, platelet-like, needle-like, etc., and in millimeters, micrometers, and even nanometers. The other second phases may be carbon or glass fibers, etc. The polymers are selected from the group consisting of thermoset plastics, thermoplastic polymers, elastomers including rubber, and any combination thereof. The thermoset polymers include, but are not limited to, polyester resin, duroplast, epoxy resin, silicone resin, polyurea/polyurethane, and phenolic resin. The thermoplastic polymers include, but are not limited to, polylactic acid, polycarbonate, polyether sulfone, polyoxymethylene, polyetheretherketone, and polyetherimide. The elastomers include, but are not limited to, natural rubber, silicone elastomer, fluoroelastomer, polyurethane elastomer, nitrile rubber, and polyisoprene. n oil and natural gas exploration and production, a downhole tool is referred as to a tool used in developing and building a wellbore in subterraneous formation. Various downhole tools are developed for performing various functions. Some downhole tools or their components need to be retrieved from a wellbore when they complete their functions, so as to leave a path for subsequent operations or production fluid flow. For example, in hydraulic fracking, after a downhole tool or component service function is complete, it must be removed or disposed of in order to recover the original size of fluid pathway for use, including hydrocarbon production, etc. Disposal of the downhole tool or component has conventionally been done by milling or drilling the downhole tool or component out of the wellbore. This is time consuming and expensive operations. In order to has been proposed.) for the purpose of eliminating the need for milling or drilling operations, the removal of a downhole tool or component from the wellbore by degradation/dissolution of degradable/dissolvable materials. [0042]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Khatiwada with the above limitation, as taught by Jiang in order to eliminate eliminating the need for milling or drilling operations, the removal of a downhole tool or component from the wellbore by degradation/dissolution of degradable/dissolvable materials.
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, as best understood based on the indefiniteness above, 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 polymer matrix reinforced with degradable glass fibers. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
Jiang teaches the above limitation (See paragraphs 0077, 0042 → Jiang teaches this limitation in that Some embodiments of the disclosure relate to the downhole tool described herein including one or more degradable/dissolvable components comprised of inorganic hydrolysable compound-containing polymers. The inorganic hydrolysable compound-containing polymers comprise dispersive inorganic hydrolysable compounds and polymer matrix. Optionally, the composites comprise other second phases—reinforcements (fillers). The polymers comprise no more than 5 wt. % of the inorganic hydrolysable compounds and the other second phases. The inorganic hydrolysable compounds have various shapes and sizes such as spherical, blocky, platelet-like, needle-like, etc., and in millimeters, micrometers, and even nanometers. The other second phases may be carbon or glass fibers, etc. The polymers are selected from the group consisting of thermoset plastics, thermoplastic polymers, elastomers including rubber, and any combination thereof. The thermoset polymers include, but are not limited to, polyester resin, duroplast, epoxy resin, silicone resin, polyurea/polyurethane, and phenolic resin. The thermoplastic polymers include, but are not limited to, polylactic acid, polycarbonate, polyether sulfone, polyoxymethylene, polyetheretherketone, and polyetherimide. The elastomers include, but are not limited to, natural rubber, silicone elastomer, fluoroelastomer, polyurethane elastomer, nitrile rubber, and polyisoprene. n oil and natural gas exploration and production, a downhole tool is referred as to a tool used in developing and building a wellbore in subterraneous formation. Various downhole tools are developed for performing various functions. Some downhole tools or their components need to be retrieved from a wellbore when they complete their functions, so as to leave a path for subsequent operations or production fluid flow. For example, in hydraulic fracking, after a downhole tool or component service function is complete, it must be removed or disposed of in order to recover the original size of fluid pathway for use, including hydrocarbon production, etc. Disposal of the downhole tool or component has conventionally been done by milling or drilling the downhole tool or component out of the wellbore. This is time consuming and expensive operations. In order to has been proposed.) for the purpose of eliminating the need for milling or drilling operations, the removal of a downhole tool or component from the wellbore by degradation/dissolution of degradable/dissolvable materials. [0042]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Khatiwada with the above limitation, as taught by Jiang in order to eliminate eliminating the need for milling or drilling operations, the removal of a downhole tool or component from the wellbore by degradation/dissolution of degradable/dissolvable materials.
