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 10-29 have been examined in this application. This communication is a Non-Final Rejection in response to the Application filed on February 6, 2025 and the Response to Restriction Election filed May 4, 2026. Claims 1-9 stand canceled.
Election/Restrictions
Applicants’ election of Group II in the reply filed on May 4, 2026 is acknowledged. Although Applicants indicate election with traverse, because Applicants did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818). Group I stands withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 10-29 are objected to because of the following informalities:
Claim 10 recites “product of the setting” in line 5. To improve clarity, replacement of this limitation with language such as “product of setting” is required.
Claim 10 recites the phrase “about” in one or more instances with respect to one or more numerical ranges. As the specification does not appear to set forth a clear definition of the numerical values encompassed by the phrase “about”, deletion of this phrase is required to improve clarity of the claims.
Claim 10 recites the limitation “wherein the cement slurry comprises from about 0.2 to about 20 percent graphene by weight of cement (% graphene bwoc)”. As the claim previously sets forth more than one form of graphene (i.e., graphene comprising the cement slurry, and BRG comprising the graphene), to improve clarity, replacement of “graphene by weight of cement” with “of the graphene by weight of the cement” is required.
Appropriate correction is required. Claims 11-20 are also objected to for being dependent on Claim 10.
Claims 12 & 13 each recite “than the compressive strength” in line 2. To improve clarity, replacement of this limitation with “than a compressive strength” is required.
Claim 13 recites “a compressive strength” in line 1. As dependent Claim 15 appears to subsequently refer to this feature as “CS”, replacement of “a compressive strength” with “a compressive strength (CS)” is required, to improve clarity.
Appropriate correction is required. Claim 15 is also objected to for being dependent on Claim 13.
Claim 14 recites the acronym “YM/CS”. To improve clarity, recitation of the expanded form of the acronym is required in at least the first instance. Appropriate correction is required.
Claims 11-15 each recite “same cement slurry” (emphasis added) and then recite a difference. To improve clarity, replacement of “same cement slurry” with language such as “otherwise same cement slurry” or similar is suggested. Appropriate correction is required. Claims 13 & 15 are also objected to for being dependent on Claims 11 & 13, respectively.
Claim 21 recites the phrase “about” in one or more instances with respect to one or more numerical ranges. As the specification does not appear to set forth a clear definition of the numerical values encompassed by the phrase “about”, deletion of this phrase is required to improve clarity of the claims
Claim 21 recites the limitation “wherein the cement slurry comprises from about 0.2 to about 20 percent graphene by weight of cement (% graphene bwoc)”. As the claim previously sets forth more than one form of graphene (i.e., graphene comprising the cement slurry, and BRG comprising the graphene), to improve clarity, replacement of “graphene by weight of cement” with “of the graphene by weight of the cement” is required.
Claim 21 recites the limitation “the resiliency” in line 9. To improve clarity, replacement of this limitation with “a resiliency” is required.
Claim 21 recites “same cement slurry” (emphasis added) and then recites a difference. To improve clarity, replacement of “same cement slurry” with language such as “otherwise same cement slurry” or similar is suggested.
Claim 21 recites “a hardened cement produced from a same cement slurry”. As the claim previously recites “a hardened cement”, to improve clarity, replacement of “a hardened cement” (with respect to the “same cement slurry”) with language such as “a comparative hardened cement” or similar is required.
Appropriate correction is required. Claims 22-29 are also objected to for being dependent on Claim 21.
Claims 23-26 each recite “the same cement”. Parent Claim 21 recites “a hardened cement produced from a same cement slurry” (emphasis added). Consistency in terminology is required to improve clarity. Appropriate correction is required (see related objection to Claim 21 above and correct appropriately). Claims 24-26 are also objected to for being dependent on Claims 23 & 24, respectively.
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.
Claims 11-15 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 11-15 each recite “wherein the graphene of the same cement slurry comprises a reduced amount of the BRG”; which is unclear. What is the reduction in BRG amount with respect to – the cement slurry of the invention, some standard, other? If in comparison to the cement slurry of the instant invention, it is noted that parent Claim 10 does not necessarily set forth an amount of BRG in the cement slurry. As such, the recitation of “a reduced amount of BRG” is unclear.
Appropriate correction and/or clarification is required. Claims 13 & 15 are also rejected for being dependent on Claims 11 & 13, respectively. The claims have been examined as best understood.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 10-15 & 19-26 are rejected under 35 U.S.C. 103 as being unpatentable over Shahsavari et al. (WO 2021/076667), in view of Muthusamy et al. (US 2015/0152314).
