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 .
Drawings
Figure 1 is objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 116. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 13-18 are objected to because of the following informalities: Each of claims 13-18 recites “The hydratable polymer slurry of claim 10.” Claim 10, however, recites “A reduced-polymer-loading, high-temperature fracturing fluid comprising the hydratable polymer slurry of claim 1.” Although claim 10 does indeed include a hydratable polymer slurry and thereby have antecedent basis for the phrase use in the preamble of each of claims 13-18, since claim 10 is drawn to “A reduced-polymer-loading, high-temperature fracturing fluid,” it appears such should be used as the preamble for all claims dependent thereupon. For example, with regard to claim 13, Applicant may consider amendments such as -The reduced-polymer-loading, high-temperature fracturing fluid wherein the hydratable polymer slurry is prepared at a temperature in the range of 40oC to 60oC.- Similar amendments to each of claims 14-18 are advised. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 8 is 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 8 recites the limitation "the organic clay" in line 1 thereof. There is insufficient antecedent basis for this limitation in the claim.
The Examiner notes, Applicant recites in independent claim 1, upon which claim 8 depends, “an organophilic clay comprising clay treated with an amine.” There is no recitation and/or requirement therein for “an organic clay.” However, the Examiner also notes, the compounds Applicant recites in claim 8 appear to be amines as no clay and/or organic form thereof follows within the Markush group instantly claimed. Based on the claims presented in parent application 18/339,922, it appears Applicant may intend to claim wherein the amine used to treat the clay is selected from the instantly claimed. Clarification is required.
Claims 10-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The term “high-temperature” in claim 10 is a relative term which renders the claim indefinite. The term “high-temperature” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “high-temperature” renders the scope of claim 10, along with claims 11-18, dependent therefrom, indefinite since it is unclear if Applicant intends to require the fluid itself be at a certain temperature, be used at a certain temperature and/or if any particular temperature is required and/or associated therewith. Clarification is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Diley et al. (US 2021/0324259) in view of NEODOL 91-8/Suggested Product End-Uses for Shell NEODOL Ethoxylates, N91 and N1 Series and Feng et al. (CN 104004503A).
With respect to independent claim 1, Diley et al. discloses a hydratable polymer slurry ([0003]; [0075]; [0083]; [0091]) comprising:
a hydrocarbon-based solvent ([0118]);
a hydratable polymer powder ([0092]) comprising a polyacrylamide, a partially hydrolyzed polyacrylamide, or both ([0067]; [0070]-[0072]; [0119]; [0121]-[0122]),
a polar surfactant comprising a C9-C11 alcohol reacted with ethylene oxide to produce ethoxylates ([0119], wherein an ethoxylated alcohol in the form of alkoxylated isodecyl alcohol, i.e., a C10 alcohol, is disclosed);
a hydrocarbon-soluble polymer comprising a linear deblock copolymer based on styrene and ethylene/propylene ([0120]), and,
an organophilic clay comprising clay treated with an organic compound ([0071] and [0074], wherein the suspension agents include one or more synthetic polymeric suspending agents and one or more organophilic clay suspending agents; [0120], wherein the composition may also further include an organophilic clay),
wherein the hydratable polymer slurry is prepared at a temperature (i.e., because any and all environments have a temperature) by mixing ([0088]).
Diley et al. discloses wherein the composition includes an ethoxylated alcohol surfactant ([0119]), with an example thereof including alkoxylated isodecyl alcohol, further noting wherein surfactants having desired properties such as stability, inversion and/or slurry viscosity may have an HLB value of 3-16, as well as wherein C8-C20 alcohols may be used to produce the ethoxylated surfactant ([0119]). The reference, however, fails to disclose wherein such a surfactant comprises C9-C11 alcohols, as instantly claimed. NEODOL 91-8 suggests such as a primary alcohol ethoxylate that is a blend of C9, C10 and C11 high purity primary alcohols that is biodegradable (NEODOL 91-8 Technical data sheet); it is further suggested as suitable for use in the oil field (Suggested Product End-Uses for Shell NEODOL Ethoxylates, N91 and N1 Series). It would have been obvious to one having ordinary skill in the art to try a known surfactant to the oil field comprising C9-C11 alcohols, such as NEODOL 91-8, in the slurry of Diley et al. in order to yield the predictable result of using suitable and known biodegradable surfactants commonly used for such purposes. Furthermore, the inclusion of such alcohols to produce the ethoxylated surfactant of Diley et al. is within the range of alcohols suggested by Diley et al. and as such, one of ordinary skill would recognize alcohols such as C9-C11 as suitable for in forming the ethoxylated surfactant for use therein. See 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.").