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, AI203 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, as best understood based on the indefiniteness above, 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]
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
Jiang teaches the above limitation (See paragraphs 0077, 0042 → Jiang teaches this limitation in that Some embodiments of the disclosure relate to the downhole tool described herein including one or more degradable/dissolvable components comprised of inorganic hydrolysable compound-containing polymers. The inorganic hydrolysable compound-containing polymers comprise dispersive inorganic hydrolysable compounds and polymer matrix. Optionally, the composites comprise other second phases—reinforcements (fillers). The polymers comprise no more than 5 wt. % of the inorganic hydrolysable compounds and the other second phases. The inorganic hydrolysable compounds have various shapes and sizes such as spherical, blocky, platelet-like, needle-like, etc., and in millimeters, micrometers, and even nanometers. The other second phases may be carbon or glass fibers, etc. The polymers are selected from the group consisting of thermoset plastics, thermoplastic polymers, elastomers including rubber, and any combination thereof. The thermoset polymers include, but are not limited to, polyester resin, duroplast, epoxy resin, silicone resin, polyurea/polyurethane, and phenolic resin. The thermoplastic polymers include, but are not limited to, polylactic acid, polycarbonate, polyether sulfone, polyoxymethylene, polyetheretherketone, and polyetherimide. The elastomers include, but are not limited to, natural rubber, silicone elastomer, fluoroelastomer, polyurethane elastomer, nitrile rubber, and polyisoprene. n oil and natural gas exploration and production, a downhole tool is referred as to a tool used in developing and building a wellbore in subterraneous formation. Various downhole tools are developed for performing various functions. Some downhole tools or their components need to be retrieved from a wellbore when they complete their functions, so as to leave a path for subsequent operations or production fluid flow. For example, in hydraulic fracking, after a downhole tool or component service function is complete, it must be removed or disposed of in order to recover the original size of fluid pathway for use, including hydrocarbon production, etc. Disposal of the downhole tool or component has conventionally been done by milling or drilling the downhole tool or component out of the wellbore. This is time consuming and expensive operations. In order to has been proposed.) for the purpose of eliminating the need for milling or drilling operations, the removal of a downhole tool or component from the wellbore by degradation/dissolution of degradable/dissolvable materials. [0042]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Khatiwada with the above limitation, as taught by Jiang in order to eliminate eliminating the need for milling or drilling operations, the removal of a downhole tool or component from the wellbore by degradation/dissolution of degradable/dissolvable materials.
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, as best understood based on the indefiniteness above, 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 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.
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
Jiang teaches the above limitation (See paragraphs 0077, 0042 → Jiang teaches this limitation in that Some embodiments of the disclosure relate to the downhole tool described herein including one or more degradable/dissolvable components comprised of inorganic hydrolysable compound-containing polymers. The inorganic hydrolysable compound-containing polymers comprise dispersive inorganic hydrolysable compounds and polymer matrix. Optionally, the composites comprise other second phases—reinforcements (fillers). The polymers comprise no more than 5 wt. % of the inorganic hydrolysable compounds and the other second phases. The inorganic hydrolysable compounds have various shapes and sizes such as spherical, blocky, platelet-like, needle-like, etc., and in millimeters, micrometers, and even nanometers. The other second phases may be carbon or glass fibers, etc. The polymers are selected from the group consisting of thermoset plastics, thermoplastic polymers, elastomers including rubber, and any combination thereof. The thermoset polymers include, but are not limited to, polyester resin, duroplast, epoxy resin, silicone resin, polyurea/polyurethane, and phenolic resin. The thermoplastic polymers include, but are not limited to, polylactic acid, polycarbonate, polyether sulfone, polyoxymethylene, polyetheretherketone, and polyetherimide. The elastomers include, but are not limited to, natural rubber, silicone elastomer, fluoroelastomer, polyurethane elastomer, nitrile rubber, and polyisoprene. n oil and natural gas exploration and production, a downhole tool is referred as to a tool used in developing and building a wellbore in subterraneous formation. Various downhole tools are developed for performing various functions. Some downhole tools or their components need to be retrieved from a wellbore when they complete their functions, so as to leave a path for subsequent operations or production fluid flow. For example, in hydraulic fracking, after a downhole tool or component service function is complete, it must be removed or disposed of in order to recover the original size of fluid pathway for use, including hydrocarbon production, etc. Disposal of the downhole tool or component has conventionally been done by milling or drilling the downhole tool or component out of the wellbore. This is time consuming and expensive operations. In order to has been proposed.) for the purpose of eliminating the need for milling or drilling operations, the removal of a downhole tool or component from the wellbore by degradation/dissolution of degradable/dissolvable materials. [0042]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Khatiwada with the above limitation, as taught by Jiang in order to eliminate eliminating the need for milling or drilling operations, the removal of a downhole tool or component from the wellbore by degradation/dissolution of degradable/dissolvable materials.
