DETAILED ACTION
The present application is related to international application no. PCT/US25/12761.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendments, filed June 30, 2026, have been fully considered.
Claims 3 and 14 have been cancelled by the Applicant.
Claim Rejections - 35 USC § 112(b)
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 4-11 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.
Claim 4 recites the limitation "The method of claim 3" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 5-11 depend from Claim 4.
Claims 15-20 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.
Claim 15 recites the limitation "The cement composition of claim 14" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 16-20 depend from Claim 15.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4-13, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (US 2016/0264842) in view of Reddy et al. (US 2006/0000612).
Claim 1. Miller discloses A method comprising:
providing a cement composition that comprises water ([0045] “water”), a hydraulic cement ([0045] “hydraulic cements”), diutan gum ([0052] “diutan gum”), amorphous silica ([0043] “hydrophobically modified porous silica”; [0045] “fumed silica”), sepiolite ([0047] “sepiolite”), and a plurality of needle-shaped fibers ([0047] “glass fibers, mineral fibers (e.g., basalt, wollastonite, and sepiolite)”);
introducing the cement composition downhole into a well ([0020]; [0059] – [0063]); and
allowing the cement composition to set therein ([0020]; [0059] – [0063]).
Miller discloses that the settable sealant composition may comprise glass fibers and/or mineral fibers (e.g., basalt, wollastonite, and sepiolite) ([0047]); but Miller does not expressly disclose wherein the needle-shaped fibers have an aspect ratio of at least 2. However, Reddy teaches subterranean well cementing operations using cement composition that include high aspect ratio materials (Abstract), wherein the materials: may include inorganic fibers, such as basalt fibers, with a mean aspect ratio of at least 25 ([0008]; [0012]; [0020]; [0021]); and/or metallic fibers having a mean aspect ratio in the range of from about 1.25 to about 400 ([0012]; [0015]; [0025]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the aspect ratio of the fibers in Miller to the range, as taught by Reddy, in order to reinforce the cement, thereby increasing the cement's flexural and tensile strength.
Claim 2. Miller in view of Reddy teach The method of claim 1. Miller discloses wherein the water is selected from the group consisting of: freshwater; saltwater; a brine; seawater; and combinations thereof ([0045]), and wherein the cement is selected from the group consisting of: a Portland cement; a pozzolana cement; a gypsum cement; a high alumina content cement; a slag cement; a silica cement; and combinations thereof ([0045]).
Claim 4. Miller in view of Reddy teach The method of claim [[3]] 1. (See rejection under 35 U.S.C. § 112(b)). Regarding the limitation: wherein the needle-shaped fibers have a diameter in the range of from 10 microns to 300 microns, and wherein the needle-shaped fibers have a length in the range of from 100 to 6000 microns, Reddy teaches that the metallic fibers have a mean diameter in the range of from about 0.025 millimeters to about 0.10 millimeters, and a mean length in the range of from about 0.1 millimeter to about 10 millimeters, wherein the length and diameter of the metallic fibers may be adjusted to enhance properties such as their flexibility and ease of dispersion in the cement compositions ([0015]); and Reddy also teaches that the length and diameter of the inorganic fibers (e.g., basalt fibers) may be adjusted to enhance properties such as their flexibility and ease of dispersion in the cement compositions of the present invention ([0021]).
Claim 5. Miller in view of Reddy teach The method of claim 4. Miller discloses a sealant composition comprising water ([0045]), hydraulic cement ([0045]), diutan gum ([0052]), amorphous silica ([0043]; [0045]), sepiolite ([0047]), and a plurality of glass fibers and mineral fibers (e.g., basalt, wollastonite, and sepiolite) ([0047]). Regarding the limitation: wherein: the needle-shaped fibers are present in the cement composition in an amount in the range of from about 1.0% to about 25% by weight of the cement; the diutan gum is present in the cement composition in an amount in the range of from about 0.05% to about 5% by weight of the cement; the amorphous silica is present in the cement composition in an amount in the range of from about 2% to about 200% by weight of the cement; and sepiolite is present in the cement composition in an amount in the range of from about 1% to about 40% by weight of the cement, Miller discloses particulate materials, such as mineral fibers (e.g., basalt, wollastonite, and sepiolite) in the range from 5 to 35 wt% (Miller: [0047] – [0048]); and Reddy teaches metallic fibers in the range from 0.5% to 10% bwoc (Reddy: [0015]), and inorganic fibers (e.g., basalt fibers) in the range from 0.1% to 20% bwoc (Reddy: [0022]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the concentration range(s) of sealant components in Miller to the range(s) as claimed, because it has been held that “where 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).
Claim 6. Miller in view of Reddy teach The method of claim 5. Miller discloses wherein the needle-shaped fibers are inorganic fibers ([0047]). Reddy also teaches wherein the needle-shaped fibers are inorganic fibers ([0015]; [0020]; [0023]).
