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 .
Response to Arguments
Applicant’s arguments, filed on 01/20/2026, with respect to objection to the specification has been fully considered and are persuasive. The objection of the specification has been withdrawn.
Applicant’s arguments, filed on 01/20/2026, with respect to rejection of claims 23, 25, and 26 under 35 USC 112 (b) / 2nd has been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Applicant's arguments filed on 01/20/2026 with regards to Claims 19-20, and 23-30 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Smith (US 2021/0002538 A1)have been fully considered but they are not persuasive.
With regards to claim 1, the applicant argues that “However, Smith does not disclose any density value, much less any specific low-density target, nor any functional requirement tied to density. A claimed functional or result-oriented limitation must be expressly or inherently disclosed, not inferred. Nor does Smith teach an "identical chemical composition" as appears to also be asserted by the Examiner. Id. Rather, as discussed below, the list of components cited by the Examiner includes optional components, alternative additives, and these are described with different functional purposes, and using broad ranges.” (See Arguments, page 14, 1st argument)
The examiner respectively disagrees.
Smith discloses the composition as recited in the claim limitation, therefore, the instant application composition is disclosed as clearly point out in the rejection below. Therefore, the rejection has been maintained.
It is elementary that the mere recitation of a newly discovered function and / or property, inherently possessed by things in the prior art, does not cause a claim drawn to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that that a function limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not posses the characteristic relied on. In re Swminehart, 169 USPQ 226 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 19-20, and 23-30 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Smith (US 2021/0002538 A1) ("Smith" herein- cited previously) .
Claim 19
Smith discloses a low-density hollow glass bead (HGB) fluid, comprising a combination of constituents comprising:
a base oil; [0014, 0037, 0039]
an oil viscosifying agent to increase a viscosity of the base oil; [0038 & Claim 4] hollow glass beads (HGBs) at a concentration in a range between 20 volume percent (vol %) and 60 vol %; [0017-0018, 0036, 0052]
an organophilic clay to maintain suspension of the HGBs within the low-density HGB fluid; [0018, 0051]
a clay activator to provide for dispersion of the organophilic clay throughout the low-density HGB fluid; (i.e. propylene carbonate) [0018, 0053] and
a surfactant to act as a rheology modifier for the low-density HGB fluid. [0018, 0036]
Since Smith discloses the same composition comprising a base oil, a viscosifying agent, a glass beads, an organophilic clay, propylene carbonate, a surfactant, it would be a low-density hollow glass bead (HGB) fluid, an oil viscosifying agent that would increase a viscosity of the base oil; a hollow glass beads (HGBs); an organophilic clay that would maintain suspension of the HGBs within the low-density HGB fluid; a clay activator that would provide dispersion of the organophilic clay throughout the low-density HGB fluid; and a surfactant that would act as a rheology modifier for the low-density HGB fluid.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if
the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 20
Smith disclose the low-density HGB fluid of claim 19, wherein the low-density HGB fluid is stable at temperatures up to 350 degrees Fahrenheit (°F). [0016]
Claim 23
Smith discloses the low-density HGB fluid of claim 19, wherein the formulation of the low-density HGB fluid is determined such that the low-density HGB fluid comprises a density in a range between 3.5 pounds per gallon (ppg) and 6.0 ppg. [0012-0013]
Claim 24
Smith discloses the low-density HGB fluid of claim 19, wherein the low-density HGB fluid is suitable for use as at least one of:
a lower-density cap fluid for a drilling operation employing pressurized mudcap drilling (PMCD) techniques;
a drilling fluid for a drilling operation employing managed pressure drilling (MPD) techniques;
a drilling fluid for a conventional drilling operation corresponding to a depleted .
reservoir with a reduced fracture gradient and a reduced pore pressure; or a lightweight fluid for a wellbore workover operation. [0012-0013]
Claim 25
Smith discloses the low-density HGB fluid of claim 19, wherein the formulation of the low-density HGB fluid is determined based, at least in part, on thermal stability testing performed using an experimental lab apparatus comprising a glass column that is loaded with a specific formulation of constituents and heated to a predetermined temperature as properties of the constituents within the glass column are observed, and wherein the observed properties of the constituents are then used to determine a level of static stability of the specific formulation of the low-density HGB fluid. [0016, 0036, 0050-0052]
Claim 26
Smith discloses the low-density HGB fluid of claim 19, wherein the base oil comprises a diesel, a highly-refined mineral oil, a synthetic oil, or a gas-to-liquid (GTL) fluid, or some combination thereof. [0014, 0037]
Claim 27
Smith discloses the low-density HGB fluid of claim 19, wherein the oil viscosifying agent comprises at least one of a styrene block (SB) copolymer or a Hydrogenated Polyisoprene (HPI) Star polymer, and wherein the oil viscosifying agent is added to the
low-density HGB fluid at a concentration in a range between 1.0 weight percent (wt %) and 4.0 wt %. [0038 & Claim 4]
Claim 28
Smith discloses the low-density HGB fluid of claim 19, wherein the organophilic clay is added to the low-density HGB fluid at a concentration in a range between 0.5 weight percent (wt %) and 2.0 wt % [0018, 0051, Table 2]
Claim 29
Smith discloses the low-density HGB fluid of claim 19, wherein the clay activator comprises an oil-soluble, polar material, and wherein the clay activator is added to the low-density HGB fluid at a concentration in a range between 0.1 weight percent (wt %) and 0.5 wt %. (i.e. propylene carbonate) [0018, 0053, & Table 4]
Claim 30
Smith discloses the low-density HGB fluid of claim 19, wherein the surfactant comprises a silicone block copolymer, and wherein the surfactant is added to the low- density HGB fluid at a concentration in a range between 0.1 weight percent (wt %) and 2.0 wt %. [0018,0036, Table 2, 0052]
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.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Smith as applied to claim 19 above, and further in view of Rana et al. (US 2016/0312141 1) ("Rana" herein- cited previously)
Claim 21
Smith discloses the low-density HGB fluid of claim 19. Smith however does not explicitly disclose, wherein the combination of constituents further comprises a hydrogen sulfide (H2S) scavenger.
Rana teaches the above limitation (See paragraphs 0004, 0056 & 0073 →Rana teaches this limitation in that Hydrogen sulfide is very toxic and poses challenges in the oil and gas industry. The removal of hydrogen sulfide from liquid or gaseous hydrocarbon streams is also a problem that poses certain safety risks. Many issues associated with hydrogen sulfide are present in drilling, production, transportation, storage, and processing of crude oil and waste water associated with crude oil. Suitable additional hydrogen sulfide scavengers include, but are not limited to, triazines (e.g., monoethanol amine triazine, monomethylamine triazine, and triazines from multiple amines or mixtures thereof), and any combination thereof The compositions may be applied to a fluid or gas to provide a scavenger concentration of about 1 parts per million (ppm) to about 1,000,000 ppm.) for the purpose of removing hydrogen sulfide from liquid or gaseous hydrocarbon streams is also a problem that poses certain safety risks with many issues associated with hydrogen sulfide present in drilling [0004]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Smith with the above limitation, as taught by Rana, in order to remove hydrogen sulfide.
Claim 22
Smith teaches the low-density HGB fluid of claim 21, wherein the H2S scavenger comprises a liquid oil-soluble H2S scavenger, and wherein the H2S scavenger is added to the low-density HGB fluid at a concentration in a range between 0.1 weight percent (wt %) and 2.0 wt %. (Same as claim 21)
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 04/02/2026