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 .
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.
3. Claims 1, 10, 14 have been amended and claims 1-20 are pending as amended on 07/29/26.
4. The new ground of rejection set forth below for claims are necessitated by Applicant's amendment filed on 07/29/26. In particular, claim 1, 10, 14 have been amended to include features “viscosity control additive, wherein the viscosity control additive comprises.” Now, the scope of independent claims 1, 10, 14 and the claims depends from claims 1, 10, 14 are changed. For this reason, the present action is properly made final.
5. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
6. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
This application is a CON of 18/536,994 12/12/2023 PAT 12180414; 18/536,994 has PRO 63/517,513 08/03/2023; 18/536,994 has PRO 63/477,087 12/23/2022; 18/536,994 has PRO 63/387,046 12/12/2022.
Response to Amendment
8. Applicant's amendment filed on 07/29/26, has been fully considered and entered.
Response to Arguments
9. Applicant's arguments with respect to rejection of claims 1-20 under 35 U.S.C. 103 as being unpatentable over Sodhi (US 2013/0087330) in view of Hall (US 2020/0131421) filed on 07/29/26, have been fully considered but are moot in view of amendment. Applicants arguments about viscosity control additive, wherein the viscosity control additive comprises asphalt shingle waste have been respectfully considered but are not persuasive because regarding claim 1, Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt%, fall into claimed range of no greater than 20% by weight based on the total weight of the drilling fluid, wherein the asphalt shingle waste comprises a waste asphalt (para [0013], [0017], [0035], [0037], [0041]); regarding claim 10, Sodhi discloses a drilling fluid comprising an asphalt shingle waste, wherein the asphalt shingle waste comprises an asphalt, wherein the asphalt comprises 19 to 36% by weight, fall into instant claim range of 1% to 99% by weight of a waste asphalt based on a total weight of the asphalt (para [0013], [0017]-[0018], [0035], [0037], [0041]); and regarding claim 14, Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt%, fall into claimed range of 1 to 20% by weight based on the total weight of the drilling fluid, wherein the asphalt shingle waste comprises a waste asphalt (para [0013], [0017], [0035], [0037], [0041]). Since Sodhi discloses the same asphalt shingle waste, wherein the asphalt shingle waste comprises the same waste asphalt; and in same amount as instantly claimed the viscosity control properties of the asphalt shingle waste would inherently be the same as claimed. “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). In view of amendment to claims and response, a new ground(s) of rejection is made.
10. In view of amendment to claims filed on 07/29/26 the statutory double patenting rejections have been withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/531423 (amendment filed on 07/20/26). Although the claims at issue are not identical, they are not patentably distinct from each other because instant and copending claimed inventions are almost same with the only difference is the copending claims disclose the asphalt shingle waste is derived from a briquette.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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 Sodhi (US 2013/0087330) in view of Hall (US 2020/0131421).
Regarding claims 1-2, Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt%, fall into claimed range of no greater than 20% by weight based on the total weight of the drilling fluid, wherein the asphalt shingle waste comprises a waste asphalt (para [0013], [0017], [0035], [0037], [0041]). Since Sodhi discloses the same asphalt shingle waste, wherein the asphalt shingle waste comprises the same waste asphalt; and in same amount as instantly claimed the viscosity control properties of the asphalt shingle waste would inherently be the same as claimed. “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).
Sodhi does not disclose 0.1% to 10% by weight regarding instant claim 1 or 0.1% to 5% by weight regarding instant claim 2 of at least one rheological modifier based on a total weight of the drilling fluid.
However, Hall discloses a drilling fluid comprising rheology agent such as gum hydrocolloid in an amount of from about 0.5 to about 1 wt% to monitor the viscosity of the drilling fluid (para [0001]-[0002], [0016]-[0017], [0026]), fall into instant claim 1 range of 0.1% to 10% by weight or instant claim 2 range of 0.1% to 5% by weight.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Sodhi with rheology agent such as gum hydrocolloid in an amount of from about 0.5 to about 1 wt%, as taught by Hall. The rationale to do so would have been motivation provided by of Hall that to do so would help to monitor the viscosity of the drilling fluid.
Regarding claims 3-6, Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt% (para [0017], [0035], [0037]), overlapping instant claim 3 range of no greater than 10 wt%, instant claim 4 range of no greater than 5 wt%, instant claim 5 range of 1 to 10 wt%, or instant claim 6 range of 1 to 5 wt%, based on the total weight of the drilling fluid.
A prima facie case of obviousness exists for the drilling fluid, wherein Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt%, overlapping the requirement of claims 3-6. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 7, Sodhi discloses the asphalt shingle waste comprises an
asphalt, limestone, granules, and impurities (para [0018]).
Regarding claims 8-9, Sodhi discloses fluid loss reducer such as gilsonite or HALAD-23 in an amount of 0.05 to 10 wt% (para [0048], [0056]), encompassing instant claim 8 range of 0.1 to 5 wt%, wherein the at least one fluid loss reducer is different from the asphalt shingle waste.
