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 1-20 have been examined in this application. This communication is a Non-Final Rejection in response to the Application filed on March 4, 2025.
Specification/Information Disclosure Statement
The submitted Information Disclosure Statement (IDS) does not include all references cited in the specification. The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
Claim Objections
Claims 1-20 are objected to because of the following informalities:
Claim 1 recites “a casing and a wellbore wall”. As the claim previously sets forth a “cased wellbore”, to improve clarity, replacement of this limitation with language such as -a casing and a wall of the wellbore- is recommended. Appropriate correction is required. Claims 2-20 are also objected to for being dependent on Claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of cementing a well by curing a cementitious mixture in an annulus thereby connecting the casing to the wellbore wall, does not reasonably provide enablement for the method at any and all depths in excess of “at least 10,000 feet” as instantly claimed. This is a range with an unbounded upper limit, and, therefore, encompasses depths so inconceivably high that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for a depth of 50,000 feet, 75,000 ft etc. (increasable ad nauseam), even though these depths are encompassed in the claimed range. The present application appears to discuss curing the cementitious mixture to connect the casing to the wellbore wall at depths of 10,000-30,000 feet (specification page 10, lines 3-7). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Per In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), the following undue experimentation factors support a determination that the disclosure satisfies the enablement requirement for the full scope of the respective claim:
(B) The nature of the invention – the current invention contemplates cementing a well by curing a cementitious mixture in an annulus thereby connecting the casing to the wellbore wall.
(C) The state of the prior art – cementing a well by curing a cementitious mixture in an annulus thereby connecting the casing to the wellbore wall appears to be known in the art.
(D) The level of one of ordinary skill – one of ordinary skill in the art would be capable of by cementing a well by curing a cementitious mixture in an annulus thereby connecting the casing to the wellbore wall.
However, the following undue experimentation factors do not support a determination that the disclosure satisfies the enablement requirement for the full scope of the respective claim:
(A) The breadth of the claim – the current claims present curing the cementitious mixture to connect the casing to the wellbore wall at any and all depths of 10,000 feet or greater, but it is not clear how curing as instantly claimed is achieved at depths beyond 30,000 feet. The claimed range of “at least 10,000 feet” encompasses depths so inconceivably high that it cannot reasonably be possible to cure the claimed cement mixture to connect the casing to the wellbore wall under conditions at all such depths as instantly claimed.
(E) The level of predictability in the art - the current claims present curing the cementitious mixture to connect the casing to the wellbore wall at any and all depths of 10,000 feet or greater, but it is not clear how curing as instantly claimed is achieved at depths beyond 30,000 feet. The claimed range of “at least 10,000 feet” encompasses depths so inconceivably high that it cannot reasonably be possible to cure the claimed cement mixture to connect the casing to the wellbore wall under conditions at all such depths as instantly claimed.
(F) The amount of direction provided by the inventor – the current claims present curing the cementitious mixture to connect the casing to the wellbore wall at any and all depths of 10,000 feet or greater, but it is not clear how curing as instantly claimed is achieved at depths beyond 30,000 feet. The claimed range of “at least 10,000 feet” encompasses depths so inconceivably high that it cannot reasonably be possible to cure the claimed cement mixture to connect the casing to the wellbore wall under conditions at all such depths as instantly claimed.
(G) The existence of working examples – the current claims present curing the cementitious mixture to connect the casing to the wellbore wall at any and all depths of 10,000 feet or greater, but it is not clear how curing as instantly claimed is achieved at depths beyond 30,000 feet. The claimed range of “at least 10,000 feet” encompasses depths so inconceivably high that it cannot reasonably be possible to cure the claimed cement mixture to connect the casing to the wellbore wall under conditions at all such depths as instantly claimed.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure - the current claims present curing the cementitious mixture to connect the casing to the wellbore wall at any and all depths of 10,000 feet or greater, but it is not clear how curing as instantly claimed is achieved at depths beyond 30,000 feet. The claimed range of “at least 10,000 feet” encompasses depths so inconceivably high that it cannot reasonably be possible to cure the claimed cement mixture to connect the casing to the wellbore wall under conditions at all such depths as instantly claimed. As such, the quantity of experimentation is infinite.