Diley et al. discloses the presence of an organophilic clay suspending agent, wherein such is clay treated with an organic material so as to be rendered organophilic ([0120]). The reference, however, fails to disclose such as a clay treated with an amine as claimed. Feng et al. teaches preparation methods of organophilic clays suitable for use in high temperature applications encountered in a subterranean well during treatment/drilling thereof, wherein a quaternary ammonium salt is used to treat such a clay to render such suitable for use in high temperature applications (Summary of invention). Exemplary suitable quaternary ammonium salts used for such a purpose include cetyltrimethylammonium bromide (Summary of invention). Since Diley et al. discloses the inclusion of an organophilic clay in the slurry and Feng et al. teaches preparation methods of organophilic clays suitable for use in high temperatures encountered in subterranean formations, wherein such are formed by modification of a clay with an amine such as cetyltrimethylammonium bromide, it would have been obvious to one having ordinary skill in the art to try an organophilic clay formed by the treatment of a clay with an amine such as cetyltrimethylammonium bromide in order to provide an organophilic clay suitable for use at high temperatures that are encountered in a subterranean environment during fracturing operations conducted therein.
Diley et al. discloses wherein the above slurry is prepared by mixing, as set forth above; the Examiner notes, such a process would indeed be conducted at a temperature. Although silent to the specific temperature and/or range thereof for mixing to prepare the slurry, it is noted that the claims are merely drawn to a hydratable polymer slurry with the above components therein and the method steps are not required and thus are not relied upon since this is a product by process claim, where only the final product is relevant, not the intermediary steps. Although Diley et al. does not disclose a temperature range for preparation, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See also United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016).
With respect to dependent claim 2, although Diley et al. is silent to the specific temperature and/or range thereof for preparing the slurry, it is noted that the claims are merely drawn to a hydratable polymer slurry with the above components therein where it is noted, the method steps are not required and thus are not relied upon since this is a product by process claim, where only the final product is relevant, not the intermediary steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See also United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016).
With respect to dependent claim 3, Diley et al. discloses wherein the hydrocarbon-based solvent is selected from the group as claimed ([0118]).
With respect to dependent claim 4, Diley et al. discloses wherein the hydrocarbon-based solvent is present in a concentration as claimed [0110], wherein 40-96 wt% of the oil based carrier/hydrocarbon-based solvent is disclosed, thereby overlapping the instantly claimed range of 40-80 wt%).
With respect to dependent claim 5, Diley et al. discloses wherein the hydratable polymer powder is a polyacrylamide ([0067]; [0070]-[0072]; [0119]; [0121]-[0122]).
With respect to dependent claim 6, Diley et al. discloses wherein the hydratable polymer powder is present in a concentration as claimed ([0110], wherein 5-60 wt% of the polymer composition is disclosed).
With respect to dependent claim 7, Diley et al. discloses wherein the one or more carrier soluble suspending agents, i.e., hydrocarbon-soluble polymer, is present in an amount between 1-10 wt% ([0110]). The Examiner notes wherein such an amount also encompasses the amount organophilic clay since a combination of carrier soluble suspending agents is disclosed by the reference. However, an amount of 1-10wt% of such a combination overlaps the range instantly claimed for the hydrocarbon soluble polymer, as well as that for the organophilic clay, and, as such, it is the position of the Office that one having ordinary skill in the art would recognize an optimal amount of the hydrocarbon soluble polymer for inclusion in the hydratable polymer slurry of Diley et al. as a carrier soluble suspending agent that overlaps the range instantly claimed for the hydrocarbon soluble polymer in order to effectively suspend the polymer particles and reduce particle settling in the hydratable polymer slurry therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). 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." 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 weight percent range for the hydrocarbon-soluble polymer as critical and it is unclear if any unexpected results are achieved by using such amounts over the entirety of the range. Since the hydrocarbon-soluble polymer of Diley et al. suspends the polymer particles and reduces particle settling, as instantly disclosed by Applicant, it does not appear that such would be considered an unexpected result of using an amount of hydrocarbon soluble polymer within the range presently claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 8, Feng et al. teaches wherein the clay is treated with an amine as claimed (Summary of invention; see motivation to combine as set forth above).
With respect to dependent claim 9, Diley et al. discloses wherein the one or more carrier soluble suspending agents, i.e., hydrocarbon-soluble polymer and organophilic clay combination, is present in an amount between 1-10 wt% ([0110]). Although silent to an amount of organophilic clay specifically, the Examiner notes, the amount of 1-10wt% disclosed by Diley et al. overlaps the range instantly claimed for the hydrocarbon soluble polymer, as well as that for the organophilic clay, and, as such, it is the position of the Office that one having ordinary skill in the art would recognize an optimal amount of the organophilic clay for inclusion in the hydratable polymer slurry of Diley et al. as a carrier soluble suspending agent that overlaps the range instantly claimed therefor in order to effectively suspend the polymer particles and reduce particle settling in the hydratable polymer slurry therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). 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." 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 weight percent range for the organophilic clay as critical and it is unclear if any unexpected results are achieved by using such amounts over the entirety of the range. Since the organophilic clay of Diley et al. suspends the polymer particles and reduces particle settling, as instantly disclosed by Applicant, it does not appear that such would be considered an unexpected result of using an amount thereof within the range presently claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
With respect to claim 10, Diley et al. discloses a reduced-polymer-loading ([0079]; [0112]), high-temperature fracturing fluid comprising the hydratable polymer slurry of claim and an aqueous carrier fluid ([0068]; [0082]-[0083]).