Claim 7. Miller in view of Reddy teach The method of claim 6. Miller discloses wherein the needle-shaped fibers are selected from the group of consisting of carbon fibers, metal-oxide-based fibers, and combinations thereof ([0047]). Reddy also teaches wherein the needle-shaped fibers are selected from the group of consisting of carbon fibers, metal-oxide-based fibers, and combinations thereof ([0015]; [0020]; [0023]).
Claim 8. Miller in view of Reddy teach The method of claim 6. Miller discloses wherein the needle-shaped fibers are selected from the group consisting of carbon fiber, basalt fibers, and mixtures thereof ([0047]). Reddy also teaches wherein the needle-shaped fibers are selected from the group consisting of carbon fiber, basalt fibers, and mixtures thereof ([0015]; [0020]; [0023]).
Claim 9. Miller in view of Reddy teach The method of claim 6. Miller discloses wherein the step of introducing the cement composition downhole into a well comprises introducing the cement composition into a subterranean formation ([0020]; [0059] – [0063]).
Claim 10. Miller in view of Reddy teach The method of claim 6. Miller discloses wherein the step of introducing the cement composition downhole into a well comprises introducing the cement composition into an annulus between at least one wall of the wellbore and a pipe string disposed within the wellbore ([0020]; [0061]).
Claim 11. Miller in view of Reddy teach The method of claim 6. Regarding the limitation: wherein the addition of the needle-shaped fibers increases gel strength over the cement composition without the needle-shaped fibers and without any adverse effect on mixability or rheology, since Miller as modified by Reddy teach the same composition as claimed, the fibers would inherently act in the same manner as claimed, (i.e., it would be capable of increasing gel strength over the cement composition without the needle-shaped fibers and without any adverse effect on mixability or rheology). If there is any difference between the composition of Miller and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 12. Miller discloses A cement composition ([0045]) comprising water ([0045] “water”), a hydraulic cement ([0045] “hydraulic cements”), diutan gum ([0052] “diutan gum”), amorphous silica ([0043] “hydrophobically modified porous silica”; [0045] “fumed silica”), sepiolite ([0047] “sepiolite”), and a plurality of needle-shaped fibers ([0047] “glass fibers, mineral fibers (e.g., basalt, wollastonite, and sepiolite)”).
Miller discloses that the settable sealant composition may comprise glass fibers and/or mineral fibers (e.g., basalt, wollastonite, and sepiolite) ([0047]); but Miller does not expressly disclose wherein the needle-shaped fibers have an aspect ratio of at least 2. However, Reddy teaches subterranean well cementing operations using cement composition that include high aspect ratio materials (Abstract), wherein the materials: may include inorganic fibers, such as basalt fibers, with a mean aspect ratio of at least 25 ([0008]; [0012]; [0020]; [0021]); and/or metallic fibers having a mean aspect ratio in the range of from about 1.25 to about 400 ([0012]; [0015]; [0025]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the aspect ratio of the fibers in Miller to the range, as taught by Reddy, in order to reinforce the cement, thereby increasing the cement's flexural and tensile strength.
Claim 13. Miller in view of Reddy teach The cement composition of claim 12. Miller discloses wherein the water is selected from the group consisting of: freshwater; saltwater; a brine; seawater; and combinations thereof ([0045]), and wherein the cement is selected from the group consisting of: a Portland cement; a pozzolana cement; a gypsum cement; a high alumina content cement; a slag cement; a silica cement; and combinations thereof ([0045]).
Claim 15. Miller in view of Reddy teach The cement composition of claim [[14]] 12. (See rejection under 35 U.S.C. § 112(b)). Regarding the limitation: wherein the needle-shaped fibers have a diameter in the range of from 10 microns to 300 microns, and wherein the needle-shaped fibers have a length in the range of from 100 to 6000 microns, Reddy teaches that the metallic fibers have a mean diameter in the range of from about 0.025 millimeters to about 0.10 millimeters, and a mean length in the range of from about 0.1 millimeter to about 10 millimeters, wherein the length and diameter of the metallic fibers may be adjusted to enhance properties such as their flexibility and ease of dispersion in the cement compositions ([0015]); and Reddy also teaches that the length and diameter of the inorganic fibers (e.g., basalt fibers) may be adjusted to enhance properties such as their flexibility and ease of dispersion in the cement compositions of the present invention ([0021]).