With respect to Claim 10, Shahsavari discloses a subterranean structure comprising a hardened cement in a well to seal a portion (Shahsavari: Sections [0005]-[0010] & [0080]); wherein the hardened cement is a product of the setting of a cement slurry comprising: graphene; a cement; and water, wherein the graphene comprises bioderived renewable graphene (BRG) (Shahsavari: Sections [0007]-[0010], [0032], [0033] & [0042]).
Shahsavari further teaches the cement slurry comprising graphene in an amount range that overlaps with the range as instantly claimed and also teaches wherein the amount is dependent on the desired properties (Shahsavari: Section [0041]). As such, although the reference fails to explicitly limit the graphene to a range 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 employ a suitable amount of graphene based on the desired properties, such as instantly claimed, with a reasonable expectation of success, 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 workspace, one of ordinary skill would recognize the optimal amount of graphene 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 cements with improved properties, and a finite number of identified, predictable solutions including the use of a cement slurry with graphene in an amount dependent on desired properties as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Shahsavari, one of ordinary skill in the art could have pursued a desired amount of graphene 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.
Shahsavari further discloses the structure in an oil and gas well cementing applications (Shahsavari: Section [0080]). The reference, however, fails to explicitly disclose the above structure in combination with “a tubular disposed in a wellbore” and the “hardened cement disposed in an annulus between a wall of the wellbore and the tubular, wherein the hardened cement is bonded to the tubular and the wall of the wellbore to seal a portion of the annulus from fluid flow” as instantly claimed.
Muthusamy teaches well cementing therein, wherein it is taught to be known in the art to place cement compositions in an oil and gas well comprising a tubular disposed in a wellbore, and with hardened cement disposed in an annulus between a wall of the wellbore and the tubular, wherein the hardened cement is bonded to the tubular and the wall of the wellbore to seal a portion of the annulus from fluid flow for primary cementing or completion operations in oil recovery applications (Muthusamy: Sections [0001]-[0003] & [0010]). 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 Shahsavari with the aforementioned teachings of Muthusamy to place the structure in a manner known in the art, i.e., a tubular disposed in a wellbore with hardened cement disposed in an annulus between a wall of the wellbore and the tubular, wherein the hardened cement is bonded to the tubular and the wall of the wellbore to seal a portion of the annulus from fluid flow as instantly claimed, with a reasonable expectation of success, in order to perform primary cementing or completion operations in oil recovery applications. (Muthusamy: Sections [0001]-[0003] & [0010]).
With respect to Claims 11-15, the combined references of Shahsavari and Muthusamy teach the structure as provided above with respect to Claim 10. Shahsavari further discloses wherein the Young’s modulus and/or compressive strength of the hardened cement is greater and teaches one or more embodiments wherein the hardened cement has a greater increase of compressive strength than of Young’s modulus (which is considered to provide for reduction in the ratio of Young’s modulus to the compressive strength) (Shahsavari: Sections [0002] & [0040]; Claim 11). Although the respective comparisons are not explicitly disclosed with respect to a hardened cement produced from “a same cement slurry” as respectively claimed, it is noted that Shahsavari discloses the same BRG and cement as instantly claimed and described in [0015] & [0043] of the instant specification (Shahsavari: Sections [0012]-[0015], [0028], [0030], [0032], [0033] & [0050]-[0073]). As such, the hardened cement is considered to have properties in comparison to “a same cement slurry” as respectively 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 properties of the hardened cement of Shahsavari’s disclosure and the properties of the hardened cement of the structure 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 19, the combined references of Shahsavari and Muthusamy teach the structure as provided above with respect to Claim 10. Shahsavari further discloses wherein the cement comprises a cement selected from the group as instantly claimed (Shahsavari: Sections [0012]-[0015], [0028], [0030] & [0050]-[0073]).
With respect to Claim 20, the combined references of Shahsavari and Muthusamy teach the structure as provided above with respect to Claim 10. Shahsavari further discloses suitable cements to include calcium aluminate cements and also teaches wherein the type of cement used is dependent on the specific application (Shahsavari: Sections [0028] & [0030]). Although the reference fails to explicitly limit the amount of calcium aluminate to “greater than 1 weight percent” 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 employ a suitable amount of calcium aluminate cement based on the desired application, such as instantly claimed, with a reasonable expectation of success, 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 workspace, one of ordinary skill would recognize the optimal amount of calcium aluminate 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 cements with improved properties, and a finite number of identified, predictable solutions including the use of a cement slurry comprising calcium aluminate cement in an amount based on the desired application as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Shahsavari, one of ordinary skill in the art could have pursued a desired amount of calcium aluminate 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 21, Shahsavari discloses a subterranean structure comprising a hardened cement in a well to seal a portion (Shahsavari: Sections [0005]-[0010] & [0080]); wherein the hardened cement is formed by allowing a cement slurry to set, wherein the cement slurry comprises: graphene; a cement; and water, wherein the graphene comprises bioderived renewable graphene (BRG) (Shahsavari: Sections [0007]-[0010], [0032], [0033] & [0042]).