A prima facie case of obviousness exists for the drilling fluid, wherein Sodhi discloses a drilling fluid comprising fluid loss reducer such as gilsonite or HALAD-23 in an amount of 0.05 to 10 wt%, encompassing the requirement of claim 8. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claims 10-11, Sodhi discloses a drilling fluid comprising an asphalt shingle waste, wherein the asphalt shingle waste comprises an asphalt, wherein the asphalt comprises 19 to 36% by weight, fall into instant claim range of 1% to 99% by weight of a waste asphalt based on a total weight of the asphalt (para [0013], [0017]-[0018], [0035], [0037], [0041]). Since Sodhi discloses the same asphalt shingle waste, wherein the asphalt shingle waste comprises the same waste asphalt; and in same amount as instantly claimed the viscosity control properties of the asphalt shingle waste would inherently be the same as claimed. “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).
Sodhi further discloses fluid loss reducer such as gilsonite or HALAD-23 in an amount of 0.05 to 10 wt% (para [0048], [0056]), encompassing instant claim range of 0.1 to 5 wt%, wherein the at least one fluid loss reducer is different from the asphalt shingle waste. Sodhi does not disclose 0.1% to 5% by weight of at least one rheological modifier based on a total weight of the drilling fluid.
However, Hall discloses a drilling fluid comprising rheology agent such as gum hydrocolloid in an amount of from about 0.5 to about 1 wt% to monitor the viscosity of the drilling fluid (para [0001]-[0002], [0016]-[0017], [0026]), fall into instant claim range of 0.1% to 5% by weight.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Sodhi with rheology agent such as gum hydrocolloid in an amount of from about 0.5 to about 1 wt%, as taught by Hall. The rationale to do so would have been motivation provided by of Hall that to do so would help to monitor the viscosity of the drilling fluid.
A prima facie case of obviousness exists for the drilling fluid, wherein Sodhi discloses a drilling fluid comprising fluid loss reducer such as gilsonite or HALAD-23 in an amount of 0.05 to 10 wt%, encompassing the requirement of claim 10. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claim 12, Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt% (para [0017], [0035], [0037]), fall into claimed range of no greater than 20% by weight based on the total weight of the drilling fluid.
Regarding claim 13, Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt% (para [0017], [0035], [0037]), overlapping instant claim range of 1 to 10 wt%, based on the total weight of the drilling fluid.
A prima facie case of obviousness exists for the drilling fluid, wherein Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt%, overlapping the requirement of claim 13. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claims 14-16, 18-20, Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt%, fall into claimed range of 1 to 20% by weight based on the total weight of the drilling fluid, wherein the asphalt shingle waste comprises a waste asphalt (para [0013], [0017], [0035], [0037], [0041]). Since Sodhi discloses the same asphalt shingle waste, wherein the asphalt shingle waste comprises the same waste asphalt; and in same amount as instantly claimed the viscosity control properties of the asphalt shingle waste would inherently be the same as claimed. “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).
Sodhi further discloses fluid loss reducer such as gilsonite or HALAD-23 in an amount of 0.05 to 10 wt% (para [0048], [0056]), encompassing instant claim 14 range of 1 to 10 wt%, or instant claim 16 range of 1 to 5 wt% wherein the at least one fluid loss reducer is different from the asphalt shingle waste.
A prima facie case of obviousness exists for the drilling fluid, wherein Sodhi discloses a drilling fluid comprising fluid loss reducer such as gilsonite or HALAD-23 in an amount of 0.05 to 10 wt%, encompassing the requirement of claims 14, 16. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Sodhi does not disclose 1% to 10% by weight of at least one rheological modifier based on a total weight of the drilling fluid.
However, Hall discloses a drilling fluid comprising rheology agent such as gum hydrocolloid in an amount of from about 0.5 to about 1 wt% to monitor the viscosity of the drilling fluid (para [0001]-[0002], [0016]-[0017], [0026]), overlap an end point the instant claim 14 range of 1% to 10% by weight or instant claim 15 range of 1% to 5% by weight.
It would have been obvious to one with ordinary skill, in the art at the time of
invention, to modify Sodhi with rheology agent such as gum hydrocolloid in an amount of from about 0.5 to about 1 wt%, as taught by Hall. The rationale to do so would have been motivation provided by of Hall that to do so would help to monitor the viscosity of the drilling fluid.
The examiner takes note of the fact that the prior art range of about 0.5 to about 1 wt%, overlaps the claim 14 range of 1% to 10% wt% or the claim 15 range of 1% to 5% wt% at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05. The combination of Sodhi and Hall teach the asphalt shingle waste is different from the at least one rheology modifier, wherein the asphalt shingle waste is different from the at least one fluid loss reducer.
Regarding claim 17, Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt% (para [0017], [0035], [0037]), overlapping instant claim range of 1 to 10 wt%, based on the total weight of the drilling fluid.
A prima facie case of obviousness exists for the drilling fluid, wherein Sodhi discloses a drilling fluid comprising an asphalt shingle waste in an amount of 3.5 to 19 wt%, overlapping the requirement of claim 17. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
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 KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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