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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 5, 6 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Merli et al. (US 2013/0281326 – cited previously).
With respect to independent claim 1, Merli et al. discloses a method of improving a rate of penetration of a drilling bit and reducing soil disaggregation in swellable and dispersive clay soils ([0003], wherein the clays are disclosed as swellable; [0006]-[0007], wherein the formation solids, i.e., clay minerals, become dispersed in the drilling fluid, thereby providing for dispersive clays as claimed; [0020]), the method comprising: (a) adding from 0.02-5% by weight ([0021]-[0022]) of a dual function additive ([0026]) to a water based drilling fluid ([0031]-[0034]), wherein the dual function additive is an aqueous solution of hexylenediamine and dihexylenetriamine in a weight ratio between 0.2 and 2 ([0026]; [0031]) and having a pH from 9 to 11 ([0039]; [0048]; [0051]); and (b) drilling a borehole with the drilling bit in the swellable and dispersive clay soils ([0005], wherein drilling fluid is circulated to carry cuttings from the bit to the surface, cool and clean the drill bit, reduce friction between the drill string and drilled hole and to stabilize uncased sections of the well; [0010], wherein the fluid is used in drilling operations as a drilling fluid) in the presence of the water based drilling fluid that contains the dual function additive ([0033]), wherein the dual function additive improves lubrication of the drilling bit ([0005], wherein drilling fluids are used to reduce friction and thereby “improve” lubrication).
With regard to the instantly claimed weight ratio of hexylenediamine and dihexylenediamine, the Examiner notes, Merli et al. suggests ratios thereof overlapping the range as instantly claimed; although silent to the explicitly noting the specific range as claimed, since Merli et al. overlaps such a range, one of ordinary skill in the art would recognize the optimal weight ratio thereof to employ in order to effectively inhibit hydration of clays therewith and, thereby, improve the rate of penetration of the drill bit since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."
Although silent to explicitly disclosing wherein the dual function additive “improves lubrication of the drilling bit,” the Examiner notes, Merli et al. discloses the use of the same commercially available blend of hexylenediamine and dihexylenetriamine that is described for use as such in the instant specification on page 6, line 16, i.e., CAS No. 68411-90-5. The reference further discloses the use of the same amount thereof in the water based drilling fluid, i.e., 0.2-5 wt%. As such, the CAS No. 68411-90-5 of Merli et al. would be expected to act in the same manner as claimed, i.e., “improve” drilling bit lubrication/rate of penetration of the drill bit since it has been held “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If there is any difference between the dual function additive of Merli et al. and that of the instant claims, the difference would have been minor and obvious. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to new independent claim 12, Merli et al. discloses a method for improving a rate of penetration of a drilling bit and reducing soil disaggregations, the method comprising: drilling a wellbore with the drilling bit in swellable and dispersive clay soils ([0003], wherein the clays are disclosed as swellable; [0006]-[0007], wherein the formation solids, i.e., clay minerals, become dispersed in the drilling fluid, thereby providing for dispersive clays as claimed; [0020]) using a water-based drilling fluid ([0031]-[0034]), wherein the water-based drilling fluid comprises from 0.02-5% by weight ([0021]-[0022]) of a dual function additive ([0026]), wherein the dual function additive is an aqueous solution of hexylenediamine and dihexylenetriamine in a weight ratio between 0.2 and 2 ([0026]; [0031]) and having a pH from 9 to 11 ([0039]; [0048]; [0051]), wherein the dual function additive improves lubrication of the drilling bit ([0005], wherein drilling fluids are used to reduce friction and thereby “improve” lubrication).
With regard to the instantly claimed weight ratio of hexylenediamine and dihexylenediamine, the Examiner notes, Merli et al. suggests ratios thereof overlapping the range as instantly claimed; although silent to the explicitly noting the specific range as claimed, since Merli et al. overlaps such a range, one of ordinary skill in the art would recognize the optimal weight ratio thereof to employ in order to effectively inhibit hydration of clays therewith and, thereby, improve the rate of penetration of the drill bit since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."