Shahsavari further teaches the cement slurry comprising graphene in an amount range that overlaps with the range as instantly claimed and also teaches wherein the amount is dependent on the desired properties (Shahsavari: Section [0041]). As such, although the reference fails to explicitly limit the graphene to a range 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 employ a suitable amount of graphene based on the desired properties, such as instantly claimed, with a reasonable expectation of success, 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 workspace, one of ordinary skill would recognize the optimal amount of graphene 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 cements with improved properties, and a finite number of identified, predictable solutions including the use of a cement slurry with graphene in an amount dependent on desired properties as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Shahsavari, one of ordinary skill in the art could have pursued a desired amount of graphene 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.
Shahsavari further discloses wherein the Young’s modulus and/or compressive strength of the hardened cement is greater and teaches one or more embodiments wherein the hardened cement has a greater increase of compressive strength than of Young’s modulus (which is considered to provide for reduction in the ratio of Young’s modulus to the compressive strength, i.e., increased resiliency as described in [0063] of the instant specification) (Shahsavari: Sections [0002] & [0040]; Claim 11). Although the respective comparisons are not explicitly disclosed with respect to a hardened cement produced from “a same cement slurry” as instantly claimed, it is noted that Shahsavari discloses the same BRG and cement as instantly claimed and described in [0015] & [0043] of the instant specification (Shahsavari: Sections [0012]-[0015], [0028], [0030], [0032], [0033] & [0050]-[0073]). As such, the hardened cement is considered to have properties as instantly claimed in comparison to “a same cement slurry”. “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 properties of the hardened cement of Shahsavari’s disclosure and the properties of the hardened cement of the structure 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.
Shahsavari further discloses the structure in an oil and gas well cementing applications (Shahsavari: Section [0080]). The reference, however, fails to explicitly disclose the above structure in combination with “a tubular disposed in a wellbore” and the “hardened cement disposed in an annulus between a wall of the wellbore and the tubular, wherein the hardened cement is bonded to the tubular and the wall of the wellbore to seal a portion of the annulus from fluid flow” as instantly claimed.
Muthusamy teaches well cementing therein, wherein it is taught to be known in the art to place cement compositions in an oil and gas well comprising a tubular disposed in a wellbore, and with hardened cement disposed in an annulus between a wall of the wellbore and the tubular, wherein the hardened cement is bonded to the tubular and the wall of the wellbore to seal a portion of the annulus from fluid flow for primary cementing or completion operations in oil recovery applications (Muthusamy: Sections [0001]-[0003] & [0010]). 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 Shahsavari with the aforementioned teachings of Muthusamy to place the structure in a manner known in the art, i.e., a tubular disposed in a wellbore with hardened cement disposed in an annulus between a wall of the wellbore and the tubular, wherein the hardened cement is bonded to the tubular and the wall of the wellbore to seal a portion of the annulus from fluid flow as instantly claimed, with a reasonable expectation of success, in order to perform primary cementing or completion operations in oil recovery applications. (Muthusamy: Sections [0001]-[0003] & [0010]).
With respect to Claims 22-26, the combined references of Shahsavari and Muthusamy teach the structure as provided above with respect to Claim 21. Shahsavari further discloses wherein the Young’s modulus and/or compressive strength of the hardened cement is greater and teaches one or more embodiments wherein the hardened cement has a greater increase of compressive strength than of Young’s modulus (which is considered to provide for reduction in the ratio of Young’s modulus to the compressive strength) (Shahsavari: Sections [0002] & [0040]; Claim 11). Although the respective comparisons are not explicitly disclosed with respect to “the same cement” as respectively claimed and with a ratio limited to the range as respectively claimed, it is noted that Shahsavari discloses the same BRG and cement as instantly claimed and described in [0015] & [0043] of the instant specification (Shahsavari: Sections [0012]-[0015], [0028], [0030], [0032], [0033] & [0050]-[0073]). As such, the hardened cement is considered to have properties in comparison to “the same cement” as respectively 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 properties of the hardened cement of Shahsavari’s disclosure and the properties of the hardened cement of the structure 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.
