DETAILED CORRESPONDENCE
Status of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-4, 11-13, 15, 18 & 20-26 have been examined in this application. This communication is a Final Rejection in response to the Amendment filed on May 21, 2026. Claims 5-10, 14, 16, 17 & 19 stand canceled.
Claim Objections
Claims 11, 18 & 20 are objected to because of the following informalities:
Claim 11 recites “crosslinker is present in a concentration…of the crosslinker, and the further”. Deletion of “of the crosslinker” is required to improve clarity of the claim. Further, replacement of “and the further” with “and further” is required to improve clarity of the claim.
Claim 18 recites the limitation “and an emulsifier”. As parent Claim 1 previously recites an emulsifier, to improve clarity, replacement of “and an emulsifier” with “and the emulsifier” is required. Claim 20 is also objected to for being dependent on Claim 18.
Claim Rejections - 35 USC § 112
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 13 & 26 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 13 & 26 each recite the limitation wherein the emulsifier is selected from the respectively recited group. While Applicants point to Table 3 of the instant specification for support, it is noted that one or more of the recited emulsifiers appear to be distinct from and/or encompass a broader group of chemicals than the emulsifiers of Table 3 - such as the blend of ethoxylated phenol and nonylphenol. As such, these limitations regarding the emulsifier selected from the group as instantly claimed is not sufficiently described in the specification as required above. Appropriate correction and/or clarification is required.
Claims 21, 22 & 24 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 pre-AIA the applicant regards as the invention.
Claims 21 & 22 each recite a composition comprising about 100 wt% in total of the red mud, epoxy resin and crosslinker. As such, it is unclear how the composition then also comprises “about 1 wt% to about 10 wt% cement…..and an emulsifier” (as recited in parent Claim 1).
Further, Claim 21 recites an amount of red mud and epoxy resin that fall outside the respective ranges recited in parent Claim 1; which is also unclear.
As such, the claimed composition is unclear. Appropriate correction and/or clarification is required.
Claim 24 recites “wherein about 80% of the red mud particles have a diameter of about 50 mm or less” in combination with “wherein the red mud comprises particles having a diameter from about 10 mm to about 100 mm” (in parent Claim 23); which is unclear as the range of “about 50 mm or less” encompasses particles of diameter less than 10 mm. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Appropriate correction and/or clarification is required.
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 1-4, 11-13, 15, 18 & 20-26 are rejected under 35 U.S.C. 103 as being unpatentable over Al-Yami et al. (US 2020/0071596), in view of Martinez et al. (US 2017/0369762).
With respect to Claim 1, Al-Yami discloses a method of servicing a wellbore, comprising: applying a sealant composition to the wellbore (Al-Yami: Sections [0003]-[0009], [0014], [0015] & [0024]), the sealant composition comprising: cementitious materials, cement (Al-Yami: Sections [0029] & [0030]); epoxy resin comprising bisphenol-A- epichlorohydrin epoxy resin and an oxirane mono [(C12-14)-alkyloxy)methyl] derivative (Al-Yami: Sections [0025] & [0048]-[0058]); and crosslinker comprising diethylenetriamine (DETA) (Al-Yami: Sections [0060]-[0064]); where Al-Yami discloses one or more materials instantly claimed and/or described as “a crosslinker”; and, as such, the material(s) is considered a crosslinker as instantly claimed. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the crosslinker as disclose by Al-Yami and the crosslinker as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Al-Yami further teaches one or more embodiments wherein the sealant composition comprises phenols as instantly described and/or claimed (Al-Yami: Sections [0031], [0041], [0043] & [0065]). As such, although the reference fails to explicitly disclose the above method steps in combination with these materials, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include the additional materials, with a reasonable expectation of success, in order to yield predictable results in wellbore sealing applications. Further, the combination of these materials is considered to provide “an emulsifier” as instantly claimed. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the emulsifier as taught by Al-Yami and the emulsifier as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Al-Yami further teaches the cementitious materials, cement, epoxy resin and crosslinker in respective amount ranges that encompass or overlap the ranges as respectively claimed, and also teaches tailoring amounts for the desired curing and rheological properties (Al-Yami: Sections [0030], [0048]-[0064] & [0075]-[0078]). As such, although the reference fails to explicitly limit the amounts to the ranges as respectively claimed, before the effective fling date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ suitable amounts based on the desired curing and rheological properties, with a reasonable expectation of success, insofar as because it has been held; and 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 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal amounts to employ therein in order to obtain the desired result. 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." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). 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 concentration ranges for each component as critical and it is unclear if any unexpected results are achieved by using the instantly claimed concentration ranges in comparison to the broader concentration ranges as instantly disclosed. Since the method as set forth above suggests servicing a wellbore by applying a sealant composition as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed concentration ranges, and, as such, the determination of percents of each component as claimed would be achievable through routine experimentation in the art.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for sealing of areas in a subterranean formations, and a finite number of identified, predictable solutions including injecting a composition comprising components as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Al-Yami and Martinez, one of ordinary skill in the art could have pursued desired concentrations of the components, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Al-Yami further teaches the method in primary and remedial sealing applications, and also teaches the use of cementitious materials such as Portland cement and/or oxides (Al-Yami: Sections [0003]-[0009], [0023], [0025], [0029] & [0030]). The reference, however, fails to explicitly disclose the sealant composition comprising “red mud” as instantly claimed.
