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, on 12/03/2025, with respect to objection to claims 6, 14-20 have been fully considered and are persuasive. The objection of the claims have been withdrawn.
Applicant’s arguments, on 12/03/2025, with respect to rejection of claims 1, 7, 8, 9, 13, and 19 have been fully considered and are persuasive. The rejection of the claims have been withdrawn.
Applicant’s arguments, filed on 12/03/2025, with respect to the rejection(s) of Claims 1, 2, 3, 6,8,9, 11,12,13,14,17, and 19 under 35 U.S.C. 102(a)
(1) as being anticipated by Quintero et al. (US 2012/00158852 A1) and Claims 1-20 rejected under 35 U.S.C. 102(a) (1) as being anticipated by
Santra et al. (US 2020/00332170 A1 A1) have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 § 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 6 and 17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 1 and 13 recites “fluid comprises particles of activated carbon” , however, claims 6 and 17 broadens the types of particles” the said material is selected from a group consisting of: activated carbon derived from natural waste cellulose products, coconut husk derived activated carbon, rice husk derived activated carbon.. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 6 and 17 recite the limitation "the said material" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 17 recites the limitation "the material" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the formation" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 –
(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 1, 2, 4-7, 9-18, and 20 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Ray et al. (US 2020/0002594 A1) (“Ray” herein)
Claim 1
Ray discloses a process for drilling a hydrocarbon production or injection well into a hydrocarbon bearing formation, [0109]
wherein the process comprises circulating drilling fluid into the well and back to the surface, [0004-0005, 0022, 0109]
wherein the drilling fluid comprises particles of activated carbon, wherein the particles have micropores or mesopores that are capable of receiving a benzene or toluene molecule, whereby the activated carbon adsorbs or absorbs benzene or toluene present in the hydrocarbon bearing formation. [0045-0047, 0058, 0065-0067]
Since Ray discloses the same drilling fluid comprising a mesoporous or microporous activated carbon particles, it would be capable of receiving a benzene or toluene molecule, whereby the activated carbon adsorbs or absorbs benzene or toluene present in the hydrocarbon bearing formation.
If there is any difference between the barrier fluid of the well service composition of Himes and that of the instant claims, the difference would have been minor and obvious. "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 disc loses 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 2
Ray discloses the process according to claim 1, wherein the drilling fluid is non-aqueous. [0005, 0104]
Claim 4
Ray discloses the process according to claim 1, wherein the particles have dimension between 100 µm and 5 mm. [0065-0067]
Claim 5
Ray discloses the process according to claim 1, wherein the particles have dimension between 100 µm and 150 µm. [0065-0067]
Claim 6
Ray discloses the process according to claim 1, wherein the said material is selected from a group consisting of: activated carbon derived from natural waste cellulose products, coconut husk derived activated carbon, rice husk derived activated carbon. [0058-0065]
Claim 7
Ray discloses the process according to claim 1, wherein weight of the material in the drilling fluid per unit volume of fluid is between 0.011 kg/m³ to 57 kg/m³. [0022, 0104]
Claim 9
Since Ray discloses the same drilling fluid comprising a mesoporous or microporous activated carbon particles, it would be capable of receiving a benzene or toluene molecule, whereby the activated carbon adsorbs or absorbs benzene or toluene present in the hydrocarbon bearing formation in conditions down a hydrocarbon well, at a temperature range of 50 to 200 degrees C or a pressure of between 100 and 20,000 psi., or both at a temperature range of 50 to 200 degrees C and at a pressure of between 100 and 20,000 psi.
If there is any difference between the barrier fluid of the well service composition of Himes and that of the instant claims, the difference would have been minor and obvious. "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 disc loses 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 10
Ray discloses the process according to claim 1, wherein the particles have a specific surface area of between 500 m²/g and 5,000 m²/g. [0039-0041]
Claim 11
Ray discloses the process according to claim 1, wherein the particles accumulate in fractures in the formation and inhibit further fracturing of the formation. [0106,0108]
Claim 12
Ray discloses the process according to claim 1, wherein a dedicated wellbore strengthening particulate material is present in the drilling fluid in addition to the said particles of adsorbent or absorbent material. [0108-0109]
Claim 13
Ray discloses a drilling fluid for passing into a well being drilled into a hydrocarbon bearing subterranean formation, [0022, 0109]
wherein the drilling fluid comprises particles of activated carbon, wherein the particles have micropores or mesopores that are capable of receiving a benzene or toluene molecule, whereby the activated carbon adsorbs or absorbs benzene or toluene present in the hydrocarbon bearing formation. [0045-0047, 0058, 0065-0067]
Since Ray discloses the same drilling fluid comprising a mesoporous or microporous activated carbon particles, it would be capable of receiving a benzene or toluene molecule, whereby the activated carbon adsorbs or absorbs benzene or toluene present in the hydrocarbon bearing formation.
If there is any difference between the barrier fluid of the well service composition of Himes and that of the instant claims, the difference would have been minor and obvious. "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 disc loses 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 14
Ray discloses the drilling fluid according to claim 13 that is non-aqueous. [0005, 0104]
Claim 15
Ray discloses the drilling fluid according to claim 13, wherein the particles have dimension between 100 µm and 5 mm. [0065-0067]
Claim 16
Ray discloses the drilling fluid according to claim 13, wherein the particles have dimension between 100 µm and 150 µm. [0065-0067]
Claim 17
Ray discloses the drilling fluid according to claim 13, wherein the said material is selected from a group consisting of: activated carbon derived from natural waste cellulose products, coconut husk derived activated carbon, rice husk derived activated carbon. [0058-0065]
Claim 18
Ray discloses the drilling fluid according to claim 31, wherein weight of the material in the drilling fluid per unit volume of fluid is between 0.011 kg/m³ to 57 kg/m³. [0022, 0104]
Claim 20
Ray discloses the drilling fluid according to claim 31, wherein the particles have a specific surface area of between 500 m²/g and 5,000 m²/g. [0039-0041]
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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 02/06/2026