Claims 16-18 & 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Shahsavari et al. (WO 2021/076667), in view of Muthusamy et al. (US 2015/0152314), further in view of Pisklak et al. (US 2024/0059952).
With respect to Claim 16 & 27, the combined references of Shahsavari and Muthusamy teach the structure as provided above with respect to Claims 10 & 21, respectively. The combined references, however, fail to explicitly disclose wherein the BRG comprises nanosheets as respectively claimed.
Pisklak teaches subterranean well cementing therein, wherein the cement slurry comprises BRG in the form of nanosheets with a surface area and pore volume as instantly claimed which is operationally friendly and leads to lower costs (Pisklak: Sections [0004], [0040], [0043], [0044], [0063]-[0068] & [0072]). 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 combined references of Shahsavari and Muthusamy with the aforementioned teachings of Pisklak to employ BRG comprising nanosheets as instantly claimed, with a reasonable expectation of success, in order to improve operations and/or lower costs. (Pisklak: Sections [0004], [0040], [0043], [0044], [0063]-[0068] & [0072]).
With respect to Claims 17 & 28, the combined references of Shahsavari, Muthusamy and Pisklak teach the structure as provided above with respect to Claims 16 & 27, respectively. Shahsavari further discloses “…wherein the BRG comprises graphene derived from a plant” (Shahsavari: Section [0033]). Pisklak further teaches “…wherein the BRG comprises graphene derived from a plant” (Pisklak: Section [0021]).
With respect to Claims 18 & 29, the combined references of Shahsavari, Muthusamy and Pisklak teach the structure as provided above with respect to Claims 17 & 28, respectively. Pisklak further teaches “…wherein the nanosheets comprise greater than 90 weight percent carbon” (Pisklak: Section [0033]).
Claims 10-29 are rejected under 35 U.S.C. 103 as being unpatentable over Pisklak et al. (US 2024/0059952).
With respect to Claim 10, Pisklak discloses a subterranean structure comprising: a tubular disposed in a wellbore and a hardened cement disposed in an annulus between a wall of the wellbore and the tubular, wherein the hardened cement is bonded to the tubular and the wall of the wellbore to seal a portion of the annulus from fluid flow (Pisklak: Sections [0004], [0043], [0044] & [0063]-[0068]); wherein the hardened cement is a product of the setting of a cement slurry comprising: graphene; a cement; and water, wherein the graphene comprises bioderived renewable graphene (BRG) (Pisklak: Sections [0004], [0014], [0016], [0019]-[0021], [0040], [0043] & [0044]).
Pisklak further teaches wherein the cement slurry comprises an amount of graphene that encompasses the range as instantly claimed (Pisklak: Section [0020]). As such, although the reference fails to explicitly limit the graphene amount to a range 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 provide a desired amount of graphene, such as instantly claimed, with a reasonable expectation of success, 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 amount 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 improved cementing, and a finite number of identified, predictable solutions including use of a composition comprising a components as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Pisklak, one of ordinary skill in the art could have pursued desired concentrations of the components, such as within the range 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 Claims 11-15, Pisklak teaches the structure as provided above with respect to Claim 10. As Pisklak discloses the same components, particularly the BRG, in the cement slurry as instantly claimed, the hardened cement formed from the cement slurry is also considered to exhibit the properties as respectively 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 properties of the hardened cement of Pisklak’s disclosure and the properties of the hardened cement of the structure 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 16, Pisklak teaches the structure as provided above with respect to Claim 10, and further teaches wherein the BRG comprises nanosheets and wherein the nanosheets have a surface area and pore volume that encompasses the ranges as respectively claimed (Pisklak: Section [0040]). As such, although the reference fails to explicitly limit the surface area and pore volume to the ranges as respectively claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a desired surface area and pore volume, such as instantly claimed, with a reasonable expectation of success, 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 surface area and pore volume 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 improved cementing, and a finite number of identified, predictable solutions including the use of a composition comprising a graphene nanosheets with a surface area and pore volume as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Pisklak, one of ordinary skill in the art could have pursued a desired surface area and pore volume of the nanosheets, such as within the respective ranges 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 17, Pisklak teaches the structure as provided above with respect to Claim 16, and further discloses “…wherein the BRG comprises graphene derived from a plant” (Pisklak: Sections [0020] & [0021]).