Martinez teaches methods of cementing/sealing in subterranean formation therein, including primary and remedial cementing, wherein the composition includes red mud as a cheaper and/or readily-available component with sufficient strength for wellbore applications, as an alternative to, or in combination with the cement materials of Al-Yami, and also teaches wherein red mud comprises different oxides (Martinez: Sections [0001]-[0004], [0010]-[0016] & [0024]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified Al-Yami with the aforementioned teachings of Martinez to include, in the sealant composition, red mud as an alternative to or in combination with one or more cementitious materials of Martinez, with a reasonable expectation of success, in order employ a cheaper and/or readily-available component with sufficient strength for wellbore applications. (Martinez: Sections [0001]-[0004], [0010]-[0016] & [0024]).
With respect to Claims 2, 3, 15, 21 & 22, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 1. The respectively claimed weight amounts/ranges are considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, for reasons as set forth above with respect to Claim 1.
With respect to Claim 4, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 1. Martinez further teaches red mud in particle form with a particle size range that overlaps the range as instantly claimed, and further teaches analyzing particle size suitability for the zone being treated (Martinez: Sections [0016] & [0058]). As such, although the reference fails to explicitly limit 80% of the particles to the particle size range as instantly claimed, before the effective fling date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a suitable proportion of particles within a suitable particle size range, with a reasonable expectation of success, based on the desired treatment, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal proportion and size of particles to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for sealing of areas in a subterranean formations, and a finite number of identified, predictable solutions including injecting a composition comprising suitably sized red mud particles as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Al-Yami and Martinez, one of ordinary skill in the art could have pursued a desired proportion of particles within a suitable particle size range, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 11, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 1. The instantly claimed weight range is considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, for reasons as set forth above with respect to Claim 1. Al-Yami further discloses the crosslinker further comprising a member selected from the group as instantly claimed (Al-Yami: Sections [0060]-[0064]).
With respect to Claim 12, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 1. Al-Yami further discloses “…wherein the sealant composition further comprises an accelerator, retarder, weighting material, or combinations thereof” (Al-Yami: Sections [0036] & [0065]).
With respect to Claim 13, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 1. As set forth above, Al-Yami further teaches one or more embodiments wherein the sealant composition comprises phenols as instantly described and/or claimed (Al-Yami: Sections [0031], [0041], [0043] & [0065]). As such, although the reference fails to explicitly disclose the above method steps in combination with these materials, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include the additional materials, with a reasonable expectation of success, in order to yield predictable results in wellbore sealing applications. Further, the combination of these materials is considered to provide an “emulsifier” as instantly claimed. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the emulsifier as taught by Al-Yami and the emulsifier as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
With respect to Claim 18, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 1. Al-Yami further discloses mixing the epoxy resin and the crosslinker to form a liquid mixture; and adding the cementitious components to the liquid mixture to form the sealant composition; before applying the sealant composition to the wellbore (Al-Yami: Section [0074] & Examples where Al-Yami discloses one or more liquid mixtures).