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, AI20₃, 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]
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Khatiwada et al. (US 2016/0369083A1) ("Khatiwada" herein – cited previously) and further in view of Khatiwada (US 20217/0114480 A1) (“480 herein).
Claim 1.
Khatiwada discloses, as best understood based on the indefiniteness above, 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]
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
‘480 teaches the above limitation (See paragraphs 0030 → ‘480 teaches this limitation in that the commingled glass composite 208a is exposed to certain conditions, such as hot water, brine, etc. that are present in a downhole environment. In an exemplary embodiment, the thermoplastic matrix 202a is formed from degradable materials in response to a downhole environment. In certain embodiments, the glass reinforcement 204a is also degradable in response to a downhole environment. In certain embodiments wherein the glass reinforcement 204a is degradable, certain glass fibers can release sodium hydroxide, potassium hydroxide, etc. upon exposure to the downhole environment to accelerate the degradation of the thermoplastic matrix 202a. Advantageously, downhole components 116a, 116b, 116c can be utilized to perform a desired task and then degrade after a predetermined time in the downhole environment, facilitating high strength, high pressure downhole components 116a, 116b, 116c that can be intervention less.) for the purpose of accelerating the degradation of the thermoplastic matrix the downhole environment.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Khatiwada with the above limitation, as taught by ‘480 in order to accelerate the degradation of the thermoplastic matrix in the downhole environment. [0030]
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, as best understood based on the indefiniteness above, 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 polymer matrix reinforced with degradable glass fibers. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
‘480 teaches the above limitation (See paragraphs 0030 → ‘480 teaches this limitation in that the commingled glass composite 208a is exposed to certain conditions, such as hot water, brine, etc. that are present in a downhole environment. In an exemplary embodiment, the thermoplastic matrix 202a is formed from degradable materials in response to a downhole environment. In certain embodiments, the glass reinforcement 204a is also degradable in response to a downhole environment. In certain embodiments wherein the glass reinforcement 204a is degradable, certain glass fibers can release sodium hydroxide, potassium hydroxide, etc. upon exposure to the downhole environment to accelerate the degradation of the thermoplastic matrix 202a. Advantageously, downhole components 116a, 116b, 116c can be utilized to perform a desired task and then degrade after a predetermined time in the downhole environment, facilitating high strength, high pressure downhole components 116a, 116b, 116c that can be intervention less.) for the purpose of accelerating the degradation of the thermoplastic matrix the downhole environment.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Khatiwada with the above limitation, as taught by ‘480 in order to accelerate the degradation of the thermoplastic matrix in the downhole environment. [0030]
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, AI203 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, as best understood based on the indefiniteness above, 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]
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
‘480 teaches the above limitation (See paragraphs 0030 → ‘480 teaches this limitation in that the commingled glass composite 208a is exposed to certain conditions, such as hot water, brine, etc. that are present in a downhole environment. In an exemplary embodiment, the thermoplastic matrix 202a is formed from degradable materials in response to a downhole environment. In certain embodiments, the glass reinforcement 204a is also degradable in response to a downhole environment. In certain embodiments wherein the glass reinforcement 204a is degradable, certain glass fibers can release sodium hydroxide, potassium hydroxide, etc. upon exposure to the downhole environment to accelerate the degradation of the thermoplastic matrix 202a. Advantageously, downhole components 116a, 116b, 116c can be utilized to perform a desired task and then degrade after a predetermined time in the downhole environment, facilitating high strength, high pressure downhole components 116a, 116b, 116c that can be intervention less.) for the purpose of accelerating the degradation of the thermoplastic matrix the downhole environment.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Khatiwada with the above limitation, as taught by ‘480 in order to accelerate the degradation of the thermoplastic matrix in the downhole environment. [0030]
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, as best understood based on the indefiniteness above, 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 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.