With respect to claim 11, Diley et al. discloses the aqueous carrier fluid selected from the group as claimed ([0068]; [0082]-[0083]).
With respect to claim 12, Diley et al. discloses the fluid further comprising proppant particles ([0124]), wherein such is carried in an amount sufficient for typical oil and gas well applications ([0111]; [0122]). Although silent to a particular concentration thereof, it would have been obvious to one having ordinary skill in the art to include a concentration of proppant particulates within the fracturing fluid so as to fit the particular needs of a fracturing operation being conducted and as such, the provision for such an amount within the range as instantly claimed since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). 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 proppant concentration as critical and it is unclear if any unexpected results are achieved by providing for such. Since the fracturing fluid of Diley et al. is designed so as to carry amounts of proppant typical to those used in fracturing operations conducted in oil and gas wells, it does not appear that such would be considered an unexpected result of providing for a proppant concentration within the extensive range instantly claimed, and, as such, the determination of optimal proppant concentration to provide for therein would be achievable through routine experimentation in the art.
With respect to dependent claim 13, although Diley et al. is silent to the specific temperature and/or range thereof for preparing the slurry, it is noted that the claims are merely drawn to a hydratable polymer slurry with the above components therein where it is noted, the method steps are not required and thus are not relied upon since this is a product by process claim, where only the final product is relevant, not the intermediary steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See also United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016).
With respect to dependent claim 14, Diley et al. discloses wherein the hydrocarbon-based solvent is selected from the group as claimed ([0118]).
With respect to dependent claim 15, Diley et al. discloses wherein the hydrocarbon-based solvent is present in a concentration as claimed [0110], wherein 40-96 wt% of the oil based carrier/hydrocarbon-based solvent is disclosed, thereby overlapping the instantly claimed range of 40-80 wt%).
With respect to dependent claim 16, Diley et al. discloses wherein the hydratable polymer powder is present in a concentration as claimed ([0110], wherein 5-60 wt% of the polymer composition is disclosed).
With respect to dependent claim 17, Diley et al. discloses wherein the one or more carrier soluble suspending agents, i.e., hydrocarbon-soluble polymer, is present in an amount between 1-10 wt% ([0110]). The Examiner notes wherein such an amount also encompasses the amount organophilic clay since a combination of carrier soluble suspending agents is disclosed by the reference. However, an amount of 1-10wt% of such a combination overlaps the range instantly claimed for the hydrocarbon soluble polymer, as well as that for the organophilic clay, and, as such, it is the position of the Office that one having ordinary skill in the art would recognize an optimal amount of the hydrocarbon soluble polymer for inclusion in the hydratable polymer slurry of Diley et al. as a carrier soluble suspending agent that overlaps the range instantly claimed for the hydrocarbon soluble polymer in order to effectively suspend the polymer particles and reduce particle settling in the hydratable polymer slurry therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). 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." 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 weight percent range for the hydrocarbon-soluble polymer as critical and it is unclear if any unexpected results are achieved by using such amounts over the entirety of the range. Since the hydrocarbon-soluble polymer of Diley et al. suspends the polymer particles and reduces particle settling, as instantly disclosed by Applicant, it does not appear that such would be considered an unexpected result of using an amount of hydrocarbon soluble polymer within the range presently claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 18, Diley et al. discloses wherein the one or more carrier soluble suspending agents, i.e., hydrocarbon-soluble polymer and organophilic clay combination, is present in an amount between 1-10 wt% ([0110]). Although silent to an amount of organophilic clay specifically, the Examiner notes, the amount of 1-10wt% disclosed by Diley et al. overlaps the range instantly claimed for the hydrocarbon soluble polymer, as well as that for the organophilic clay, and, as such, it is the position of the Office that one having ordinary skill in the art would recognize an optimal amount of the organophilic clay for inclusion in the hydratable polymer slurry of Diley et al. as a carrier soluble suspending agent that overlaps the range instantly claimed therefor in order to effectively suspend the polymer particles and reduce particle settling in the hydratable polymer slurry therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). 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." 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 weight percent range for the organophilic clay as critical and it is unclear if any unexpected results are achieved by using such amounts over the entirety of the range. Since the organophilic clay of Diley et al. suspends the polymer particles and reduces particle settling, as instantly disclosed by Applicant, it does not appear that such would be considered an unexpected result of using an amount thereof within the range presently claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2016/0122626 discloses a polymer suspension hydrated by mixing with an aqueous fluid wherein the polymer is hydrated in less than 4 hours.
US 5,278,203 discloses a polymer slurry that is mixed with an aqueous fluid to form a frac fluid, wherein the polymer slurry includes a diesel carrier, an organophilic clay and a nonylphenol ethoxylate surfactant.
US 2018/0155615 discloses a liquid suspension made from dry polyacrylamide, an organophilic clay and a C13 alcohol ethoxylate.
US 2022/0002610 discloses a slurry composition that includes a solvent, a suspension aid, a polar activator and an alkoxylated fatty amine.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
12/15/25