For reasons as set forth above with respect to Claim 1, Al-Yami is considered to teach the method comprising an emulsifier in the resin system. Further, Al-Yami teaches one or more embodiments of mixing components of the resin system, and also teaches one or more embodiments of mixing the resin system with the cement slurry. As such, although the reference fails to explicitly disclose the step of mixing to form a liquid mixture with an emulsifier as instantly claimed, before the effective filing date of the claimed invention, there had been a recognized need in the art for sealing of areas in a subterranean formations, and a finite number of identified, predictable solutions including preparing a composition by mixing components of a resin system and combining the resin system with the cement slurry, as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Al-Yami and Martinez, one of ordinary skill in the art could have pursued mixing in a desired manner, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 20, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 18. Al-Yami further teaches mixing techniques such as creating a homogenous mixture, using standard procedures, and in a manner so as to create slurries appropriate for the desired treatment and/or with desired rheological properties (Al-Yami: Sections [0074] & [0111]; Examples). As such, although the reference fails to explicitly disclose mixing for the time range as respectively claimed, before the effective filing date of the claimed invention, there had been a recognized need in the art for sealing of areas in a subterranean formations, and a finite number of identified, predictable solutions including preparing a composition by mixing components to create a homogenous mixture, by using standard procedures, and/or in a manner so as to create slurries appropriate for the desired treatment and/or with desired rheological properties, as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Al-Yami and Martinez, one of ordinary skill in the art could have pursued mixing for a suitable period of time, such as respectively claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 23, Al-Yami discloses a method of servicing a wellbore, comprising: applying a sealant composition to the wellbore (Al-Yami: Sections [0003]-[0009], [0014], [0015] & [0024]), the sealant composition comprising: cementitious materials, cement (Al-Yami: Sections [0029] & [0030]); epoxy resin comprising bisphenol-A- epichlorohydrin epoxy resin and an oxirane mono [(C12-14)-alkyloxy)methyl] derivative (Al-Yami: Sections [0025] & [0048]-[0058]); and crosslinker comprising diethylenetriamine (DETA) (Al-Yami: Sections [0060]-[0064]); where Al-Yami discloses one or more materials instantly claimed and/or described as “a crosslinker”; and, as such, the material(s) is considered a crosslinker as instantly claimed. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the crosslinker as disclose by Al-Yami and the crosslinker as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Al-Yami further teaches one or more embodiments wherein the sealant composition comprises phenols as instantly described and/or claimed (Al-Yami: Sections [0031], [0041], [0043] & [0065]). As such, although the reference fails to explicitly disclose the above method steps in combination with these materials, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include the additional materials, with a reasonable expectation of success, in order to yield predictable results in wellbore sealing applications. Further, the combination of these materials is considered to provide an “emulsifier” as instantly claimed. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the emulsifier as taught by Al-Yami and the emulsifier as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Al-Yami further teaches the cementitious materials, cement, epoxy resin and crosslinker in respective amount ranges that encompass or overlap the ranges as respectively claimed, and also teaches tailoring amounts for the desired curing and rheological properties (Al-Yami: Sections [0030], [0048]-[0064] & [0075]-[0078]). As such, although the reference fails to explicitly limit the amounts to the ranges as respectively claimed, before the effective fling date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ suitable amounts based on the desired curing and rheological properties, with a reasonable expectation of success, insofar as because it has been held; and 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 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal amounts to employ therein in order to obtain the desired result. 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." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). 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 concentration ranges for each component as critical and it is unclear if any unexpected results are achieved by using the instantly claimed concentration ranges in comparison to the broader concentration ranges as instantly disclosed. Since the method as set forth above suggests servicing a wellbore by applying a sealant composition as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed concentration ranges, and, as such, the determination of percents of each component as claimed would be achievable through routine experimentation in the art.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for sealing of areas in a subterranean formations, and a finite number of identified, predictable solutions including injecting a composition comprising components as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Al-Yami and Martinez, one of ordinary skill in the art could have pursued desired concentrations of the components, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Al-Yami further teaches the method in primary and remedial sealing applications, and also teaches the use of cementitious materials such as Portland cement and/or oxides (Al-Yami: Sections [0003]-[0009], [0023], [0025], [0029] & [0030]). The reference, however, fails to explicitly disclose the sealant composition comprising “red mud, wherein the red mud comprises particles having a diameter from about 10 mm to about 100 mm” as instantly claimed.
Martinez teaches methods of cementing/sealing in subterranean formation therein, including primary and remedial cementing, wherein the composition includes red mud as a cheaper and/or readily-available component with sufficient strength for wellbore applications, as an alternative to, or in combination with the cement materials of Al-Yami, and also teaches wherein red mud comprises different oxides (Martinez: Sections [0001]-[0004], [0010]-[0016] & [0024]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified Al-Yami with the aforementioned teachings of Martinez to include, in the sealant composition, red mud as instantly claimed as an alternative to or in combination with one or more cementitious materials of Martinez, with a reasonable expectation of success, in order employ a cheaper and/or readily-available component with sufficient strength for wellbore applications. (Martinez: Sections [0001]-[0004], [0010]-[0016] & [0024]).