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
Khatiwada however does not explicitly disclose contacting a downhole tool having a fluid path therein with a fluid.
‘480 teaches the above limitation (See paragraphs 0030 → ‘480 teaches this limitation in that the commingled glass composite 208a is exposed to certain conditions, such as hot water, brine, etc. that are present in a downhole environment. In an exemplary embodiment, the thermoplastic matrix 202a is formed from degradable materials in response to a downhole environment. In certain embodiments, the glass reinforcement 204a is also degradable in response to a downhole environment. In certain embodiments wherein the glass reinforcement 204a is degradable, certain glass fibers can release sodium hydroxide, potassium hydroxide, etc. upon exposure to the downhole environment to accelerate the degradation of the thermoplastic matrix 202a. Advantageously, downhole components 116a, 116b, 116c can be utilized to perform a desired task and then degrade after a predetermined time in the downhole environment, facilitating high strength, high pressure downhole components 116a, 116b, 116c that can be intervention less.) for the purpose of accelerating the degradation of the thermoplastic matrix the downhole environment.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Khatiwada with the above limitation, as taught by ‘480 in order to accelerate the degradation of the thermoplastic matrix in the downhole environment. [0030]
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, AI20₃, 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]
Claims 6, 9, 10 , 16, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over ‘480 as applied to claims 1 and 11, and further in view of Khatiwada.
Claims 6 and 16
‘480 discloses the method of claim 1. ‘480 however does not explicitly disclose 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.
Khatiwada teaches the above limitation (See paragraphs 0033 & 0014 → Khatiwada teaches this limitation in that 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, a formate of sodium or potassium, an octoate of Zn or Mn or Cu or Co, a naphthenate of Zn or Mn or Cu or Co can increase the dissolution rate of the polymer composites whereas the presence of aramid fibers or nylon fibers can reduce the dissolution rate of the polymer composites. The dissolvable glass comprises about 55 to about 80 wt. % of SiO.sub.2, 0 to about 35 wt. % of Na.sub.2O, 0 to about 35 wt. % of K.sub.2O, 0 to about 20 wt. % of CaO, and 0 to about 10 wt. % of MgO, provided that the sum of the weights of Na.sub.2O and K.sub.2O is about 20 wt. % to about 40 wt. %, about 20 wt. % to about 35 wt. %, or about 22 wt. % to about 33 wt. %, wherein each weight percent is based on the total weight of the dissolvable glass. In an embodiment, the dissolvable glass comprises at least one of sodium silicate or potassium silicate. Preferably the dissolvable glass comprises sodium silicate having a formula of Na.sub.2O.Math.SiO.sub.2, wherein the weight percent of SiO.sub.2 relative to Na.sub.2O is about 3.22: 1 to about 1:1, about 3.22:1 to about 2.5:1, specifically about 2:1 to about 1:1.) for the purpose of having a tools or components made from the polymer composites are able to degrade their mechanical strength and eventually break up without any additional mechanical or hydraulic forces. [0012]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of ‘480 with the above limitation, as taught by Khatiwada, in order to have the tools or components made from the polymer composites are able to degrade their mechanical strength and eventually break up without any additional mechanical or hydraulic forces.
Claims 9 & 19
‘480 discloses the method of claims 1 and 11. ‘480 however does not explicitly disclose 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. (Same s claim 6 and 16)
Claims 10 and 20
‘480 discloses the method of claim 1. ‘480 however does not explicitly disclose 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. (Same s claim 6 and 16)
Conclusion
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 06/01/2026
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