That is, 3 of the Wands factors support enablement, while 5 factors do not support enablement. Therefore, there exists a scope of enablement deficiency for the current claims. See MPEP 2164.08.
Appropriate correction and/or clarification is required. Claims 2-20 are also rejected for being dependent on Claim 1. For purposes of examination, the Office considers Claim 1 as follows:
A method of cementing a well, comprising:
injecting a cementitious mixture into a cased wellbore at a depth of -30,000 feet, wherein the cementitious mixture is injected into an annulus between a casing and a of the wellbore, and
curing the cementitious mixture to form a cured cement connecting the casing to the wellbore wall,
wherein the cementitious mixture comprises:
a class G cement in an amount of 40 to 50 percent by weight (wt. %);
water in an amount of 15 to 25 wt. %;
a retarder in an amount of 0.5 to 1 wt. %;
a dispersant in an amount of 0.05 to 0.2 wt. %;
a fluid loss additive in an amount of 0.1 to 0.3 wt. %;
a defoamer in an amount of 0.001 to 0.05 wt. %;
a silica flour in an amount 10 to 20 wt. %; and
magnetite in an amount of 10 to 20 wt. %,
wherein the wt. % is based on a total weight of the cementitious mixture.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites “a depth of at least 10,000 feet” This is a range with an unbounded upper limit, and, as such, it is unclear as to the extent of depth range Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite. Appropriate correction and/or clarification is required. Claims 2-20 are also rejected for being dependent on Claim 1. For purposes of examination, the Office considers Claim 1 as set forth above.
Claim 2 recites “wherein the magnetite comprises at least 95 wt. % iron based on the total weight of atoms other than oxygen in the magnetite”. The specification in at least page 9 describes “Magnetite is a naturally occurring iron oxide mineral (Fe304)”. As described, “atoms other than oxygen in the magnetite” would appear to include only iron (Fe). As such, the instantly claimed range appears to recite “at least 95 wt. % iron” based on the total weight of iron; which is unclear. Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim 3 recites “wherein the magnetite comprises at least 99 wt. % iron based on the total weight of atoms other than oxygen in the magnetite”. The specification in at least page 9 describes “Magnetite is a naturally occurring iron oxide mineral (Fe304)”. As described, “atoms other than oxygen in the magnetite” would appear to include only iron (Fe). As such, the instantly claimed range appears to recite “at least 99 wt. % iron” based on the total weight of iron; which is unclear. Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim 13 recites “wherein the hematite comprises at least 95 wt. % iron based on the total weight of atoms other than oxygen in the hematite”. The specification in at least page 9 describes “Hematite is an iron oxide mineral (Fe2O3)”. As described, “atoms other than oxygen in the hematite” would appear to include only iron (Fe). As such, the instantly claimed range appears to recite “at least 95 wt. % iron” based on the total weight of iron; which is unclear. Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Conclusion
This Office Action does not set forth any prior art rejections under 35 USC 102 and/or 103 for the claims as considered for purposes of examination (as set forth above). However, the prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jamison et al. (US 2014/0209290) discloses a method of cementing a well by curing a cementitious mixture in an annular region, the cementitious mixture comprising cement, magnetite and other additives. The reference, however, fails to explicitly disclose the method with at least the features of the cementitious mixture comprising the components in amount ranges as instantly claimed, and curing the mixture to connect the casing to the wellbore wall in a wellbore with a depth of 10,000-30,000 feet as instantly considered.
Brown et al. (US 2018/0273825) discloses a method of cementing a well by curing a cementitious mixture in an annular region, the cementitious mixture comprising class G cement, magnetite and other additives. The reference, however, fails to explicitly disclose the method with at least the features of the cementitious mixture comprising the components in amount ranges as instantly claimed, and curing the mixture to connect the casing to the wellbore wall in a wellbore with a depth of 10,000-30,000 feet as instantly considered.
McDaniel et al. (US 2018/0298265) discloses a method of cementing a well by curing a cementitious mixture in an annular region, the cementitious mixture comprising class G cement, magnetite and other additives. The reference, however, fails to explicitly disclose the method with at least the features of the cementitious mixture comprising the components in amount ranges as instantly claimed, and curing the mixture to connect the casing to the wellbore wall in a wellbore with a depth of 10,000-30,000 feet as instantly considered.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674