Martinez further teaches red mud in particle form with a particle size range that overlaps the range as instantly claimed, and further teaches analyzing particle size suitability for the zone being treated (Martinez: Sections [0016] & [0058]). As such, although the reference(s) fails to explicitly limit the particles to the particle size range as instantly claimed, before the effective fling date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a suitable particle size range, with a reasonable expectation of success, based on the desired treatment, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal size of particles to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for sealing of areas in a subterranean formations, and a finite number of identified, predictable solutions including injecting a composition comprising suitably sized red mud particles as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Al-Yami and Martinez, one of ordinary skill in the art could have pursued a desired particle size range, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 24, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 23. Martinez further teaches red mud in particle form with a particle size range that overlaps the range as instantly claimed, and further teaches analyzing particle size suitability for the zone being treated (Martinez: Sections [0016] & [0058]). As such, although the reference fails to explicitly limit 80% of the particles to the particle size range as instantly claimed, before the effective fling date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a suitable proportion of particles within a suitable particle size range, with a reasonable expectation of success, based on the desired treatment, insofar as because it has been held. "[W]here the general conditions of a claim are disclosed in 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). Therefore, based on the actual conditions encountered in the formation, one of ordinary skill would recognize the optimal proportion and size of particles to employ therein in order to obtain the desired result.
It is also noted that, before the effective filing date of the claimed invention, there had been a recognized need in the art for sealing of areas in a subterranean formations, and a finite number of identified, predictable solutions including injecting a composition comprising suitably sized red mud particles as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Al-Yami and Martinez, one of ordinary skill in the art could have pursued a desired proportion of particles within a suitable particle size range, such as instantly claimed, with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
With respect to Claim 25, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 23. Al-Yami further discloses “…wherein the sealant composition further comprises an accelerator, retarder, weighting material, or combinations thereof” (Al-Yami: Sections [0036] & [0065]).
With respect to Claim 26, the combined references of Al-Yami and Martinez teach the method as provided above with respect to Claim 23. As set forth above, Al-Yami further teaches one or more embodiments wherein the sealant composition comprises phenols as instantly described and/or claimed (Al-Yami: Sections [0031], [0041], [0043] & [0065]). As such, although the reference fails to explicitly disclose the above method steps in combination with these materials, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include the additional materials, with a reasonable expectation of success, in order to yield predictable results in wellbore sealing applications. Further, the combination of these materials is considered to provide an “emulsifier” as instantly claimed. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the emulsifier as taught by Al-Yami and the emulsifier as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
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 1-4, 11-13, 15, 18 & 20-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 2-6 & 10-20 of copending Application No. 19/010,540 (‘540 hereinafter), in view of Al-Yami et al. (US 2020/0071596). The instant application discloses a method of servicing a wellbore comprising applying a sealant composition comprising red mud, cement, epoxy resin and a crosslinker, which overlaps in scope with ‘540 which discloses a method of servicing a formation comprising applying a sealant composition comprising the same components. While the instant claims recite a wellbore and the claims of ‘540 differ in reciting a formation, Al-Yami teaches wherein sealant compositions are known to treat such regions in a subterranean formation for zonal isolation and/or fluid migration control, in combination or in the alternative (Al-Yami: Sections [0003]-[0009] & [0024]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified the claims of ‘540 with the aforementioned teachings of Al-Yami to treat a known alternative location in a subterranean formation, with a reasonable expectation of success, in order to yield predictable results in subterranean treatment, zonal isolation and/or fluid migration control.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4, 11-13, 15, 18 & 20-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 3, 4, 11-14, 18-22 & 24-26 of copending Application No. 19/010,584 (‘584 hereinafter), in view of Al-Yami et al. (US 2020/0071596). The instant application discloses a method of servicing a wellbore comprising applying a sealant composition comprising red mud, cement, epoxy resin and a crosslinker, which overlaps in scope with ‘584 which discloses a method of servicing a casing or annulus comprising applying a sealant composition comprising the same components. While the instant claims recite a wellbore and one or more additional crosslinkers, respectively, and the claims of ‘584 differ in reciting a casing or annulus, Al-Yami teaches wherein sealant compositions are known to treat such regions in a subterranean formation for zonal isolation and/or fluid migration control, in combination or in the alternative, with a composition comprising one or more of the additional crosslinkers (Al-Yami: Sections [0003]-[0009], [0024] & [0060]-[0064]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified the claims of ‘584 with the aforementioned teachings of Al-Yami to treat a known alternative location in a subterranean formation and include one or more additional crosslinkers, with a reasonable expectation of success, in order to yield predictable results in subterranean treatment, zonal isolation and/or fluid migration control.