With respect to Claim 18, Pisklak teaches the structure as provided above with respect to Claim 17, and further discloses “…wherein the nanosheets comprise greater than 90 weight percent carbon” (Pisklak: Section [0033]).
With respect to Claim 19, Pisklak teaches the structure as provided above with respect to Claim 10, and further discloses wherein the cement comprises a cement selected from the group as instantly claimed (Pisklak: Section [0044]).
With respect to Claim 20, Pisklak teaches the structure as provided above with respect to Claim 10, and further discloses “…wherein the cement comprises a construction grade cement, wherein the construction grade cement comprises greater than 1 weight percent (wt%) calcium aluminate” (Pisklak: Section [0045]).
With respect to Claim 21, Pisklak discloses a subterranean structure comprising: a tubular disposed in a wellbore and a hardened cement disposed in an annulus between a wall of the wellbore and the tubular, wherein the hardened cement is bonded to the tubular and the wall of the wellbore to seal a portion of the annulus from fluid flow (Pisklak: Sections [0004], [0043], [0044] & [0063]-[0068]); wherein the hardened cement is formed by allowing a cement slurry to set, wherein the cement slurry comprises: graphene; a cement; and water, wherein the graphene comprises bioderived renewable graphene (BRG) (Pisklak: Sections [0004], [0014], [0016], [0019]-[0021], [0040], [0043] & [0044]).
As Pisklak discloses the same components, particularly the BRG, in the cement slurry as instantly claimed, the hardened cement formed from the cement slurry is also considered to exhibit the property 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 properties of the hardened cement of Pisklak’s disclosure and the property of the hardened cement of the structure 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.
Pisklak further teaches wherein the cement slurry comprises an amount of graphene that encompasses the range as instantly claimed (Pisklak: Section [0020]). As such, although the reference fails to explicitly limit the graphene amount to a range 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 provide a desired amount of graphene, such as instantly claimed, with a reasonable expectation of success, 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 amount 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 improved cementing, and a finite number of identified, predictable solutions including the use of a composition comprising a components as set forth above with properties as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Pisklak, 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.
With respect to Claims 22-26, Pisklak teaches the structure as provided above with respect to Claim 21. As Pisklak discloses the same components, particularly the BRG, in the cement slurry as instantly claimed, the hardened cement formed from the cement slurry is also considered to exhibit the properties as respectively 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 properties of the hardened cement of Pisklak’s disclosure and the properties of the hardened cement of the structure 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 27, Pisklak teaches the structure as provided above with respect to Claim 21, and further teaches wherein the BRG comprises nanosheets and wherein the nanosheets have a surface area and pore volume that encompasses the ranges as respectively claimed (Pisklak: Section [0040]). As such, although the reference fails to explicitly limit the surface area and pore volume to the ranges as respectively claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a desired surface area and pore volume, such as instantly claimed, with a reasonable expectation of success, 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 surface area and pore volume 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 improved cementing, and a finite number of identified, predictable solutions including the use of a composition comprising a graphene nanosheets with a surface area and pore volume as set forth above. As such, before the effective filing date of the claimed invention, based on the teachings of Pisklak, one of ordinary skill in the art could have pursued a desired surface area and pore volume of the nanosheets, such as within the respective ranges 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 28, Pisklak teaches the structure as provided above with respect to Claim 27, and further discloses “…wherein the BRG comprises graphene derived from a plant” (Pisklak: Sections [0020] & [0021]).
With respect to Claim 29, Pisklak teaches the structure as provided above with respect to Claim 28, and further discloses “…wherein the nanosheets comprise greater than 90 weight percent carbon” (Pisklak: Section [0033]).
Claims 10-29 are similarly rejected (1) under 35 U.S.C. 103 as being unpatentable over Shahsavari et al. (WO 2021/076667), in view of Muthusamy et al. (US 2015/0152314), further in view of the following references that each name another inventor and were effectively filed before the effective filing date of the claimed invention; and (2) under 35 U.S.C. 103 as being unpatentable over the following references that each name another inventor and were effectively filed before the effective filing date of the claimed invention.
Pisklak et al. (US 2024/0059953)
Pisklak et al. (US 2024/0059955)
Lewis et al. (US 2024/0059608)
Pisklak et al. (US 2024/0182775)
Pisklak et al. (US 2024/0247178)
Lewis et al. (US 2024/0308907)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xiang et al. (US 2018/0282214) discloses cementing in subterranean applications with a cement slurry comprising graphene.
Taleghani et al. (US 2020/0308469) discloses cementing in subterranean applications with a cement slurry comprising graphene.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674
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