Claim 16. Miller in view of Reddy teach The cement composition of claim 15. Miller discloses a sealant composition comprising water ([0045]), hydraulic cement ([0045]), diutan gum ([0052]), amorphous silica ([0043]; [0045]), sepiolite ([0047]), and a plurality of glass fibers and mineral fibers (e.g., basalt, wollastonite, and sepiolite) ([0047]). Regarding the limitation: wherein: the needle-shaped fibers are present in the cement composition in an amount in the range of from about 1.0% to about 25% by weight of the cement; the diutan gum is present in the cement composition in an amount in the range of from about 0.05% to about 5% by weight of the cement; the amorphous silica is present in the cement composition in an amount in the range of from about 2% to about 200% by weight of the cement; and sepiolite is present in the cement composition in an amount in the range of from about 1% to about 40% by weight of the cement, Miller discloses particulate materials, such as mineral fibers (e.g., basalt, wollastonite, and sepiolite) in the range from 5 to 35 wt% (Miller: [0047] – [0048]); and Reddy teaches metallic fibers in the range from 0.5% to 10% bwoc (Reddy: [0015]), and inorganic fibers (e.g., basalt fibers) in the range from 0.1% to 20% bwoc (Reddy: [0022]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the concentration range(s) of sealant components in Miller to the range(s) as claimed, because it has been held that “where 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).
Claim 17. Miller in view of Reddy teach The cement composition of claim 16. Miller discloses wherein the needle-shaped fibers are inorganic fibers ([0047]). Reddy also teaches wherein the needle-shaped fibers are inorganic fibers ([0015]; [0020]; [0023]).
Claim 18. Miller in view of Reddy teach The cement composition of claim 17. Miller discloses wherein the needle-shaped fibers are selected from the group of consisting of carbon fibers, metal-oxide-based fibers, and combinations thereof ([0047]). Reddy also teaches wherein the needle-shaped fibers are selected from the group of consisting of carbon fibers, metal-oxide-based fibers, and combinations thereof ([0015]; [0020]; [0023]).
Claim 19. Miller in view of Reddy teach The cement composition of claim 17. Miller discloses wherein the needle-shaped fibers are selected from the group consisting of carbon fiber, basalt fibers, and mixtures thereof ([0047]). Reddy also teaches wherein the needle-shaped fibers are selected from the group consisting of carbon fiber, basalt fibers, and mixtures thereof ([0015]; [0020]; [0023]).
Claim 20. Miller in view of Reddy teach The cement composition of claim 17. Regarding the limitation: wherein the addition of the needle-shaped fibers increases gel strength over the cement composition without the needle-shaped fibers and without any adverse effect on mixability or rheology, since Miller as modified by Reddy teach the same composition as claimed, the fibers would inherently act in the same manner as claimed, (i.e., it would be capable of increasing gel strength over the cement composition without the needle-shaped fibers and without any adverse effect on mixability or rheology). If there is any difference between the composition of Miller and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Response to Arguments
Applicant's arguments filed June 30, 2026 have been fully considered but they are not persuasive for the reasons explained, below.
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).
Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Miller discloses a settable sealant composition for treating a subterranean formation ([0045]; [0059] – [0063]), the composition comprising: water ([0045]), hydraulic cements ([0045]), a viscosifying agent, such as diutan gum ([0052]), amorphous silica ([0043] “hydrophobically modified porous silica”; [0045] “fumed silica”), mineral fibers, such as sepiolite ([0047] “sepiolite”), and various needle-shaped fibers ([0047] “glass fibers, mineral fibers (e.g., basalt, wollastonite, and sepiolite)”).
Miller expressly discloses that the settable sealant composition may comprise glass fibers and/or mineral fibers (e.g., basalt, wollastonite, and sepiolite) ([0047]); but Miller does not expressly disclose wherein the needle-shaped fibers have an aspect ratio of at least 2.
It has been held that “where 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).
Moreover, Reddy teaches cement compositions that include high aspect ratio materials, wherein the materials: may include inorganic fibers, such as basalt fibers, with a mean aspect ratio of at least 25 ([0008]; [0012]; [0020]; [0021]); and/or metallic fibers having a mean aspect ratio in the range of from about 1.25 to about 400 ([0012]; [0015]; [0025]).
Miller discloses that it is important to include materials, such as fibers, in the sealant composition to improve its mechanical properties (e.g., tensile strength, compressive strength, resilience, rigidity, flexibility, etc.) ([0018]; [0047]).
Reddy teaches that the aspect ratios of the fibers may be adjusted to enhance properties such as their flexibility and ease of dispersion in cement compositions ([0015]); aid in the prevention of lost circulation and/or enhance the compressive and tensile strengths of the set cement composition ([0019]).
Thus, the Examiner maintains that it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the aspect ratio of the fibers in Miller to the range, as taught by Reddy, in order to reinforce the cement, thereby increasing the cement's flexural and tensile strength.
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 Crystal J. Lee whose telephone number is (571)272-6242. The examiner can normally be reached M-F from 9:00am - 5:00pm.
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/CRYSTAL J LEE/Primary Examiner, Art Unit 1738
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