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4, 11-13, 15, 18 & 20-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 2-6 & 10-20 of copending Application No. 19/010,766 (‘766 hereinafter), in view of Al-Yami et al. (US 2020/0071596). The instant application discloses a method of servicing a wellbore comprising applying a sealant composition comprising red mud, cement, epoxy resin and a crosslinker, which overlaps in scope with ‘766 which discloses a method of reducing circulation loss in a wellbore comprising applying a sealant composition comprising the same components. While the instant claims recite a wellbore and the claims of ‘766 differ in reciting reducing circulation loss in a wellbore, Al-Yami teaches wherein sealant compositions are known to treat such regions in a subterranean formation for zonal isolation and/or fluid migration control, in combination or in the alternative (Al-Yami: Sections [0003]-[0009] & [0024]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified the claims of ‘766 with the aforementioned teachings of Al-Yami to treat a known alternative location in a subterranean formation, with a reasonable expectation of success, in order to yield predictable results in subterranean treatment, zonal isolation and/or fluid migration control.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4, 11-13, 15, 18 & 20-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 3, 4, 11-14, 18-22 & 24-26 of copending Application No. 19/010,922 (‘922 hereinafter), in view of Al-Yami et al. (US 2020/0071596). The instant application discloses a method of servicing a wellbore comprising applying a sealant composition comprising red mud, cement, epoxy resin and a crosslinker, which overlaps in scope with ‘922 which discloses a method of servicing a formation comprising applying a sealant composition comprising the same components. While the instant claims recite a wellbore and one or more additional crosslinkers, respectively, and the claims of ‘922 differ in reciting a formation, Al-Yami teaches wherein sealant compositions are known to treat such regions in a subterranean formation for zonal isolation and/or fluid migration control, in combination or in the alternative, with a composition comprising one or more of the additional crosslinkers (Al-Yami: Sections [0003]-[0009], [0024] & [0060]-[0064]). As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified the claims of ‘922 with the aforementioned teachings of Al-Yami to treat a known alternative location in a subterranean formation and include one or more additional crosslinkers, with a reasonable expectation of success, in order to yield predictable results in subterranean treatment, zonal isolation and/or fluid migration control.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicants amendments regarding the 35 USC § 112 rejections, have been fully considered. The amendments are persuasive in-part. As such, these rejections are withdrawn in-part. Some amendments raise further objections and/or issues under 35 USC § 112 as set forth above.
Applicants’ arguments with respect to the rejection(s) of Claims 1-4, 7-15 & 17-20 under 35 USC 103 as being unpatentable over Al-Yami et al., alone or in combination with Martinez et al., have been fully considered but they are not persuasive. Applicants assert that Al-Yami does not disclose the inclusion of an emulsifier or the specific weight ranges of the components of the instantly claimed sealant composition; and that the broad ranges and preferred embodiments of Al-Yami do not suggest the narrowly claimed weight ranges; and that the instant exemplary formulations demonstrate high yield point values and rapid thickening and hardening at room temperature from a free flowing liquid to a hard gel, which are advantageous properties for a sealant composition.
The Examiner respectfully disagrees.
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Further, in response to Applicants’ argument that the references fail to show certain features of Applicants’ invention, it is noted that the features upon which Applicants rely (i.e., advantageous properties such as high yield point values, and rapid thickening and hardening at room temperature from a free flowing liquid to a hard gel as asserted) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further, it is noted that the instant specification describes the invention with broad ranges for the concentration of components of the sealant composition. The instant specification in at least [0035], [0050], [0095] & [0107] describes broader ranges for the red mud (such as about 0.01 wt % to about 75 wt%), epoxy resin (such as about 30 wt% to about 99 wt%), cement (such as about 0.01 wt% to about 75 wt%), and crosslinker (such as about 0.1 wt% to about 50 wt%). As such, the assertions of advantageous properties or utility of the instant invention does not appear to be limited to the ranges as instantly claimed. As such, the amount ranges are considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, for reasons as set forth above.
Al-Yami further teaches one or more embodiments wherein the sealant composition comprises phenols as instantly described and/or claimed (Al-Yami: Sections [0031], [0041], [0043] & [0065]). As such, although the reference fails to explicitly disclose the above method steps in combination with these materials, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include the additional materials, with a reasonable expectation of success, in order to yield predictable results in wellbore sealing applications. Further, the combination of these materials is considered to provide an “emulsifier” as instantly claimed. “Products of identical chemical composition can not 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the emulsifier as taught by Al-Yami and the emulsifier as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
Applicants remarks regarding the double patenting rejections are noted. As a terminal disclaimer has not been filed, these rejections are maintained as set forth above with updates to address any amendments.
Conclusion
Applicants’ 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 ANURADHA AHUJA whose telephone number is (571)272-3067. The examiner can normally be reached Monday through Friday.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674
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