Although silent to explicitly disclosing wherein the dual function additive “improves lubrication of the drilling bit,” the Examiner notes, Merli et al. discloses the use of the same commercially available blend of hexylenediamine and dihexylenetriamine that is described for use as such in the instant specification on page 6, line 16, i.e., CAS No. 68411-90-5. The reference further discloses the use of the same amount thereof in the water based drilling fluid, i.e., 0.2-5 wt%. As such, the CAS No. 68411-90-5 of Merli et al. would be expected to act in the same manner as claimed, i.e., “improve” drilling bit lubrication/rate of penetration of the drill bit since it has been held “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If there is any difference between the dual function additive of Merli et al. and that of the instant claims, the difference would have been minor and obvious. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claims 3 and 13, Merli et al. discloses wherein the dual function additive is a mixture of hexylenediamine and dihexylenetriamine, and, further, wherein a commercially available example thereof is CAS No. 68411-90-5 ([0026]); further description of such shows wherein higher polyamines may be present in an amount of 0-20 wt% ([0031]). The Examiner notes, such a commercially available example is described in the instant specification on page 6, line 16, as a suitable mixture of hexylenediamine and dihexylenetriamine for use in the instant method and further described beginning at line 20 wherein such may contain 1-50 wt% of amines having a boiling point higher than 330oC. Although Merli et al. is silent to the boiling point of the higher polyamines present in the mixture, since Merli et al. suggests the same commercially available example thereof as Applicant, as well as wherein higher polyamines may be present therein, it is the position of the Office that such would also have a presence of high boiling point amines therein as claimed since it has been held “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present, i.e., in the instant case, the weight percent of higher boiling point amines therein. If there is any difference between the dual function additive of Merli et al. and that of the instant claims, the difference would have been minor and obvious; since Merli et al. suggests the presence of higher polyamines in the mixture, as well as provides for the same commercially available example of the mixture disclosed by Applicant to contain a percentage of amines with such a boiling point, one of ordinary skill in the art would recognize an optimal weight percent thereof to include in the mixture since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent of amines having a boiling point as claimed as critical and it is unclear if any unexpected results are achieved by using such a percentage thereof. Since the additive of Merli et al. is disclosed to include the same commercially available form disclosed by Applicant as suitable for use, and, further, effectively inhibits clay swelling in subterranean formations, it does not appear that such would be considered an unexpected result of further including the presently claimed weight percent of amines having a boiling point as claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claims 5 and 14, Merli et al. discloses wherein the pH of the aqueous dual function additive solution is adjusted by addition of one as claimed ([0023]; [0048]; [0051]).
With respect to dependent claims 6 and 15, Merli et al. discloses wherein the water based drilling fluid has pH as claimed ([0039]; [0048]; [0051]).
Response to Arguments
Applicant’s arguments and amendments with respect to the claim objections, 35 USC 112 rejections and 35 USC 101 rejections, as set forth in the previous office action, have been fully considered and are persuasive. The claim objections, 35 USC 112 rejections and 35 USC 101 rejections, as set forth therein, have been withdrawn.
Applicant's arguments with respect to the rejections of claims over Merli et al. have been fully considered but they are not persuasive.
Applicant asserts Merli fails to disclose, teach or suggest using a dual function additive in dispersive clays.
The Examiner respectfully disagrees. Merli discloses wherein formation solids become dispersed in drilling fluid, including cuttings from drilling and soil and solids from the surrounding unstable formation; Merli further discloses wherein when the formation yields solids that are clay minerals, i.e., dispersive clay, the clay can swell ([0007]). The drilling fluid of Merli inhibits such swelling ([0003]). Therefore, Merli discloses/teaches/suggest use of the dual function additive in dispersive clays.
Applicant further asserts Merli fails to disclose, teach or suggest using a dual function additive to improve lubrication or the rate of penetration of the drill bit.
The Examiner notes, Merli discloses the same composition as Applicant as used for such a purpose, and, further, wherein such is used in an amount overlapping that which is disclosed and claimed by Applicant, as well as at within an overlapping pH. Therefore, it is the position of the Office that such a composition would indeed act in the same manner as claimed, i.e., “improve” rate of penetration and/or lubrication of the drill bit.
The Examiner notes, Applicant merely claims wherein lubrication is “improved,” without any particular degree and/or manner by how such is achieved other than the single step of drilling with a fluid, i.e., the same fluid as disclosed by Merli. Furthermore, with regard to the limitation of “improving the rate of penetration” such is claimed as the pre-amble without any particular further steps associated therewith aside from drilling with the instantly claimed fluid. When reading the preamble in the context of the entire claim, the recitation “improving a rate of penetration of a drilling bit” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Applicant further asserts unexpected results are achieved, noting the specification as presenting comparative data in Tables 3 and 4 that demonstrates unexpectedly decreased adhesion between metal and dam clay relative to other amine-based shale inhibitors. Applicant asserts achieving a superior lubrication index. The Examiner notes, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). The Examiner notes, the instant claims do not necessarily require an active step of enhancing the rate of penetration or reflect any unexpected results Applicant has presented within the remarks
Applicant’s arguments with respect to the 35 USC 103 rejections of claims as unpatentable over KHRAMOV et al. have been fully considered; upon further consideration of Applicant’s amendments to independent claim 1 and presentation of new claims 12-15, the rejections made with respect thereto have been withdrawn.
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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL11/21/25
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